The Complainant is Instagram, LLC, United States of America (“United States”), represented by Tucker Ellis, LLP, United States of America.
The Respondent is Mehmet Koken, 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 27, 2021. On July 27, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On July 29, 2021, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
The Center sent an email communication in English and Turkish to the parties on July 30, 2021 regarding the language of the proceeding, as the Complaint has been submitted in English and the language of the registration agreement for the disputed domain name is Turkish. The Complainant filed an amended Complaint requesting English to be the language of the proceeding on August 4, 2021. The Respondent did not comment on the language of the proceeding.
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 August 9, 2021. In accordance with the Rules, paragraph 5, the due date for Response was August 29, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 31, 2021.
The Center appointed Gökhan Gökçe as the sole panelist in this matter on September 6, 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 an online photo and video-sharing social networking application. Launched in 2010 and acquired by Facebook, Inc. in 2012, the Complainant has more than five hundred million daily active accounts and more than one billion monthly active users from all over the world. The Complainant’s website “www.instagram.com” is ranked as the twenty-third most visited web sites in the world, according to web information company Alexa. The Complainant provides translation support for over 35 languages as part of its social networking services and mobile application. Pursuant to Annex 6 of the Complaint, in recent years the Instagram mobile application has consistently ranked among the top apps in the market.
The Complainant owns numerous trademark registrations for INSTAGRAM in jurisdictions throughout the world, including in Turkey where the Respondent is based. Such trademark registrations include but are not limited to the following:
- Turkish Trademark No. 2012/85440, INSTAGRAM, registered on April 28, 2015;
- Turkish Trademark No. 2013/74099, INSTAGRAM, registered on May 20, 2015;
- European Union Trademark No. 012111746, INSTAGRAM, registered on March 6, 2014;
- United States Trademark No. 4146057, INSTAGRAM, registered on May 22, 2012;
- European Union Trademark No. 017946393, IG, registered on January 31, 2019.
Pursuant to the Annex 8 of the Complaint, the INSTAGRAM mark ranked 19th in Interbrand’s current Best Global Brands report.
The Respondent is an individual from Turkey. The disputed domain names
The Panel visited the disputed domain names on September 10, 2021 and determined that the disputed domain names were inactive, thus there were no content provided. The websites at the disputed domain names showed the following content in Turkish: “Bu siteye ulaşılamıyor” which translates to “The website cannot be reached”.
5. Parties’ Contentions A. ComplainantThe 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 term “user” does not prevent a finding of confusing similarity with the Complainant’s INSTAGRAM trademark.
The Complainant also states generic Top-Level Domains (“gTLDs”) “.com”, and “.xyz”, should be ignored when assessing the confusing similarity between a trademark and disputed domain names.
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, not licensee of the Complainant, nor has been otherwise authorized or allowed by the Complainant to make any use of its INSTAGRAM trademark in any way.
The Complainant submits that the Respondent has registered the disputed domain names in bad faith, since the Complainant’s trademark INSTAGRAM is distinctive and internationally known. Therefore, the Respondent targeted the Complainant’s trademark at the time of registration of the disputed domain names and the Complainant contends that the passive holding of the disputed domain names qualifies as bad faith registration and use.
B. RespondentThe Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings 6.1. Procedural Issue: Language of ProceedingParagraph 11(a) of the Rules provides that: “Unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding.”
Although the language of the Registration Agreement for the disputed domain names is Turkish, the Complainant argues that the language of the administrative proceeding should be English for the following reasons:
- The disputed domain names are comprised entirely of English words, which suggests that the Respondent understands the English language. Further, the disputed domain names are targeting the Complainant, a United States company, and the Complainant’s famous INSTAGRAM mark;
- Conducting the proceeding in Turkish would create a significant additional expense and delay for the Complainant due to the need for translation of the Complaint into Turkish. Hence, the use of Turkish in the proceeding would impose a burden on the Complainant, which will be excessive given the cost for the present proceeding;
- Numerous previous UDRP panels have already accepted English as the language of the proceeding in cases involving Nics Telekomunikasyon A.S. as the registrar of the disputed domain names (including several prior UDRP cases involving Complainant).
It is established practice to make a decision regarding the language of the proceeding to ensure fairness to the parties and the maintenance of an inexpensive and expeditious avenue for resolving domain name disputes. Language requirements should not lead to undue burdens being placed on the parties and undue delay to the proceeding (see, Solvay S.A. v. Hyun-Jun Shin,WIPO Case No. D2006-0593).
In this case, the Complainant, which is not proficient in Turkish, will have to incur considerable expense if it is forced to translate the Complaint into Turkish. Noting that the Respondent was notified of the present proceeding in both English and Turkish, and noting that the Respondent did not comment on the language of the proceeding, and the Respondent’s subsequent failure to file any substantive response to the Complaint, the Panel determines English to be the language of this proceeding.
6. 2. Substantive IssuesParagraph 15(a) of the Rules requires the Panel to decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.
