The Complainant is Instagram, LLC, United States of America (“United States”), represented by Hogan Lovells (Paris) LLP, France.
The Respondent is Whois Privacy Service Protects this domain, Soluciones Corporativas IP, c/o Whois Proxy, Spain / Jose Luis Martinez, Spain. 2. The Domain Names and Registrar
The disputed domain names The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 5, 2021. On July 5, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On July 6, 2021, the Registrar transmitted by email to the Center its verification response registrant and contact information for the disputed domain names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on July 6, 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 9, 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 20, 2021. In accordance with the Rules, paragraph 5, the due date for Response was August 9, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 12, 2021. The Center appointed Daniel Peña as the sole panelist in this matter on August 24, 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 an online photo and video-sharing social networking application. Launched in 2010 and acquired by Facebook, Inc. in 2012, the Complainant has 1 billion monthly active users and 500 million daily active users, with more than 95 million photos and videos shared per day. The Complainant’s website is ranked as the 29th most visited website in the world, according to web information company Alexa. The Complainant owns numerous trademark registrations for INSTAGRAM in jurisdictions throughout the world, such trademark registrations include but are not limited to the following: - European Union Trademark Registration No. 012111746, INSTAGRAM, registered on March 6, 2014; The disputed domain names were all registered on September 13, 2021, and resolve to Registrar parking pages. 5. Parties’ Contentions A. Complainant The Complainant has ranked amongst the top “apps” for mobile devices, including for iOS and Android operating systems. Instagram has been the recipient of numerous awards, including “App of the Year” in 2011 from Apple Inc. Instagram is currently the 3rd most downloaded app worldwide, according to applications information company App Annie. In 2020, Instagram was ranked 19th in Interbrand’s Best Global Brands. The Complainant requests the transfer of the disputed domain names. The Complainant is of the opinion that the disputed domain names are confusingly similar to its INSTAGRAM trademark. The Complainant asserts that the addition of the descriptive terms “analytics”, “software”, “bot”, “web”, “email”, “scraper”, “followers”, “app”, “growth”, “hack”, “phone”, “numbers”, “profile”, “hashtag”, “online”, “stories”, and “tool” do not prevent a finding of confusing similarity with the Complainant’s INSTAGRAM trademark. The Complainant also states that the generic Top-Level Domains (“gTLDs”) “.com” and “.net” should be ignored when assessing the confusing similarity between a trademark and a domain name. The Complainant is of the opinion that the Respondent has no rights or legitimate interests in the disputed domain names. The Respondent is not known under these names, nor is it a licensee of the Complainant, nor has the Respondent been otherwise authorized or allowed by the Complainant to make any use of its INSTAGRAM trademark in any way. The Complainant asserts that the disputed domain names were registered and are being used in bad faith. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings To succeed, the Complainant must demonstrate that all of the elements listed in paragraph 4(a) of the Policy have been satisfied: (i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; Considering these requirements, the Panel rules as follows: A. Identical or Confusingly Similar The Panel finds that the disputed domain name is confusingly similar to the Complainant’s trademarks. The Respondent’s incorporation of the Complainant’s trademark in full in the disputed domain name is evidence that the disputed domain name is confusingly similar to the Complainant’s marks. Mere addition of the terms “analytics”, “software”, “bot”, “web”, “email”, “scraper”,“followers”, “app”, “growth”, “hack”, “phone”, “number”, “profile”, “hashtag”, “online”, “stories”, and “tool” in the disputed domain names does not prevent a finding of confusing similarity with the Complainant’s marks. Furthermore, the addition of the gTLDs “.com” and “.net” can be ignored for purposes of the first element, since they are standard registration requirements in the domain name system. The Panel is satisfied that the disputed domain name is confusingly similar to the Complainant’s mark and the Complainant has satisfied the requirement of paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests Pursuant to paragraph 4(a)(ii) of the Policy, the Complainant must prove that the Respondent has no rights or legitimate interests in respect of the disputed domain names. The Complainant argues that the Respondent has no rights or legitimate interests in respect of the disputed domain names. The Complainant bears the burden of proof in establishing this requirement. In view of the potential difficulties inherent in proving a negative and because the relevant information is mainly in the possession of the Respondent, it is enough for the Complainant to establish a prima facie case which, if not rebutted by sufficient evidence from the Respondent will lead to this ground being met. The Panel will now examine the Complainant’s arguments regarding the absence of rights or legitimate interests of the Respondent in connection with the disputed domain names. The Complainant claims that the Respondent has not received any license or consent, express or implied, to use the Complainant’s trademarks in a domain name or in any other manner. The Respondent is not making a legitimate noncommercial or fair use of the disputed domain names. These domain names, which incorporate the Complainant’s trademark in its entirety, resolve to an identical registrar parking page. The disputed domain names all consist of the Complainant’s INSTAGRAM trademark in its entirety, together with terms often associated with Complainant’s services (i.e., “followers”, “app”, “profile scraper”, “stories”, “hashtag”, etc.). The construction of the disputed domain name is such to carry a risk of implied affiliation, which in the circumstances cannot confer rights or legitimate interests upon the Respondent. The Respondent did not rebut the Complainant’s contentions and did not demonstrate any rights or legitimate interests in the disputed domain names. Furthermore, the disputed domain names are not used. The Panel finds the Respondent has no rights or legitimate interests in respect of the disputed domain names and that paragraph 4(a)(ii) of the Policy is satisfied. C. Registered and Used in Bad Faith Paragraph 4(b) of the Policy states that any of the following circumstances, in particular but without limitation, shall be considered evidence of the registration and use of a disputed domain name in bad faith: (i) circumstances indicating that the respondent registered or acquired the domain name primarily for the purpose of selling, renting or otherwise transferring the domain name registration to the complainant (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; (ii) the respondent has 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; (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 the respondent’s website or location or of a product or service on its website or location. In the Panel’s view, a finding of bad faith may be made where the Respondent “knew or should have known” of the registration and/or use of the trademark prior to registering the disputed domain name. In this case, the worldwide recognition of the trademark INSTAGRAM is such that the Respondent must have had knowledge of the trademark before registering the disputed domain name. Regarding the use in bad faith of the disputed domain names, pointing to a parking page, the Panel considers that bad faith may exist even in cases of so-called “passive holding”, as found in the landmark UDRP decision Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003. In the circumstances of this case, the Panel finds that such passive holding does not prevent a finding of bad faith. Based on these factors, and in the absence of a rebuttal of these submissions, the Panel finds that the totality of the circumstances warrant a determination that the disputed domain names were registered and used in bad faith. Accordingly, the Panel finds that the Respondent registered and used the disputed domain names in bad faith and Complainant succeeds under the third element of paragraph 4(b) 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 names, Daniel Peña
- United States Trademark Registration No. 4146057, INSTAGRAM, registered on May 22, 2012;
- International Trademark Registration No. 1129314, INSTAGRAM, registered on March 15, 2012.
(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.
Sole Panelist
Date: September 7, 2021
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