The Complainant is Instagram, LLC, United States of America (“United States”), represented by Hogan Lovells (Paris) LLP, France.
The Respondent is Whois Privacy Corp, Bahamas/ Misko Aliaksandr, Wiseway SIA, Latvia.
2. The Domain Name and RegistrarThe disputed domain name < ingramer.com> is registered with Internet Domain Service BS Corp (the “Registrar”).
3. Procedural HistoryThe Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 15, 2021. On June 15, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 16, 2021, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
The Center verified that the 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 24, 2021. In accordance with the Rules, paragraph 5, the due date for Response was July 14, 2021. The Response was filed with the Center July 12, 2021.
On July 21, 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 Complainant made a supplemental filing on August 30, 2021 and the Respondent replied in a supplemental filing dated September 3, 2021.
The Center appointed Alistair Payne, Luca Barbero, and Dr. Vít Horáček as panelists in this matter on September 7, 2021. The Panel finds that it was properly constituted. Each member of 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 BackgroundThe Complainant is the very well-known global online photo and video sharing social networking application and currently has over 1 billion monthly active users. It owns numerous trade mark registrations worldwide for the word mark INSTAGRAM including United States Trademark Registration No. 4,146,057, INSTAGRAM, registered on May 22, 2012 and European Union Trade Mark No. 015868797 for GRAM, registered on January 12, 2017. The Complainant also owns various domain names incorporating its INSTAGRAM trade mark, including
The Respondent registered the disputed domain name using a privacy service listed in the registration details as “Name Redacted”“Wiseway SIA” in Riga, Latvia. The disputed domain name was registered on April 18, 2018 and resolves to a website that purports to be a “marketing toolkit for Instagram”. The website offers a range of tools including a tool for accessing content on the Complainant’s Instagram website content without having an Instagram account and a free downloader tool that allows for content to be downloaded from Instagram and various other social media platforms, a search function that allows users to locate Instagram users without accessing the Instagram platform, and a profile analyser that offers data about Instagram users’ data and follower engagement. The Respondent’s website offers various subscription modules and price range models to enable user access to its website.
5. Parties’ Contentions A. ComplainantThe Complainant submits that it owns registered trade mark rights for its INSTAGRAM and GRAM marks as set out above. It also says that the inclusion of the Complainant's GRAM trade mark in its entirety in the disputed domain name is sufficient to establish confusing similarity between it and the Complainant's trade mark.
The Complainant submits that the disputed domain name is also confusingly similar to the Complainant's INSTAGRAM trade mark, in that the disputed domain name leads with the element "ingram" – a misspelling of the Complainant's INSTAGRAM trade mark, simply omitting the letters "sta". The Complainant submits that the element "ingram" is both visually and phonetically similar to the Complainant's INSTAGRAM trade mark.
It notes that while the content of the website associated with a disputed domain name is usually disregarded by UDRP panels when assessing confusing similarity under the first element, in some instances, panels have taken note of the content of the website associated with a domain name to confirm confusing similarity whereby it appears prima facie that the respondent has sought to target a trade mark through the disputed domain name; see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.15. The Complainant submits that the contents of the Respondent's website make it clear that the Respondent has sought to target the Complainant's INSTAGRAM trade mark. See Instagram LLC (Instagram), WhatsApp Inc. (WhatsApp) v. Domain Admin, Whois Privacy Corp. / Sergey Popov, supra, WIPO Case No. D2021-2809.
The Complainant notes that the Respondent is not a licensee of the Complainant, nor has the Respondent been otherwise authorised by the Complainant to make any use of its GRAM or INSTAGRAM trade marks, or any variation thereof, in a domain name or otherwise. It also says that the Respondent cannot assert that prior to any notice of this dispute it was using, or had made demonstrable preparations to use, the disputed domain name in connection with a bona fide offering of goods or services, in accordance with paragraph 4(c)(i) of the Policy. It says that there is no evidence to suggest that the Respondent is commonly known by the disputed domain name, as contemplated by paragraph 4(c)(ii) of the Policy and that the Respondent's identity is hidden behind a privacy service and while the Respondent's website identifies "Wiseway SIA" as the operator of the website, this bears no resemblance to the real owner of the disputed domain name.
The Complainant says that the Respondent's website is clearly intended to be commercial in nature, as evidenced by the pricing indicated for subscriptions to the Respondent's services and that the Respondent is therefore not making a legitimate non-commercial or fair use of the disputed domain name.
