The Complainant is Instagram, LLC, United States of America (“United States”), represented by Hogan Lovells (Paris) LLP, France.
The Respondent is Contact Privacy Inc. Customer 1247361676, Canada / GUELCE JEAN-CLAUDY, France. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 28, 2021. On May 28, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 28, 2021, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on June 2, 2021 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on June 3, 2021. The Registrar also indicated that the language of the Registration Agreement was French. The Complaint was filed in English. The Center sent an email communication to the Complainant on June 2, 2021, inviting the Complainant to provide sufficient evidence of an agreement between the Parties for English to be the language of proceeding, a Complaint translated into French, or a request for English to be the language of proceedings. The Complainant confirmed its request for English to be the language of proceedings on June 3, 2021. The Respondent did not submit any arguments. The Center verified that the Complaint together with the amended Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”). In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on June 8, 2021. In accordance with the Rules, paragraph 5, the due date for Response was June 28, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 29, 2021. The Center appointed Philippe Gilliéron as the sole panelist in this matter on July 9, 2021. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7. 4. Factual Background The Complainant is a world-renowned online photo- and video-sharing social-networking application. Since its launch in 2010, the Complainant has rapidly acquired and developed considerable goodwill and renown worldwide. Acquired by Facebook, Inc. in 2012, the Complainant today is the world’s fastest growing photo- and video-sharing and editing software and online social network, with more than 1 billion monthly active accounts worldwide. The Complainant’s website available at “www.instagram.com” is ranked the 24th most visited website in the world, according to web information company Alexa. Given the exclusive online nature of the Complainant’s business, the management of the Complainant’s domain name portfolio lies at the heart of its business. The Complainant is the registrant of numerous domain names consisting of or including the INSTAGRAM or GRAM trademarks under a wide range of generic Top-Level Domains (“gTLDs”) as well as under numerous country code Top-Level Domains (“ccTLDs”). In addition to its strong presence online, the Complainant has secured ownership of numerous trademark registrations for INSTAGRAM and GRAM in many jurisdictions throughout the world, including but not limited to the following: - United States Trademark Registration No. 4,146,057, INSTAGRAM, registered on May 22, 2012; The Respondent registered the domain name The main page of the Respondent’s website states: “What is an online anonymous Instagram web viewer? If You don’t have an Instagram account or you got blocked, you will need an insta viewer that will let you view Instagram profiles or stories without an account. StoriesGrams is An Instagram private viewer or stalker, it lets you view profiles on Instagram without login, you will be able to secretly watch, analyze and download pictures, videos, stories, reels, and IGTV from Instagram. This service is online and free so there is no need to install a mobile application on your phone or software on your computer.” The Respondent’s website also offers a tool to download content from Instagram. Notably, it allows users to download Instagram stories whereas this type of content is meant to be deleted within 24 hours. The main page of the Respondent’s website states: “People chose to use Instagram Stories to share photos and videos they took in daily life on the post wall and not defile their profile. Because Instagram stories consisted of videos and pics that can be deleted within 24 hours. Nowadays, a survey can be added to Instagram Stories, and augmented reality (AR) effects can be added. Instagram Stories that are used more than 500 million times a day is still one of the most popular features. Brands can also target the user with sponsored advertisements on their Instagram stories. The Instagram profile whose Stories you have viewed will become easily visible among their Insta Story viewers list. To be able to view the Stories Ig of a specific account but remain in the shadows, You will need to use an anonymous Instagram story viewer like StoriesGrams that will let you watch and even download Ig Story on your device for later use.” 5. Parties’ Contentions A. Complainant The Complainant first asserts that the domain name It then affirms that the Respondent has no rights or legitimate interests in the disputed domain name, as he is not one of its licensees, that he has never been authorized to use the Complainant’s trademarks and is not known under this name. Furthermore, the Complainant is of the opinion that the use made of the website attached to the disputed domain name, which consists of providing a tool for viewing and downloading content from Instagram, without the need for an Instagram account, cannot be considered as a bona fide offering of goods and services as it breaches the Complainant’s Terms of Use and its Developer Policies. The Complainant finally states that the disputed domain name has been registered and is being used in bad faith. Considering the strong reputation enjoyed by the Complainant’s trademark, the Respondent cannot credibly argue that he did not have knowledge of the Complainant and its INSTAGRAM or GRAM trademarks when it registered The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings Paragraph 15(a) of the Rules instructs this Panel to “[…] decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.” Pursuant to paragraph 4(a) of the Policy, the Complainant must prove each of the following three elements to obtain an order that the disputed domain name should be cancelled or transferred: (i) The disputed domain name registered by the Respondent is identical or confusingly similar to a trademark or a service mark in which the Complainant has rights; (ii) The Respondent has no rights or legitimate interests in respect of the disputed domain name; and (iii) The disputed domain name has been registered and is being used in bad faith. Prior to turning to the merits of the case, the Panel however has to address a formal issue regarding the language of the proceedings. A. Language of the proceedings The Complaint was filed in English on May 28, 2021. On June 2, 2021, the Center notified the Parties in both English and French that the language of the Registration Agreement for the disputed domain name