The Complainant is Instagram, LLC, United States of America (“United States”), represented by Hogan Lovells (Paris) LLP, France.
The Respondent is Protection of Private Person, Russian Federation / Mehmet Azat Metin, Ukraine.
The disputed domain name <inst4gram.com> is registered with Registrar of Domain Names REG.RU LLC (the “Registrar”).
The Complaint in English was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 17, 2019. On October 17, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 18, 2019, 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 October 18, 2019, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. On October 18, 2019, the Center sent an email in English and Russian regarding the language of the proceeding. On October 21, 2019, the Complainant confirmed its request that English be the language of the proceeding. The Respondent did not comment on the language of the proceeding. The Complainant filed an amended Complaint in English on October 22, 2019.
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 in English and Russian of the Complaint, and the proceedings commenced on October 28, 2019. In accordance with the Rules, paragraph 5, the due date for Response was November 17, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 19, 2019.
The Center appointed Irina V. Savelieva as the sole panelist in this matter on December 5, 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.
The Complainant, Instagram LLC, is a world-renowned online and video sharing networking application launched in 2010. The Complainant’s website (“www.instagram.com”) is ranked the 14th most visited website in the world and one of the top applications for mobile devices both for iOS and Android operating systems. Acquired by Facebook in 2012 the company developed a considerable goodwill and currently has more than 1 billion monthly active uses.
Given the exclusive online nature of the Complainant’s business, the Complainant’s domain names consisting of its trademark are not only the heart of entire business but also the main way of its millions of users to access its services. The Complainant is the registrant of numerous domain names consisting of the term INSTAGRAM under a wide range of generic Top-Level Domains (gTLDs) including <instagram.com> as well as under numerous country-code Top-Level Domains (ccTLDs).
The Complainant has a number of well-known trademarks and has among others the following trademark registrations:
- United States trademark registration INSTAGRAM No. 4,146,057 registered on May 22, 2012;
- European Union trademark registration INSTAGRAM No. 014493886 registered on December 24, 2015;
- International trademark registration INSTAGRAM No. 1129314 registered on March 15, 2012.
The disputed domain name <inst4gram.com> was registered on September 1, 2018 and resolved to a website allowing Internet users to navigate Instagram anonymously. After the Complainant’s cease and desist letter, the disputed domain name redirects to a website at “https://gram.seohatz.com/”, a similar website to the one previously available at “www.inst4gram.com” offering the same services.
a) Identical or confusingly similar
The Complainant contends that the disputed domain name entirely incorporates the Complainant’s well-known registered trademark INSTAGRAM with replacing of the letter “a” by a number “4. Further, the Complainant draws attention to the fact that the substitution of the letter “a” with the number “4”, which both look alike, does not prevent a similarity with the Complainant’s trademark.
The Complainant therefore submits that the disputed domain name <inst4gram.com> is confusingly similar to the registered trademark INSTAGRAM in which the Complainant has rights.
b) The Respondent has no rights or legitimate interests
The Complainant has not found that the Respondent has any rights or legitimate interests in the disputed domain name <inst4gram.com>. The Complainant has not licensed or otherwise permitted the Respondent to use any of its trademarks or to register a domain name incorporating its trademark INSTAGRAM. The Respondent has no prior business relationship with the Complainant.
The Respondent is not making legitimate noncommercial or fair use of the disputed domain name. On the contrary, the website redirects to a website allowing Internet uses to navigate Instagram anonymously. The website contain a commercial banner related to the Complainant, from which the Respondent likely derives commercial gain.
Further, there is nothing to suggest that the Respondent is commonly known by the disputed domain name.
Therefore, the Complainant contends that the Respondent does not have any rights or legitimate interests in the disputed domain name and it is not involved in bona fide offering of goods or services.
c) The disputed domain name was registered and is being used in bad faith
The Complainant states its trademark registrations predate the registration of the disputed domain name and therefore it seems inconceivable that the Respondent did not have knowledge of the existence of the Complainant’s trademark at the time of the registration of the disputed domain name.
The Respondent’s intent to target the Complainant can be readily inferred from the content of the website at the disputed domain name, where it makes explicit reference to the Complainant with the following statements: “#celebrity Instagram photos and videos” or “©Insta9Pro, Top quality instagram web viewer”. The Respondent registered the disputed domain name in bad faith to create a misleading impression of association with the Complainant and to take advantage of the good will of the Complainant’s trademarks.
