The Complainant is Instagram, LLC, United States of America (“United States” or “U.S.”), represented by Hogan Lovells (Paris) LLP, France.
The Respondents are Devin Squaz, Pro Hacker, sufiyan khan, and Free Man, India; Stark Tony, jay rey, Instagram, Betaal 96, Wynn Dietzler, Arturo M taylor, and ADSD NIGer, United States; Whois Privacy Protection Foundation, Netherlands / jack ma, United States; Whois Privacy Protection Foundation, Netherlands /mert eren şerifoğlu, Turkey.
2. The Domain Names and RegistrarThe disputed domain names
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 18, 2021. On August 18, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On August 19, 2021, the Registrar transmitted by email to the Center its verification response disclosing 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 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 30, 2021. In accordance with the Rules, paragraph 5, the due date for Response was September 19, 2021. Accordingly, the Center notified the Respondent’s default on September 21, 2021.
The Center sent Regarding Notification of Complaint emails to the Respondent on September 27, 2021. The due date of Response was October 7, 2021. The Respondent did not submit any response. Accordingly, the Center informed the Parties that it would proceed with the panel appointment process on October 10, 2021.
The Center appointed Edoardo Fano as the sole panelist in this matter on October 19, 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.
The Panel has not received any requests from the Complainant or the Respondents regarding further submissions, waivers or extensions of deadlines, and the Panel has not found it necessary to request any further information from the Parties.
Having reviewed the communication records in the case file provided by the Center, the Panel finds that the Center has discharged its responsibility under the Rules, paragraph 2(a), “to employ reasonably available means calculated to achieve actual notice to the Respondent”. Therefore, the Panel shall issue its Decision based upon the Complaint, the Policy, the Rules and the Supplemental Rules and without the benefit of a response from the Respondent.
The language of the proceeding is English, being the language of the Registration Agreements, as per paragraph 11(a) of the Rules.
4. Factual BackgroundThe Complainant is Instagram, LLC, a U.S. company providing a world-famous online photo and video sharing social networking application, founded in 2010 and acquired by Facebook, Inc. in 2012, owning several trademark registrations for INSTAGRAM, including:
- International Trademark Registration No. 1129314 for INSTAGRAM, registered on March 15, 2012, designating Turkey among other countries;
- United States Trademark Registration No. 4146057 for INSTAGRAM, registered on May 22, 2012 (first use in commerce on October 6, 2010);
- European Union Trade Mark Registration No. 014493886 for INSTAGRAM, registered on December 24, 2015.
The Complainant operates on the Internet at its main website “www.instagram.com”, registered on June 4, 2004, as well as with many other domain names including the trademark INSTAGRAM with generic Top‑Level Domains (“gTLDs”) and country code Top-Level Domains (“ccTLDs”).
The Complainant provided evidence in support of the above.
According to the WhoIs records, the disputed domain names were registered on the following dates:
The Complainant states that the disputed domain names are confusingly similar to its trademark INSTAGRAM, as they wholly contain the Complainant’s trademark with the addition of the descriptive terms “security” and “mail”, separated by hyphens for some of them, and with the letter “i” substituted by the letter “l” for three of them.
Moreover, the Complainant asserts that the Respondents have no rights or legitimate interests in respect of the disputed domain names since they have not been authorized by the Complainant to register the disputed domain names or to use its trademark within the disputed domain names; they are not commonly known by the disputed domain names; and they are not making either a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain names.
The Complainant submits that the Respondents have registered the disputed domain names in bad faith, since the Complainant’s trademark INSTAGRAM is distinctive and internationally known. Therefore, the Respondents 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 Respondents have made no reply to the Complainant’s contentions and is in default. In reference to paragraphs 5(e) and 14 of the Rules, no exceptional circumstances explaining the default have been put forward or are apparent from the record.
A respondent is not obliged to participate in a proceeding under the Policy, but if it fails to do so, reasonable facts asserted by a complainant may be taken as true, and appropriate inferences, in accordance with paragraph 14(b) of the Rules, may be drawn (see, e.g., Reuters Limited v. Global Net 2000, Inc.,WIPO Case No. D2000-0441; Microsoft Corporation v. Freak Films Oy,WIPO Case No. D2003-0109; SSL International PLC v. Mark Freeman,WIPO Case No. D2000-1080; Altavista Company v. Grandtotal Finances Limited et. al.,WIPO Case No. D2000-0848; Confédération Nationale du Crédit Mutuel, Caisse Fédérale du Crédit Mutuel Nord Europe v. Marketing Total S.A., WIPO Case No. D2007-0288).
6. Discussion and FindingsParagraph 4(a) of the Policy lists three elements, which the Complainant must satisfy in order to succeed:
(i) the disputed domain names are identical or confusingly similar to a trademark or service mark in which the Complainant have rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain names; and
(iii) the disputed domain names have been registered and are being used in bad faith.
A. Consolidation of Multiple RespondentsThe amendment to the Complaint was filed against twelve registrants, and the Complainant has requested consolidation of multiple respondents. No objection to this request was made by the Respondents.
Pursuant to the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 4.11.2, “[w]here a complaint is filed against multiple respondents, panels look at whether (i) the domain names or corresponding websites are subject to common control, and (ii) the consolidation would be fair and equitable to all parties. Procedural efficiency would also underpin panel consideration of such a consolidation scenario”. The Panel may consider a range of factors to determine whether consolidation is appropriate, such as examining relevant registrant contact information, and any naming patterns in the disputed domain names, or other evidence of respondent affiliation that indicate common control of the disputed domain names.