The Complainant also submits that the provision of the services offered on the website at the disputed domain name violate the Complainant's “Terms of Use”. It notes that content scraped from Instagram's platform may be stored and later used for unauthorised purposes by third parties. It says that prior UDRP panels have held that such use does not amount to a bona fide offering of goods or services, see Instagram, LLC v. Bar Technologies, WIPO Case No. DME2021-0005. In addition, it says that the tools offered on the Respondent’s website are in breach of Facebook’s Developer Policies in that they bypass the user identification and registration procedures and the downloading that they facilitate goes beyond the limits that the Complainant has placed upon its own product. It also submitted in its supplemental filing that the Oki Data criteria, as described at WIPO Overview 3.0, section 2.8, are not fulfilled in this case because the Respondent is not a bona fide service provider, is not providing services only in relation to the Instagram mark and because the website disclaimer does not prominently disclose the Respondent’s lack of relationship with the Complainant. The Complainant submits that this is therefore inconsistent with bona fide use of the disputed domain name.
In terms of registration in bad faith, the Complainant submits that the term “instagram” is highly distinctive and is exclusively associated with the Complainant. It says that its trade marks are inherently distinctive and well known throughout the world in connection with its online photo-sharing social network and that the INSTAGRAM trade mark has been continuously and extensively used since its launch in 2010, and has rapidly acquired considerable reputation and goodwill worldwide. The Complainant submits that the Respondent could not credibly argue that it did not have knowledge of Instagram or its INSTAGRAM and GRAM trade marks when registering the disputed domain name in April 2018, by which time Instagram had amassed over 1 billion monthly active users.
In any event, says the Complainant, the Respondent’s intent to target the Complainant when registering the disputed domain name may be inferred from the contents of the website to which the disputed domain name re-directs, which make explicit reference to Instagram and makes prominent use of the Complainant’s trade marks and facilitates the unauthorised viewing and searching of Instagram in violation of Instagram’s Terms of Use and Facebook’s Developer Policies. It is therefore apparent, says the Complainant that the Respondent was well aware of the Complainant’s marks and website when it registered the disputed domain name.
In terms of use in bad faith, the Complainant submits that the Respondent is using the disputed domain name to intentionally attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s trade marks as to the source, sponsorship, affiliation or endorsement of the website, in accordance with paragraph 4(b)(iv) of the Policy. The Complainant says that the disputed domain name is being used by the Respondent to point to a website which makes extensive mention of the Complainant, uses a modified version of the Complainant’s device mark on the website and as a favicon, offers tools for the unauthorised viewing and searching of content on Instagram and circumvents the requirement of creating an account to access the Instagram which is in violation of the Complainant’s Terms of Use and Facebook’s Developer Policies. It notes that prior UDRP panels have held that the unauthorized automated accessing of content from social networks amounts to bad faith. See Facebook, Inc. v. Registration Private, Domains By Proxy, LLC / Giap Nguyen Van and Giao Tran Ngoc,WIPO Case No. D2018-2762.
Finally, it says that the presence of a disclaimer at the bottom of the Respondent’s website does not serve to dispel confusion or to render the Respondent’s activities bona fide, as the Respondent’s website clearly creates a misleading impression of endorsement by the Complainant and that in the surrounding circumstances, 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 on the part of the Respondent.
B. RespondentThe Respondent maintains that “Inmedia Program” rather than “Wiseway SIA” is the beneficial owner of the disputed domain name and says that the relationship between the two is a private matter that is not for public disclosure.
The Respondent says that the Complainant’s GRAM mark is a registered trade mark that has virtually nothing to do with Instagram and that the Instagram social network does not operate under the GRAM domain. It says that the similarity of the domains
The Complainant further says that “Ingramer” is not equal to Instagram and that any site visitor, will clearly distinguish between the names “Ingramer” and “Instagram”. It says that the name “ingramer'' in essence implies some kind of activity of an animate being, for example, a designer, builder, driver, or a mechanism / process, like a notifier, sender, responder, while Instagram is a noun.
The Respondent submits that it has offered its service at the website to which the disputed domain name resolves for more than three years and that it has a good reputation as a provider of bona fide services for automating communication with customers on Instagram. It says that its Ingramer service provides following services and tools for the automation of Instagram accounts to a range of small business owners by being online constantly on Instagram and automating interaction with the audience within the bounds of the limits placed upon any Instagram user: automation of communication with clients in Direct (chat-bot, threads); categorization and group interaction; planned posting of media content and a search of relevant hashtags.
It says that if any of the internal rules of Instagram are violated, they are violated by individuals, i.e., Instagram users, and not by “Ingramer”. It says that “Ingramer” has no legal overlap with Instagram and doesn’t violate any applicable laws. The Respondent maintains that Instagram’s claims constitute internal commercial attempts to monopolise the market for small businesses that are using its social media network to promote the business.
