ARBITRATION AND MEDIATION CENTER ADMINISTRATIVE PANEL DECISION Instagram, LLC v. Ihor Grigoriev and Ivan Vasiliev Case No. D2023-4111 1. The Parties The Complainant is Instagram, LLC, United States of America ("United States"), represented by Hogan Lovells (Paris) LLP, France. The Respondents are Ihor Grigoriev, Ukraine, and Ivan Vasiliev, Ukraine (see section 6.1 of this decision, regarding the consolidation of the Respondents). 2. The Domain Names and Registrars The disputed domain names , , , , , and are registered with NameCheap, Inc. The disputed domain name is registered with GoDaddy.com, LLC (collectively with NameCheap, Inc., hereinafter referred to as the "Registrars"). 3. Procedural History The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on October 2, 2023. On October 3, 2023, the Center transmitted by email to the Registrars a request for registrar verification in connection with the disputed domain names. On October 3, 2023, both of the Registrars transmitted by email to the Center their verification responses disclosing registrant and contact information for the disputed domain names which differed from the named Respondent (Redacted for Privacy, Privacy service provided by Withheld for Privacy ehf / Ivan Vasiliev / Registration Private, Domains By Proxy, LLC) and contact information in the Complaint. The Center sent an email communication to the Complainant on October 5, 2023, 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 16, 2023. 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"). page 2 In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondents of the Complaint, and the proceedings commenced on October 23, 2023. In accordance with the Rules, paragraph 5, the due date for Response was November 12, 2023. The Respondent, Ihor Grigoriev, sent email communications to the Center on October 9, 2023. The Center appointed Kiyoshi Tsuru as the sole panelist in this matter on November 20, 2023. 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 Background The Complainant is the owner of a world-renowned online photo and video sharing social-networking application "Instagram", also known as "INSTA" and "IG". The Complainant is the registrant of numerous domain names consisting of or including its INSTAGRAM trademark under a wide range of generic Top-Level Domains ("gTLDs") as well as under numerous country code Top-Level Domains ("ccTLDs"). The Complainant owns, among others, the following trademark registrations: Trademark No. Registration Jurisdiction Date of Registration INSTAGRAM 1129314 Australia, European Union, Israel, Japan, Norway, Republic of Korea, Singapore, Switzerland, Türkiye March 15, 2012 INSTAGRAM 4146057 United States May 22, 2012 INSTAGRAM 14493886 European Union December 24, 2015 INSTA 5061916 United States October 18, 2016 INSTA 14810535 European Union May 23, 2018 IG 17946393 European Union January 31, 2019 The disputed domain names were registered on the following dates, and resolve to the following webpages: 1. was registered on April 15, 2023, and resolves to blank Registrar parking pages. 2. was registered on April 10, 2022, and resolves to a website at "www.instareelsdownload.net" titled "Insta reels download", which offers an anonymous Instagram downloader tool. 3. was registered on April 16, 2022, and resolves to blank Registrar parking pages. 4. was registered on September 15, 2021, and resolves to a website at "www.instasaver.app" titled "InstaSaver.app", which offers an anonymous Instagram downloader tool. 5. was registered on May 24, 2023, and resolves to a website at "www.instastories.pro" titled "instastories.pro" that offers an anonymous Instagram story viewer and downloader tools. page 3 6. was registered on January 30, 2020, and resolves to a website at "www.instastories.pro" titled "instastories.pro" that offers an anonymous Instagram story viewer and downloader tools. 7. was registered on April 2, 2020, and resolves to an inactive web page. The evidence in the Complaint shows that it previously resolves to a website at "www.storiesig.me" titled "StoriesIG.me" that offered an Instagram viewer and downloader tool. 5. Parties' Contentions A. Complainant The Complainant contends that it has satisfied each of the elements required under the Policy for a transfer of the disputed domain names. Notably, the Complainant contends that: The INSTAGRAM online photo and video sharing social-networking application is world-renowned. The Complainant's application is also known as INSTA and IG. I. Identical or Confusingly Similar The disputed domain names are confusingly similar to Complainant's trademarks INSTA and IG. The disputed domain name comprises the Complainant's IG trademark, preceded by the descriptive term "stories", under the ccTLD ".me" and the other disputed domain names comprise the Complainant's INSTA trademark with additional letters or terms, under various gTLDs. Domain Name Letter or term gTLD "f" ".pro" "reelsdownload" ".net" "rix" ".net" "saver" ".app" "stories" ".pro" "stories" ".watch" The addition of the letter and terms in the disputed domain names does not prevent a finding