The Complainant is Instagram, LLC, United States of America (“United States”), represented by Hogan Lovells (Paris) LLP, France.
The Respondents are Registration Private, Domains By Proxy, LLC, United States, / Yunus Geyik, Geyik Medye; Murat Alssd; Yusuf Tunc; Ugur Ugur; Asfjhaslkfj Kj; Zargex Official, Zargex; Asd Asd, Asd; Qwe Sj; Caner Kalkan; Margaret Williams; Emre Bozok Kalkan; Naraen Oz; Mert Mert; Enes Kurcay; and, Yagiz Gungor, Turkey; Zvcdffsdfsd Sdffdsfsdfds, Albania; Stamina Berkay, StaminaWorkPlace, Argentina; Omer Can, Azerbaijan; Asdsad Asdasdsadsa; Dasffasd Dsfaafsd; Daffdsa Adsfafds; Qwe Qwe, Qwe; Help Help, Help; Sdafafds Sdafadfs; Qwewqe Qweqwe, United States; Jonath Alvarez, Germany; and, Msmdjsndks Annsnsns, Netherlands.
2. The Domain Names and RegistrarThe Disputed Domain Names
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 28, 2021. On September 29, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Names. On September 29, 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 October 1, 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 8, 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 Respondents of the Complaint, and the proceedings commenced on October 27, 2021. In accordance with the Rules, paragraph 5, the due date for Response was November 16, 2021. The Respondents did not submit any response. Accordingly, the Center notified the Respondents’ default on November 18, 2021.
The Center appointed Reyes Campello Estebaranz as the sole panelist in this matter on November 26, 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 United States company, founded in 2010 and acquired by Facebook, Inc. in 2012. It operates globally under the trademarks INSTAGRAM and IG, providing an online mobile photo and video sharing social networking application (or “app”) that allows users across the globe to edit and share photos/videos and exchange messages in an online social network. The Complainant’s social media platform is available in over 31 languages, being ranked the 22nd most visited website in the world, according to web information company Alexa, and the third most downloaded app for iOS phones worldwide, according to applications information company App Annie. The nature of the Complainant’s business is exclusively online, being its main website linked to the domain name
The Complainant holds registered trademark rights in the mark INSTAGRAM in many jurisdictions, being the owner of a substantial trademark portfolio, of which the following are sufficient representative for the present proceeding:
- United States Trademark No. 4,146,057, INSTAGRAM, word mark, registered on May 22, 2012, in class 9;
- International Trademark No. 1129314, INSTAGRAM, word mark, registered on March 15, 2012, in classes 9 and 42;
- European Union Trade Mark No. 14493886, INSTAGRAM, word mark, registered on December 24, 2015, in classes 25, 35, 38, 41, and 45; and
- European Union Trade Mark No. 17946393, IG, word mark, registered on January 31, 2019, in classes 9, 42, and 45, (collectively the “INTAGRAM mark” and the “IG mark”).
The Complainant further owns numerous domain names comprising its INSTAGRAM mark, under various generic Top-Level Domains (“gTLDs”) and country code Top-Level Domains (“ccTLDs”), which are linked to its corporate websites in connection with its services. Among others,
The Disputed Domain Names were registered within a period of seven months (between October 15, 2020 and May 11, 2021), as follows:
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The Disputed Domain Names are inactive, resolving to Internet browser error messages or to security “deceptive site ahead” messages, indicating that the respective sites linked to them may be deceptive.2
5. Parties’ Contentions A. ComplainantKey contentions of the Complaint may be summarized as follows:
The Complainant’s app and its trademarks have been continuously and extensively used since its launch in 2010, being worldwide renowned, having received numerous awards, and being widely reported by major international publications (such as New York Times, The Washington Post, The Telegraph, and The Guardian). In 2011, the Complainant’s app was named “App of the Year” from Apple Inc., and in 2020, INSTAGRAM mark was ranked 19th in Interbrand’s Best Global Brands. The Complainant has also developed strong presence on social media platforms, having over 60 million likes on Facebook and over 34 million followers on Twitter.
