The Complainant is Instagram, LLC, United States of America, represented by Hogan Lovells (Paris) LLP, France.
The Respondent is Bar Technologies, Israel. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 13, 2021. On April 13, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 14, 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 April 15, 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 April 16, 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 April 19, 2021. In accordance with the Rules, paragraph 5, the due date for Response was May 9, 2021. The Respondent filed an informal response with the Center on April 21, 2021. The Center sent a possible settlement email to the Parties on April 21, 2021. The Complainant did not request a suspension of the proceeding in order to explore settlement options. The Center informed the Parties of its commencement of Panel Appointment process on May 10, 2021. The Center appointed Taras Kyslyy as the sole panelist in this matter on May 14, 2021. 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 an online photo and video-sharing social networking application. Since its launch in 2010, it became a fast growing photo/video sharing and editing software and online social network, with more than 1 billion monthly active accounts worldwide. The Complainant’s website, available at “www.instagram.com”, is ranked the 25th most visited website in the world, according to web information company Alexa. Currently, the social network has about 1 billion active users. The Complainant owns numerous trademark registrations for INSTAGRAM in many jurisdictions around the world, including, for instance, International trademark registration No. 1129314, registered on March 15, 2012, inter alia designating Israel. The Complainant also owns trademark registrations for its logo The disputed domain name was registered on August 16, 2018, and resolved to a website allowing Internet users to download videos and photos from the Complainant's social network and featuring logo similar to the Complainant's. The website contained disclaimer explaining it is not associated with Instagram. At the time of the decision the disputed domain name does not resolve to any active website. On October 20, 2020, the Complainant sent a cease-and-desist letter by email and using the online contact form available on the Registrar’s website requesting that the website be taken down. On December 15, 2020, the Complainant sent a reminder notice to the Respondent. No response followed. 5. Parties’ Contentions A. Complainant The disputed domain name is identical or confusingly similar to the Complainant’s trademark. The disputed domain name incorporates the Complainant's trademark in its entirety with the addition of the descriptive term “downloader”. The Complainant's trademark is clearly recognizable as the leading element of the disputed domain name. The combination of the Complainant's trademark together with the term "downloader" does not prevent a finding of confusing similarity between the disputed domain name and the Complainant's trademark. The addition of the country code Top-Level Domain (“ccTLD”) “.me” may be disregarded for the purposes of assessing confusing similarity, as it is a standard requirement of registration. 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 a bona fide offering of goods or services. The Respondent is not a licensee of the Complainant. The Respondent is not affiliated with the Complainant in any way. The Complainant has not granted any authorization for the Respondent to make use of its trademark, in a domain name or otherwise. Downloading videos from Instagram is not permitted, and therefore by offering such service the Respondent is not respecting the limits placed by the Complainant on the functionality of its own product. The Respondent is clearly targeting the Complainant. Such use of the disputed domain name cannot possibly be considered a bona fide offering of goods or services as the Respondent is clearly seeking to unduly benefit from the Complainant's reputation and goodwill and create confusion as to the entity providing the downloading services on offer. The presence of a disclaimer on the website associated with the disputed domain name does not cure the Respondent's bad faith, as the Complainant would never consent to its trademark being used in order to offer services that violate its guidelines and policies, particularly those that facilitate the downloading of Instagram videos from the Instagram website. The Respondent is not commonly known by the disputed domain name. The Respondent was using the disputed domain name to misleadingly divert Internet users to its website, which strongly suggests that the Respondent's intention is primarily not to use the disputed domain name in a fair manner but to somehow unfairly exploit the reputation and goodwill attached to the Complainant's trademark by creating a false impression of association with the Complainant. Furthermore, the Respondent’s website displays banner advertising presumably for the Respondent’s commercial gain. The disputed domain name was registered and is being used in bad faith. The Complainant registered the disputed domain name in bad faith in full knowledge of the Complainant's rights. The Respondent is using the disputed domain name to intentionally attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant's trademarks as to the source, sponsorship, affiliation or endorsement of the website. The presence of a disclaimer at the bottom of the Respondent's website does not serve to render the Respondent's activities bona fide, as the Respondent's website creates a misleading impression of endorsement by the Complainant. The fact that the Respondent’s website displayed commercial banners – from which the Respondent (or a third party) was likely obtaining financial gain – shows that the Respondent’s use of the disputed domain name was clearly intended for commercial gain and therefore constitutes additional evidence of bad faith use. The Respondent's failure to respond to the Complainant's cease and desist letter is an additional indication of the Respondent's bad faith. B. Respondent The Respondent in its informal response suggested to settle the matter. This however was not confirmed by the Complainant. 