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 0152196674 / Stefano Scerra, Italy. 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 15, 2021. On June 16, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 16, 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 17, 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 June 28, 2021. In accordance with the Rules, paragraph 5, the due date for Response was July 18, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Commencement of Panel Appointment Process on 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. 014493886 (registered on December 24, 2015) for the word trademark INSTAGRAM, and 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. 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 23, 2018. The Complainant has provided screenshots taken on June 15, 2021, showing that the disputed domain name resolved to a website which purported to provide a tool for viewing content on Instagram without the need for an Instagram account, and for downloading content from Instagram, including stories (which is content meant to be deleted within 24 hours). That website also contained commercial banners and offered coupons for a variety of products. 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 descriptive term “stories” and a hyphen; (ii) the Complainant’s INSTA trademark is immediately recognizable in the disputed domain name as the leading element, and the addition of the descriptive term “stories” and a hyphen does not prevent a finding of confusing similarity; (iii) the disputed domain name is confusingly similar to its INSTAGRAM trademark as “insta” is a distinctive abbreviation of the Complainant’s INSTAGRAM trademark; (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 in a domain name or otherwise; (iii) the website resolving from the disputed domain name provides a tool for viewing content on Instagram without the need for an Instagram account and for downloading content from Instagram, in breach of Instagram’s Terms of Use and Facebook’s Developer Policies; (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 “insta-stories”; (vi) the provision of a tool that allows Internet users to view content on Instagram without using an Instagram account, and to download content from Instagram, does not amount to a legitimate noncommercial or fair use in the form of a fan site or otherwise; 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 INSTA and INSTAGRAM trademarks when registering the disputed domain name in July 2018, by which time the Complainant had amassed over 1 billion monthly active users; (ii) the Respondent’s intent to target the Complainant when registering the disputed domain name may be inferred from the content of the website resolving from it, which makes explicit reference to Instagram and makes prominent use of the Complainant’s trademarks; (iii) 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 viewing content on Instagram without the need for an Instagram account, and for downloading content from Instagram, in violation of Instagram’s Terms of Use and Facebook’s Developer Policies; (iv) the Respondent’s use of the disputed domain name is intended for financial gain, as the website resolving from it contains commercial banners and numerous offers for coupons that contain links to third-party sites, 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 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 (vii) 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 did not reply to the Complainant’s contentions. 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 “stories”. The Complainant’s word trademark is clearly recognizable within the disputed domain name. The addition of a hyphen and the word “stories” 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 provide a tool for viewing content on Instagram without using an Instagram account and for downloading content from Instagram (in contravention of its developer policies), that contained commercial banners, and that offered coupons relating to third parties. 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 several 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 “stories”. 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 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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