The Complainant is Instagram, LLC, United States of America (“United States”), represented by Hogan Lovells (Paris) LLP, France.
The Respondent is Nader Chebaro, Sweden. 2. The Domain Name and Registrar
The disputed domain name is registered with Binero AB (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 12, 2019. On July 15, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 5, 2019, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details and contact information for the disputed domain name. The Registrar also disclosed that the language of the Registration Agreement was Swedish. The Complaint having been submitted in English, the Center invited the Complainant to provide sufficient evidence of an agreement between the Parties for English to be the language of proceeding, a Complaint translated into Swedish, or a request for English to be the language of proceeding.
The Complainant filed a request for English to be the language of proceeding on August 6, 2019.
On August 6, 2019, the Respondent sent an email communication to the Center in Swedish, asking for clarification regarding the ongoing UDRP proceeding and stating that they were willing to transfer the disputed domain name to the Complainant. On August 7, 2019, the Center sent the possible settlement email to the parties. No request for suspension of the proceeding was received from the Complainant.
The Center verified that the 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 August 12, 2019.
On August 12, 2019 and August 13, 2019, the Respondent sent email communications to the Center, reiterating their wish to settle the case. On August 13, 2019, the Complainant sent an email communication to the Center, stating that they would simply like to proceed to a decision in this matter.
In accordance with the Rules, paragraph 5, the due date for Response was September 1, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Commencement of Panel Appointment Process on September 2, 2019.
The Center appointed Tuukka Airaksinen as the sole panelist in this matter on September 4, 2019. 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 provider of an online photo and video sharing social networking application. The Complainant service was launched on October 6, 2010 and currently has over 1 billion monthly active users. In Sweden, where the Respondent is based, the Complainant’s website is the 10th most visited website.
The Complainant is the owner of the trademark INSTAGRAM, registered in various countries, such as in the United States under number 4146057. The trademark was registered on May 22, 2012, with priority filing date of September 19, 2011 and first use in commerce on October 6, 2010.
The disputed domain name was registered on March 6, 2012 and resolves currently to a Registrar parking page. 5. Parties’ Contentions A. Complainant
The disputed domain name is identical with the Complainant’s trademark INSTAGRAM as the country code Top-Level Domain (“ccTLD”) “.nu” is to be disregarded when assessing the similarity between the Complainant’s trademark and the disputed domain name.
The Respondent has no rights or legitimate interests in the disputed domain name. The Respondent is not a licensee of the Complainant, nor has he been otherwise authorized to use the Complainant’s trademark in a domain name or otherwise. The disputed domain name is held passively, which cannot be considered as a bona fide offering of goods or services. The Respondent is also not commonly known by the disputed domain name and has not made legitimate noncommercial or fair use of the disputed domain name.
The disputed domain name has been registered in full knowledge of the Complainant and its rights. Judging from the Respondent’s post on Facebook, he created his Instagram account around the date of the registration of the disputed domain name in March 2012.
The Respondent has engaged in a pattern of conduct by registering at least three domain names infringing well-known third party trademarks for the purpose of preventing the owners of the trademarks from reflecting their trademarks in corresponding domain names.
The Respondent has never actively used the disputed domain name, but passive holding of the disputed domain name cannot preclude a finding of bad faith given the overall circumstances of the case. Also the Respondent’s failure to respond to the Complainant’s cease and desist letter is an additional indication of the Respondent’s bad faith. Given the renown and popularity of the Complainant’s trademark, it is clear that the Respondent would not be able to use the disputed domain name for any legitimate purposes. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings 6.1 Procedural Issues 6.1.1 Language of the Proceeding
Paragraph 11 of the Rules provides that:
“(a) Unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding.”
The language of the Registration Agreements for the disputed domain names is Swedish.
The Complainant requested that the language of the proceeding be English.
The Respondent did not object to English being the language of the proceeding, and has communicated that he is willing to transfer the disputed domain name to the Complainant.
The Panel cites the following with approval:
“[T]he general rule is that the parties may agree on the language of the administrative proceeding. In the absence of this agreement, the language of the Registration Agreement shall dictate the language of the proceeding.
However, the Panel has the discretion to decide otherwise having regard to the circumstances of the case. The Panel’s discretion must be exercised judicially in the spirit of fairness and justice to both parties taking into consideration matters such as command of the language, time and costs. It is important that the language finally decided by the Panel for the proceeding is not prejudicial to either one of the parties in his or her abilities to articulate the arguments for the case.” See, Groupe Auchan v. xmxzl,WIPO Case No. DCC2006-0004.