6. Discussion and Findings A. Identical or Confusingly Similar The ccTLD “.me” in the disputed domain name is viewed as a standard registration requirement and may be disregarded for the purposes of the confusing similarity test (see, e.g., Rexel Developpements SAS v. Zhan Yequn,WIPO Case No. D2017-0275). According to section 1.7 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (the “WIPO Overview 3.0”) in cases where a domain name incorporates the entirety of a trademark the domain name will normally be considered identical or confusingly similar to that mark for purposes of UDRP standing. The Panel finds that in the present case, the disputed domain name incorporates the entirety of the Complainant’s trademark. According to section 1.8 of the WIPO Overview 3.0 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. The Panel finds that addition of term "downloader" does not avoid the confusing similarity. Considering the above the Panel finds the disputed domain name is confusingly similar to the Complainant’s trademark, therefore, the Complainant has established its case under paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests The Complainant has established prima facie that the Respondent has no rights or legitimate interests in the disputed domain name. Furthermore, the Respondent provided no evidence that it holds a right or legitimate interest in the disputed domain name. The Respondent is not commonly known by the disputed domain name, which could demonstrate its right or legitimate interest (see, e.g., World Natural Bodybuilding Federation, Inc. v. Daniel Jones TheDotCafe,WIPO Case No. D2008-0642). The Complainant did not license or otherwise agree for use of its prior registered trademarks by the Respondent (see, e.g., Sportswear Company S.P.A. v. Tang Hong, WIPOCase No. D2014-1875). The disputed domain name incorporates the INSTARGAM trademark of the Complainant in its entirety and it is its core and distinctive element. Since INSTAGRAM is a well-known trademark, and the disputed domain name was associated with the website offering unauthorized services related to INSTAGRAM, the Panel finds that the Respondent must have been aware of the INSTAGRAM trademark when it registered the disputed domain name, and that it chose to target the INSTAGRAM trademark because of the likelihood that it will attract traffic to the Respondent’s website. In the Panel’s view, such conduct cannot be regarded as giving rise to rights or legitimate interests on the part of the Respondent to register and use the disputed domain name (see, e.g., LEGO Juris A/S v. Andrei Novakovich, WIPO Case No. D2016-1513). The Panel also finds that the nature of the services provided on the website at the disputed domain name, in particular, downloading videos contrary to the Complainant's policies, cannot constitute a bona fide offering of goods or services or legitimate noncommercial fair use (see, e.g., Andrey Ternovskiy dba Chatroulette v. Polina Butenina, WIPO Case No. D2018-1499). Considering the above, the Panel finds the Respondent does not have rights or legitimate interests in the disputed domain name. Therefore, the Complainant has established its case under paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith According to section 3.1.4 of the WIPO Overview 3.0 , the mere registration of a domain name that is identical or confusingly similar to a famous or widely-known trademark by an unaffiliated entity can by itself create a presumption of bad faith. The Panel is convinced that the Complainant’s trademark is well established through long and widespread use and the Complainant has acquired a significant reputation and goodwill in its trademark near worldwide. Thus, the Panel finds that the disputed domain name confusingly similar to the Complainant’s trademark was registered in bad faith. >According to section 3.1 of the WIPO Overview 3.0 , bad faith under the UDRP is broadly understood to occur where a respondent takes unfair advantage of or otherwise abuses a complainant’s mark. To facilitate assessment of whether this has occurred, and bearing in mind that the burden of proof rests with the complainant, paragraph 4(b) of the Policy provides that any of the following non-exclusive scenarios constitutes evidence of a respondent’s bad faith: (i) circumstances indicating that the respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the domain name; or (ii) the respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or (iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or (iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on the respondent’s website or location. In this regard, the Panel finds that at least the third and the fourth of the above scenarios apply to the present case confirming the Respondent’s bad faith. The disclaimer found on of the website to which the disputed domain name resolved does not avoid confusion on the part of potential Internet users and thus, does not negate an inference of bad faith (see, e.g., Facebook, Inc. v. Domain Administrator, PrivacyGuardian.org / Hernando Sierra, WIPO Case No. D2018-1145). Although at the time of this decision the disputed domain name resolves to inactive webpage, its previous bad faith use and lack of explanation of possible good faith use from the Respondent makes any good faith use of the disputed domain name implausible. Thus, the current passive holding of the disputed domain name does not prevent a finding of bad faith (see, e.g., Abbott Diabetes Care Inc. v. Privacy Protection, Hosting Ukraaine LLC / Виталий Броцман (Vitalii Brocman),WIPO Case No. DPW2017-0003). The Respondent also failed to respond to the Complainant’s cease-and-desist letter, and did not provide any good reason to justify this, which confirms its bad faith (see, e.g., Compagnie Generale des Etablissements Michelin v. Vaclav Novotny,WIPO Case No. D2009-1022). Considering the above, the Panel finds the disputed domain name was registered and is being used in bad faith. Therefore, the Complainant has established its case under paragraph 4(a)(iii) of the Policy. 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, Taras Kyslyy
for instance, Israeli trademark registration No. 284975, registered on May 13, 2016.
Sole Panelist
Date: May 19, 2021
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