The Complainant is Instagram, LLC, United States of America (“United States”), represented by Hogan Lovells (Paris) LLP, France.
The Respondent is Aleksey E Sumin, Russian Federation. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on June 17, 2021. On June 17, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 24, 2021, the Registrar transmitted by email to the Center its verification disclosing registrant and contact information for the disputed domain name, which differed from the named Respondent and contact information in the Complaint. The Registrar also informed of the Russian language of the Registration Agreement. The Center sent an email communication to the Complainant on June 24, 2021, providing the registrant with contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed amended Complaint on June 28, 2021. On June 24, 2021, the Center sent an email communication regarding the language of the proceeding in both Russian and English. On June 24, 2021, the Complainant requested English language to be the language of the proceedings for the reasons listed in the Complaint. The Respondent did not submit any comments. 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 in English and Russian, and the proceedings commenced on July 12, 2021. In accordance with the Rules, paragraph 5, the due date for Response was August 1, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 4, 2021. The Center appointed Ganna Prokhorova as the sole panelist in this matter on August 6, 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 company organized under the laws of the United States, which operates the online photo and video sharing social network application “Instagram”. The Complainant owns numerous trademark registrations for INSTA and INSTAGRAM in many jurisdictions throughout the world, including but not limited to the following: - United States Registration No. 5,061,916, INSTA, registered on October 18, 2016; - European Union Trade Mark No. 014810535, INSTA, registered on May 23, 2018; - United States Registration No. 4,146,057, INSTAGRAM, registered on May 22, 2012; - European Union Trade Mark No. 14493886, INSTAGRAM, registered on December 24, 2015; - International Registration No. 1129314, INSTAGRAM, registered on March 15, 2012; - European Union Trade Mark No. 015442502 (fig. mark), registered on September 21, 2016. The Complainant has evidenced to own various domain names relating to its company name, brand, and trademarks, inter alia, the domain name The Respondent, according to the disclosed WhoIs information for the disputed domain name, is a resident of Russian Federation who registered the disputed domain name on December 13, 2019, which resolves to a website at “www.instalkr.com” purporting to provide a tool for viewing content on Instagram, such as likes, comments, posts, stories, and subscriptions even if this content has been deleted. 5. Parties’ Contentions A. Complainant The Complainant holds a world-renowned online photo- and video-sharing social-networking application called Instagram. Since its launch in 2010, Instagram has rapidly acquired and developed considerable goodwill and renown worldwide. Today the Complainant is the world’s fastest growing photo- and video-sharing and editing software and online social network, with more than 1 billion monthly active accounts worldwide. The Complainant’s website available at “www.instagram.com” is ranked the 25th most visited website in the world, according to web information company Alexa. Given the exclusive online nature of the Complainant’s business, the Complainant’s domain names consisting of its trademark are not only the heart of its business but also a primary way for its millions of users to avail themselves of its services. 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”). In addition to its strong presence online, the Complainant has secured ownership of numerous trademark registrations for INSTA and INSTAGRAM in many jurisdictions throughout the world. The disputed domain name resolves to a website which purports to provide a tool for viewing content on Instagram, such as likes, comments, posts, stories and subscriptions even if this content has been deleted. The main page of the Respondent’s website states: “Instalkr.com allows you to absolutely anonymously view Instagram Stories, track all account changes, new subscriptions, stories, comments, likes and posts. Our InstaStalker will show you even deleted posts and user stories. You will receive detailed information in the form of daily reports of all changes to the Instagram profile you are interested in.” The Respondent’s website also offers a tool to download content from Instagram. Notably, it allows users to download Instagram stories, whereas this type of content is meant to be deleted within 24 hours. The Respondent’s website also includes commercial banners and offers “package tracking” for a fee. These packages purportedly enable users to monitor and save published stories, posts, comments, and likes for a price of between USD 0.7 a day for 15 days of monitoring and USD 2 a day for three days of monitoring. Further, the Respondent’s website contains a disclaimer at the bottom stating that the service offered is not associated with Instagram. In addition, the website associated with the disputed domain name displays a logo, which is a modified version of the Complainant’s trademark, on the website and as a favicon in the address bar. Further, the website itself uses the same distinctive gradient colour palette as the Complainant’s trademark. The Complainant contends as follows: (1) The disputed domain name is confusingly similar to the Complainant’s INSTA and INSTAGRAM trademarks. (2) The Respondent has no rights or legitimate interests in the disputed domain name. The Complainant has not granted permission to use its INSTA and INSTAGRAM trademarks. The Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services. The Respondent is not commonly known by the disputed domain name. (3) The Respondent registered and is using the disputed domain name in bad faith. The Respondent, having no authorization from or other affiliation with the Complainant, registered the disputed domain name in bad faith in full knowledge of the Complainant’s rights. 