of confusing similarity between its trademarks and the disputed domain names. II. Rights or Legitimate Interests The Respondent is not using the disputed domain names in connection with any bona fide offering of goods or services. The Respondent is not a licensee of the Complainant. The Respondent is not affiliated with the Complainant. The Complainant has not granted any authorization for the Respondent to use its INSTA, IG or INSTAGRAM trademarks, in a domain name or otherwise. The Respondent provides an unauthorized Instagram downloader and viewer tools, in breach of the Complainant's Terms of Use. page 4 The Respondent is not commonly known by the disputed domain names. The Respondent is not making a legitimate noncommercial or fair use of the disputed domain names. The Complainant has established a prima facie case showing that the Respondent lacks rights to or legitimate interests in the disputed domain names. III. Registered or Used in Bad Faith The Complainant's trademarks are well-known and are closely associated with the Complainant's INSTAGRAM trademark. The Respondent could not credibly argue that it did not have knowledge of the Complainant or its INSTAGRAM, INSTA or IG trademarks when registering the disputed domain names between April 2020 and May 2023, by which time the Instagram application had amassed over 1 billion monthly active users. The Respondent's intent to target the Complainant when registering the disputed domain names , , , , and may be inferred from the contents of the websites to which said disputed domain names resolve, which make explicit reference to the Complainant's INSTAGRAM, INSTA and IG trademarks. Since the time when the Respondent registered the disputed domain names , , , , and , he has not shown any bona fide intent in relation to them. Rather, that the Respondent has taken steps to cause to resolve or redirect those disputed domain names to websites that provide tools for the unauthorized anonymous viewing and downloading of content from Instagram, which violates the Complainant's Terms of Use. Similarly, with regards the disputed domain names and , the Complainant also notes that there is no evidence demonstrating any bona fide offering of goods or services considering both have remained inactive since registration. That given the distinctiveness and the reputation of the Complainant's trademarks, the Respondent undoubtedly had the Complainant's business identifiers in mind when registering the disputed domain names. That the Respondent's choice of disputed domain names cannot have been accidental and must have been influenced by the fame of the Complainant and its trademarks. That previous panels appointed under the UDRP have established that the mere registration of a disputed domain name that is identical or confusingly similar to a famous or well-known trademark by an unaffiliated entity can by itself create a strong presumption of bad faith. B. Respondent The Respondent sent communications to the Center on October 9, 2023, asking "what should I do?" and "what is the essence of the Complaint?". No further communications were received following the notification of the Complaint to the Respondent. 6. Discussion and Findings 6.1 Procedural issue - Consolidation of Multiple Respondents The Complainant requested the consolidation of two Respondents. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0"), section 4.11.2 provides that "Where a complaint is filed against multiple respondents, panels look at whether (i) the domain names or page 5 corresponding websites are subject to common control, and (ii) the consolidation would be fair and equitable to all parties. Procedural efficiency would also underpin panel consideration of such a consolidation scenario." Considering the circumstances of the case, particularly the fact that both Respondents used the same email address for purposes of the registration of the disputed domain names and that email was used by the Respondent Ihor Grigoriev to send the above-referenced informal communications, neither of which rebutted the Complainant's arguments for common control nor the Complainant's request for consolidation. Accordingly, the Panel finds that it is more likely than not that the disputed domain names are subject to the common control, and that consolidation would be fair and equitable to all Parties and would enhance efficiency. Therefore, the Panel grants the Complainant's consolidation request. The registrants of the disputed domain names shall be referred to collectively throughout the present proceeding as the Respondent. Given the Respondent's failure to submit a formal response, the Panel may decide this proceeding based on the Complainant's undisputed factual allegations under paragraphs 5(f), 14(a), and 15(a) of the Rules (see Joseph Phelps Vineyards LLC v. NOLDC, Inc., Alternative Identity, Inc., and Kentech, WIPO Case No. D2006-0292, and Encyclopaedia Britannica, Inc. v. null John Zuccarini, Country Walk, WIPO Case No. D2002-0487). 