The Complainant is Instagram, LLC, United States of America (“United States”), represented by Hogan Lovells (Paris) LLP, France.
The Respondents are Lamb Guzman, 2000, Turkey / Punk Gallardo, 2000, Turkey / Genc Mizaj, 2000, Turkey / Felix La, 2000, Turkey / Asdflsdlfkl Fsdaakslkf, 2000, Turkey.
2. The Domain Names and RegistrarThe disputed domain names
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 8, 2021. On July 9, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On July 13, 2021, the Registrar transmitted by email to the Center its verification response disclosing registrants 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 27, 2021 providing the registrants 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 30, 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 Respondents of the Complaint, and the proceedings commenced on August 4, 2021. In accordance with the Rules, paragraph 5, the due date for Response was August 24, 2021. The Respondents did not submit any response. Accordingly, the Center notified the Respondents’ default on August 30, 2021.
The Center appointed Andrew Brown Q.C. as the sole panelist in this matter on September 9, 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 Instagram, LLC. It operates a world-renowned online photo and video sharing social networking application and website, both known as “Instagram”.
Since its launch in 2010, Instagram rapidly developed considerable goodwill and renown worldwide, with 1 million registered users in the first two months, and over 10 million registered users by September 2011, less than a year after it was launched.
Instagram was acquired by Facebook in April 2012. Instagram then reached over 100 million monthly active users by February 2013, 400 million monthly active users by September 2015, and 800 million monthly active users by September 2017. At the date of this decision, Instagram has more than 1 billion monthly active users. The Complainant’s business is exclusively online.
In addition to its Instagram application (“app”), the Complainant operates a website at “www.instagram.com” which is ranked the 22nd most visited website in the world according to the web information company Alexa. Instagram has consistently been ranked amongst the top applications for mobile devices and has been the recipient of numerous awards, including “App of the Year” in 2011 from Apple Inc.
The Complainant owns numerous trademark registrations for its INSTAGRAM brand around the world, including the following:
(a) United States Trademark No. 4146057, INSTAGRAM, registered on May 22, 2012 (first use in commerce on October 6, 2010);
(b) European Union Trade Mark No. 014493886, INSTAGRAM, registered on December 24, 2015; and
(c) International Trademark No. 1129314, INSTAGRAM, registered on March 15, 2012 (designating, among others, Turkey).
These will be collectively referred to as the “INSTAGRAM Mark”.
The Complainant’s complaint concerns seven disputed domain names:
1)
2)
3)
4)
5)
6)
7)
These will be collectively referred to as the “seven disputed domain names” or individually by their number as set out in the list above. The seven disputed domain names were registered between August 30, 2020 and October 1, 2020 with the Registrar Wild West Domains, LLC.
The disputed domain name 7 resolves to a website which invites users to click on a link saying “visit this unsafe site”, which then redirects users to an inactive website. The disputed domain names 1-4 do not resolve to any active websites, whereas the disputed domain names 5 and 6 resolve to websites displaying sponsored links generating pay-per-click advertising.
The publicly available WhoIs information for the seven disputed domain names is not available, apart from the Registrant Organization “2000”, Registrant State/Province “anlatamam” and “osmangazi” and Registrant Country “Turkey”. All seven disputed domain names have been registered with the same Registrar “Wild West Domains, LLC”, and reseller “Azure”. Six of the disputed domain names list “anlatamam” as the Registrant State/Province, which in Turkish and means “I can’t tell”. The seven disputed domain names were registered within a month of each other.
The websites associated with the seven disputed domain names either point to a deceptive website, or webpages with sponsored links, or do not resolve. All of the seven disputed domain names target and include the Complainant’s INSTAGRAM Mark in its entirety or a misspelled version of the Complainant’s INSTAGRAM Mark.
5. Parties’ Contentions A. ComplainantThe Complainant contends that:
(i) The seven disputed domain names are registered to the same person, or are under the common control by connected parties, and therefore, for reasons of fairness, equity and efficiency, the Complainant is justified in bringing a single consolidated Complaint;
(ii) The seven disputed domain names are identical or confusingly similar to the Complainant’s INSTAGRAM Mark;
(iii) The Respondents have no rights or legitimate interests in the seven disputed domain names; and
(iv) The Respondents have registered and is using the seven disputed domain names in bad faith.
The Complainant states the consolidation of the Complaint is fair and equitable to all Parties because the seven disputed domain names are under common ownership or control; and to require the Complainant to file separate complaints would cause the Complainant to incur considerable additional time and expenses, and would therefore be contrary to the aim of the Policy. It states its arguments concerning the seven disputed domain names are the same.
