The Complainant is Instagram, LLC, United States of America (“U.S.”), represented by Tucker Ellis, LLP, U.S.
The Respondent is Registration Private, Domains By Proxy, LLC, U.S. / Efe Icman / Ahmet Cermik, Turkey.
2. The Domain Names and RegistrarThe disputed domain names
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 4, 2021. On December 6, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On the same day, 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 December 8, 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 December 14, 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 December 14, 2021. In accordance with the Rules, paragraph 5, the due date for Response was January 3, 2022. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 5, 2021.
The Center appointed Fabrizio Bedarida as the sole panelist in this matter on January 12, 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, Instagram, LLC is one of the world’s leading online photo and video sharing social networks. Today, the Complainant has over 1 billion monthly active users and 500 million daily active users all over the world. The Complainant’s website (available at “www.instagram.com”) is ranked as the 23rd most visited website in the world, according to the web information company Alexa. Instagram has also consistently ranked amongst the top apps available for mobile devices. Currently available in over 35 languages.
The strength and renown of the Complainant’s INSTAGRAM trademark has already been recognized by previous UDRP panels.
The Complainant has proven to be the owner of the INSTAGRAM trademark, which enjoys protection through numerous registrations worldwide.
The Complainant is, inter alia, the owner of:
United States trademark INSTAGRAM, registration number 4170675, registered on July 10, 2012 for goods in class 9; and
European Union trademark INSTAGRAM, registration number 012111746, registered on March 6, 2014 for goods and services in classes 9, 38, 41, 42 and 45.
International trademark INSTAGRAM, registration number 1129314, registered on March 15, 2012 for goods and services in classes 9 and 42.
The disputed domain names were registered on February 9, 2021 and February 13, 2021.
The Complainant’s trademark registrations predate the registration of the disputed domain name.
The disputed domains resolve to inactive websites, at least since the date of the filing of the Complaint.
5. Parties’ Contentions A. ComplainantThe Complainant contends that the disputed domain names are confusingly similar to the INSTAGRAM trademark, that the Respondents have no rights or legitimate interests in respect of the disputed domain names, and that the disputed domain names have been registered and are being used in bad faith.
Regarding the Respondents’ identity, the Complainant has requested a consolidation of multiple disputed domain names and Respondents. In support of the above request, the Complainant claims that:
1. All the Respondents are related, to the extent that a sufficient unity of interest exists such that they may essentially be treated as a single domain name holder for the purposes of Policy paragraph 3(c) of the Rules.
2. The disputed domain names were registered by the same Registrar;
3. The registration information for the disputed domain names contains several details in common, including the same street name, the same city, the same state/province and postal code, similar unit numbers, phone numbers, and email addresses.
4. The disputed domain names were registered within days of each other (February 9, 2021 and February 13, 2021) and share common name servers.
5. Both disputed domain names target the Complainant’s Instagram trademark and include the same misspelling of the trademark, replacing the letter “i” with the visually similar letter “l.”
6. Consolidation of proceedings would be fair and equitable to all parties for the following reasons: requiring the Complainant to file separate complaints would cause the Complainant to incur considerable additional time and expense, and the Complainant’s arguments concerning the disputed domain names are essentially the same and can be conveniently and efficiently dealt with together.
The Respondents did not reply to the Complainant’s contentions.
6. Discussion and Findings 6.1. Consolidation of Multiple RespondentsAccording to the registration information verified by the Registrar, the disputed domain names were registered by two different physical persons. The Complainant asserts however that the disputed domain names were registered by the same domain name holder, or are at least under common control.
In accordance with the Rules, paragraph 3(c), a complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name holder. Although the names of the registrants of the disputed domain names are different, the Panel on the evidence available (including, for example, the fact that the disputed domain names were registered with the same Registrar and within a very short period of time, that the Registrants’ provided addresses indicate the same street and city, that both disputed domain names target the Complainant’s INSTAGRAM trademark and include the same misspelling of the trademark, replacing the letter “i” with the visually similar letter “l.”, and finally that neither of the Respondents denied the Complainant’s claims) finds that the disputed domain names identified in the Complaint, on the balance of probability, are registered by the same domain name holder or are at least under common control.
