ARBITRATION AND MEDIATION CENTER ADMINISTRATIVE PANEL DECISION Meta Platforms, Inc., and Instagram, LLC v. Siddiqui Tausif Case No. D2024-2648 1. The Parties The Complainant is Meta Platforms, Inc., and Instagram, LLC, United States of America, represented by Hogan Lovells (Paris) LLP, France. The Respondent is Siddiqui Tausif, India. 2. The Domain Name and Registrar The disputed domain name is registered with Hostinger Operations, UAB (the “Registrar”). 3. Procedural History The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 27, 2024. On June 28, 2024, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 1, 2024, 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 (Privacy Protect, LLC (PrivacyProtect.org)) and contact information in the Complaint. The Center sent an email communication to the Complainant on July 1, 2024, 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 July 5, 2024. 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 July 10, 2024. In accordance with the Rules, paragraph 5, the due date for Response was July 30, 2024. The Respondent did not submit any response. However, on July 10 and July 11, 2024, the Respondent sent informal emails willing to settle. On July 15, 2024, the Complainant requested to continue with the proceeding. Accordingly, the Center notified the Parties on August 6, 2024, that it would proceed to Panel Appointment.
page 2 The Center appointed Nayiri Boghossian as the sole panelist in this matter on August 12, 2024. 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, Meta Platforms Inc., is a world-renowned social technology company, which was formerly known as Facebook, Inc. until October 28, 2021, when it changed its name. The Complainant, Instagram LLC, is a world-renowned social networking platform created in 2010. The Complainant owns trademark registrations for IG and REELS such as: - European Union Trade Mark No. 017946393, for IG, registered on January 31, 2019. - European Union Trade Mark No. 018355171, for REELS, registered on March 17, 2021. The disputed domain name was registered on August 27, 2023, and resolves to a website which claims to offer a tool for downloading Instagram Reels. 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 name. Notably, the Complainant contends that the disputed domain name is identical or confusingly similar to the Complainant’s trademarks. The disputed domain name incorporates the Complainant’s trademarks IG and REELS in their entirety adding the descriptive word “download”, which does not eliminate confusing similarity. The generic Top-Level Domain (“gTLD”) “.xyz” is not relevant in the assessment of confusing similarity. The Complainant contends that the Respondent has no rights or legitimate interests in the disputed domain name. The Respondent is not using the disputed domain name in connection with any bona fide offering of goods or services. The Complainant did not authorize the Respondent to use its trademarks in the disputed domain name nor is the Respondent affiliated with the Complainant or is it a licensee of the Complainant. The disputed domain name resolves to a website, which provides a tool that allows users to watch Instagram Reels offline by downloading them from Instagram, although currently not functional. The website displays a version of the Complainant’s Instagram logo. The requirements of the Oki Data test (see Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903) are not met in the current case. The Respondent does not provide services for the proper use of the Complainant’s product. At the time of the submission of the Complaint, the Respondent’s website does not provide the downloader tool it refers to. Moreover, the provision of an Instagram downloader tool would be in breach of the Meta Developer Policies and would violate the Terms of Service of Instagram. It can also put the security of Instagram users at risk, as content scraped from the Instagram platform may be stored and used for unauthorized purposes by third parties. The website does not accurately nor prominently disclose the lack of relationship between the Respondent and the Complainant. The Respondent is not commonly known by the disputed domain name as there is no evidence to suggest so. The Respondent is not making a legitimate noncommercial or fair use of the disputed domain name. Offering a tool to download content from the Complainant’s platform does not constitute legitimate or fair use of a domain name.
