The Complainant is Instagram, LLC, United States of America, represented by Hogan Lovells (Paris) LLP, France.
The Respondent is Contact Privacy Inc. Customer 0159436021, Canada / Emre Onat, AlSancaks, Turkey.
2. The Domain Name and RegistrarThe disputed domain name
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 28, 2021. On June 29, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 29, 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 30, 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 July 2, 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 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 9, 2021.
The Center appointed Rodrigo Azevedo as the sole panelist in this matter on August 26, 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 BackgroundThe Complainant is the world-renowned online photo and video sharing social networking application Instagram.
The Complainant obtained registrations for the trademark INSTAGRAM in numerous regions of the world, including the United States Trademark Registration Number 4146057, registered on May 22, 2012 (first use in commerce on October 6, 2010); the European Union Trade Mark Registration No. 014493886, registered on December 24, 2015; and the International Trademark Registration Number 1129314, registered on March 15, 2012.
The Respondent registered the disputed domain name
The disputed domain name does not resolve to any active website, but just to an automated warming message informing it is a fraudulent website, connected to phishing practices.
5. Parties’ Contentions A. ComplainantThe Complainant makes the following contentions:
- The disputed domain name is identical or confusingly similar to a trademark in which the Complainant has rights. The disputed domain name incorporates the Complainant’s INSTAGRAM trademark in its entirety with the addition of the descriptive term “privacy” separated by a hyphen. The Complainant asserts that the addition of such descriptive term does not prevent a finding of confusing similarity with its INSTAGRAM trademark, which remains clearly recognizable in the disputed domain name. Moreover, the applicable generic Top-Level Domain (“gTLD”), in this case “.com”, may be disregarded for the purposes of assessment under the first element, as it is viewed as a standard registration requirement.
- The Respondent has no rights or legitimate interests in respect of 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 Respondent is not a licensee of the Complainant, nor has the Respondent been otherwise authorized by the Complainant to make any use of its INSTAGRAM trademark, in a domain name or otherwise. The Complainant has no prior business relationship with the Respondent whatsoever. 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 fact that the disputed domain name is subject to a “deceptive site ahead” warning when access is attempted suggests that the Respondent may use the disputed domain name for fraudulent activities, which cannot be bona fide. The Complainant suspects that the Respondent has attempted or will attempt to obtain personal information from Internet users. Finally, given the renown of the INSTAGRAM trademark, and the nature of the disputed domain name itself, it is not possible to conceive of any plausible actual or contemplated active use of the disputed domain name by the Respondent (or a third party) that would not be illegitimate, as it would inevitably create a false association with the Complainant.
- The disputed domain name was registered and is being used in bad faith. The Complainant’s INSTAGRAM trade mark is well-known internationally. As a result of its longstanding and widespread use, the INSTAGRAM trademark has become exclusively associated with the Complainant. The Complainant submits that when confronted with the combination of the Complainant’s trademark together with the term “privacy”, many Internet users would be confused and wrongly assume that the disputed domain name is owned by or otherwise endorsed by the Complainant. Despite the Complainant’s efforts to contact the Respondent prior to the submission of the present Complaint, the Respondent has not come forward with any response or evidence of bona fide intent in relation to the disputed domain name and it seems unlikely that the Respondent will produce any evidence of actual or contemplated good faith use of the disputed domain name. The Respondent has taken active steps to conceal its identity behind a privacy service operated by the Registrar. In light of the nature of the disputed domain name itself, i.e., the combination of the Complainant’s INSTAGRAM trademark together with the term “privacy”, the disputed domain name carries with it a high risk of implied affiliation with the Complainant. Simply put, the Complainant cannot conceive of any bona fide use that the Respondent could make of the disputed domain name that would not result in creating a misleading impression of association with the Complainant.
B. RespondentThe Respondent did not reply to the Complainant’s contentions.
6. Discussion and FindingsParagraph 4(a) of the Policy provides that in order to be entitled to a transfer of the disputed domain name, a complainant shall prove the following three elements:
(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.
A. Identical or Confusingly SimilarThe Panel has no doubt that “instagram” is a term directly connected with the Complainant’s well-known video and photo sharing online application.
Annex 9 to the Complaint shows trademark registrations for INSTAGRAM obtained by the Complainant as early as in 2012.
The trademark INSTAGRAM is wholly encompassed within the disputed domain name. The disputed domain name differs from the Complainant’s trademark INSTAGRAM merely by the addition of the descriptive term “privacy” separated by a hyphen, as well as of the gTLD extension “.com”, see sections 1.8 and 1.11 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).