6.2 Further Procedural Considerations Under paragraph 10 of the Rules, the Panel is required to ensure that the Parties are treated with equality and that each Party is given a fair opportunity to present its case, and that the administrative proceeding takes place with due expedition. Since the Respondent's mailing address is stated to be in Ukraine, which is subject to an international conflict at the date of this Decision, and which may impact case notification, it is appropriate for the Panel to consider, in accordance with its discretion under paragraph 10 of the Rules, whether the proceeding should continue. Having considered all the circumstances of the case, the Panel is of the view that it should. The Panel notes that the Respondent emailed the Center in apparent recognition of the ongoing proceeding. Further, since the Complainant's awareness of the disputed domain names, the use of at least the disputed domain name has changed (from a previously resolving active website to, currently, a Registrar parking page), which could indicate continuing control by the Respondent of the disputed domain names. The Panel concludes that the Parties have been given a fair opportunity to present their case, and so that the administrative proceeding takes place with due expedition the Panel will proceed to a Decision, accordingly. 6.3 Substantive Considerations A. Identical or Confusingly Similar It is well accepted that the first element functions primarily as a standing requirement. The standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between the Complainant's trademark and the disputed domain name. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, ("WIPO Overview 3.0"), section 1.7. Based on the available record, the Panel finds the Complainant has shown rights in respect of the famous marks INSTAGRAM, INSTA, and IG for the purposes of the Policy. WIPO Overview 3.0, section 1.2.1. (see Instagram, LLC v. Ellie Walker WIPO Case No. D2018-0669, and Instagram, LLC v. Royden Harquin WIPO Case No. D2019-1597). page 6 It is well established in prior decisions issued under the UDRP, with which the Panel agrees, that a Top-Level Domain ("TLD") may generally be disregarded when comparing a trademark with a disputed domain name. The Panel considers the TLDs to be irrelevant under the circumstances of the present case. The Panel finds the entirety of the trademark INSTA is reproduced within the following disputed domain names , , , , , and , and the entirety of the trademark IG is reproduced in the disputed domain name . Accordingly, these disputed domain names are identical or confusingly similar to said marks for the purposes of the Policy. WIPO Overview 3.0, section 1.7. While the addition of other elements/terms such as "f", "reelsdownload", "rix", "saver", and "stories" present in the disputed domain names , , , , , and respectively, and the term "stories" present in the disputed domain name may bear on assessment of the second and third elements, the Panel finds the addition of such terms do not prevent a finding of confusing similarity between the disputed domain names and the marks for the purposes of the Policy. WIPO Overview 3.0, section 1.8. Based on the available record, the Panel finds the first element of the Policy has been established. B. Rights or Legitimate Interests Paragraph 4(c) of the Policy provides a list of circumstances in which the Respondent may demonstrate rights or legitimate interests in a disputed domain name. While the overall burden of proof in UDRP proceedings is on the complainant, 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 often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element. WIPO Overview 3.0, section 2.1. Having reviewed the record, the Panel finds the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain names. The Complainant has asserted that there is no relationship or affiliation between the Complainant and the Respondent, that it has not granted any authorization to the Respondent to use its trademarks INSTA and IG, and that the Respondent has not been commonly known by the disputed domain name (see Beyoncé Knowles v. Sonny Ahuja, WIPO Case No. D2010-1431, and Six Continents Hotels, Inc. v. IQ Management Corporation, WIPO Case No. D2004-0272). The case file contains no evidence that demonstrates that the Respondent has used or has made demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods or services (see Valentino S.p.A. v. Qiu Yufeng, Li Lianye, WIPO Case No. D2016-1747; and Associated Newspapers Limited v. Manjeet Singh, WIPO Case No. D2019-2914). Instead, the disputed domain names have been used to mislead unsuspecting Internet users through the incorporation of the Complainant's famous INSTA and IG trademarks and directing said Internet users to either Registrar parking pages with sponsored commercial links, or websites whose content compounds the risk of affiliation through the use of the Complainant's INSTRGRAM trademark in an illicit offer to allegedly download services circumventing the Complainant's privacy policy. The Respondent has not rebutted the Complainant's prima facie showing and has not come forward with any relevant evidence demonstrating rights or legitimate interests in the disputed