Complainant is Instagram, LLC., United States of America (“United States” or “US”), represented by Hogan Lovells (Paris) LLP, France.
Respondent is Axe Cap, Axe Capital Holdings LLC, United States.
2. The Domain Name and RegistrarThe disputed domain name
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 9, 2021. On September 10, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 10, 2021, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact information.
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 Respondent of the Complaint, and the proceedings commenced on October 5, 2021. In accordance with the Rules, paragraph 5, the due date for Response was October 25, 2021. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on November 4, 2021.
The Center appointed Lorelei Ritchie as the sole panelist in this matter on November 25, 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 BackgroundComplainant is a global provider of social networking apps and services. Launched in 2010, Instagram was acquired by Facebook, Inc in 2012. Complainant owns several registrations for its INSTAGRAM mark, including in the United States where Respondent lists an address of record. These include, among others, US Registration No. 4146057 for INSTAGRAM (Registered May 22, 2012).
The disputed domain name was registered on October 17, 2014. The disputed domain name is not currently linked to an active website. Respondent nevertheless has no affiliation with Complainant, nor any license to use its marks.
5. Parties’ Contentions A. ComplainantComplainant contends that (i) the disputed domain name is identical or confusingly similar to Complainant’s trademarks, (ii) Respondent has no rights or legitimate interests in the disputed domain name; and (iii) Respondent registered and is using the disputed domain name in bad faith.
Specifically, Complainant contends that it owns the INSTAGRAM mark, which is “highly distinctive and is well known internationally.” Complainant further contends that its social media platform offered under the INSTAGRAM mark currently services over 1 billion monthly active users, and its main website, “www.instagram.com”, is ranked as the 21st most visited in the world. Complainant contends that Respondent lacks rights or legitimate interest in the disputed domain name, and rather has registered and is using it in bad faith, having simply acquired the disputed domain name for Respondent’s own commercial gain.
B. RespondentRespondent did not reply to Complainant’s contentions.
6. Discussion and Findings A. Identical or Confusingly SimilarThe Panel must first determine whether the disputed domain name
Numerous UDRP panels have agreed that supplementing or modifying a trademark with dictionary terms does not make a domain name any less “identical or confusingly similar” for purposes of satisfying this first prong of paragraph (4)(a)(i) of the Policy. See, for example, Microsoft Corporation v. Step Web,WIPO Case No. D2000-1500 (
The Panel therefore finds that the disputed domain name is identical or confusingly similar to a trademark in which Complainant has rights in accordance with paragraph (4)(a)(i) of the Policy.
B. Rights or Legitimate InterestsThe Panel next considers whether Complainant has shown that Respondent has no “rights or legitimate interest,” as must be proven to succeed in a UDRP dispute. Paragraph 4(c) of the Policy gives examples that might show rights or legitimate interests in a domain name. These examples include: (i) use of the domain name “in connection with a bona fide offering of goods or services”; (ii) demonstration that respondent has been “commonly known by the domain name”; or (iii) “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”.
No evidence has been presented to the Panel that might support a claim of Respondent’s rights or legitimate interests in the disputed domain name, and Respondent has no license from, or other affiliation with, Complainant. Therefore, the Panel finds that Complainant has provided sufficient evidence of Respondent’s lack of “rights or legitimate interests” in accordance with paragraph 4(a)(ii) of the Policy, which Respondent has not rebutted.
C. Registered and Used in Bad FaithThere are several ways that a complainant can demonstrate that a domain name was registered and used in bad faith.
As noted in Section 4 of this Panel’s decision, the disputed domain name is not currently linked to an active website. It is nevertheless well established that having a passive website does not necessarily shield a respondent from a finding of bad faith. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), Section 3.3, which notes that the “non-use of a domain name” does not necessarily negate a finding of bad faith. Rather, a panel must examine “the totality of the circumstances,” including, for example, whether a complainant has a well-known trademark, and whether a respondent conceals his/her identity and/or replies to the complaint. Respondent here did not formally respond to the Complaint, nor to correspondence from Complainant regarding Respondent’s registration and use of the disputed domain name. Furthermore, Complainant has demonstrated a high level of consumer exposure to its marks in jurisdictions around the world. See, for example, Instagram, LLC v. Asim Ibrahim, WIPO Case No. D2020-2552; and Instagram, LLC v. Fabrettin Turgut, WIPO Case No. D2020-2751. Given the level of exposure of Complainant’s marks and of its social networking services, the Panel finds sufficient evidence that Respondent was aware of them at the time of registering the disputed domain name.
Therefore, the Panel finds that Respondent registered and used the disputed domain names in bad faith for purposes 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 name
Lorelei Ritchie
Sole Panelist
Date: December 7, 2021