The Complainant is Instagram, LLC, United States of America (“United States” or “U.S.”), represented by Hogan Lovells (Paris) LLP, France.
The Respondent is Laimonas Naradauskas, IBF Software Ltd, United Kingdom.
2. The Domain Name and RegistrarThe disputed domain name
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 27, 2021 in relation to the disputed domain name and the domain name
On September 11, 2021, the Center received an informal communication from a support address connected to the Respondent Organization disclosed for the disputed domain name. On September 13, 2021, the Respondent sent an informal communication. The Center verified that the 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 September 13, 2021. On September 14, 2021, the Center received a communication from a third party.
The proceeding was suspended from September 29, 2021, to December 26, 2021 for purposes of settlement discussions concerning the domain name
On December 23, 2021, the Complaint filed an amended Complaint excluding
On December 27, 2021, the proceeding was reinstituted and the Response due date was January 1, 2022.
The Respondent did not submit any formal response. Accordingly, pursuant to paragraph 6 of the Rules, on January 5, 2022, the Center notified the Parties that it would proceed to Panel Appointment.
The Center appointed Edoardo Fano as the sole panelist in this matter on January 17, 2022. 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 Respondent 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 formal response from the Respondent.
The language of the proceeding is English, being the language of the Registration Agreement, 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, among which:
- International Trademark Registration No. 1129314 for INSTAGRAM, registered on March 15, 2012;
- United States Trademark Registration No. 4146057 for INSTAGRAM, registered on May 22, 2012;
- European Union Trade Mark Registration No. 014493886 for INSTAGRAM, registered on December 24, 2015.
The Complainant operates on the Internet at the main website “www.instagram.com”, as well as with many other generic Top-Level Domains (“gTLDs”) and country code Top-Level Domains (“ccTLDs”) including the trademark INSTAGRAM.
The Complainant provided evidence in support of the above.
According to the WhoIs records, the disputed domain name was registered on June 26, 2018, and it resolves to a website providing a range of paid and unpaid services, using the Complainant’s trademark and similar colors as those used on the Complainant’s website.
5. Parties’ Contentions A. ComplainantThe Complainant states that the disputed domain name
Moreover, the Complainant asserts that the Respondent has no rights or legitimate interests in respect of the disputed domain name since it has not been authorized by the Complainant to register the disputed domain name or to use its trademark within the disputed domain name, it is not commonly known by the disputed domain name and it is not making either a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name.
The Complainant submits that the Respondent has registered the disputed domain name 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 name and the Complainant contends that the use of the disputed domain name with the purpose of intentionally attempting to attract, for commercial gain, Internet users to the Respondent’s website by creating a likelihood of confusion with the Complainant’s trademark as to the disputed domain name’s source, sponsorship, affiliation or endorsement, qualifies as bad faith registration and use.
B. RespondentThe Respondent has made no formal reply to the Complainant’s contentions.
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).
In this case, the Respondent submitted one informal email communication on September 13, 2021, stating the following:
“Hi, We do not own or have any rights to instagrambot.com Kind regards” (September 13, 2021).
In the informal communication received from a support address connected to the Respondent Organization, sent on September 11, 2021, the following was stated:
“Hi Domain, Unfortunately, we only provide support in English at this moment in time. How can I help you? Thanks” (September 11, 2021).
On September 14, 2021, a third party contacted the Center stating that the disclosed “Registrant Organization” for the domain name
Paragraph 4(a) of the Policy lists three elements, which the Complainant must satisfy in order to succeed:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(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 SimilarThe Panel finds that the Complainant is the owner of the trademark INSTAGRAM both by registration and acquired reputation and that the disputed domain name
Regarding the addition of the element “botfollower”, 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). The addition of the element “botfollower” does not therefore prevent the disputed domain name from being confusingly similar to the Complainant’s trademark. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.8.
It is also well accepted that a gTLD, in this case “.com”, may be ignored when assessing the 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 name is confusingly similar to the Complainant’s trademark, pursuant to the Policy, paragraph 4(a)(i).
B. Rights or Legitimate InterestsParagraph 4(a)(ii) of the Policy requires the Complainant to prove that the Respondent has no rights or legitimate interests in the disputed domain name.
The Respondent may establish a right or legitimate interest in the disputed domain name by demonstrating in accordance with paragraph 4(c) of the Policy any of the following circumstances, in particular but without limitation:
“(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.”
According to paragraph 4(a) of the Policy, the Complainant has the burden of proving the three elements of the Policy. However, satisfying the burden of proving a lack of the Respondent’s rights or legitimate interests in respect of the disputed domain name according to paragraph 4(a)(ii) of the Policy is potentially quite difficult, since proving a negative circumstance is always more complicated than establishing a positive one. As such, it is well accepted that it is sufficient for the Complainant to make a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name in order to shift the burden of production on the Respondent. If the Respondent fails to demonstrate rights or legitimate interests in the disputed domain name in accordance with paragraph 4(c) of the Policy or on any other basis, the Complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy.
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 name. It asserts that the Respondent is not currently associated with the Complainant in any way, is not commonly known by the disputed domain name and is not making a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name: the Respondent, in the website at the disputed domain name, is offering tools for unauthorized downloading of Instagram content, and promotes paid services to be used in connection with the Instagram platform, an activity capitalizing on the Complainant’s trademark and reputation.
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 name. However, the Respondent has failed to file a formal response in accordance with the Rules, paragraph 5, and has not rebutted the Complainant’s prima facie case. The Respondent has not presented any evidence of any rights or legitimate interests it may have in the disputed domain name, 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.
C. 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 name, the reputation of the Complainant’s trademark INSTAGRAM in the field of online photo and video sharing social networking application is clearly established and the Panel finds that the Respondent likely knew of the Complainant and deliberately registered the disputed domain name, especially because the disputed domain name resolves to a website where the Complainant’s trademark and colors are reproduced and explicit reference to the Complainant is made.
The Panel further notes that the disputed domain name is also used in bad faith since on the relevant website the Complainant’s trademark and colors are displayed, with the purpose of intentionally attempting to create a likelihood of confusion with the Complainant’s trademark as to the disputed domain name’s source, sponsorship, affiliation or endorsement.
The above suggests to the Panel that the Respondent intentionally registered and is using the disputed domain name in order to create confusion with the Complainant’s trademark and attract, for commercial gain, Internet users to its website in accordance with paragraph 4(b)(iv) of the Policy.
Furthermore, the Panel considers that the nature of the disputed domain name, which is almost identical to the Complainant’s trademark with the mere addition of the element “botfollower”, further supports a finding of bad faith. See, WIPO Overview 3.0, section 3.2.1.
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 name 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 name
Edoardo Fano
Sole Panelist
Date: January 27, 2022