Previous UDRP decisions have found that the mere addition of symbols such as a hyphen or of descriptive terms (such as “privacy”) to a trademark in a domain name do not avoid a finding of confusing similarity. This has been held in many UDRP cases (see, e.g., Inter-IKEA Systems B.V. v. Evezon Co. Ltd.,WIPO Case No. D2000-0437; The British Broadcasting Corporation v. Jaime Renteria,WIPO Case No. D2000-0050; Volvo Trademark Holding AB v. SC-RAD Inc.,WIPO Case No. D2003-0601; Wal-Mart Stores, Inc. v. Lars Stork,WIPO Case No. D2000-0628; America Online, Inc. v. Dolphin@Heart,WIPO Case No. D2000-0713; AltaVista Company v. S. M. A., Inc.,WIPO Case No. D2000-0927).
It is already well established that the addition of a gTLD extension such as “.com” is typically irrelevant when determining whether a domain name is confusingly similar to a complainant’s trademark.
As a result, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s trademarks, and that the Complainant has satisfied the first element of the Policy.
B. Rights or Legitimate InterestsParagraph 4(c) of the Policy provides some examples without limitation of how a respondent can demonstrate a right or legitimate interest in a domain name:
(i) before receiving any notice of the dispute, the respondent used or made demonstrable preparations to use the domain name in connection with a bona fide offering of goods or services; or
(ii) the respondent has been commonly known by the domain name; or
(iii) the respondent is making a legitimate noncommercial or fair use of the domain name without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark at issue.
Based on the Respondent’s default and on the prima facie evidence in the Complaint, the Panel finds that the above circumstances are not present in this particular case and that the Respondent has no rights or legitimate interests in the disputed domain name.
The Panel notes that the present record provides no evidence to demonstrate the Respondent’s intent to use or to make preparations to use the disputed domain name in connection with a bona fide offering of goods or services. Indeed, the warning message displayed when trying to access the disputed domain name suggests that the disputed domain name has been used in connection with a fraudulent phishing scheme.
The Complainant has not licensed or authorized the usage of its trademarks to the Respondent, and it does not appear from the present record that the Respondent is commonly known by the disputed domain name. Actually, the Respondent has not indicated any reason to justify why the specific term “instagram-privacy” was chosen to compose the disputed domain name.
Consequently, the Panel is satisfied that the Respondent has no rights or legitimate interests in the disputed domain name, and the Complainant has proven the second element of the Policy.
C. Registered and Used in Bad FaithParagraph 4(b) of the Policy states that the following circumstances in particular, but without limitation, shall be evidence of registration and use of a domain name in bad faith:
(i) circumstances indicating that the respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of documented out-of-pocket costs directly related to the domain name; or
(ii) the respondent registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its 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 its website or location or of a product or service on its website or location.
When the disputed domain name was registered by the Respondent in 2020, the trademark INSTAGRAM was already well-known and directly connected to the Complainant’s photo and video sharing social networking application.
The disputed domain name encompasses the trademark INSTAGRAM. The addition of the term “-privacy” even enhances the risk of confusion in the present case, suggesting that the disputed domain name refers to an official privacy information website of the Complainant.
According to, section 3.1.4 of the WIPO Overview 3.0, UDRP panels have consistently found that the mere registration of a domain name that is identical or confusingly similar to a famous or widely known trademark by an unaffiliated entity can by itself create a presumption of bad faith.
Therefore, the Panel concludes that it is unlikely that the Respondent was not aware of the Complainant’s trademarks and that the adoption of the disputed domain name was a mere coincidence.
Currently, no active website is linked to the disputed domain name, but this is not enough to avoid the Panel’s findings that the disputed domain name is also being used in bad faith.
In the Panel’s view, the circumstances of this case, including:
(a) the Respondent not presently using the disputed domain name;
(b) the Respondent not indicating any intention to use the disputed domain name;
(c) the Respondent not providing justifications for the registration of a domain name containing a third-party famous trademark;
(d) the evidence that the disputed domain name has been used in connection with a fraudulent phishing scheme; and
(e) the lack of any plausible good faith reason for the adoption of the term “instagram-privacy” by the Respondent; are enough in this Panel’s view to characterize bad faith registration and use in the present case.
Accordingly, the Panel finds that the disputed domain name was registered and is being used in bad faith, and the Complainant has also satisfied the third 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
Rodrigo Azevedo
Sole Panelist
Date: September 10, 2021