The Complainant states the seven disputed domain names are confusingly similar to the INSTAGRAM Mark, because:
- the disputed domain name 7 incorporates the Complainant’s INSTAGRAM Mark in its entirety with the addition of the letters “ww” and a hyphen;
- The disputed domain names 1, 2, 4, and 6 incorporate the Complainant’s INSTAGRAM Mark in its entirety with the addition of the descriptive terms “badge”, “form”, “blue”, “help”, “verified”, or “verification”, occasionally separated by hyphens; and
- Although in the disputed domain names 3 and 5 the letter “i” in the INSTAGRAM Mark is replaced by the letter “l” with the addition of the descriptive terms “feedback”, “form”, “help”, “center” and separated by hyphens, they remain confusingly similar to the INSTAGRAM Mark.
The Complainant states its INSTAGRAM Mark is clearly recognizable as the leading element of all seven disputed domain names despite of the misspelled version in the disputed domain names 3 and 5, and that the addition of descriptive terms (1-6) or letters (7) does not prevent a finding of confusing similarity between the seven disputed domain names and the Complainant’s INSTAGRAM Mark.
The Complainant contends that the Respondents lack rights or legitimate interests in the seven disputed domain names, and further that they have registered and are using them in bad faith. The Complainant states the Respondents are not using the seven disputed domain names in connection with bona fide offerings of goods or services, and nor are the Respondents licensees of the Complainant or otherwise authorized to make any use of the INSTAGRAM Mark. The Complainant states it has no prior business relationship with the Respondents whatsoever.
On December 9, 2020, the Complainant states its lawyers sent a cease and desist letter to the Respondent by email in relation to disputed domain name 7
The Complainant asserts that the Respondents registered the seven disputed domain names in bad faith. The Complainant reiterates that its INSTAGRAM Mark is inherently distinctive and well known throughout the world, and therefore states the Respondents could not credibly argue that they did not have prior knowledge of the Complainant’s INSTAGRAM Mark at the time they registered the seven disputed domain names in August-October, 2020. The Complainant further submits that by registering at least seven disputed domain names targeting the Complainant’s INSTAGRAM Mark, the Respondents have engaged in a bad faith pattern of abusive domain name registration.
The Complainant states that the Respondents registered and are using the disputed domain names to create a likelihood of confusion with the Complainant’s INSTAGRAM Mark, and as to the source, sponsorship, affiliation or endorsement of the Respondents’ websites. It states that the presence of the seven disputed domain names in the hands of the Respondents represents an abusive threat hanging over the head of the Complainant.
Although the majority of the seven disputed domain names are not in use, the Complainant states that non-use of the disputed domain names 1-4 is similar to passive holding, should not prevent a finding of bad faith. For the disputed domain names 5 and 6, which are being used to redirect Internet users to parking pages displaying sponsored links, the Complainant states the Respondents are deriving click-through revenue from the presence of such links on the websites and is therefore deriving financial gain from the goodwill associated with the Complainant’s INSTAGRAM Mark. In respect of the disputed domain name 7, which resolves to a landing page warning of a deceptive site ahead, the Complainant expresses concern about the potential for fraudulent activities.
B. RespondentThe Respondents did not reply to the Complainant’s contentions.
6. Discussion and Findings 6.1 Preliminary Issue: ConsolidationThe issue of consolidation of proceedings has been considered by prior UDRP panels and is discussed in the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 4.11.2. Where a complaint is filed against multiple respondents, panels look at:
(i) whether the domain names or corresponding websites are subject to common control, and
(ii) whether the consolidation would be fair and equitable to all parties.
Procedural efficiency also underpins panel consideration of such a consolidation scenario.
The Panel considers the following circumstances demonstrate that the seven disputed domain names are subject to common control:
- According to the WhoIs records, the Registrant Organization listed for all seven disputed domain names is the same person/entity “2000” and the Registrant Country is Turkey.
- All seven disputed domain names have been registered with the same Registrar and reseller.
- Six of the seven disputed domain names list “anlatamam” as the Registrant State/Province, which in Turkish means “I can’t tell”.
- The seven disputed domain names were registered within a month of each other (between August 30, 2020 and October 1, 2020).
- The seven disputed domain names target and include the Complainant’s INSTAGRAM Mark in its entirety or a misspelled version of the Complainant’s INSTAGRAM Mark.
- The six disputed domain names have the same phone number and the remaining disputed domain name has a very similar phone number.
The first element of the two-stage test for consolidation of the proceedings is accordingly satisfied.
The Panel considers consolidation of the proceedings would be fair and equitable to all Parties for the following reasons:
- The Panel has found that the Registrant Organization of the seven disputed domain names is the same entity i.e. “2000”.
- To require the Complainant to file seven separate complaints would cause the Complainant to incur considerable additional time and expenses, which would be contrary to the aim of the Policy to provide a time-and-cost effective means for resolving domain name disputes.