The Panel finds that in the present case, noting that the Respondent has not objected to English being the language of the proceeding, that he has communicated also in English, and that he has indicated that he would be willing to transfer the disputed domain name to the Complainant, the Panel decides that English is the appropriate language of proceeding in this matter. 6.2 Substantive Issues
In order to obtain the transfer of a domain name, a complainant must prove the three elements of paragraph 4(a) of the Policy, regardless of whether the respondent files a response to the complaint. The first element is that the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights. The second element a complainant must prove is that the respondent has no rights or legitimate interests in respect of the domain name. The third element a complainant must establish is that the domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
Paragraph 4(a)(i) of the Policy requires that the Complainant establish that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights. Consequently, the Complainant must prove that it has rights to a trademark, and that the disputed domain name is identical or confusingly similar to this trademark.
The Complainant has submitted proof that it is the owner of the registered trademark INSTAGRAM, used in commerce in the United States since October 6, 2010.
The disputed domain name consists of the Complainant’s trademark INSTAGRAM and the ccTLD “.nu” (for Niue, meaning also “now” in Swedish). It is generally accepted that the applicable Top-Level Domain is viewed as a standard registration requirement and as such is disregarded under the first element confusing similarity test. It follows that the disputed domain name is identical with the Complainant’s trademark.
Accordingly, the Panel finds that the disputed domain name is identical or confusingly similar to the Complainant’s respective trademark and hence the first element of the Policy has been fulfilled. B. Rights or Legitimate Interests
Paragraph 4(a)(ii) of the Policy requires that the Complainant establish that the Respondent has no rights or legitimate interests to the disputed domain name.
It is widely accepted among UDRP panels that once a complainant has made a prima facie showing indicating the absence of the Respondent’s rights or legitimate interests in a disputed domain name the burden of production shifts to the Respondent to come forward with evidence of such rights or legitimate interests. If the Respondent fails to do so, the Complainant is deemed to have satisfied the second element of the Policy. See, e.g., Document Technologies, Inc. v. International Electronic Communications Inc.,WIPO Case No. D2000-0270 and section 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).
The Complainant has credibly submitted that the Respondent is neither affiliated with the Complainant in any way nor has he been authorized by Complainant to use and register the disputed domain name, that the Respondent has no prior rights or legitimate interests in the disputed domain name, and that the Respondent has not made and is not making a legitimate noncommercial or fair use of the disputed domain name and is not commonly known by the disputed domain name in accordance with paragraph 4(c)(ii) of the Policy.
Accordingly, the Panel finds that the Complainant has made a prima facie case that has not been rebutted by the Respondent. Considering the Panel’s findings below, the Panel finds that there are no other circumstances that provide the Respondent with any rights or legitimate interests in the disputed domain name. Therefore, the Panel finds that the second element of the Policy is fulfilled. C. Registered and Used in Bad Faith
Paragraph 4(a)(iii) of the Policy requires that the Complainant establish that the disputed domain name has been registered and is being used in bad faith. Paragraph 4(b) of the Policy provides that the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
“(i) circumstances indicating that [the Respondent has] registered or has acquired the domain name primarily for the purpose of selling, renting or otherwise transferring the domain name registration 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 or competitor; or
(iv) by using the domain name, [the Respondent has] intentionally attempted to attract, for commercial gain, Internet users to [the Respondent’s] website or other online 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.”
The disputed domain name resolves to a parking website with no apparent activity. Non-use of a domain name does not prevent a finding of bad faith under the doctrine of passive holding (see WIPO Overview 3.0, section 3.3).
The Complainant has submitted proof that the Respondent has created his own Instagram account around the time of registering the disputed domain name. Considering this, and the popularity of the Complainant’s trademark and services, the Panel finds that the Respondent has been well aware of the Complainant’s trademark when registering the disputed domain name.
Considering further that the Respondent has not submitted a formal response, did not reply to the Complainant’s cease and desist letter, that the Respondent has earlier registered three domain names including well-known trademarks, the reputation of the Complainant’s trademark and the fact that there is no plausible good faith use to which the disputed domain name may be put, the Panel find that the disputed domain name was registered and is being used in bad faith. Therefore, the Panel finds that the third element of the Policy is fulfilled. 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.
Tuukka Airaksinen
Sole Panelist
Date: September 17, 2019
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