The Respondent submits that the disputed domain name domain was registered and is being used in connection with a bona fide service. It maintains that the services provided to Ingramer users cannot and should not be subject to the rules of Facebook or Instagram due to the fact that there is no contractual relationship between Ingramer and Facebook, and that Ingramer is not obliged to comply with any internal commercial rules of Instagram. Ingramer says that it operates with the individuals’ data and interaction with individuals is completely legal and does not violate any legal norms. It submits that the disputed domain name was registered with no ill intent and in particular was not aimed at attacking the Complainant, or misleading Internet or adversely affecting the Respondent’s reputation.
The Respondent notes the disclaimer on its web page and that in order to access services on the website at the disputed domain name, Internet users agree to the terms of service and therefore are effectively notified of the disclaimer and that the Respondent has no relationship with the Complainant.
6. Discussion and Findings Procedural IssuesIn the circumstances that the Registrar’s confirmation was received late and only after the Respondent’s communication with the Center the Panel considers it appropriate under paragraphs 10 and 12 of the Rules to admit the Complainant’s supplemental filing and in the interests of fairness will also admit the Respondent’s supplemental filing that was filed in reply.
The Panel confirms that following normal practice the Respondents, as disclosed in the Registrar’s verification, are properly joined as respondents in this proceeding.
A. Identical or Confusingly SimilarThe Complainant has demonstrated that it owns United States Trademark Registration No. 4,146,057, for INSTAGRAM, registered on May 22, 2012 and also European Union Trade Mark No. 015868797 for GRAM, registered on January 12, 2017.
Although the disputed domain name wholly contains the Complainant’s registered GRAM mark, the Complaint is overall based upon the alleged abuse of the coined and highly distinctive INSTAGRAM trade mark registration. In these circumstances and noting that the disputed domain name differs from the INSTAGRAM mark in that it omits the middle consonants “sta” and adds “er” as a suffix, the Panel is able to determine this case based upon the Complainant’s registration for INSTAGRAM.
The Panel accepts the Complainant’s evidence that with more than one billion active accounts, its INSTAGRAM platform and mark has now become one of the most well-known brands in the world and this Panel agrees in broad terms with the findings of previous panels in relation to the level of renown attaching to the INSTAGRAM mark and considers that relatively few people who are connected to the Internet would be unaware of its existence. In this event and considering the factual background to this case as outlined above, the Panel finds that there are special circumstances at play here for the purposes of the determination of confusing similarity between the disputed domain name and the Complainant’s INSTAGRAM mark.
While the content of the website associated with a disputed domain name is usually disregarded by UDRP panels when assessing confusing similarity under the first element, in some instances, panels have taken note of the content of the website associated with a domain name to confirm confusing similarity whereby it appears prima facie that the respondent has sought to target a trade mark through the disputed domain name. See WIPO Overview 3.0, section 1.15. In this case it is apparent, as further described under 6.B. and 6.C. below, that the Respondent’s activity in using the disputed domain name is based upon and directly targets the Complainant’s INSTAGRAM trade mark and the website associated with it. In the affirming circumstances, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s INSTAGRAM trade mark registration.
As a result, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s INSTAGRAM mark and that the Complaint succeeds under this element of the Policy.
B. Rights or Legitimate InterestsThe Complainant has submitted that the Respondent is not a licensee of the Complainant and that it has not authorised the Respondent to make any use of its INSTAGRAM trade marks, or any variation thereof, in a domain name or otherwise. It has also submitted that the Respondent cannot assert that prior to any notice of this dispute it was using, or had made demonstrable preparations to use, the disputed domain name in connection with a bona fide offering of goods or services, in accordance with paragraph 4(c)(i) of the Policy.
It has also asserted that there is no evidence to suggest that the Respondent is commonly known by the disputed domain name, as contemplated by paragraph 4(c)(ii) of the Policy. In particular, the Complainant has submitted that the Respondent's identity is hidden behind a privacy service and while the Respondent's website identifies "Wiseway SIA" as the operator of the website and the public WHOIS and Registrar records subsequently indicated that entity and respectively also “Name Redacted” as the registrants, these names bear no resemblance to the disputed domain name. The Complainant has also asserted that the Respondent's website is clearly intended to be commercial in nature, as evidenced by the pricing indicated for subscriptions to the Respondent's services and that the Respondent is therefore not making a legitimate noncommercial or fair use of the disputed domain name.
