Complainant is Instagram, LLC, United States of America (“United States”), represented by Tucker Ellis, LLP, United States.
Respondent is On behalf of instagramcdn.net owner, Whois Privacy Service, United States / Lucy Prepe, United States. 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 30, 2021. On June 30, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 2, 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 Complainant on July 3, 2021, providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on July 8, 2021. The Center verified that the Complaint together with the amended Complaint (hereinafter, 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 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. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on September 5, 2021. The Center appointed M. Scott Donahey as the sole panelist in this matter on September 7, 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 Complainant is the operator of social networking service and mobile application, which enables users to create personal profiles, post phots and videos and communicate with each other on their mobile devices. Complainant has more than five hundred million active daily account and more than one billion monthly active users from around the world. Complaint, Annex 4. Complainant’s website at “www.instagram.com” is currently the twenty-third most visited website in the world. Complaint, Annex 5. Complainant provides translation support for over 35 languages as part of its social networking services and has consistently ranked among the top apps in the Internet world. Complaint, Annex 6. Since 2018, Complainant has offered payment services to its users through Complainant’s Checkout feature, which allows its users to purchase items through Instagram’s mobile application. Complaint, Annex 7. In 2020, Complainant introduced its Instagram Shop feature, which provides payment services through Facebook Pay. Complaint, Annex 8. This feature allows its users to make purchases from sellers, book appointments, donate to causes, and pay for Instagram ads. Complaint, Annex 9. This feature has been the subject of articles in the media. Complaint, Annex 7. Complainant is the owner and operator of numerous websites incorporating its INSTAGRAM mark, which Complainant has used for more than ten years. Its trademark registrations date back to May 22, 2012, in the United States (United States Registration No. 4146057) (Complaint, Annex 13), and to March 15, 2012, in 9 jurisdictions, including China and Japan (International Registration No. 1129314). Complaint, Annex 14. Its trademark registrations of the INSTAGRAM mark in the European Union date back to as early as March 6, 2014 (European Union Trade Mark Registration No. 012111746). Complaint, Annex 14. Complainant is using the sequence “cdn” with its INSTAGRAM trademark in domain names, such as Respondent registered the disputed domain name on April 10, 2021. Complaint, Annex 1. The disputed domain name currently resolves to a page indicating that the site cannot be reached. Complaint, Annex 15. 5. Parties’ Contentions A. Complainant Complainant asserts that the disputed domain name is confusingly similar to its INSTAGRAM mark. Complainant alleges that Respondent has no rights or legitimate interests in respect to the disputed domain name. Complainant contends that Respondent has registered and is using the disputed domain name in bad faith in that Respondent is not making a legitimate, noncommercial, or fair use of the disputed domain name. B. Respondent Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings “A Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.” Paragraph 4(a) of the Policy directs that the complainant must prove each of the following: (i) that the domain name registered by the respondent is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and (ii) that the respondent has no rights or legitimate interests in respect of the domain name; and (iii) that the domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar The disputed domain name includes Complainant’s well-known INSTAGRAM trademark and attaches the “cdn” acronym used by Complainant following Complainant’s mark, which does not prevent a finding of confusing similarity. Moreover, the disputed domain name effectively mimics Complainant’s previously registered domain names. Accordingly, the Panel finds that the disputed domain name is confusingly similar to Complainant’s well-known trademark. B. Rights or Legitimate Interests While the overall burden of proof in UDRP proceedings is on the complainant, UDRP panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the almost 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. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 2.1. In the present case Complainant alleges that Respondent has no rights or legitimate interests in respect of the disputed domain name and Respondent has failed to assert any such rights. Accordingly, the Panel finds that Respondent has no rights or legitimate interests in respect of the disputed domain name. C. Registered and Used in Bad Faith Respondent is not using the disputed domain name in the making of a bona fide offer of goods or services. In fact, Respondent is not using the disputed domain name at all. Where one can make no conceivable legitimate use of a domain name, it has long been held that the domain name has been registered and is being used in bad faith. Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003. Accordingly, the Panel finds that the disputed domain name in the present case 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 M. Scott Donahey
Sole Panelist
Date: September 20, 2021
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