domain names such as those enumerated in the Policy or otherwise. page 7 Based on the available record, the Panel finds the second element of the Policy has been established. C. Registered and Used in Bad Faith The Panel notes that for the purposes of paragraph 4(a)(iii) of the Policy, paragraph 4(b) of the Policy establishes circumstances, in particular but without limitation, that if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith. As discussed previously, the Panel notes that the Complainant and its trademarks INSTAGRAM, INSTA, and IG are famous. The Complainant conducts business on the Internet and one of the main features and purposes of its application is to allow people to share digital content. Therefore, an anonymous Instagram story viewer tool could be considered as a legitimate complement to the Complainant's services. Based on these facts, it is reasonable to conclude that the Respondent knew or should have known the Complainant and its trademarks INSTAGRAM, INSTA, and IG at the time of registration of the disputed domain names, which under the circumstances of this case constitutes bad faith registration under the Policy (see section 3.2.2 of the WIPO Overview 3.0). The fact that the Respondent registered the disputed domain names , , , , , and that entirely reproduce the Complainant's famous trademark INSTA, as well as the fact that the Respondent registered the disputed domain name which entirely reproduces the Complainant's well-known trademark IG shows that the Respondent has targeted the Complainant and its trademarks, which constitutes opportunistic bad faith (see section 3.2.1 of the WIPO Overview 3.0; see also L'Oréal v. Contact Privacy Inc. Customer 0149511181 / Jerry Peter, WIPO Case No. D2018-1937; Gilead Sciences Ireland UC / Gilead Sciences, Inc. v. Domain Maybe For Sale c/o Dynadot, WIPO Case No. D2019-0980; and Nutricia International BV v. Eric Starling, WIPO Case No. D2015-0773). Previous panels appointed under the UDRP have found that the mere registration of a domain name that is identical or confusingly similar to a famous trademark by an unaffiliated entity can by itself create a presumption of bad faith (see section 3.1.4 of the WIPO Overview 3.0). This is so in the present case because the INSTA and IG trademarks are famous and extensively used worldwide. In light of the evidence submitted by the Complaint, the Panel considers that the terms "INSTA" and "IG" are generally used and recognized as abbreviations of INSTAGRAM. The evidence submitted by the Complainant shows that the Respondent has intentionally used the disputed domain names , , , and (and previously, ), to attract, for commercial gain, Internet users to the websites to which they resolve, being that said websites allegedly offer an anonymous Instagram story viewer, and downloader tools. This conduct creates the impression among Internet users that said website is related to, associated with, or endorsed by the Complainant, which conduct constitutes bad faith under paragraph 4(b)(iv) of the Policy (see section 3.1.4 of the WIPO Overview 3.0.; see also trivago GmbH v. Whois Agent, Whois Privacy Protection Service, Inc. / Alberto Lopez Fernandez, Alberto Lopez, WIPO Case No. D2014-0365; and Jupiter Investment Management Group Limited v. N/A, Robert Johnson, WIPO Case No. D2010-0260). UDRP panels have found that the non-use of a domain name (including a blank or "coming soon" page) would not prevent a finding of bad faith under the doctrine of passive holding. Having reviewed the record, the Panel finds the non-use of the disputed domain names , , and does not prevent a finding of bad faith under the circumstances of this proceeding. While panelists will look at the totality of the circumstances in each case, factors that have been considered relevant in applying the passive holding doctrine include: (i) the degree of distinctiveness or reputation of the complainant's mark, (ii) the failure of the respondent to submit a response or to provide any evidence of actual or contemplated good-faith use, (iii) the respondent's concealing its identity or use of false contact details (noted to be in breach of its registration agreement), and (iv) the implausibility of any good faith use to which the domain name may be put. WIPO Overview 3.0, section 3.3. Having reviewed the record, the Panel notes the distinctiveness, reputation and famous nature of the Complainant's trademark, the composition of the disputed domain name, the use to which the remaining disputed domain names have been (or were) put, page 8 and the Respondent's lack of rebuttal to the Complainant's contentions, and finds that under the circumstances of this case the passive holding of the disputed domain names does not prevent a finding of bad faith under the Policy. Based on the available record, the Panel finds the third element of the Policy has been established. 7. Decision For 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 , , , , , , and be transferred to the Complainant. /Kiyoshi Tsuru/ Kiyoshi Tsuru Sole Panelist Date: December 4, 2023
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