The Complainant is Instagram, LLC, United States of America (“United States”), represented by Hogan Lovells (Paris) LLP, France.
The Respondent is Whois Agent, Domain Protection Services, Inc., United States / George Henrique, NOGG, Brazil. 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 11, 2021. On June 14, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 15, 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 22, 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 24, 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 25, 2021. In accordance with the Rules, paragraph 5, the due date for Response was July 15, 2021. The Response was filed with the Center on July 4, 2021. The Respondent also sent several email communications to the Center on June 22, 2021; June 24, 2021; June 25, 2021; July 1, 2021; July 2, 2021; July 8, 2021; and July 23, 2021. The Center appointed Andrew F. Christie as the sole panelist in this matter on August 2, 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, launched in 2010. Acquired by Facebook, Inc. in 2012, Instagram today is a large and fast-growing social network, with more than 1 billion monthly active accounts worldwide. It has consistently ranked amongst the top “apps” for mobile devices including for iOS and Android operating systems. The Complainant is the owner of numerous trademark registrations in many jurisdictions throughout the world, including United States Trademark Registration No. 4146057 (registered on May 22, 2012) and European Union Trademark Registration No. 14493886 (registered on December 24, 2015) for the word trademark INSTAGRAM, United States Trademark Registration No. 5061916 (registered on October 18, 2016) and European Union Trademark Registration No. 14810535 (registered May 23, 2018) for the word trademark INSTA, and United States Trademark Registration No. 4795634 (registered on August 18, 2015) and European Union Trademark Registration No. 12111746 (registered March 6, 2014) for the stylized trademark INSTAGRAM. The Complainant is the registrant of numerous domain names consisting of or including the INSTAGRAM trademark under a wide range of generic Top-Level Domains (“gTLDs”) as well as under numerous country-code Top-Level Domains (“ccTLDs”). The disputed domain name was registered on July 17, 2013. The Complainant has provided screenshots taken on June 11, 2021, showing that the disputed domain name resolved to a website predominantly in Portuguese, which purported to provide a tool to download content from Instagram, which contained numerous commercial banners, and which displayed a logo of the word “instawload” in a script and style very similar to that of the Complainant’s stylized trademark INSTAGRAM. At the time of this decision, it appears that the disputed domain name does not resolve to an active website. 5. Parties’ Contentions A. Complainant The Complainant contends that the disputed domain name is confusingly similar to a trademark in which it has rights because: (i) the disputed domain name incorporates the Complainant’s INSTA trademark in its entirety, with the addition of the letters “wload”, which appear to be an abbreviation for the descriptive term “download”; (ii) the Complainant’s INSTA trademark is immediately recognizable in the disputed domain name as the leading element, and the addition of the letters “wload” does not prevent a finding of confusing similarity; (iii) the fact that the disputed domain name’s registration predated some of the Complainant’s trademarks does not prevent a finding of confusing similarity, as prior panels have consistently held that trademark rights need only be in existence at the time the complaint is filed; (iv) the content of the website associated with the disputed domain name confirms that the Respondent has sought to target the Complainant’s trademark through the disputed domain name; and (v) the addition of the “.com” gTLD may be disregarded for the purposes of assessing confusing similarity, as it is a standard requirement of registration. The Complainant contends that the Respondent has no rights or legitimate interests in respect of the disputed domain name because: (i) the Respondent is not a licensee of the Complainant, and is not affiliated with the Complainant in any way; (ii) the Complainant has not granted any authorization for the Respondent to make use of its INSTA and INSTAGRAM trademarks, or any variation thereof, in a domain name or otherwise; (iii) the website resolving from the disputed domain name purports to provide a tool to download content from Instagram, which is in breach of Facebook’s Developer Policies, as the creation of a tool that facilitates the downloading of content from the Instagram platform goes beyond the limits that Instagram has placed on the functionality of its own product; (iv) the provision of such a tool also places the privacy and security of Instagram users at risk, as content scraped from Instagram’s platform may be stored and later used for unauthorized purposes by third parties; (v) there is no evidence to suggest that the Respondent is commonly known by the disputed domain name, or that the Respondent has acquired or applied for any trademark registrations for “instawload”; (vi) the Respondent is not making a legitimate noncommerical or fair use of the disputed domain name, as the website resolving from it contains commercial banners, from which the Respondent presumably derives click-through revenue; and (vii) there is nothing on the website resolving from the disputed domain name in the form of a disclaimer indicating that it is not operated by, sponsored by, or affiliated with the Complainant. The Complainant contends that the disputed domain name was registered and is being used in bad faith because: (i) given the fame and highly distinctive nature of the Complainant’s trademarks, the