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 Domain Name resolves, which make explicit reference to Instagram and make prominent use of the Complainant’s trademarks. The Complainant seeks a decision that the disputed domain name be transferred to the Complainant. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings 6.1. Preliminary Issue: Language of Proceedings Paragraph 11(a) of the Rules provides that “unless otherwise agreed by the Parties, or specified otherwise in the registration agreement, the language of the administrative proceeding shall be the language of the registration agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding.” The Complainant has filed the Complaint in English and requested English to be the language of this proceeding. The language of the Registration Agreement for the disputed domain name is Russian. The Panel is proficient in both Russian and English. The Complainant believes that the Respondent has sufficient command of English to participate in the proceedings, understands relevant documentation and communication, which is supported by the following: (i) The Domain Name has been registered under the “.com” gTLD. (ii) The Domain Name is composed of Latin script (i.e. not Cyrillic characters) and identically reproduces the Complainant’s INSTA trademark as well as an abbreviation of its INSTAGRAM trademark. (iii) The Domain Name includes what appears to be a contraction of the Complainant’s trademark INSTA and the English term “stalker”. Further, the website to which the Domain Name resolves is entirely in English, from which the Complainant infers that the Respondent is familiar with the English language and will not suffer any unfair prejudice if English is adopted as the language of the proceedings. (iv) Conversely, it would be disproportionate to require the Complainant not to submit the present Complaint in English as this would result in additional expense and unnecessary delay for the Complainant for translation. As it was earlier found by other UDRP panels, while applying the provision on the language of the proceeding the Panel considers that it should be also ensured that the parties are treated equally, that each party is given a fair opportunity to present its case and that the proceeding takes place with due expedition. The Respondent has not provided any arguments or supporting materials as to why the proceedings should not be conducted in English. This was despite the Center notifying the Respondent in Russian and English that the Respondent was invited to present his objection to the proceedings being held in English and if the Center did not hear from the Respondent by a certain date, the Center would proceed on the basis that the Respondent had no objection to the Complainant’s request that English be the language of the proceedings. The Respondent had the opportunity to raise objections or make known his preference but did not do so. While there is a language requirement in paragraph 11(a) of the Rules, the Panel has to balance that against the other considerations of ensuring that the proceeding takes place with due expedition and that the parties are treated fairly and given a fair opportunity to present their case. The Panel is of the view that the language requirement should not cause any undue burden on the parties or undue delay. See Facebook Inc. v. Protection of Private Person, REG.RU Protection Service / Nikita Sakhnenko,WIPO Case No. D2019-0870 and Instagram, LLC and WhatsApp, LLC v. Sergienko Mihail Aleksandrovich and Novruzov Elshan Sadagatovich,WIPO Case No. D2021-1125. Based on the foregoing, the Panel agrees with the Complainant’s arguments and concludes that it is not unfair to the Parties to proceed in English finding that it is appropriate to exercise its discretion and allowing the proceedings to be conducted in English. 6.2. Substantive Issues To succeed in a UDRP complaint, the Complainant has to demonstrate that all the elements listed in paragraph 4(a) of the Policy have been satisfied, namely: (i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and (ii) the respondent has no rights or legitimate interests in respect of the disputed domain name; and (iii) the disputed domain name has been registered and is being used in bad faith. The Respondent had 20 days to submit a response in accordance with paragraph 5(a) of the Rules and failed to do so. Paragraph 5(f) of the Rules establishes that if a respondent does not respond to the Complaint, the Panel’s decision shall be based upon the Complaint. The Complainant bears the burden of proving that all these requirements are fulfilled, even if the Respondent has not replied to the Complainant’s contentions. See Stanworth Development Limited v. E Net Marketing Ltd.,WIPO Case No. D2007-1228. However, even if the Respondent has not replied to the Complainant’s contentions, the Complainant still bears the burden of proving that all these requirements are fulfilled. Concerning the uncontested information provided by the Complainant, the Panel may, where relevant, accept the provided reasonable factual allegations in the Complaint as true. See, section 4.