The Complainant is Instagram, LLC, United States of America (“United States”), represented by Tucker Ellis, LLP, United States.
The Respondent is Privacy Inc. Customer 0159656204, United States / Hasan Yilmaz, Yilmaz Holding, 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 25, 2021. On September 27, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On September 27, 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 September 30, 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 October 5, 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 October 6, 2021. In accordance with the Rules, paragraph 5, the due date for Response was October 26, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 27, 2021.
The Center appointed Lynda M. Braun as the sole panelist in this matter on November 9, 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 a well-known online photo- and video-sharing social-networking application. Since its launch in 2010, the Complainant has grown rapidly and has developed considerable goodwill and renown worldwide. The Complainant today is considered the world’s fastest growing photo- and video-sharing and editing software and online social network, with more than 500 million daily active accounts and 1 billion monthly active accounts worldwide. The Complainant provides support to its users through its online help center, where it offers security features, including its login alerts and two-factor authentication.
The Complainant owns a number of trademarks in the United States and in jurisdictions worldwide, including: INSTAGRAM, United States Reg. No. 4,146,057, registered on May 22, 2012 in international class 9; INSTAGRAM, United States Reg. No. 4,170,675, registered on July 10, 2012 in international class 42; INSTAGRAM, European Union Trademark No. 014493886, registered on December 24, 2015 in international classes 25, 35, 38, 41, and 45; and INSTAGRAM, International Trademark Registration No. 1129314, registered on March 15, 2012 in international classes 9 and 42 (designating certain jurisdictions).
The aforementioned trademarks will hereinafter collectively be referred to as the “INSTAGRAM Mark”.
The Complainant registered the domain name
The Disputed Domain Name was registered on October 14, 2020 and resolves to an inactive website with no substantive content.
5. Parties’ Contentions A. ComplainantThe following are the Complainant’s contentions:
- the Disputed Domain Name is confusingly similar to the Complainant’s INSTAGRAM Mark;
- the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and
- the Disputed Domain Name was registered and is being used in bad faith.
The Complainant seeks the transfer of the Disputed Domain Name from the Respondent to the Complainant in accordance with paragraph 4(i) of the Policy.
B. RespondentThe Respondent did not reply to the Complainant’s contentions.
6. Discussion and FindingsParagraph 4(a) of the Policy requires that the Complainant prove the following three elements in order to prevail in this proceeding:
(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 was registered and is being used in bad faith.
A. Identical or Confusingly SimilarThis element consists of two parts: first, does the Complainant have rights in a relevant trademark and, second, is the Disputed Domain Name identical or confusingly similar to that trademark. The Panel concludes that the Disputed Domain Name is confusingly similar to the INSTAGRAM Mark as set forth below.
First, the Complainant has established rights in the INSTAGRAM Mark based on its years of use as well as its registered trademarks for the INSTAGRAM Mark in the United States, where the Respondent purportedly resides, and in many jurisdictions worldwide. The general consensus is that registration of a mark satisfies the threshold requirement of having trademark rights for purposes of standing to file a UDRP case. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), at section 1.2.1. Here, the Panel finds that the Complainant has rights in the INSTAGRAM Mark.
The Disputed Domain Name incorporates a misspelling of the INSTAGRAM Mark, followed by the dictionary terms “support” and “security”, and then followed by the generic Top-Level Domain (“gTLD”) “.com”. The misspelling consists of the replacement of the letter “I” in the INSTAGRAM Mark with a lowercase letter “l”, which closely resembles the uppercase letter “I.” Such common misspellings and typographical variations have consistently been found to satisfy the confusingly similar prong of Policy paragraph 4(a)(i). This misspelling, where the INSTAGRAM Mark is still recognizable, does not prevent a finding of confusing similarity between the INSTAGRAM Mark and the Disputed Domain Name. Such modification to a trademark is commonly referred to as “typosquatting”, as such conduct seeks to wrongfully take advantage of errors by users in typing domain names into their web browser’s location bar. See WIPO Overview 3.0, at section 1.9 (“A domain name which consists of a common, obvious, or intentional misspelling of a trademark is considered by panels to be confusingly similar to the relevant mark for purposes of the first element.”); see also Express Scripts, Inc. v. Whois Privacy Protection Service, Inc. / Domaindeals, Domain Administrator,WIPO Case No. D2008-1302.
The Disputed Domain Name also adds the dictionary words “support” and “security” to the misspelled INSTAGRAM Mark. Numerous prior panels have held that the addition of a dictionary or descriptive term to a complainant’s mark does not prevent a finding of confusing similarity. See, e.g., Instagram, LLC v. Registration Private, Domains By Proxy, LLC /Adana adana, adana,WIPO Case No. D2020-3074 (“the clear presence of the Complainant’s trademark in the disputed domain name is ordinarily sufficient for a finding of confusing similarity”). As stated in section 1.8 of the WIPO Overview 3.0, “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”.
