The Complainant is Instagram, LLC, United States of America (“United States”), represented by Hogan Lovells (Paris) LLP, France.
The Respondent is Artem Nuzhnov, Ukraine.
2. The Domain Name and RegistrarThe disputed domain name
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 18, 2021. On October 19, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 20, 2021, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
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 October 27, 2021. In accordance with the Rules, paragraph 5, the due date for Response was November 16, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 30, 2021.
The Center appointed Kaya Köklü as the sole panelist in this matter on December 14, 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 based company, which provides online photo and video sharing services. Since 2010, these services are provided through its internationally known and popular online platform, which primarily consists of a mobile application and a website.
The Complainant is the owner of various INSTAGRAM and INSTA trademarks. Its various word and figurative trademarks are registered in a large number of jurisdictions. For instance, the Complainant is the owner of the United States Trademark Registrations No. 4146057 for INSTAGRAM, registered on May 22, 2012 and No. 5061916 for INSTA, registered on October 18, 2016. Also, the Complainant is the owner of the European Union Trademark Registration No. 014810535 for INSTA, registered on May 23, 2018. The registered trademarks cover various goods and services primarily related to online social networking services (Annex 5 to the Complaint).
The Complainant further holds and operates its website at “www.instagram.com”, which is ranked as one of the most visited websites worldwide (Annex 4 to the Complaint).
The disputed domain name was registered on September 10, 2015.
The Respondent is reportedly located in Ukraine. According to provided WhoIs records by the Complainant (Annex 8 to the Complaint), it is likely that the Respondent has also registered two further domain names comprising the Complainant’s INSTA trademark.
According to the provided documents by the Complainant, the disputed domain name resolves to a website in the Russian language, which offers “automated services for professional Instagram promotion”, particularly by allowing its users to search and collect data regarding potential target audiences (Annex 7 to the Complaint). The associated website, which displays icons and logos with a similar look and feel compared to the Complainant’s word and figurative trademarks, does not provide for a visible disclaimer describing the (lack of) relationship between the Parties.
Prior to initiation of the administrative proceeding, the Complainant tried in vain to solve the dispute amicably by sending two cease-and-desist letters to the Respondent in English and Russian and asking for the transfer of the disputed domain name (Annex 9 to the Complaint).
5. Parties’ Contentions A. ComplainantThe Complainant requests the transfer of the disputed domain name.
The Complainant is of the opinion that the disputed domain name is confusingly similar to its INSTAGRAM and INSTA trademarks.
Furthermore, the Complainant argues that the Respondent has no rights or legitimate interests in respect of the disputed domain name.
Finally, it is argued that the Respondent has registered and is using the disputed domain name in bad faith. The Complainant believes that the Respondent was fully aware of the Complainant’s trademarks, when registering the disputed domain name. The Complainant is further of the opinion that the Respondent apparently tries to mislead Internet users and to gain illegitimate benefits by freeriding on the goodwill of the well-known INSTAGRAM and INSTA trademarks.
B. RespondentThe Respondent did not reply to the Complainant’s contentions.
6. Discussion and FindingsAccording to paragraph 15(a) of the Rules, the Panel shall decide the Complaint in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.
In accordance with paragraph 4(a) of the Policy, the Complainant must prove that each of the three following elements is satisfied:
(i) the disputed domain name is identical or confusingly similar to a trademark 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.
Paragraph 4(a) of the Policy states that the Complainant bears the burden of proving that all these requirements are fulfilled, even if the Respondent has not replied to the Complainant’s contentions. Stanworth Development Limited v. E Net Marketing Ltd.,WIPO Case No. D2007-1228.
However, concerning the uncontested information provided by the Complainant, the Panel may, where relevant, accept the provided reasonable factual allegations in the Complaint as true. See section 4.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).
It is further noted that the Panel has taken note of the WIPO Overview 3.0 and, where appropriate, will decide consistent with the consensus views captured therein.