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”). See Accenture Global Services Limited v. Withheld for Privacy Purposes, Privacy service provided by Withheld for Privacy ehf / William James, WIPO Case No. D2021-1034. It is further noted that the Panel has taken note of the WIPO Overview 3.0 and, where appropriate, will decide consistent with the consensus views captured therein. A. Identical or Confusingly Similar The Panel concludes that the disputed domain name is confusingly similar to the INSTA trademark, as well as to the INSTAGRAM trademark, in which the Complainant has rights. According to paragraph 4(a)(i) of the Policy it should be established that the disputed domain name is identical or confusingly similar to a mark in which the Complainant has rights. The Complainant owns numerous trademark registrations for INSTA and INSTAGRAM in jurisdictions throughout the world. The Complainant has therefore established trademark rights in INSTA and INSTAGRAM for the purposes of paragraph 4(a)(i) of the Policy. The disputed domain name incorporates the Complainant’s INSTA trademark in its entirety with the addition of the letters “lkr” which appears to be a contraction of “insta” and “stalker” under the gTLD “.com”. As stated in WIPO Overview 3.0, section 1.8: “Where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element. The nature of such additional term(s) may however bear on assessment of the second and third elements.” The Panel finds that the Complainant’s INSTA trademark is immediately recognizable in the disputed domain name as the leading element, and that the addition of the letters “lkr” to the Complainant’s INSTA trademark does not prevent a finding of confusing similarity. Prior UDRP panels have found similarly-constructed domain names to be confusingly similar to the trademark at issue. See Philip Morris USA Inc. v. Samurai Kapok and 1,WIPO Case No. D2016-2179, Instagram, LLC v. Registration Private, Domains By Proxy, LLC / Aditya DUBEY,WIPO Case No. D2020-1217. As far as the INSTAGRAM trademark is concerned, the disputed domain name incorporates at least a prominent feature of said trademark and may be considered confusingly similar thereto for purposes of standing under the UDRP (see WIPO Overview 3.0, section 1.7). Therefore, the Panel also finds that the disputed domain name is confusingly similar to the Complainant’s INSTAGRAM trademark, in that the disputed domain name comprises “insta” – a distinctive abbreviation of the Complainant’s INSTAGRAM trademark. Prior UDRP panels have found disputed domain names containing distinctive elements of Complainants’ trademarks to be confusingly similar to the trademarks at issue. See Instagram, LLC v. Registration Private, Domains By Proxy, LLC / Aditya DUBEY,WIPO Case No. D2020-1217, Supercell Oy v. Reza Zarif,WIPO Case No. D2020-2786. 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, UDRP 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 trademark through the disputed domain name. See WIPO Overview 3.0, section 1.15. The Panel therefore finds that the contents of the Respondent’s website make it clear that the Respondent has sought to target the Complainant’s trademarks through the disputed domain name. See Instagram LLC (Instagram), WhatsApp Inc. (WhatsApp) v. Domain Admin, Whois Privacy Corp. / Sergey Popov,WIPO Case No. D2019-2809. The addition of the “.com” gTLD may be disregarded for the purposes of assessing confusing similarity, as it is a standard requirement of registration. Therefore, the Panel considers the requirements of the first element of paragraph 4(a)(i) of the Policy to be satisfied. B. Rights or Legitimate Interests The Complainant submits that the Respondent has no rights or legitimate interests in the Domain Name. As noted in WIPO Overview 3.0, section 2.1: “While the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the often impossible task of ‘proving a negative’, requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element.” The Complainant has asserted sufficient allegations to make a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name. The Complainant asserts that the Respondent is unable to invoke any of the circumstances set out in paragraph 4(c) of the Policy that would demonstrate its rights or legitimate interests in the disputed domain name. The Panel finds that the Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services within the meaning of paragraph 4(c)(i) of the Policy. The Respondent is neither a licensee of the Complainant, nor affiliated with the Complainant in any way. The Complainant has not granted any authorization for the Respondent to use its INSTA and INSTAGRAM trademarks, in a domain name or otherwise. The website at the disputed domain name provides a tool for viewing and downloading content from Instagram, without the need for an Instagram account. Therefore, the Panel concludes that such use of the disputed domain name does not amount to a bona fide offering of goods or services within the meaning of paragraph 4(c)(i) of the Policy. Furthermore, 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. The disputed domain name is not being