The Complainant is Instagram, LLC, United States of America (“United States”), represented by Tucker Ellis, LLP, United States.
The Respondent is Serhat Kilinç, 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 12, 2021. On December 13, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name
The Center sent an email communication in English and Turkish to the parties on December 15, 2021, regarding the language of the proceeding, as the Complaint has been submitted in English and the language of the registration agreement for the disputed domain names is Turkish. The Complainant sent an email to the Center requesting English to be the language of the proceeding on December 19, 2021. The Respondent did not comment on the language of the proceeding.
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 23, 2021. In accordance with the Rules, paragraph 5, the due date for Response was January 12, 2022. On January 8, 2022 and January 11, 2022, the Respondent sent email communications in Turkish to the Center but did not submit any formal response. On January 20, 2022, the Center informed the Parties that it will proceed to panel appointment.
The Center appointed Kaya Köklü as the sole panelist in this matter on January 28, 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 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 the INSTAGRAM trademark. The INSTAGRAM trademark is registered in a large number of jurisdictions. For instance, the Complainant is the owner of the United States Trademark Registration No. 4146057, registered on May 22, 2012, and the International Trademark Registration No. 1129314, registered on Mach 15, 2012, designating among others Turkey, where the Respondent is reportedly located, and where it has been registered under the Turkish Trademark Registration No. 2012 85440 on April 28, 2015. The INSTAGRAM trademark registrations cover protection for various goods and services primarily related to online social networking services (Annexes 10 and 11 to the Complaint).
The Complainant further holds and operates its main website at “www.instagram.com”, which is ranked as one of the most visited websites worldwide (Annex 4 to the Complaint).
Both disputed domain names were registered on February 19, 2021.
The Respondent is reportedly an individual from Turkey.
According to the provided documents by the Complainant, the disputed domain names do not resolve to an active website.
5. Parties’ Contentions A. ComplainantThe Complainant is of the opinion that the disputed domain names are confusingly similar to its INSTAGRAM trademark.
Furthermore, the Complainant argues that the Respondent has no rights or legitimate interests in respect of the disputed domain names.
Finally, it is argued that the Respondent has registered and is using the disputed domain names in bad faith.
B. RespondentThe Respondent did not reply to the Complainant’s contentions. In the email communication sent to the Center on January 8, 2022, the Respondent stated in Turkish “I allow the transfer of both domain names for USD 2000”. In another email sent on the same day, the Respondent stated only that he allows the transfer of the disputed domain names. On January 11, 2022, the Respondent sent another email communication in Turkish stating “I do not want to go to court, I allow the transfer of the domain name”.
6. Discussion and Findings 6.1. Preliminary Issue: Language of the ProceedingThe Panel determines in accordance with the Complainant’s request and the Rules, paragraph 11(a), that the language of this administrative proceeding shall be English.
The Complaint has been submitted in English and the language of the registration agreement for the disputed domain names is Turkish. The Complainant requested English to be the language of the proceeding and the Respondent did not comment on the language of the proceeding.
The Complainant argues that: (i) the disputed domain names are comprised entirely of English words, which suggests that Respondent understands the English language, (ii) the disputed domain names plainly target the Complainant, a United States company, and the Complainant’s famous INSTAGRAM Mark, (iii) to proceed in Turkish would create a significant additional expense and delay for the Complainant due to the need for translation of the Complaint into Turkish.
In considering this request, the Panel considers relevant the following: (i) the Complainant’s request that the language of the proceeding be English, (ii) the lack of comment on the language of the proceeding by the Respondent, (iii) the fact that the disputed domain names contain the misspelling of the Complainant’s trademark in addition to the English terms “security” and “about”, and (iv) the fact that Turkish as the language of the proceeding could lead to unwarranted delays and additional costs for the Complainant.
