The Complainant is Instagram, LLC, United States of America, represented by Hogan Lovells (Paris) LLP, France.
The Respondent is saleh alfadaghi, Kuwait.
2. The Domain Name and RegistrarThe disputed domain name
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 17, 2021. On August 18, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 19, 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 the Complainant on August 20, 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 August 24, 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 August 24, 2021. In accordance with the Rules, paragraph 5, the due date for Response was September 13, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 16, 2021.
The Center appointed Tuukka Airaksinen as the sole panelist in this matter on September 29, 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 service provider. The Complainant’s service was launched in 2010 and currently has more than one billion monthly users.
The Complainant owns the trademark INSTAGRAM, which is registered, inter alia, as a European Union Trade Mark No 014493886 on December 24, 2015.
The disputed domain name was registered on June 10, 2020. The disputed domain name resolves to a pay-per-click (“PPC”) website containing links to third parties’ websites.
5. Parties’ Contentions A. ComplainantThe disputed domain name includes the Complainant’s trademark in its entirety, with the addition of the descriptive term “shop” separated by a hyphen.
The Respondent is not a licensee of or affiliated with the Complainant. The Complainant has not granted any authorization for the Respondent to make use of the Complainant’s trademark, in a domain name or otherwise. The Respondent is not making any legitimate noncommercial or fair use of the disputed domain name.
The Complainant’s trademark is well-known throughout the world as held by prior UDRP Panels. The disputed domain name resolves to a PPC website creating revenue for the Respondent or another when Internet users click on the links.
B. RespondentThe Respondent did not reply to the Complainant’s contentions.
6. Discussion and FindingsIn order to obtain the transfer of a domain name, a complainant must prove the three elements of paragraph 4(a) of the Policy, regardless of whether a respondent files a response to the complaint or not. The first element is that the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights. The second element the complainant must prove is that the respondent has no rights or legitimate interests in respect of the domain name. The third element the complainant must establish is that the domain name has been registered and is being used in bad faith.
A. Identical or Confusingly SimilarParagraph 4(a)(i) of the Policy requires that the Complainant establish that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights. Consequently, the Complainant must prove that it has rights to a trademark, and that the disputed domain name is identical or confusingly similar to this trademark.
According to section 1.11 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), “The applicable Top Level Domain (“TLD”) in a domain name (e.g., “.com”, “.club”, “.nyc”) is viewed as a standard registration requirement and as such is disregarded under the first element confusing similarity test”.
Furthermore, “where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element. The nature of such additional term(s) may however bear on assessment of the second and third elements”. See section 1.8 of the WIPO Overview 3.0.
The disputed domain name is otherwise identical with the Complainant’s trademark, with the exception that the word “shop” and a hyphen are also included in the disputed domain name. The word “shop” is merely a descriptive term and a meaningless addition to the Complainant’s trademark INSTAGRAM and as such does not remove similarity between the Complainant’s trademark and the disputed domain name.
This means that the disputed domain name is confusingly similar with the Complainant’s trademark and hence the first element of the Policy has been fulfilled.
B. Rights or Legitimate InterestsParagraph 4(a)(ii) of the Policy requires that the Complainant establish that the Respondent has no rights or legitimate interests to the disputed domain name.
It is widely accepted among UDRP panels that once a complainant has made a prima facie showing indicating the absence of the respondent’s rights or legitimate interests in a disputed domain name the burden of proof shifts to the respondent to come forward with evidence of such rights or legitimate interests. If the respondent fails to do so, the complainant is deemed to have satisfied the second element of the Policy. See, e.g., Document Technologies, Inc. v. International Electronic Communications Inc.,WIPO Case No. D2000-0270, and section 2.1 of the WIPO Overview 3.0.
The Complainant has credibly submitted that the Respondent is neither affiliated with the Complainant in any way nor has it been authorized by the Complainant to use and register the disputed domain name, that the Respondent has no prior rights or legitimate interests in the disputed domain name, and that the Respondent has not made and is not making a legitimate noncommercial or fair use of the disputed domain name and is not commonly known by the disputed domain name in accordance with paragraph 4(c)(ii) of the Policy.
Moreover, the Panel finds that the nature of the disputed domain name carries a high risk of implied affiliation with the Complainant’s trademark. See section 2.5.1 of the WIPO Overview 3.0.
Accordingly, the Panel finds that the Complainant has made a prima facie case that has not been rebutted by the Respondent. Considering the Panel’s findings below, the Panel finds that there are no other circumstances that provide the Respondent with any rights or legitimate interests in the disputed domain name. Therefore, the Panel finds that the second element of the Policy is fulfilled.
C. Registered and Used in Bad FaithParagraph 4(a)(iii) of the Policy requires that the Complainant establish that the disputed domain name has been registered and is being used in bad faith. Paragraph 4(b) of the Policy provides that the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
“(i) circumstances indicating that [the respondent has] registered or has acquired the domain name primarily for the purpose of selling, renting or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of [the respondent’s] documented out-of-pocket costs directly related to the domain name; or
(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; or
(iii) [the respondent has] registered the domain name primarily for the purpose of disrupting the business or competitor; or
(iv) by using the 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.”
Considering that the Complainant has been using and registering its trademark worldwide for over ten years and that the trademark has been held by previous UDRP panels to be well known, it is evident that the Respondent must have been aware of the Complainant’s trademark when registering the disputed domain name. Accordingly, the Panel finds that the disputed domain name was registered in bad faith.
The disputed domain name resolves to a PPC website containing links to third parties’ websites thus generating revenue for the Respondent or another party when Internet users click the links.
It is therefore evident that the Respondent has registered the disputed domain name to intentionally attract, for commercial gain, Internet users to the Respondent’s website by creating a likelihood of confusion with the Complainant’s mark as to the source, affiliation, or endorsement of the Respondent’s website.
Therefore, the Panel finds that the third element of the Policy is fulfilled.
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 name
Tuukka Airaksinen
Sole Panelist
Date: October 13, 2021