Respondent could not credibly argue that it did not have knowledge of the Complainant or its INSTAGRAM trademark when registering the disputed domain name in July 2013, by which time the Complainant had amassed over 150 million monthly active users; (ii) since registering the disputed domain name the Respondent has not displayed any bona fide intent in relation to it, but rather has taken steps to set up a website providing a tool for downloading content from Instagram, in violation of Facebook’s Developer Policies and the Complainant’s Brand Guidelines; (iii) the Respondent appears as the registrant for other trademark-abusive domain names comprising well-known trademarks, indicating a pattern of abusive domain name registration; (iv) the Respondent’s use of the disputed domain name is intended for financial gain, as the website resolving from it contains commercial banners, from which the Respondent is likely obtaining financial gain; (v) prior UDRP panels have held that the unauthorized automated accessing and downloading of content from social networks amounts to bad faith; (vi) the disputed domain name has been used to point to a website displaying modified versions of the Complainant’s trademark, thereby creating a misleading impression of association with the Complainant; (vii) the fact there is no disclaimer or any other indication of the website resolving from the disputed domain name clarifying the Respondent’s relationship (or lack thereof) with the Complainant, further adds to the confusion caused by the disputed domain name itself; and (viii) the Respondent’s use of a privacy service to conceal its identity with regard to the disputed domain name further supports an inference of bad faith. B. Respondent The Respondent stated: “I do not object to the request and agree to transfer the domain. The site has already been taken down and I’m awaiting instructions to transfer the domain.” The Respondent also stated that it consented to the remedy requested by the Complainant. 6. Discussion and Findings A. Identical or Confusingly Similar Once the gTLD “.com” is ignored (which is appropriate in this case), the disputed domain name consists of the whole of the Complainant’s registered word trademark INSTA followed by the letters “wload”. The Complainant’s word trademark is clearly recognizable within the disputed domain name. The addition of the letters “wload” does not prevent a finding of confusing similarity of the disputed domain name with the Complainant’s word trademark. As provided in section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element. Accordingly, the Panel finds that the disputed domain name is confusingly similar to a trademark in which the Complainant has rights. B. Rights or Legitimate Interests The Respondent is not a licensee of, or otherwise affiliated with, the Complainant, and has not been authorized by the Complainant to use its INSTA word trademark. The Respondent has not provided any evidence that it has been commonly known by, or has made a bona fide use of, the disputed domain name, or that it has, for any other reason, rights or legitimate interests in the disputed domain name. The Complainant has provided evidence that the disputed domain name was used to resolve to a website purporting to provide a tool for downloading content from Instagram in contravention of its developer policies, containing commercial banners of third parties, and displaying a logo of the word “instawload” in a script and style very similar to that of the Complainant’s stylized trademark INSTAGRAM. Given the confusing similarity of the disputed domain name to the Complainant’s trademark and the absence of any relationship between the Respondent and the Complainant, such a use of the disputed domain name is neither a bona fide use nor a legitimate noncommercial or fair use of the disputed domain name. The Complainant has put forward a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name, and the Respondent has failed to rebut this. Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name. C. Registered and Used in Bad Faith The disputed domain name was registered a number of years after the Complainant’s first use of its INSTAGRAM and INSTA trademarks, and more than a year after the Complainant’s first registration of its INSTAGRAM trademark. It is inconceivable that the Respondent registered the disputed domain name ignorant of the existence of the Complainant’s trademarks, given the Complainant’s prior use of them, that the disputed domain name consists of the Complainant’s INSTA trademark with the mere addition of the letters “wload”, and that the Respondent used the disputed domain name to resolve to a website displaying a logo of the word “instawload” in a script and style very similar to that of the Complainant’s stylized trademark INSTAGRAM. Given the Respondent’s lack of rights or legitimate interests in the disputed domain name, and the confusing similarity of the disputed domain name to the Complainant’s INSTA and INSTAGRAM trademarks, any use of the disputed domain name by the Respondent almost certainly implies an affiliation with the Complainant that does not exist, and so would be a use in bad faith. Furthermore, as the disputed domain name resolved to a website containing apparent pay-per-click links to third-party websites, the Respondent has used the disputed domain name to attract, for commercial gain, Internet users to a website by creating confusion in the minds of the public as to an association between the website and the Complainant. Accordingly, the Panel finds that the disputed domain name has been registered and is being used in bad faith. 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 disputed domain name, Andrew F. Christie
Sole Panelist
Date: August 16, 2021
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