Under paragraph 4(a) of the Policy, the Complainant bears the burden of showing:
(i) that the disputed domain names are 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 disputed domain names; and
(iii) that the disputed domain names have been registered and are being used in bad faith.
Paragraph 4(a) of the Policy states that the Complainant bears the burden of proving that all these requirements are fulfilled, even if the Respondent has not replied to the Complainant’s contentions. (see, Stanworth Development Limited v. E Net Marketing Ltd.,WIPO Case No. D2007-1228.)
However, concerning the uncontested information provided by the Complainant, the Panel may, where relevant, accept the provided reasonable factual allegations in the Complaint as true. See, section 4.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).
It is further noted that the Panel has taken note of the WIPO Overview 3.0 and, where appropriate, will decide consistent with the WIPO Overview 3.0.
A. Identical or Confusingly SimilarBased on the evidence submitted, the Panel finds that the Complainant has rights in the INSTAGRAM mark.
The trademark INSTAGRAM is wholly encompassed within the disputed domain names. The disputed domain names differ from the Complainant’s trademark INSTAGRAM merely by the addition of the descriptive term “user” separated by hyphens, as well as of the gTLD extensions “.com” and “.xyz”. The Panel further notes that given that the trademark remains clearly recognizable within the disputed domain names, the descriptive term “user” does not prevent a finding of confusing similarity. (See sections 1.8 and 1.11 of the 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 “user”) to a trademark in a domain name do not avoid a finding of confusing similarity. This has been held in many UDRP cases (see, Instagram, LLC v. Omer Ulku,WIPO Case No. D2018-1700, Inter-IKEA Systems B.V. v. Evezon Co. Ltd.,WIPO Case No. D2000-0437; 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).
The Panel has also concluded that the addition of a hyphen is not sufficient to diminish the confusing similarity between disputed domain names and the Complainant's trademark. (See, Scottgames, LLC v. Ong Dai Vu Hao, Tran Tich Quan, Delvin Dragon and Tran Dai,WIPO Case No. D2016-1367)
In view of the above, the Panel is satisfied that the Complainant has met the requirements under paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate InterestsThe Respondent has not provided a response in accordance with the Rules, paragraph 5. By not submitting a Response, the Respondent has failed to invoke any circumstances which could demonstrate any rights or legitimate interests in the disputed domain names. (See, Cash Converters Pty Ltd v. Mirriam Musonda-salati,WIPO Case No. D2014-1839)
The Complainant in its Complaint, and as set out above, has established a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain names. It asserts that the Respondent, who is not associated with the Complainant in any way, is not using the disputed domain names for a legitimate noncommercial or fair use or in connection with a bona fide offering of goods or services.
The prima facie case presented by the Complainant is enough to shift the burden of production to the Respondent to demonstrate that it has rights or legitimate interests in the disputed domain names. However, the Respondent has not presented any evidence of any rights or legitimate interests it may have in the disputed domain names, and the Panel is unable to establish any such rights or legitimate interests based on the evidence in front of it.
Additionally, pursuant to the Annex 11 of the Complaint, the disputed domain names are not in use by the Respondent. Such non-use is not a legitimate noncommercial or fair use under 4(c)(iii) under the Policy.
Moreover, the Panel finds that the composition of the disputed domain names carries a risk of implied affiliation. See WIPO Overview 3.0, section 2.5.1.
The Panel therefore finds that paragraph 4(a)(ii) of the Policy has been satisfied.
C. Registered and Used in Bad FaithThe Panel considers that the Complainant’s trademark INSTAGRAM has been extensively used by the Complainant and had significant goodwill and reputation by the time of the registration of the disputed domain names. The Respondent has registered the disputed domain names that are confusingly similar to the Complainant’s well-known trademark. 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. See section 3.1.4 of the WIPO Overview 3.0.
The Panel is of the opinion that when the Respondent registered the disputed domain names it knew that INSTAGRAM was the trademark of the Complainant and registered the disputed domain names to take advantage of the trademark; accordingly, the Panel finds that the Respondent registered the disputed domain names in bad faith.
As regards the use in bad faith of the disputed domain names, pointing to inactive websites, 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. When the Panel visited the disputed domain names, it resolved to passive pages and the Respondent has not submitted any evidence or suggestion that the Respondent has any intention of using the disputed domain names for any purpose or legitimate activity consistent with good faith use. Paragraph 3.3 of the WIPO Overview 3.0 states that the lack of active use of the domain name does not as such prevent a finding of bad faith.
Additionally, the Panel finds that the Respondent’s failure to respond to the Complaint also supports the conclusion that it has registered and is using the disputed domain name in bad faith. (See, Awesome Kids LLC and/or Awesome Kids L.L.C. v. Selavy Communications,WIPO Case No. D2001-0210.)
For these reasons, the Panel finds that the Complainant has established that the disputed domain names were registered and used in bad faith for the purpose of paragraph 4(a)(iii) 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 names
Gökhan Gökçe
Sole Panelist
Date: September 22, 2021