page 3 The Complainant contends that the disputed domain name was registered and is being used in bad faith. The Complainant’s trademarks are well-known, as recognized by prior UDRP panels. The Respondent must have been aware of the Complainant’s trademarks as the website of the Respondent makes explicit reference to the Complainant’s trademarks. The Respondent has been using the disputed domain name to provide a tool for the unauthorized downloading of content from the Instagram platform, which breaches the Terms of Service of the Complainant. Unauthorized access and download of content from social networks amount to bad faith. There is no disclaimer on the website regarding the absence of a relationship between the Respondent and the Complainant. Further evidence of bad faith is the use of a proxy service to mask its identity and the absence of response to the cease and desist letter. B. Respondent The Respondent did not submit an official reply to the Complainant’s contentions. Instead, he sent an email on July 10, 2024, stating that he will delete the domain name and that the website has already been abandoned. On July 15, 2024, the Respondent sent an email with a signed Standard Settlement Form but the Complainant requested a decision from the Panel. 6. Discussion and Findings 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. The Complainant has shown rights in respect of trademarks or service marks for the purposes of the Policy. WIPO Overview 3.0, section 1.2.1. The entirety of the marks are reproduced within the disputed domain name. Accordingly, the disputed domain name is confusingly similar to the marks for the purposes of the Policy. WIPO Overview 3.0, section 1.7. Although the addition of other terms here, “download”, may bear on assessment of the second and third elements, the Panel finds the addition of such term does not prevent a finding of confusing similarity between the disputed domain name and the mark for the purposes of the Policy. WIPO Overview 3.0, section 1.8. 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. Although 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 difficult 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 (although the burden of proof always remains on the complainant). 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.
page 4 Having reviewed the available record, the Panel finds the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. 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 name such as those enumerated in the Policy or otherwise. The disputed domain name directs to a website which supposedly offers a tool for downloading content from the Complainants’ platform. Such use shows a clear intent to target the Complainant and take advantage of the reputation of the Complainant’s trademarks. The Panel also notes that the website does not clearly identity the relationship, or lack thereof, between the Respondent and the Complainant. Taking into account the circumstances of this case, the Panel finds that the Respondent’s use of the disputed domain name does not amount to a bona fide offering of goods and services, nor a legitimate noncommercial or fair use, for the purposes of the Policy. See Instagram, LLC v. Contact Privacy Inc. Customer 0152196674 / Stefano Scerra, WIPO Case No. D2021-1883, and Instagram, LLC v. Domains By Proxy, LLC / Ahmed Hemaid, WIPO Case No. D2021-1439. Moreover, the Panel notes that the Respondent confirmed upon notice of the dispute that it had deleted the website associated with the disputed domain name, and further agreed to delete the disputed domain name as the Respondent was not able to transfer it. The Panel infers from this communication that the Respondent does not have any rights or legitimate interests in the disputed domain name, and that the Respondent does not object to the transfer of the disputed domain name to the Complainant. 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. In the present case, the Panel notes that the Respondent must have been aware of the Complainant’s trademarks as the disputed domain name was registered two and four years after the registration of the Complainant’s trademarks and it directs to a page, which seems to offer a tool to download material available on the Complainant’s platform. Paragraph 4(b) of the Policy sets out a list of non-exhaustive circumstances that may indicate that a domain name was registered and used in bad faith, but other circumstances may be relevant in assessing whether a respondent’s registration and use of a domain name is in bad faith. WIPO Overview 3.0, section 3.2.1. Further to the Panel’s findings under the second element, the Panel considers that the use of the disputed domain name, incorporating the Complainant’s trademarks, to resolve to a website offering services related to the Complainant’s products and services without authorization and without identifying the lack of relationship with the Complainant is indicative of bad faith for the purposes of the Policy. In this regard, the Panel finds that the Respondent has intentionally created a likelihood of confusion with the Complainant’s trademarks as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website in order to unfairly attract Internet users for the Respondent’s own benefit. WIPO Overview 3.0, section 3.1.4. Having reviewed the record, the Panel finds the Respondent’s registration and use of the disputed domain name constitutes bad faith under the Policy. The Panel finds that the Complainant has established the third element of the Policy.
page 5 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 name be transferred to the Complainant. /Nayiri Boghossian/ Nayiri Boghossian Sole Panelist Date: August 23, 2024
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