The Complainant is Instagram, LLC, United States of America (“United States”), represented by Hogan Lovells (Paris) LLP, France.
The Respondent is Super Privacy Service LTD c/o Dynadot, United States / Chen Hui, Gname, Singapore.
2. The Domain Name and RegistrarThe disputed domain name
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 3, 2021. On November 4, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 5, 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 November 16, 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 November 19, 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 November 19, 2021. In accordance with the Rules, paragraph 5, the due date for Response was December 9, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 13, 2021.
The Center appointed William A. Van Caenegem as the sole panelist in this matter on January 7, 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.
4. Factual BackgroundThe Complainant operates an online photo and video sharing social networking application. Instagram currently has over 1 billion monthly active users and 500 million daily active users, with more than 95 million photos and videos shared per day.
The Complainant’s official website at “www.instagram.com” is ranked as the 25th most visited website in the world.
The Complainant owns many trade mark registrations in the term “Instagram” in many jurisdictions throughout the world, including in Singapore. These include Singaporean Trade Mark No. 40201516189P, for INSTAGRAM, registered on July 15, 2016; United States Trade Mark No. 4146057, for INSTAGRAM, registered on May 22, 2012 (first use in commerce on October 6, 2010); and International Trade Mark No. 1129314, for INSTAGRAM, registered on March 15, 2012.
The disputed domain name was registered on April 26, 2021, and resolves to a website providing various gambling and gaming advertisements.
5. Parties’ Contentions A. ComplainantThe Complainant says that the disputed domain name currently points to a website in Chinese promoting and providing links to various online gambling websites. That website does not contain any information related to the Respondent, except for some purported credentials displayed at the bottom of the homepage, including a certificate entitled “Interactive Gaming License”. The Complainant points out that once having clicked on this certificate, Internet users will be redirected to a highly similar website available at “https://www.taoban100.com/manbetx/index.html”.
The Complainant says that according to its research, it appears that the Respondent was previously involved as a respondent in many UDRP proceedings where all the disputed domain names were ordered to be transferred to the complainants.
The Complainant also submits that the inclusion of the Complainant’s INSTAGRAM mark in its entirety in the disputed domain name is sufficient to establish confusing similarity between the disputed domain name and the Complainant’s trade mark. According to the Complainant, it is well established in previous UDRP decisions that, where the relevant trade mark is recognisable within the disputed domain name, the addition of other elements, such as the term “sign in” and a hyphen, would not prevent a finding of confusing similarity under the first element.
The Respondent is not a licensee of the Complainant, nor has it been authorised or allowed by the Complainant to make any use of its INSTAGRAM mark, in a domain name or otherwise. The Complainant asserts that the Respondent is unable to invoke any of the circumstances set out in paragraph 4(c) of the Policy, in order to demonstrate rights or legitimate interests in the disputed domain name. The disputed domain name is being used to point to a website promoting and providing links to various online gambling websites, obviously for commercial gain. According to the Complainant, such use of the disputed domain name cannot constitute a bona fide offering of goods or services under the Policy as the Respondent is clearly trading on the Complainant’s reputation and goodwill by diverting traffic to a commercial website for profit.
The Complainant points out that the Respondent is not commonly known by the disputed domain name, and cannot assert that it is making a legitimate or fair use of the disputed domain name. The term “Instagram” is said to be highly distinctive and exclusively associated with the Complainant. All search results obtained by typing the term “Instagram” into the Google search engine available at “www.google.com” and “www.google.com.sg” refer to the Complainant.
The Complainant therefore submits that the Respondent registered the disputed domain name in the full knowledge of the Complainant’s rights. Prior panels deciding under the Policy have held that actual knowledge of a complainant’s rights at the time of registration of a domain name constitutes strong evidence of bad faith.
The Complainant further submits that the Respondent has engaged in a pattern of conduct within the meaning of paragraph 4(b)(ii) of the Policy by registering the disputed domain name and many other trade mark-abusive domain names for the purpose of preventing trade mark owners from reflecting their trade marks in corresponding domain names.
In addition, the Complainant contends that the fact that the Respondent deliberately chose to conceal his identity by means of a privacy protection service is another strong indication of his intent to use the disputed domain name in a way which may be abusive or otherwise detrimental to the Complainant and its rights.
The Complainant also submits that the Respondent’s use of the disputed domain name to point to a gambling website may also tarnish the Complainant’s distinctiveness, image and reputation.
Finally, the Complainant says that the Respondent’s failure to reply to the Complainant’s clear and explicit cease and desist letter prior to the filing of this Complaint is also indicative of the Respondent’s bad faith.
B. RespondentThe Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings A. Identical or Confusingly SimilarThe disputed domain name is not identical to the INSTAGRAM trademark of the Complainant. However, that mark is immediately recognisable within the disputed domain name. It appears as its first part and is separated from the descriptive term “sign in” by a dash.
Therefore, the Panel holds that the disputed domain name is confusingly similar to the INSTAGRAM trade mark of the Complainant.
B. Rights or Legitimate InterestsThe Respondent did not reply to the Complainant’s contentions, and used a privacy service to disguise his identity. There is no indication before the Panel that the Respondent is commonly known by the disputed domain name or has any rights or legitimate interests to the INSTAGRAM mark, which is inherently improbable given the distinctiveness and fame of that mark. The disputed domain name points to a website with various gambling and gaming advertisements in the Chinese language, with no legitimate connection to the Complainant or its products. The only inference open to the Panel is that the Respondent has embarked upon a gratuitous attempt to derive a profit from the distinctiveness and reputation of the mark INSTAGRAM with millions of consumers around the world, including in Singapore.
Therefore, the Panel holds that the Respondent has no rights or legitimate interests in the disputed domain name.
C. Registered and Used in Bad FaithThe disputed domain name was registered at a time when the reputation inherent in the Complainant’s INSTAGRAM mark was already very well established, including in Singapore. It is inconceivable that the Respondent was not aware of the exclusive rights of the Complainant in the INSTAGRAM mark. The carefully chosen composition of the disputed domain name, including the term “sign in”, further suggests that it was registered with a bad faith purpose. Linking the disputed domain name to a Chinese language website with various gambling and gaming advertisements further establishes the bad faith of the Respondent, and the fact that the Respondent is engaged in an attempt to derive financial advantage from a distinctive trade mark in relation to which it has no rights whatsoever.
Therefore, the Panel holds that the disputed domain name was registered and is 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 name
William A. Van Caenegem
Sole Panelist
Date: January 21, 2022