- The Respondents have not responded to the Complaint.
- The Complainant’s arguments concerning the seven disputed domain names are essentially the same and can be conveniently and efficiently dealt with together.
Accordingly, the Panel finds the Complainant was justified in bringing a single consolidated Complaint against the multiple registrants (collectively referred to as the “Respondent”).
6.2 Substantive Issues A. Identical or Confusingly SimilarTurning to the substantive issues, the Panel must first determine whether the seven disputed domain names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights, in accordance with paragraph 4(a)(i) of the Policy.
As noted in section 4, the Complainant owns numerous registered trademarks for the INSTAGRAM Mark (including in Turkey), dating back to 2012 (with first use on October 6, 2010). The Panel finds the Complainant has rights in the INSTAGRAM Mark. Further the evidence shows that the INSTAGRAM Mark is distinctive and very well recognized.
The seven disputed domain names incorporate the Complainant’s INSTAGRAM Mark in its entirety or a misspelled version of the Complainant’s INSTAGRAM Mark (i.e., the mere substitution of the letter “i” with the letter “l”). The seven disputed domain names contain the additional letters “ww”, hyphens, and/or the terms such as “badge”, “form”, “blue”, “help”, “verified”, “verification”, “center”, and “feedback”. The Panel finds that the addition of the letters, hyphens and descriptive terms does not prevent a finding of confusing similarity because the distinctive INSTAGRAM Mark is recognizable in the seven disputed domain names.
Prior UDRP panels have found similarly constructed domain names to be confusingly similar to the trademark at issue. See, e.g., Instagram, LLC v. Azat Oruc and Azat Mordag,WIPO Case No. D2020-1477:
“The addition of the terms ‘help’, ‘verified’, ‘verify’, ‘blue’, ‘badge’ and ‘center’ does not avoid a finding of confusing similarity under the Policy which, as recognized by past UDRP panels, involves a ‘comparison of the domain name and the textual components of the relevant trademark to assess whether the mark is recognizable within the disputed domain name’ (WIPO Overview 3.0, section 1.7).”
The addition of the “.com” generic Top-Level Domain (“gTLD”) may be disregarded for the purposes of assessing confusing similarity, as it is a standard requirement of registration. See WIPO Overview 3.0, section 1.11.1.
The Panel therefore finds that the Complainant has satisfied the first UDRP element, in showing that the seven disputed domain names are confusingly similar to the trademark in which Complainant has rights.
B. Rights or Legitimate InterestsPursuant to paragraph 4(c) of the Policy, the Respondent may establish that it has rights or legitimate interests in the disputed domain name by, among other circumstances, showing any one of the following elements:
(i) that before notice of the dispute, the Respondent used or made demonstrable preparations to use the seven disputed domain names or any names corresponding to the seven disputed domain names in connection with a bona fide offering of goods or services; or
(ii) that the Respondent has been commonly known by the seven disputed domain names, even if it had acquired no trademark or service rights; or
(iii) that the Respondent is making a legitimate noncommercial or fair use of the seven disputed domain names, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The overall burden of proof for establishing that the Respondent has no rights or legitimate interests in respect of the seven disputed domain name lies with the Complainant.
The Complainant has stated, and the Panel accepts, that the Respondent has no rights or legitimate interests in the seven disputed domain names. In this respect, the Panel also accepts that the Respondent is not commonly known by the disputed domain name and has not acquired any rights (registered or otherwise) in the INSTAGRAM Mark or name. The word “Instagram” is widely recognized and denotes solely the Complainant and its services.
Further, the Panel is satisfied that the Respondent is not making a legitimate noncommercial or fair use of the seven disputed domain names, which the Panel notes currently resolve to websites containing pay-per-click advertising (the disputed domain names 5 and 6), displaying warnings of deceptive use (the disputed domain name 7), or do not resolve to websites at all (the disputed domain names 1-4).
The Panel finds that the Complainant has satisfied the burden of establishing a prima facie case that the Respondent has no rights or legitimate interests in the seven disputed domain names and accordingly finds that paragraph 4(a)(ii) of the Policy is satisfied in favor of the Complainant.
The Panel is also entitled to have regard to the lack of any response on this point from the Respondent and the absence of any claim to rights or legitimate interests in any of the seven disputed domain names.
Therefore, the Panel finds that paragraph 4(a)(ii) of the Policy is satisfied in favor of the Complainant.