A. Identical or Confusingly SimilarTo begin with, the Panel confirms that the Complainant has satisfied the threshold requirement of having trademark rights in INSTAGRAM and INSTA. As evidenced in the Complaint, the Complainant is the owner of various INSTAGRAM and INSTA trademarks, which are registered in many jurisdictions since at least 2012.
In light of this pre-assessment, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s INSTAGRAM and INSTA trademarks. The disputed domain name fully comprises the INSTA trademark and the dominant feature of the INSTAGRAM trademark. As stated at section 1.8 of the WIPO Overview 3.0, where a trademark is recognizable within the disputed domain name, the addition of other terms would generally not prevent a finding of confusing similarity. In the present case, the mere addition of the term “rise” does, in view of the Panel, not serve to avoid a finding of confusing similarity between the disputed domain name and the Complainant’s INSTAGRAM and INSTA trademarks.
In view of the above, the Panel is satisfied that the Complainant has met the requirements under paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate InterestsWhile the burden of proof remains with the Complainant, the Panel recognizes that this would often result in the impossible task of proving a negative, in particular as the evidence needed to show the Respondent’s rights or legitimate interests is primarily within the knowledge of the Respondent. Therefore, the Panel agrees with prior UDRP panels that the Complainant is required to make out a prima facie case before the burden of production shifts to the Respondent to show that it has rights or legitimate interests in the disputed domain name to meet the requirements of paragraph 4(a)(ii) of the Policy. Croatia Airlines d.d. v. Modern Empire Internet Ltd.,WIPO Case No. D2003-0455.
With its Complaint, the Complainant has provided prima facie evidence that the Respondent has no rights or legitimate interests, particularly no license or alike to use the Complainant’s INSTAGRAM and INSTA trademarks in a confusingly similar way within the disputed domain name.
There is also no indication in the current record that the Respondent is commonly known by the disputed domain name. In the absence of a response, the Respondent has additionally failed to demonstrate any of the other non-exclusive circumstances evidencing rights or legitimate interests under the Policy, paragraph 4(c) or other evidence of rights or legitimate interests in the disputed domain name. In this regard, the Panel also notes that the nature of the disputed domain name is clearly intended to, and does, play on the Complainant’s trademarks.
Bearing all this in mind, the Panel does not see sufficient basis for assessing a bona fide offering of goods or services by the Respondent.
Consequently, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad FaithThe Panel believes that the Respondent deliberately attempted to create a likelihood of confusion among Internet users and/or to freeride on the goodwill of the Complainant’s trademarks, apparently for illegitimate commercial gain, particularly for the following reasons.
At the date of registration of the disputed domain name, the Respondent was obviously well aware of the Complainant’s INSTAGRAM trademark. Consequently, the Panel is convinced that the Respondent has registered the disputed domain name in bad faith.
Furthermore, the way of using the Complainant’s trademarks in a confusingly similar way on the associated websites (Annexes 9 to the Complaint), indicates that the Respondent has deliberately chosen the Complainant’s trademarks as the distinctive part of the disputed domain name to target and mislead Internet users who are searching for services provided by the Complainant.
This assessment is further supported by the Respondent’s use of confusingly similar copies of the Complainant’s word and figurative trademarks on the website linked to the disputed domain name. In this regard, the Panel further notes that the Respondent has not published any visible disclaimer on the associated website to explain that there is no existing relationship between the Respondent and the Complainant, even though it must have been obvious to the Respondent that the nature and use of the disputed domain name is intended to be and is confusing.
In addition, the Panel accepts the Respondent’s failure to respond to the Complainant’s cease-and-desist letters and its Complaint as an additional indication of bad faith. The Panel is convinced that, if the Respondent had legitimate purposes in registering and using the disputed domain name, it would have most likely responded.
Taking all facts of the case into consideration, the Panel is convinced that the disputed domain name was registered and is being used in bad faith and that the Complainant consequently has satisfied the third element of the Policy, namely, 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
Kaya Köklü
Sole Panelist
Date: December 28, 2021