Although the language of the Registration Agreement of the disputed domain names is Turkish, the Panel finds that it would be inappropriate, given the circumstances of this case, to conduct the proceeding in Turkish and to request a Turkish translation of the Complaint. The Panel particularly notes that the Respondent was given the opportunity to respond in Turkish and that while he did not comment on the language of the proceeding, he agreed to transfer the disputed domain names to the Complainant after the notification of the Complaint. Consequently, the Panel is convinced that the Respondent will not be prejudiced by a decision being rendered in English.
6.2. Substantive IssuesAccording 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 names are 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 names; and
(iii) the disputed domain names have been registered and are 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 (Annexes 9 and 10 to the Complaint).
The Panel further finds that the disputed domain names are confusingly similar to the Complainant’s registered INSTAGRAM trademark. As stated at section 1.8 and 1.9 of the WIPO Overview 3.0, where the relevant trademark is recognizable within the disputed domain name, misspellings and the addition of other terms would not prevent a finding of confusing similarity.
In the present case, the Panel notes that disputed domain names incorporate an apparent misspelling of the Complainant’s INSTAGRAM trademark by the mere replacement of the letter “i” by “l”, which in view of the Panel, still makes the Complainant’s INSTAGRAM well recognizable within the disputed domain names. Also, the mere addition of the terms “security” and “about” does, in view of the Panel, not serve to avoid a confusing similarity between the disputed domain names and the Complainant’s INSTAGRAM trademark.
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 names to meet the requirements of paragraph 4(a)(ii) of the Policy. See 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 trademark in a confusingly similar way within the disputed domain names.
There is also no indication in the current record that the Respondent is commonly known by the disputed domain names. In the absence of a formal Response, the Respondent has failed to demonstrate any of the nonexclusive circumstances evidencing rights or legitimate interests under the Policy, paragraph 4(c), or provide any other evidence of rights or legitimate interests in the disputed domain names.
Bearing all this in mind, the Panel does not see any 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 is convinced that the Respondent was aware of the Complainant’s trademark when it registered the disputed domain names in February 2021. At the date of registration of the disputed domain names, the Complainant’s INSTAGRAM trademark was already registered, widely used and well-known for many years. UDRP panels have consistently found that the mere registration of a domain name that is identical or confusingly similar (particularly domain names comprising typos) to a famous or widely-known trademark by an unaffiliated person or entity can by itself create a presumption of bad faith. See section 3.1.4 of the WIPO Overview 3.0. The Panel has no doubt that the Respondent has registered the disputed domain names to target and mislead Internet users who are searching for official information on the Complainant and its services. Moreover, in his first email communication to the Center, the Respondent offered to sell the disputed domain names for USD 2000. In the circumstances of the case, the Panel finds that this is further evidence of registration in bad faith. Consequently, the Panel is convinced that the Respondent has registered the disputed domain names in bad faith.
With respect to the use of the disputed domain names in bad faith, as already indicated before, the disputed domain names have apparently yet not been linked to an active website. Nonetheless, and in line with the previous UDRP decisions (e.g. Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003) and section 3.3 of the WIPO Overview 3.0, the Panel believes that the non-use of a domain name does not prevent a finding of bad faith use.
Applying the passive holding doctrine as summarized in section 3.3 of the WIPO Overview 3.0, the Panel assesses the Complainant’s INSTAGRAM trademark as sufficiently distinctive and even well-known (including in Turkey, where the Respondent is reportedly located), so that the use of the Complainant’s trademark within the disputed domain names is not conceivable.
Furthermore, the Panel accepts the failure of the Respondent to submit a substantive response to the Complainant’s contentions as an additional indication for bad faith use.
All in all, the Panel cannot conceive of any plausible and legitimate use of the disputed domain names that would be in good faith, except with an authorization of the Complainant.
Taking all facts of the case into consideration, the Panel believes that this is a typical typosquatting case. The Panel therefore concludes that the disputed domain names were registered and are 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 names
Kaya Köklü
Sole Panelist
Date: February 9, 2022