was French. The Center invited the Complainant to provide satisfactory evidence of an agreement between the parties to the effect that the proceedings should be in English, to submit the Complaint translated in French or a request for English to be the language of the proceedings. In its amended Complaint filed on June 3, 2021, the Complainant requested the proceedings to take place in English, based upon the following arguments: the disputed domain name is registered in “.com”; the website attached to the disputed domain name is in English, which tends to demonstrate that the Respondent understands the English language and, finally, it would be excessive and disproportionate to require the Complainant to have its complaint translated in French. The Respondent did not oppose to this request. Taking into the fact that the Respondent did not object for the proceeding to be held in English although he had the possibility to do so, the Panel sees no reason to reject the Complainant’s request to have the proceedings held in English. As a result, the proceedings shall be held in English. B. Identical or Confusingly Similar According to the Policy, paragraph 4(a)(i), the Complainant has to prove that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights. The Complainant proves to be the holder of several trademarks consisting of the terms INSTAGRAM or GRAM. UDRP panels widely agree that incorporating a trademark into a domain name can be sufficient to establish that the domain name is identical or confusingly similar to a registered trademark for purpose of the Policy (see, e.g., Uniroyal Engineered Products, Inc. v. Nauga Network Services,WIPO Case No. D2000-0503; Thaigem Global Marketing Limited v. Sanchai Aree,WIPO Case No. D2002-0358; and F. Hoffmann-La Roche AG v. Relish Entreprises, WIPO Case No. D2007-1629). It is also well established in previous UDRP decisions that, where the relevant trademark is recognizable within the disputed domain name, the addition of other terms would not prevent a finding of confusing similarity under the first element. Accordingly, the addition of the term “stories” and the letter “s” in the disputed domain name does not prevent a finding of confusing similarity with the Complainant’s GRAM trademark. See section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”). Moreover, taking into account the nature of the term “stories”, such term, put in relation with the GRAM trademark, will obviously be understood by users as referring to the “stories” feature of the Complainant’s platform, and the capacity to view such stories. Taken as a whole, “storiesgrams” may therefore mistakenly be understood by users as a series trademark owned by the Complainant. This shows that the Respondent targeted the Complainant and the GRAM trademark and affirms the confusing similarity. As a result, the Panel considers paragraph 4(a)(i) of the Policy to be satisfied. C. Rights or Legitimate Interests As the panel stated in Do The Hustle, LLC v. Tropic Web,WIPO Case No. D2000-0624, demonstrating that the Respondent has no rights or legitimate interests in the domain name “would require complainant to prove a negative, a difficult, if not impossible, task.” Thus, in that decision, the panel opined that “[w]here a complainant has asserted that the respondent has no rights or legitimate interests in respect of the domain name, it is incumbent upon the respondent to come forward with concrete evidence rebutting this assertion.” Following that decision, subsequent UDRP panels acknowledged that it is deemed sufficient for a complainant to make a prima facie case that the respondent lacks rights or legitimate interests in a domain name. Once a prima facie case has been made, the burden of production shifts to the respondent to come forward with evidence to demonstrate its rights or legitimate interests. If it fails to do so, the complainant is deemed to have satisfied to paragraph 4(a)(ii) of the Policy (see, e.g., section 2.1 of the WIPO Overview 3.0). In the present case, the Complainant has no business or other relationship with the Respondent and has never authorized the Respondent to use its GRAM trademarks. The Complainant thus has made a prima facie case showing that the Respondent has no rights or legitimate interests in the disputed domain name. The Respondent did not object to these assertions. Furthermore, the use of the disputed domain name, which obviously free rides on the Complainant’s official website, further using similar colors, does not amount to a bona fide offering of goods or services, to the contrary. Consequently, in light of the above, the Panel considers paragraph 4(a)(ii) of the Policy to be fulfilled. D. Registered and Used in Bad Faith For a complaint to succeed, a panel must be satisfied that a domain name has been registered and is being used in bad faith (Policy, paragraph 4(a)(iii)). Bad faith requires the respondent to be aware of the complainant’s trademarks. In the present case, the Complainant’s trademarks enjoy a strong reputation. Having more than one billion users worldwide, INSTAGRAM undoubtedly has to be considered as a well-known trademark on a worldwide basis. Considering the distinctiveness of the Complainant’s trademarks and the fact that the website to which the disputed domain name resolves expressly refers on numerous accounts to the Complainant and its INSTAGRAM trademark, further using the same range of colors, there is no doubt that the Respondent was well aware of the Complainant’s trademarks when it registered the disputed domain name The use made by the Respondent in relation to the attached website obviously amounts to a use in bad faith. The Respondent has purposefully developed a business model to provide access to users that do not necessarily have Instagram accounts to content hosted by the Complainant. The Respondent has deliberately decided to use the same range of colors as the Complainant without any disclaimer. Such use cannot be considered as being made in good faith and, to the contrary, has to be considered as a use of the disputed domain name in bad faith, all the more noting the presence of commercial banners which tends to pinpoint to the commercial intent of the Respondent in using the disputed domain name. Consequently, the Panel is of the opinion that the disputed domain name For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name Philippe Gilliéron
- European Union Trade Mark No. 14493886, INSTAGRAM, registered on December 24, 2015;
- International Registration No. 1129314, INSTAGRAM, registered on March 15, 2012;
- European Union Trade Mark No. 015868797, GRAM, registered on January 12, 2017; and
- European Union Trade Mark No. 017642729, GRAM, registered on March 23, 2019.
Sole Panelist
Date: July 16, 2021
Full & Egal Universal Law Academy