The Complainant’s key submission is that the provision of the services offered on the website at the disputed domain name violate the Complainant's “Terms of Use”. It says that content scraped from Instagram's platform may be stored and later used for unauthorised purposes by third parties and that prior UDRP panels have held that such use does not amount to a bona fide offering of goods or services, see Instagram, LLC v. Bar Technologies,WIPO Case No. DME2021-0005. In addition, the Complainant maintains that the tools offered on the Respondent’s website are in breach of Facebook’s Developer Policies in that they bypass the user identification and registration procedures and the downloading that they facilitate goes beyond the limits that the Complainant has placed upon its own product.
The website at the disputed domain name is providing Internet users with access to information on the INSTAGRAM website, through screen scraping and search tools, without any need for them to register on Instagram or to agree to the INSTAGRAM security and website use policies or to comply with its’ usage policies. It is essentially providing a convenient, curated backdoor to the content on Instagram’s website for the benefit of Internet users and for the commercial benefit of the Respondent who charges a subscription fee for access to its services. Although, the Respondent has argued at length that it is somehow entitled to screen scrape the Complainant’s INSTAGRAM website and to provide the services as outlined above on a bona fide basis to third parties because it has no contractual relationship with the Complainant, this rather misses the point.
Operating a business that is based upon scraping and distributing third party content is prima facie not consistent with bona fide business conduct. Neither does the Respondent’s conduct fulfill the Oki Data criteria as described at WIPO Overview 3.0, section 2.8. In particular its conduct is not bona fide because it is based upon and uses the Complainant’s website and user content from that site without permission, but mainly as it is not providing services only in relation to Instagram from its website but also in relation to other platforms, and finally the website disclaimer is certainly not prominent and many Internet users would likely not see it. Finally, the Respondent’s use of a privacy service to mask its identity does not assist it.
The Respondent’s submission that the registrants confirmed by the Registrar are not the beneficial owners, only complicates the picture further. In this regard the Panel notes that it is the Registrar confirmed registrants who are always treated as the domain name registrants, however the Panel does not find it necessary and does not propose to make any findings in relation to the disputed question as to whether one of the Respondents is or was associated with the disputed domain name and website.
Overall, the Panel finds that the Complainant has made out a prima facie case that the Respondent has no rights or interests in the disputed domain name which, for the reasons outlined above, has not been successfully rebutted by the Respondent. Therefore, the Complaint also succeeds under this element of the Policy.
C. Registered and Used in Bad FaithThe Panel finds that the Complainant’s INSTAGRAM mark is highly distinctive and is exclusively associated with the Complainant. It is undoubtedly very well known throughout the world in connection with its online photo-sharing social network and enjoys very considerable reputation and goodwill in many countries worldwide. The Panel agrees with the Complainant that considering this degree of renown and the functions and content, as described above, on the website at the disputed domain name, the Respondent could not credibly argue that it did not have knowledge of the INSTAGRAM mark and the Complainant’s Instagram website when it registered the disputed domain name.
As described under 6.B. above, at the date of the Complaint the Respondent operated a website from the disputed domain name that purposefully targeted the Complainant’s Instagram website and which scraped content from and provided Internet users with various tools and search facilities to enable them to mine information from the site without apparent restriction. There are numerous references to the INSTAGRAM mark and website on the Respondent’s site and the device mark used by the Respondent on its site is remarkably similar to the Complainant’s device mark.
The Panel finds that the Respondent is using the disputed domain name intentionally to confuse and divert Internet users to the Respondent’s website for its own commercial gain. Internet users arriving at the website to which the disputed domain name resolves may be confused into thinking that the site is authorised by or has some connection with the Complainant, particularly in view of the many references to “Instagram” and the various elements of that service and the use of a device mark that looks very similar to the Complainant’s device mark. The Panel agrees with the Complainant that the presence of a disclaimer at the bottom of the Respondent’s website is unlikely to correct an Internet user’s perception and Internet users are likely to be confused before they ever read as far as the disclaimer. The Panel notes also that the Respondent has confirmed that it gains financially from use of the disputed domain name and the website to which it resolves by charging subscription service fees from Internet users.
The Panel finds that these circumstances fulfill the requirements of paragraph 4(b)(iv) of the Policy which amounts to evidence of registration and use in bad faith and the Respondent’s use of a privacy service to conceal its identity only re-affirms the Panel’s view of the Respondent’s bad faith.
Accordingly, the Panel finds that the disputed domain name has been both registered and used in bad faith and that the Complaint also succeeds under this element of the Policy.
7. DecisionFor 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
Alistair Payne
Presiding Panelist
Luca Barbero
Panelist
Dr. Vít Horáček
Panelist
Date: September 21, 2021
1 Based on the evidence on the record in these proceedings, it appears to the Panel that the individual with name redacted is most likely not a respondent in this case. In order to avoid infringing the privacy or other rights of any individual of the same name, the Panel has therefore redacted that name from the Decision.