used in the promotion of any business or any other online service that might give rise to the Respondent being commonly known by the disputed domain name. The Respondent’s use of the disputed domain name does not support any reasonable claim of being commonly known by the disputed domain name, nor does it give rise to any reputation in the disputed domain name itself, independent of the Complainant’s trademark rights. The Panel is of the view that the provision of a tool that allows Internet users to view without using an Instagram account and download content from Instagram does not amount to legitimate noncommercial or fair use in the form of a fan site or otherwise. In view of the above and in the lack of any plausible explanation to the contrary, it appears more likely to the Panel that the Respondent has registered the disputed domain name targeting the Complainant’s INSTA trademark and has used it in an attempt to attract Internet users to its website offering illegitimate services. In the Panel’s view, such conduct cannot give rise to rights or legitimate interests of the Respondent in the disputed domain name. See Instagram, LLC v. Private WhoIs, Global Domain Privacy Services Inc / Aleksandr Lyahevich, Private Person,WIPO Case No. D2021-0463. Consequently, the burden shifts to the Respondent to rebut the prima facie showing by providing concrete evidence that it has rights or legitimate interests in the disputed domain name. The Respondent, however, has failed to file a response to prove its rights or legitimate interests in the disputed domain name under paragraph 4(c) of the Policy. For all of the above reasons, the Panel therefore finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name. Therefore, the requirements of paragraph 4(a)(ii) of the Policy have been satisfied. C. Registered and Used in Bad Faith The Panel has found that the disputed domain name was registered and is being used in bad faith. According to paragraph 4(a)(iii) of the Policy it should be established that the disputed domain name has been registered and is being used in bad faith. Paragraph 4(b) of the Policy lists several circumstances that, without limitation, are deemed to be evidence of the registration and use of a domain name in bad faith. Those circumstances include, particularly: “(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your 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 your website or location or of a product or service on your website or location.” The Panel agrees with the Complainant that the Respondent could not credibly argue that it did not have knowledge of Instagram or its INSTA and INSTAGRAM trademarks when registering the disputed domain name in December 2019, by which time Instagram had amassed over 1 billion monthly active users. In fact, the Respondent’s intent to target the Complainant when registering the Domain Name may be inferred from the contents of the website to which the Domain Name resolves, which make explicit reference to Instagram and make prominent use of the Complainant’s trademarks. See Instagram, LLC v. Whois privacy protection service / Olga Sergeeva / Ivan Ivanov /Privacy Protect, LLC (Privacy Protect.org),WIPO Case No. D2020-0521, Instagram, LLC v. Abdunnur Rustem, Global Taekwondo Federation,WIPO Case No. D2018-2037. Accordingly, the Complainant submits that the Respondent, having no authorization from or other affiliation with the Complainant, registered the disputed domain name in bad faith in full knowledge of the Complainant’s rights. The Panel agrees with this submission. The Complainant submits that the Respondent’s use of the Domain Name is intended for financial gain, in accordance with paragraph 4(b)(iv) of the Policy. As described above, the Respondent’s website offers “package tracking” for a fee which purportedly allows users to monitor and save content from Instagram. Prior UDRP panels have found that such use constitutes bad faith. See Instagram, LLC v. Domain Admin, Whois Privacy Corp. and Ferhat Sizer,WIPO Case No. D2019-1431. Further, the fact that the Respondent’s website displays commercial banners – from which the Respondent is likely obtaining financial gain – shows that the Respondent’s use of the disputed domain name is clearly intended for commercial gain and therefore constitutes additional evidence of bad faith use. See FC2, Inc. v. Host Master, 1337 Services LLC,WIPO Case No. D2019-2669. Moreover, the disputed domain name is being used to point to a website displaying a modified version of the Complainant’s trademark and using a similar colour scheme, thereby creating a misleading impression of association with the Complainant in bad faith. The presence of a disclaimer at the bottom of the Respondent’s website does not serve to render the Respondent’s activities bona fide, as the Respondent’s website clearly creates a misleading impression of endorsement by the Complainant. The Panel therefore accepts that the Complainant is correct in asserting that the Respondent’s activity falls within the scope of paragraph 4(b)(iv) of the Policy and that these are circumstances that provide evidence of bad faith registration and use. In light of the above facts and reasons, the Panel determines that the disputed domain name was registered and is being used in bad faith, and that the Complainant has satisfied the condition set out in 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 disputed domain name Ganna Prokhorova
Sole Panelist
Date: August 20, 2021
Full & Egal Universal Law Academy