Five of the Disputed Domain Names, namely Disputed Domain Names Nos. 2, 3, 26, 27, and 28,3 comprise misspellings of the INSTAGRAM mark. The Disputed Domain Name No. 26 (
The Respondents have no rights or legitimate interests in the Disputed Domain Names. The Respondents have not been authorized to use the Complainant’s trademarks. The identity of the Respondents are essentially unknown, and the details revealed by the Registrar’s verification bear no resemblance to the Disputed Domain Names. There is no evidence to suggest that the Respondents are commonly known by the Disputed Domain Names, or that it has used or made any preparations to use the Disputed Domain Names in connection with a bona fide offering of goods or services, or to a legitimate noncommercial or fair use. The Disputed Domain Names are inactive. Due to the composition of the Disputed Domain Names, they may be perceived as official channels for copyright, help, support, or verification services in relation to the Complainant’s platform, being inherently misleading.
The Disputed Domain Names were registered and are being used in bad faith. The term “instagram” is highly distinctive and exclusively associated with the Complainant, while “ig” is considered a common abbreviation for “instagram”. During the period of the registration of the Disputed Domain Names, the Complainant’s platform has already over 1 billion monthly active users worldwide, so the Respondent cannot credibly argue that it did not have knowledge of the Complainant’s trademarks when registering the Disputed Domain Names. Bad faith can be inferred from the registration of a total of 30 domain names comprising the Complainant’s trademarks (or misspellings of them) with common terms that make direct reference to the Instagram-user experience, being the Respondent engaged in a pattern of bad faith, preventing the Complainant from reflecting its trademarks in corresponding domain names. The non-use of the Disputed Domain Names do not prevent a finding of bad faith under the doctrine of passive holding. The Respondents have taken steps to conceal its identity by registering the Disputed Domain Names behind a privacy service, and providing false or incomplete contact information. The presence of the Disputed Domain Names in the hands of the Respondents represents an abusive threat that amounts to a continuing abusive use, as the Disputed Domain Names are capable of being used as hyperlinks or for email in connection with fraudulent schemes targeting the Complainant’s users. The Disputed Domain Names include visually-similar misspellings or terms that refer to support services, and do not include any qualifying terms that could make the non-relationship between the Respondents and the Complainant clear (such as “unofficial”).
The Complainant has cited previous decisions under the Policy that it considers supportive of its position, and requests the transfer of the Disputed Domain Names.
B. RespondentThe Respondents did not reply to the Complainant’s contentions.
6. Discussion and FindingsThe Complainant has made the relevant assertions as required by the Policy and the dispute is properly within the scope of the Policy. The Panel has authority to decide the dispute examining the three elements in paragraph 4(a) of the Policy, taking into consideration all of the relevant evidence, annexed material and allegations, and performing some limited independent research under the general powers of the Panel articulated, inter alia, in paragraph 10 of the Rules.
A. Preliminary Issue: Complaint Consolidated against Multiple RespondentsThe Panel considers that the circumstances of this case substantiate the consolidation of the Complaint against the multiple Respondents (registrants of the Disputed Domain Names), indicating in a balance of probabilities that the Disputed Domain Names are subject to common control. Particularly:
(i) the fact that al the Disputed Domain Names are registered with the same Registrar using the using the same privacy service;
(ii) the lack of substantive use in all the Disputed Domain Names;
(iii) the fact that all the Disputed Domain Names target the Complainant’s trademarks;
(iv) the similar patterns in the Disputed Domain Names;
(v) the fact that all the Disputed Domain Names were registered within a relatively short period of 7 months;
(vi) the similarities in the details indicated in the WhoIs records for the Disputed Domain Names (indicating same or similar registrants telephone numbers and postal addresses, false or incomplete information, etc.); and
(vii) the identical reaction of the Respondents to the Complaint, not replying to the Complainant’s contentions.
The Panel considers that this consolidation is fair and equitable to all the parties and benefits the procedural efficiency, accepting, in accordance with paragraph 10(e) of the Rules, the Complainant’s request for consolidation. See section 4.11 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).
Accordingly, the Panel will refer to the registrants of the Disputed Domain Names collectively as “the Respondent”.
