The Complainant is Instagram, LLC, United States of America (“United States”), represented by Hogan Lovells (Paris) LLP, France.
The Respondent is Privacy Protect, LLC (PrivacyProtect.org), United States / Elnur Alizade, Azerbaijan. 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 16, 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 21, 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 July 2, 2021. In accordance with the Rules, paragraph 5, the due date for Response was July 22, 2021. The Respondent sent an informal communication to the Center on July 2, 2021. The Center appointed Andrew F. Christie as the sole panelist in this matter on August 4, 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. 014493886 (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. 014810535 (registered on May 23, 2018) for the word trademark INSTA; and United States Trademark Registration No. 5399502 (registered on February 13, 2018) for a design trademark of a camera. 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 May 12, 2021. The Complainant has provided screenshots taken on June 9, 2021, of a translation into English of the website in Turkish to which the disputed domain name resolved. That website purported to offer a software application that runs automated tasks over the Internet (“bot”) to artificially increase the number of Instagram “followers”, “likes”, “views” and “comments”, and allowed users to create an account and then make payment in exchange for a credit to be used on the website. At the time of this decision, it appears that the disputed domain name does not resolve to an active website. On June 21, 2021, the Center received an email from Elnur Alizade, the disclosed registrant of the disputed domain name, which stated: “I have closed and shut down the service Sorry for the inconvenience”. On the same day, the Center received an email from “Food Menu” which stated: “Greetings. Dear WIPO, For the sake of goodwill, I have terminated the service and deleted all data from the server. Moreover, I have closed the CloudFlare account. If you look up domain name information, you will see that it points to the loopback address 127.0.0.1 Again, I am deeply sorry for the inconvenience; also, I regret providing such support. Many thanks for considering my request.” 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 a hyphen and the term “shark”; (ii) the addition of a generic term and a hyphen is insufficient to distinguish the disputed domain name from the Complainant’s trademark; (iii) when confronted with a combination of the suffix “-shark”, many Internet users would be confused and assume that the disputed domain name is in some way connected with the Complainant; and (iv) 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 has not been otherwise authorized by the Complainant to make any use of its trademarks in a domain name or otherwise; (ii) generating very high numbers of “followers”, “likes”, “views”, and “comments” in a short amount of time invariably involves fraudulent operations, such as the creation of fake accounts or hacking into existing accounts; (iii) offering “likes” and/or “followers” for sale destroys the authenticity of the user experience sought by Instagram, and damages the reputation of the Complainant; (iv) the Respondent does not appear to have acquired any trademark rights in the terms “insta” or “insta shark”; (v) the Respondent registered the disputed domain name using a privacy service, and the underlying registrant details that have been disclosed by the Registrar bear no resemblance to the disputed domain name whatsoever; (vi) the disputed domain name resolves to a website selling Instagram “followers” and “likes”, which is clearly commercial in nature and from which the Respondent is undoubtedly obtaining financial gain; and (vii) the Respondent’s activities are clearly against Instagram’s Terms of Use. 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 INSTA and INSTAGRAM trademarks when registering the disputed domain name in May 2021; (ii) it is clear from the content of the website resolving from the disputed domain name that the Respondent had the Complainant in mind when registering it, as the Respondent has subsequently sought to create a misleading impression of association with the Complainant; (iii) the Respondent deliberately chose to conceal its identity by means of a privacy protection service; (iv) the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website, by creating a likelihood of confusion with the Complainant’s identity as to the source, sponsorship, affiliation or endorsement of its website, or of a product or service on its website; (v) the Respondent is using the Complainant’s trademark seeking to increase traffic to its website in order to obtain commercial gain derived from the goodwill and reputation attached to the Complainant’s trademark; (vi) the disputed domain name resolved to a website containing a logo having a “look and feel” that is similar to the Complainant’s well-known and distinctive logo, which does not comply with the Complainant’s Brand Guidelines; (vii) the fact that there is no clear and prominent disclaimer at the website resolving from the disputed domain name indicating that the Respondent’s website is not affiliated to or sponsored by the Complainant further adds to the confusion; and (viii) the Respondent’s activities likely involve some type of fraudulent operation, such as the creation of fake accounts, or hacking into existing accounts, which is clearly illegitimate and a strong indication of the Respondent’s bad faith. B. Respondent The Respondent did not submit a formal response. However, on July 2, 2021, the Center received two emails from Elnur Alizade, the disclosed registrant of the disputed domain name, both of which stated: “Hello. Okay, I understand my mistakes, and I want to pay 1000$ How can I send money? and which bank information (IBAN and etc)?” 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 a hyphen and the word “shark”. The Complainant’s word trademark is clearly recognizable within the disputed domain name. The addition of a hyphen and the word “shark” does not prevent a finding of confusing similarity of the disputed domain name with the Complainant’s 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 that purported to offer a software application that runs automated tasks over the Internet to artificially increase the number of Instagram “followers”, “likes”, “views”, and “comments”. Such an application is in contravention of the Complainant’s Terms of Use, and may involve creating false accounts or hacking into existing accounts. 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 many years after the Complainant first registered its INSTA word trademark. It is inconceivable that the Respondent registered the disputed domain name ignorant of the existence of the Complainant’s trademark, given the Complainant’s prior substantial use of it and that the disputed domain name consists of the trademark with the mere addition of a hyphen and the word “shark”. 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 trademark, 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 which, for a fee, purported to artificially increase the number of Instagram “followers”, “likes”, “views”, and “comments”, 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 18, 2021
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