The Complainant is Instagram, LLC, United States of America, represented by Hogan Lovells (Paris) LLP, France.
The Respondent is Domain Admin, WHOIS IDCPrivacy Service c/o IDC (BVI) Limited, United Kingdom / Dalip Senka, India. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 4, 2021. On June 4, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On June 9, 2021, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the 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 10, 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 11, 2021. 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 17, 2021. In accordance with the Rules, paragraph 5, the due date for Response was July 7, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 8, 2021. The Center appointed Nicholas Smith as the sole panelist in this matter on July 13, 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 United States company that operates a well-known social media network under the trade mark INSTAGRAM (the “INSTAGRAM Mark”) often abbreviated to “Insta” that specialises in online photo and video sharing. The Complainant’s Instagram product was launched in 2010 and has more than 1 billion monthly active accounts. Its website at “www.instagram.com” is the 24th most visited website in the world. One of the features of the Instagram product is Instagram stories, which allows users to post stories that are meant to be deleted within 24 hours. The Complainant is the owner of a trade mark registration in the United States for the word mark INSTA (the “INSTA Mark”) No. 5061916 registered on October 18, 2016. It is also the owner of trade mark registrations in the United States and the European Union for the INSTAGRAM Mark, including United States trade mark No. 4146057 registered on May 22, 2012. The Domain Name The Complainant makes the following contentions: (i) that the Domain Name is confusingly similar to the Complainant’s INSTA Mark; The Complainant is the owner of the INSTA and INSTAGRAM Marks, having registered these marks in the United States and the European Union. The Domain Name consists of the INSTA Mark in its entirety with the addition of the descriptive terms “story” and “viewer”. There are no rights or legitimate interests held by the Respondent in respect of the Domain Name. The Respondent is not commonly known by the Domain Name, nor has it conducted a legitimate business under the Domain Name. The Complainant has not authorized or licensed the Respondent to use the INSTA Mark. There is no noncommercial use of the Domain Name. The use of the Domain Name to purport to offer a service allowing viewers to secretly view and download Instagram stories from public users involves the Respondent engaging in conduct that is against the Instagram terms of service. Such a use is not bona fide. Given the reputation of the Complainant’s well-known INSTA Mark and the use to which the Domain Name has been put, it is inconceivable that the Respondent registered the Domain Name unaware of the Complainant’s rights. The Domain Name revolves to a website, which offers services that involve circumventing the Complainant’s terms of service and putting the privacy and security of the Complainant’s users at risk. This conduct amounts to registration and use of the Domain Name in bad faith. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Identical or Confusingly Similar To prove this element the Complainant must have trade or service mark rights and the Domain Name must be identical or confusingly similar to the Complainant’s trade or service mark. The Complainant is the owner of the INSTA and INSTAGRAM Marks, having registered these marks in the United States and the European Union. The Domain Name consists of the INSTA Mark with the additional descriptive words “story” and “viewer” (the gTLD “.com” being discounted for the purposes of comparison). The addition of a descriptive term to a complainant’s mark does not prevent a finding of confusing similarity, see Wal-Mart Stores, Inc. v. Henry Chan,WIPO Case No. D2004-0056. The Panel finds that the Domain Name is confusingly similar to the Complainant’s INSTA Mark. Consequently, the requirement of paragraph 4(a)(i) of the Policy is satisfied. B. Rights or Legitimate Interests To succeed on this element, a complainant must make out a prima facie case that the respondent lacks rights or legitimate interests in the domain name. If such a prima facie case is made out, then the burden of production shifts to the respondent to demonstrate rights or legitimate interests in the domain name. Paragraph 4(c) of the Policy enumerates several ways in which a respondent may demonstrate rights or legitimate interests in a domain name: “Any of the following circumstances, in particular but without limitation, if found by the panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii): (i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or (ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trade mark or service mark rights; or (iii) you are making legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.” The Respondent is not affiliated with the Complainant in any way. It has not been authorized by the Complainant to register or use the Domain Name or to seek the registration of any domain name incorporating the INSTA Mark or a mark similar to the INSTA Mark. There is no evidence that the Respondent is commonly known by the Domain Name or any similar name. There is no evidence that the Respondent has used or made demonstrable preparations to use the Domain Name in connection with a bona fide offering of goods or services or for a legitimate noncommercial use. Rather, it appears from the evidence submitted by the Complainant that the Respondent has used the Domain Name to operate a website that allows users to download and access material from the Complainant’s Instagram platform, notwithstanding that such material is (in the ordinary course) deleted after 24 hours and notwithstanding that the Complainant does not allow Internet users to access material on its Instagram platform without actually accessing the platform. If such services are not real, then the Respondent is engaging in fraudulent conduct. If such services are real then the Respondent, in providing these services, is engaged in the process of circumventing the Complainant’s access restrictions to its Instagram platform and breaching the Complainant’s terms of service. Such conduct may be fraudulent and is not a bona fide offering of goods or services. The Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the Domain Name. The Respondent has had an opportunity to rebut the prima facie case that it lacks rights or legitimate interests but has chosen not to do so. The Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name under paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith For the purposes of paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith (Policy, paragraph 4(b)): (i) circumstances indicating that the Respondent has registered or has acquired the Domain Name primarily for the purpose of selling, renting, or otherwise transferring the Domain Name’s registration to the Complainant who is the owner of the trade mark or service mark or to a competitor of the Complainant, for valuable consideration in excess of its documented out-of-pocket costs directly related to the Domain Name; or (ii) The Respondent has registered the Domain Name in order to prevent the owner of the trade mark or service mark from reflecting the mark in a corresponding domain name, provided that the Respondent has engaged in a pattern of such conduct; or (iii) The Respondent has registered the Domain Name primarily for the purpose of disrupting the business of a competitor; or (iv) by using the Domain Name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website or location or of a product or service on the Respondent’s website or location. The Panel finds that the Respondent was aware of the Complainant at the time the Domain Name was registered. The Respondent’s Website purported to offer a service where the Respondent assists users to download and access material from the Complainant’s Instagram platform. The registration of the Domain Name in awareness of the Complainant and its rights in the INSTA Mark and in the absence of rights or legitimate interests amounts to registration in bad faith. The Respondent is using the Domain Name for a website purporting to offer services that involve unauthorized and automated accessing and downloading of content from the Complainant’s Instagram platform. In previous UDRP decisions such conduct has been found to be evidence of registration and use in bad faith, see Instagram, LLC v. WhoisGuard, Inc. / Name Redacted, Senol Sahin, thepicdeer.com, Ekrem Gueltekin and Ekrem Gultekin,WIPO Case No. D2020-2826; and Facebook, Inc. v. Registration Private, Domains By Proxy, LLC / Giap Nguyen Van and Giao Tran Ngoc,WIPO Case No. D2018-2762, in which the panel described the then respondent’s conduct as follows: “The disputed domain names The Panel agrees with the conclusions of the panels in the cases above and finds that the Respondent is using the Domain Name in bad faith. Accordingly, the Panel finds that the Respondent has registered and is using the Domain Name in bad faith under paragraph 4(a)(iii) of the Policy. 7. Decision For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name, Nicholas Smith
(ii) that the Respondent has no rights nor any legitimate interests in respect of the Domain Name; and
(iii) that the Domain Name has been registered and is being used in bad faith.
Sole Panelist
Date: July 15, 2021
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