C. Registered and Used in Bad FaithThe Panel is satisfied that the seven disputed domain names have been registered in bad faith for the following reasons:
(i) The Complainant’s INSTAGRAM Mark is internationally recognized and denotes solely the Complainant and its services. The Respondent ought to have been aware of the Complainant, its INSTAGRAM Mark, and its associated goodwill at the time of registration. A simple trademark or search engine search by the Respondent would have revealed the Complainant’s trademark rights in the INSTAGRAM Mark.
(ii) That the confusing similarity of the seven disputed domain names to the INSTAGRAM Mark and the inclusion of the INSTAGRAM Mark in its entirety or a misspelled version of the INSTAGRAM Mark in the seven disputed domain names suggest the Respondent was in fact aware of the Complainant and its INSTAGRAM Mark at the time of registration. Accordingly, given the lack of genuine use or rights by the Respondent, the Panel finds that the seven disputed domain names were registered for the purposes of purporting to be associated with the Complainant.
(iii) In particular, the disputed domain name 7
(iv) The Panel relies too on the principle established in previous UDRP decisions that the mere registration of a domain name that is identical or confusingly similar (particularly domain names comprising typos or incorporating the mark plus a descriptive term) to a famous or widely-known trademark by someone who has no connection whatsoever with the trademark can by itself create a presumption of bad faith. See section 3.1.4 of the WIPO Overview 3.0.
(v) It is unlikely that the Respondent could make any active use of the seven disputed domain names without creating a false impression of association with the Complainant. See Sony Kabushiki Kaisha (also trading as Sony Corporation) v. Inja, Kil,WIPO Case No. D2000-1409.
(vi) By registering at least seven disputed domain names targeting the Complainant’s trademark, the Respondent has engaged in a bad faith pattern of abusive domain name registration within the meaning of paragraph 4(b)(ii) of the Policy.
(vii) The Respondent has provided false contact information in the WhoIs records by listing “anlatamam” as the Registrant State/Province, as this does not seem to be a geographical location and instead appears to mean “I can’t tell” in Turkish.
The Panel is also satisfied that the seven disputed domain names have been used in bad faith for the following reasons:
(i) As stated above, the mere registration of a domain name that is identical or confusingly similar (particularly domain names comprising typos or incorporating the mark plus a descriptive term) to a famous or widely-known trademark by an unaffiliated entity can by itself create a presumption of bad faith (see section 3.1.4 of the WIPO Overview 3.0). The INSTAGRAM Mark is internationally recognized and famous, and therefore there is a presumption of bad faith by the Respondent.
(ii) The Respondent’s use of the disputed domain names 5 and 6 creates a likelihood of confusion with the INSTAGRAM Mark and is therefore likely to mislead Internet users as to the source, sponsorship, affiliation or endorsement of the disputed domain names 5 and 6.
(iii) The disputed domain names 5 and 6 currently redirect Internet users to websites displaying pay-per-click advertising. The disputed domain names 5 and 6 from which the Respondent is seeking to obtain financial gain derived from the goodwill and reputation attached to the Complainant’s trademark and it constitutes strong evidence of bad faith. See BASF SE v. Zhang Xiao,WIPO Case No. D2017-2200. It is not necessary for the Respondent itself to have profited directly from those commercial links in order to establish bad faith use, see section 3.5 of the WIPO Overview 3.0.
(iv) The disputed domain name 7
“The Respondent’s bad faith registration and use is apparent from the warnings that the disputed domain name resolves to a site that is deceptive and ‘may trick you into doing something dangerous like installing software or revealing your personal information (for example, passwords, phone numbers, or credit cards).’“
(v) On December 9, 2020 the Complainant’s lawyers sent a cease and desist letter to the Respondent by email in relation to the disputed domain name 7
(vi) The Respondent’s apparent non-use of the disputed domain names 1-4 amounts to a passive holding, which does not prevent a finding of use in bad faith. See WIPO Overview 3.0, section 3.3. See also Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003.
(vii) The presence of the seven disputed domain names in the hands of the Respondent represents, in the view of the Panel, an abusive threat hanging over the head of the Complainant (i.e., an abuse capable of being triggered by the Respondent at any time) and therefore a continuing abusive use. See Conair Corp. v. Pan Pin, Hong Kong Shunda International Co. LimitedWIPO Case No. D2014-1564, where the same conclusion was reached.
(viii) In regards to the disputed domain names 3 and 5 (which contain the letter “l” instead of the letter “i” in the INSTAGRAM Mark), the Panel considers the Respondent is unfairly benefitting from the goodwill and reputation in the Complainant’s INSTAGRAM Mark by typosquatting, in order to redirect Internet users who misspell the official INSTAGRAM Mark or domain name, to its websites.
(ix) The Panel is entitled to have regard to the lack of any response on this point from the Respondent.
7. DecisionFor the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the seven disputed domain names,
Andrew Brown QC
Sole Panelist
Date: September 23, 2021