Finally, the addition of a gTLD such as “.com” in a domain name is technically required. Thus, it is well established that such element may typically be disregarded when assessing whether a domain name is identical or confusingly similar to a trademark. See Proactiva Medio Ambiente, S.A. v. Proactiva,WIPO Case No. D2012-0182 and WIPO Overview 3.0, section 1.11. Thus, the Panel concludes that the Disputed Domain Name is confusingly similar to the Complainant’s INSTAGRAM Mark.
Accordingly, the Panel finds that the first element of paragraph 4(a) of the Policy has been met by the Complainant.
B. Rights or Legitimate InterestsUnder the Policy, a complainant has to make out a prima facie case that the respondent lacks rights or legitimate interests in the disputed domain name. Once such a prima facie case is made, the respondent carries the burden of production of evidence to rebut this by demonstrating rights or legitimate interests in the disputed domain name. If the respondent fails to do so, the complainant may be deemed to have satisfied paragraph 4(a)(ii) of the Policy. See WIPO Overview 3.0, section 2.1.
In this case, the Panel finds that the Complainant has made out a prima facie case. The Respondent has not submitted any arguments or evidence to rebut the Complainant’s prima facie case. Further, the Complainant has not authorized, licensed or otherwise permitted the Respondent to use its INSTAGRAM Mark. The name of the Respondent has no apparent connection to the Disputed Domain Name that would suggest that it is related to a trademark or trade name in which the Respondent has rights. Nor does the Complainant have any type of business relationship with the Respondent. Based on the use made of the Disputed Domain Name to resolve to a landing page that is passively held is not a use in connection with a bona fide offering of goods or services pursuant to Policy paragraph 4(c)(i).WIPO Overview 3.0, section 3.3; see, e.g., Instagram, LLC v. Asif Ibrahim, Asif Ibrahim,WIPO Case No. D2020-2552 (finding no rights or legitimate interests where there was no evidence of the respondents’ use, or demonstrable preparations to use, the disputed domain name in connection with a bona fide offering of goods and services, and the evidence was that the domain name resolved to an inactive placeholder webpage with no substantive content).
Accordingly, the Panel finds that the second element of paragraph 4(a) of the Policy has been met by the Complainant.
C. Registered and Used in Bad FaithThe Panel finds that, based on the record, the Complainant has demonstrated the existence of the Respondent’s bad faith pursuant to paragraph 4(b) of the Policy as set forth below.
First, the Respondent’s registration of the Disputed Domain Name that contains a misspelling of the INSTAGRAM Mark in an effort to take advantage of a typographical error is evidence of bad faith registration and use. See Nutricia International BV v. Eric Starling,WIPO Case No. D2015-0773. Since the Respondent misspelled the Disputed Domain Name to misdirect users from the Complainant’s website to the Respondent’s landing page by capitalizing on potential typing mistakes, such conduct is per se evidence of bad faith. See ESPN, Inc. v. XC2,WIPO Case No. D2005-0444 (“It is well-settled that the practice of typosquatting, of itself, is evidence of the bad faith registration of a domain name.”).
Second, the registration of a domain name that reproduces a trademark in its entirety (being identical or confusingly similar to such trademark) by an individual or entity that has no relationship to that mark, without any reasonable explanation on the motives for the registration, may be suggestive of opportunistic bad faith. See Ebay Inc. v. Wangming,WIPO Case No. D2006-1107; Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co.,WIPO Case No. D2000-0163.
Finally, inactive or passive holding of the Disputed Domain Name by the Respondent may amount to bad faith use. See Advance Magazine Publishers Inc. and Les Publications Condé Nast S.A. v. ChinaVogue.com,WIPO Case No. D2005-0615; Société pour l’Oeuvre et la Mémoire d’Antoine de Saint Exupéry – Succession Saint Exupéry – D’Agay v. Perlegos Properties,WIPO Case No. D2005-1085. It has long been held in UDRP decisions that the passive holding of a domain name that incorporates a well-known or distinctive trademark without a legitimate purpose does not prevent a finding that the Disputed Domain Name is being used in bad faith under paragraph 4(a)(iii) of the Policy. See Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003; Jupiters Limited v. Aaron Hall,WIPO Case No. D2000-0574.
Accordingly, the Panel finds that the third element of paragraph 4(a) of the Policy has been met by the Complainant.
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
Lynda M. Braun
Sole Panelist
Date: November 18, 2021