The Complainant is Instagram, LLC, United States of America (“United States”), represented by Hogan Lovells (Paris) LLP, France.
The Respondent is Whois Privacy, Private by Design, LLC, United States / Ayesh Karunaratne, Sri Lanka. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 9, 2021. On July 12, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On the same day, 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 July 15, 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 16, 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 22, 2021. In accordance with the Rules, paragraph 5, the due date for Response was August 11, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 13, 2021. The Center appointed Matthew Kennedy as the sole panelist in this matter on August 23, 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 provides the Instagram online photo and video sharing social networking application, which was launched on October 6, 2010. By November 2014, Instagram had over 150 million monthly active users and it currently has over one billion monthly active users. The Complainant owns multiple trademark registrations in multiple jurisdictions, including the following registrations: - International registration number 1129314 for INSTAGRAM, registered on March 15, 2012, specifying goods and services in classes 9 and 42; The Complainant has placed a limit on the functionality of Instagram which prevents users from downloading content from the application. The Instagram Terms of Use include the following terms: [The user] “can't do anything to interfere with or impair the intended operation of the Service” and [The user] “can't attempt to create accounts or access or collect information in unauthorized ways”. The Respondent is a web developer originally from Sri Lanka. The disputed domain name was registered on November 23, 2014. According to evidence provided by the Complainant, the disputed domain name resolved to a website offering a tool to download content from Instagram, such as photos and videos, since the day after its registration. The site was originally titled “DownloadGram – Instagram photo/video download assistant” which was later updated to “DownloadGram – Instagram Photo, Video, IGTV, and Reel downloader”. The site displayed a black and white circular version of the Instagram logo as a favicon in the address bar. The site offered a video demonstration tutorial explaining how to use DownloadGram. The site introduced the Respondent and his web development projects, displayed a link to a page about him, and provided his email address and an online form through which Internet users could get in touch for questions, comments, business offers or to socialize. After the Complainant’s legal representative sent a first cease-and-desist letter on June 29, 2021, the disputed domain name began to redirect to another domain name that resolved to a similar website offering the same software tool without apparently referring to the Respondent. The Registrar confirmed that the language of the Registration Agreement is English. 5. Parties’ Contentions A. Complainant The disputed domain name is confusingly similar to the Complainant’s GRAM and INSTAGRAM trademarks. The Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent is not a licensee of the Complainant. The Respondent is not affiliated with the Complainant in any way. The Complainant has not granted any authorization for the Respondent to make use of its trademarks or any variation thereof, in a domain name or otherwise. The provision of the Respondent’s tool violates Facebook’s Developer Policies and also places the privacy and security of Instagram users at risk. The disputed domain name was registered and is being used in bad faith. 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 it resolved immediately upon registration. It appears that the Respondent has engaged in a pattern of bad faith registrations. He previously registered the domain name The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings Paragraph 4(a) of the Policy provides that the Complainant must prove each of the following elements: (i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and Based on the evidence presented, the Panel finds that the Complainant has rights in the GRAM and INSTAGRAM marks. The disputed domain name wholly incorporates the GRAM mark. It also adds the word “download” as its initial element. Given that the mark remains clearly recognizable within the disputed domain name, the addition of this other word does not avoid a finding of confusing similarity. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.8. The Panel takes note that this mark was registered later than the disputed domain name but will consider that issue in relation to bad faith in Section 6.C below. The disputed domain name also incorporates the “gram” part of the INSTAGRAM mark. Although “gram” is a dictionary word and part of certain words such as “telegram”, when used as a suffix as in “downloadgram” it is highly recognizable today as part of the INSTAGRAM mark. The Panel considers that the broader case context supports a finding of confusing similarity between the disputed domain name and the INSTAGRAM mark. The Panel takes note that the content of the website to which the disputed domain name resolves prominently refers to INSTAGRAM and offers a tool for use with that application. This evidence confirms that the Respondent is seeking to target the INSTAGRAM trademark through the disputed domain name and affirms the finding of confusing similarity. See WIPO Overview 3.0, section 1.7, and 1.15. Therefore, the Panel finds that the disputed domain name is confusingly similar to a trademark in which the Complainant has rights. The Complainant has satisfied the first element in paragraph 4(a) of the Policy. B. Rights or Legitimate Interests Paragraph 4(c) of the Policy sets out the following circumstances which, without limitation, if found by the panel, shall demonstrate that the respondent has rights to, or legitimate interests in, a disputed domain name, for the purposes of paragraph 4(a)(ii) of the Policy: (i) before any notice to [the