B. Identical or Confusingly SimilarThe Complainant indisputably has rights in the registered trademarks INSTAGRAM and IG, both by virtue of its trademark registrations and as a result of its global goodwill and reputation. The Disputed Domain Names incorporate the INSTAGRAM mark or the IG mark in their entirety, or include common misspellings of the INSTAGRAM mark that may easily go unnoticed not avoiding the direct perception of this mark (adding an extra letter “r” or substituting the initial letter “i” by a lower-case letter “l”). The Disputed Domain Names further add various terms5 with or without a hyphen, which does not prevent a finding of confusing similarity. The Complainant’s trademarks are recognizable in the Disputed Domain Names and the gTLD “.com” is a technical requirement, generally disregarded for the purpose of the analysis of the confusing similarity. See sections 1.7, 1.8, 1.9 and 1.11 of the WIPO Overview 3.0.
Accordingly, this Panel finds that the Disputed Domain Names are confusingly similar to the Complainant’s trademark, and the first element of the Policy under paragraph 4(a)(i) has been satisfied.
C. Rights or Legitimate InterestsAlthough the complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, UDRP panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the often impossible task of proving a negative, requiring information that is primarily if not exclusively within the respondent’s knowledge. Thus, the consensus view is that paragraph 4(c) of the Policy shifts to the respondent the burden of production to come forward with relevant evidence of rights or legitimate interests in the disputed domain name, once the complainant has made a prima facie case that the respondent lacks rights or legitimate interests.
The Complainant’s above-noted assertions and evidence in this case effectively shift the burden of production to the Respondent of producing evidence of rights or legitimate interests in the Disputed Domain Names, providing the circumstances of paragraph 4(c) of the Policy, without limitation, in order to rebut the Complainant’s prima facie case.
The Respondent has not replied to the Complainant’s contentions, not providing any explanation or evidence of rights or legitimate interests in the Disputed Domain Names.
A core factor in assessing fair use of a domain name is that it does not falsely suggest affiliation with the Complainant’s trademark. See section 2.5, WIPO Overview 3.0. The Disputed Domain Names incorporate the Complainant’s trademarks in their entirety or common misspellings of the INSTAGRAM mark, adding various terms, with or without a hyphen, that refer to help, support, verification or other assistance services commonly provided in connection to the Complainant’s platform that may be misleadingly considered related to the Complainant and/or its platform. The Panel considers that the common misspellings point to an intention to confuse Internet users seeking for or expecting the Complainant or its platform, and that the addition of terms connected to customer relationship services may be seen as connected to the Complainant’s platform denoting a risk of implied affiliation and confusion.
The Panel further considers that the Complainant has made out a strong prima facie case that the Respondent could not have rights or legitimate interests in the Disputed Domain Names, not being authorized to use the INSTAGRAM mark or the IG mark; and there is no evidence that suggests that the Respondent is commonly known by the terms corresponding to the Disputed Domain Names. In this respect, the Panel notes that the Respondent’s names provided in the registration of the Disputed Domain Names were concealed under a privacy registration service, and have no resemblance with the terms “instagram”, “ig” or any of the terms corresponding to the Disputed Domain Names.
The Panel has further corroborated that, according to the evidence provided by the Complainant, at the time of drafting this decision, the Disputed Domain Names are inactive resolving to pages with Internet browser error messages or security messages indicating that a deceptive site may be linked to some of the Disputed Domain Names. 6
The Panel has further corroborated, under its general powers articulated, inter alia, in paragraph 10 of the Rules, through various searches in the Internet archive WayBackMachine, that no website has been archived in connection with any of the Disputed Domain Names.
Therefore, no evidence in this case indicates that the Disputed Domain Names have been used or the Respondent has made any preparations to use the Disputed Domain Names in connection with any bona fide offering of goods or services, or to any legitimate noncommercial or fair use. The Panel finds that this passive holding cannot amount to any legitimate noncommercial or fair use of the Disputed Domain Names.
It is further remarkable that the Respondent has chosen not to reply to the Complaint, not providing any information or evidence in connection to any rights or legitimate interests in the Disputed Domain Names.
All the above-mentioned circumstances lead the Panel to conclude that nothing in the case file gives reason to believe that the Respondent has or has had any rights or legitimate interests in respect of the Disputed Domain Names.
Therefore, the second element of the Policy under paragraph 4(a)(ii) has been established.
D. Registered and Used in Bad FaithThe Policy, paragraph 4(a)(iii), requires that the Complainant establish that the Disputed Domain Names have been registered and are being used in bad faith.