The Panel, therefore concludes in the circumstances of this case that consolidation would be fair and equitable to all the Parties and procedurally efficient, and therefore accepts the Complainant’s request to address the disputed domain names in one case under the Rules, paragraphs 10(e) and 3(c). Accordingly, the Respondents will be collectively referred to as the “Respondent” hereinafter.
6.2. Substantive IssuesIn order for the Complainant to obtain a transfer of the disputed domain names, paragraphs 4(a)(i)-(iii) of the Policy require that the Complainant must demonstrate to the Panel that:
(i) The disputed domain names are 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 names; and
(iii) The disputed domain names have been registered and are being used in bad faith.
The Complainant has established rights in the INSTAGRAM trademark.
Here the domain names in question add the word pairs “verify” and “badge”, and “verified” and “help”, respectively, to the misspelled INSTAGRAM trademark.
This Panel agrees with the Complainant’s view that the INSTAGRAM trademark is clearly recognizable and that the addition of the other terms do not avoid a finding of confusing similarity.
See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.8: “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”. Furthermore, the applicable generic Top-Level Domain (“gTLD”) “.com” is viewed as a standard registration requirement and as such is disregarded under the first element confusing similarity test.
Accordingly, the Panel finds that the Complainant has satisfied paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate InterestsThis Panel finds that the Complainant has made a prima facie case that the Respondent does not have rights or legitimate interests in the disputed domain names. The Respondent does not appear to be commonly known by the name “instagram” or by any similar name. The Respondent has no connection or affiliation with the Complainant and the Complainant has not licensed or otherwise authorized the Respondent to use or register any domain name incorporating the Complainant’s trademark. The Respondent does not appear to make any legitimate noncommercial or fair use of the disputed domain names, nor any use in connection with a bona fide offering of goods or services. The Respondent has not come forward with any explanation that demonstrates any rights or legitimate interests in the disputed domain names.
The Panel finds that the Complainant has satisfied paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad FaithThe Panel, on the basis of the evidence presented, accepts and agrees with the Complainant’s contentions that the disputed domain names were registered and have been used in bad faith.
The INSTAGRAM trademark is a fanciful name with no meaning. It has been registered and used for several years all over the world, it enjoys a widespread reputation and high degree of recognition as a result of its fame and renown and thus the INSTAGRAM mark is not one that traders could legitimately adopt other than for the purpose of creating the impression of an association with the Complainant.
Consequently, the Panel finds that the Respondent knew of the Complainant’s mark and intentionally intended to create an association with the Complainant and its business at the time of registration of the disputed domain names.
The Panel also agrees with the Complainant’s assertions that:
a. the registration of a confusingly similar domain name that is so obviously connected with a particular trademark owner by someone with no connection with the trademark owner suggests bad faith. See Instagram, LLC v. Asif Ibrahim,
WIPO Case No. D2020-2552, which found that given the extent of use and reputation of the complainant’s INSTAGRAM trademark, the respondent could not have been unaware of the fact that the disputed domain names he chose could attract Internet users in a manner that is likely to create confusion for such users; and
b. the Respondent’s knowledge of the Complainant’s trademark at the time of registering the disputed domain names and the passive holding of the disputed domain names satisfy the bad faith requirement of paragraph 4(a)(iii)).
Further inference of bad faith registration and use of the disputed domain names is given by the fact that the Respondent deliberately chose to conceal his identity by means of a privacy protection service.
Another factor supporting the conclusion of bad faith registration and use of the disputed domain names is given by the fact that the Respondent apparently provided incorrect, if not false, details regarding its contact references to the Registrar. In fact, it transpires that the couriered letters sent to the Respondent by the Center were not delivered for this reason.
Accordingly, the Panel finds, on the basis of the evidence presented, that the Respondent registered and is using the disputed domain names in bad faith.
Therefore, the Complainant has satisfied 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 names
Fabrizio Bedarida
Sole Panelist
Date: January 24, 2022