respondent] of the dispute, [the respondent’s] use of, or demonstrable preparations to use, the [disputed] domain name or a name corresponding to the [disputed] domain name in connection with a bona fide offering of goods or services; or (ii) [the respondent] (as an individual, business, or other organization) [has] been commonly known by the [disputed] domain name, even if [the respondent has] acquired no trademark or service mark rights; or (iii) [the respondent is] making a legitimate non-commercial or fair use of the [disputed] domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue. As regards the first circumstance set out above, the disputed domain name formerly resolved to a website offering a software tool for free but the site was also used to promote the Respondent’s web development services and to attract “business offers”. The disputed domain name now redirects to another website that offers the same software tool. Both websites display a modified version of the Instagram logo as a favicon in the address bar. The Complainant submits that the Respondent is not a licensee of the Complainant or affiliated with it in any way and that it has not authorized the Respondent to use its trademarks or any variation thereof in a domain name or otherwise. The Panel considers that the Complainant has made a prima facie case that the Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services. As regards the second circumstance, the Respondent’s name is “Ayesh Karunaratne”, not the disputed domain name. There is no evidence indicating that the Respondent has been commonly known by the disputed domain names. As regards the third circumstance, the Respondent was using the disputed domain name to promote his own web development services attract business offers up until the time that the Complainant’s legal representative sent a letter of demand. Accordingly, the Panel does not consider that the Respondent is making a legitimate noncommercial or fair use of the disputed domain name under the Policy. In summary, the Panel considers that the Complainant has made a prima facie case that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent failed to rebut that prima facie case because he did not respond to the Complaint. Therefore, based on the record of this proceeding, the Panel finds that the Complainant has satisfied the second element in paragraph 4(a) of the Policy. C. Registered and Used in Bad Faith Paragraph 4(b) of the Policy provides that certain circumstances, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith. The fourth circumstance is as follows: (iv) by using the [disputed] domain name, [the respondent has] intentionally attempted to attract, for commercial gain, Internet users to [the respondent’s] 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 [the respondent’s] website or location. As regards registration, the disputed domain name was registered in 2014, before the GRAM mark. None of the evidence in the record indicates that the Respondent could have targeted the GRAM mark at the time of registration of the disputed domain name. However, the disputed domain name was registered after the INSTAGRAM mark, to which the Panel has also found it confusingly similar (see Section 6.A above). The INSTAGRAM trademark was already well-known by the time the Respondent registered the disputed domain name due to the exponential growth in the number of its monthly active users by that time. The website to which the disputed domain name resolved from the day after its registration prominently referred to INSTAGRAM and offered a tool for use with that application. It also displayed a modified version of the Instagram logo as a favicon. There is little doubt that the Respondent was aware of the INSTAGRAM mark when he registered the disputed domain name and that he targeted that mark. As regards use, the disputed domain name – which is confusingly similar to the GRAM and INSTAGRAM marks – formerly and currently resolves to websites offering a software tool for use. The Respondent’s own website, to which the disputed domain name formerly resolved, was also used to promote his web development services and attract “business offers”. After the Complainant’s legal representative sent a letter of demand, the disputed domain name began redirecting to another website that offers the same software tool but does not appear to refer to the Respondent, which evidences an attempt to evade a finding under the Policy. The Respondent provides no explanation as to why either use of the disputed domain name should be considered legitimate. Accordingly, the Panel considers that these circumstances fall within the terms of paragraph 4(b)(iv) of the Policy. Therefore, the Panel finds that the disputed domain name has been registered and is being used in bad faith. The Complainant has satisfied the third element in paragraph 4(a) 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 Matthew Kennedy
- United States trademark registration number 4,146,057 for INSTAGRAM, registered on May 22, 2012, specifying goods in class 9;
- European Union Trade Mark number 14493886 for INSTAGRAM, registered on August 20, 2015, specifying goods and services in classes 25, 35, 38, 41 and 45;
- European Union Trade Mark number 015442502 for a figurative mark claimed in colors (the “Instagram logo”), registered on September 21, 2016, specifying goods and services in classes 9, 25, 35, 38, 41, 42, 45;
- European Union Trade Mark number 015868797 for GRAM, registered on January 12, 2017, specifying goods in class 9; and
- European Union Trade Mark number 017642729 for GRAM, registered on March 23, 2019, specifying goods and services in classes 16, 18, 21, 24, 25, 35, 41, 42, 43 and 45.
(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 Similar
The disputed domain name includes a generic Top-Level Domain (“gTLD”) “.com”, which is a technical requirement of domain name registration. As such, a gTLD is normally disregarded in the comparison between a disputed domain name and a trademark for the purposes of the first element of the Policy.
Sole Panelist
Date: September 6, 2021
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