The Complainant notes that all the disputed domain names have been registered with the same Registrar over a period of two months and they make use of the same name servers and of the same IP address, following all of them a very similar naming pattern. Moreover, the disclosed information for the multiple Respondents largely consists of evidently false names and contact information to which the Center’s physical communications were not delivered. The Panel finds that there is sufficient evidence that the disputed domain names are subject to common control, and that it would be procedurally efficient, fair, and equitable to all Parties to accept the Complainant’s consolidation request. The Panel further notes that the Respondents did not object to the consolidation request. The Panel therefore accepts the Complainant’s consolidation request.
B. Identical or Confusingly SimilarThe Panel finds that the Complainant is the owner of the trademark INSTAGRAM both by registration and acquired reputation and that the disputed domain names are confusingly similar to the trademark INSTAGRAM.
Regarding the addition of hyphens and of the terms “security” and/or “mail”, the Panel notes that it is now well established that the addition of terms or letters to a domain name does not prevent a finding of confusing similarity between the disputed domain name and the trademark (see, e.g., Aventis Pharma SA., Aventis Pharma Deutschland GmbH v. Jonathan Valicenti,WIPO Case No. D2005-0037; Red Bull GmbH v. Chai Larbthanasub,WIPO Case No. D2003-0709; America Online, Inc. v. Dolphin@Heart, WIPO Case No. D2000-0713). Therefore, the addition of hyphens and of the terms “security” and “mail” does not therefore prevent the disputed domain names from being confusingly similar to the Complainant’s trademark (see “WIPO Overview 3.0”, section 1.8).
Regarding the substitution of the letter “i” with the letter “l” in the Complainant’s trademark for three of the disputed domain names, the Panel notes that it consists of a typical case of deliberate misspelling of a mark (so-called “typosquatting”), by adding, deleting, substituting or reversing the order of letters in a mark, where numerous UDRP panels in the past have found confusing similarity to be present, see, inter alia, Yurtici Kargo Servisi A.S. v. Yurticicargo Yurticikargo, WIPO Case No. D2003-0707; CareerBuilder, LLC v. Azra Khan,WIPO Case No. D2003-0493; The Sportsman’s Guide, Inc. v. Vipercom, WIPO Case No. D2003-0145; Neuberger Berman Inc. v. Alfred Jacobsen, WIPO Case No. D2000-0323. The substitution of the letter “i” with the letter “l” for three of the disputed domain names does not therefore prevent the disputed domain names from being confusingly similar to the Complainant’s trademark and can be considered as a case of typosquatting (see “WIPO Overview 3.0”, section 1.9).
It is also well accepted that a generic Top-Level Domain (“gTLD”), in this case “.com”, “info”, “org”, and “net”, may be ignored when assessing the confusing similarity between a trademark and a domain name (see “WIPO Overview 3.0”, section 1.11).
The Panel finds that the Complainant has therefore met its burden of proving that the disputed domain names are confusingly similar to the Complainant’s trademark, pursuant to the Policy, paragraph 4(a)(i).
C. Rights or Legitimate InterestsThe Respondents failed to file a response in accordance with the Rules, paragraph 5.
The Complainant in its Complaint, and as set out above, has established a prima facie case that the Respondents have no rights or legitimate interests in the disputed domain names. It asserts that the Respondents, who are not currently associated with the Complainant in any way, are 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 disputed domain names all consists of the Complainant’s trademark, or a typosquatting variation thereof, combined with the terms “security” and/or “mail”. Accordingly, the nature of the disputed domain names is such to imply the ownership, sponsorship, or endorsement of the Complainant and such risk of implied affiliation cannot constitute fair use. See section 2.5.1 of the WIPO Overview 3.0.
The prima facie case presented by the Complainant is enough to shift the burden of production to the Respondents to demonstrate that they have rights or legitimate interests in the disputed domain names. However, the Respondents have not presented any evidence of any rights or legitimate interests they may have in the disputed domain names, and the Panel is unable to establish any such rights or legitimate interests on the basis of the evidence in front of it.
The Panel therefore finds that paragraph 4(a)(ii) of the Policy has been satisfied.
D. Registered and Used in Bad FaithParagraph 4(b) of the Policy provides that “for the purposes of paragraph 4(a)(iii) of the Policy, 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 the complainant, for valuable consideration in excess of its documented out-of-pocket costs directly related to the domain name; or
(ii) that [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) that [the respondent has] registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) that 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”.
Regarding the registration in bad faith of the disputed domain names, the reputation of the Complainant’s trademark INSTAGRAM in the field of online photo and video sharing social network application is clearly established and the Panel finds that the Respondents likely knew of the Complainant and deliberately registered the disputed domain names. The typosquatting of the Complainant’s widely-known trademark for three of the disputed domain names affirms the finding of bad faith registration.
As regards the use in bad faith of the disputed domain names, which are currently inactive, 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.
The Panel finds that the Complainant has presented evidence to satisfy its burden of proof with respect to the issue of whether the Respondent has registered and is using the disputed domain names in bad faith.
The Panel therefore finds that paragraph 4(a)(iii) of the Policy has been satisfied.
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
Edoardo Fano
Sole Panelist
Date: October 29, 2021