The applicable standard of proof in UDRP cases is the “balance of probabilities” or “preponderance of the evidence”, being the Panel prepared to draw certain inferences in light of the particular facts and circumstances of the case. See section 4.2, WIPO Overview 3.0.
The Panel notes the continuous extensive use of the INSTAGRAM mark and presence over the Internet since its launch in 2010, as well as the well-known character of this trademark worldwide, being the IG mark its notorious abbreviation, as has been recognized by previous decisions under the Policy.7
The Panel considers that all cumulative circumstances of this case point to bad faith registration and use of the Disputed Domain Names:
(i) the Disputed Domain Names incorporate the Complainant’s trademarks in their entirety or with common misspellings that may easily go unnoticed, adding terms that may refer to the Complainant or its platform, which reinforces the intrinsic likelihood of affiliation;
(ii) the Complainant’s trademarks are well-known worldwide and the Complainant operates online, being its social media platform available in over 31 languages;
(iii) according to the evidence provided by the Complainant, the Disputed Domain Names are inactive, and, as the Panel has corroborated, through various searches in the Internet archive WayBackMachine, no website has been archived in connection with any of the Disputed Domain Names;
(iv) the high number of Disputed Domain Names targeting the INSTAGRAM mark or the IG mark;
(v) the Respondent used a privacy registration services, as well as various names and contact details that appears to be false or incomplete; and
(vi) the Respondent has not offered any explanation of any rights or legitimate interests in the Disputed Domain Names and has not come forward to deny the Complainant’s assertions of bad faith, choosing not to reply to the Complaint.
It is further to be noted that the non-use of the Disputed Domain Names does not prevent a finding of bad faith under the doctrine of passive holding. See section 3.3, WIPO Overview 3.0.
The Panel finds that the number of the Disputed Domain Names indicates a pattern of conduct of bad faith targeting the Complainant’s trademarks and its platform, and preventing the Complainant from reflecting its trademarks in the corresponding domain names. See section 3.1.2, WIPO Overview 3.0.
In light of the above, taking into consideration all cumulative circumstances of this case, on the balance of probabilities, the Panel considers that the Disputed Domain Names were registered and are being used targeting the INSTAGRAM mark or its abbreviation the IG mark, in bad faith, preventing the Complainant from reflecting its trademarks in the corresponding domain names, with the intention of obtaining any type of benefit from the established reputation of the Complainant and its trademarks. The Panel further finds that the Disputed Domain Names are capable of being used in any type of phishing, online scam, or other fraudulent schemes targeting the Complainant’s users.
Accordingly, the Panel concludes that the Complainant has met its burden of establishing that the Disputed Domain Names have been registered and are being used in bad faith.
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,
Reyes Campello Estebaranz
Sole Panelist
Date: December 6, 2021
1 See Instagram, LLC v. lu xixi, PRIVATE,
WIPO Case No. D2015-1168; Instagram, LLC v. Sedat Das, Arda, Domain Admin, whoisprotection biz, Domain Admin Domain Admin, whoisprotection biz,
WIPO Case No. D2016-2382; Instagram, LLC v. Ozgur Kalyoncu, Seo Master and Huseyin Erdem,
WIPO Case No. D2016-1710; Instagram, LLC v. Omer Ulku,
WIPO Case No. D2018-1700; Instagram, LLC v. Ellie Walker,
WIPO Case No. D2018-0669; Instagram, LLC v. Orhan Uzdu,
WIPO Case No. D2019-2806; Instagram, LLC v. Saddam Hussain,
WIPO Case No. D2018-0078; and Instagram, LLC v. Super Privacy Service LTD c/o Dynadot / Zayed,
WIPO Case No. D2019-2897.
2 Disputed Domain Names Nos. 3, 4, 7, 8, 15, 21, 24, 27, 28, and 29, resolve to security “deceptive site ahead” messages indicating that websites linked to these Disputed Domain Names may be deceptive; each of the other Disputed Domain Names resolves to Internet browser error messages.
3 Disputed Domain Names
4 This is the list of the terms added in the Disputed Domain Names:
5 See footnote No. 4, supra.
6 See footnote No. 2, supra.
7 See footnote No. 1, supra.