The Respondent’s use of the disputed domain name <inst4gram.com> proves that the Respondent registered and used the disputed domain name with intention to attract commercial gain and Internet users to the website by creating a likelihood of confusion as to the source, sponsorship, affiliation or endorsement of the website.
Finally, the fact that the Respondent was using a privacy protection service to hide his true identity in itself indicates bad faith.
Consequently, the Complainant concludes that the Respondent should be considered to have registered and used the disputed domain name in bad faith.
The Respondent did not reply to the Complainant’s contentions.
The Panels finds that the Respondent was given notice of this proceeding in accordance with the Rules both in Russian and English languages.
However, the Respondent failed to file a response to the Complaint and has not sought to answer to the Complainant’s assertions, evidence or contentions in any other manner. The Panel finds that the Respondent has been given a fair opportunity to present his case and finds no exceptional circumstances why he could not do so; and the Panel will proceed to the decision based on the Complaint in accordance with paragraph 5(f) of the Rules.
The Respondent’s default does not automatically result in a decision in favor of the Complainant. The Complainant must still prove the elements required by the Policy. In accordance with paragraph 4(a) of the Policy, in order to succeed in this proceeding and obtain the transfer of the disputed domain name, the Complainant must prove that the three following elements are satisfied:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name was registered and is being used in bad faith.
Pursuant to paragraph 15(a) of the Rules the Panel shall decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable. Moreover, in accordance with paragraph 14(b) of the Rules, the Panel may draw such inferences as it considers appropriate from the Respondent’s failure to reply to the Complainant’s assertions and evidence or to otherwise contest the Complaint. In the circumstances, the Panel’s decision is based upon the Complainant’s assertions, evidence and inferences drawn from the Respondent’s failure to reply.
The Registrar has confirmed that the language of the Registration Agreement is in Russian.
Paragraph 11(a) of the Rules states that 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 regards to the circumstances of the administrative proceeding
The Complainant noticed that the language of the Registration Agreement is available both in English and Russian and requested English as the language of the proceeding for the following reasons: (a) the disputed domain name was registered under the “.com” gTLD; b) the disputed domain name is in Latin scripts and is a distinctive term in English; (c) the disputed domain name is linked to a website at the URL “https: //gram.seohatz.com” with the word “seo” being an abbreviation of “Search Engine Optimization” in English; (d) the website at the disputed domain name offer “English” as one of the language options and the Respondent is targeting English speakers; and (e) it would be disproportioned to require the Complainant to submit in English as it would result in additional expense and unnecessary delay.
In light of the above, the Panel finds that there is evidence showing that the Respondent may be familiar with the English language. Further, the Respondent did not reply to the submission of the Complainant about its request for English to be the language of the proceeding. The Panel considers that the requirement of section 4.5.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) are complied with as both Parties are treated with equality and each Party is given a fair opportunity to present its case. Therefore, the Panel proceeds to a decision in English.
The Complainant has registered the trademark INSTAGRAM worldwide from 2012, which represent well-known mark in the area of online and video sharing networking application. The Complainant submits that the disputed domain name is confusingly similar to its trademark. The disputed domain name <inst4gram.com> incorporates the word INSTAGRAM in its entirety with the letter “a” substituted with a number “4” combining the existing Complainant’s trademark.
The Panel refers to consistent practice and past UDRP decisions, which confirm that incorporating trademark elements in another combination does not negate a finding of confusing similarity. It was specifically highlighted in section 1.7 of the WIPO Overview 3.0, which states that “this test typically involves a side-by-side comparison of the domain name and the textual components of the relevant trademark to assess whether the mark is recognizable within the disputed domain name. […] In some cases, such assessment may also entail a more holistic aural or phonetic comparison of the complainant’s trademark and the disputed domain name to ascertain confusing similarity.” As specified, further at section 1.9 of the WIPO Overview 3.0 “a domain name which consists of a common, obvious, or intentional misspelling of a trademark is considered by panels to be confusingly similar to the relevant mark for purpose of the first element”.
The combination of words “inst4gram” misspells the Complainant’s trademark INSTAGRAM. In the Panel view, the disputed domain name is confusingly similar to INSTAGRAM trademark, which is reproduced in its entirety with one letter replaced with a number but being phonetically similar and is clearly recognizable within the disputed domain name.
Accordingly, the Panel finds that the disputed domain name <inst4gram.com> is confusingly similar to the Complainant’s trademark INSTAGRAM.
The Panel finds that the Complainant has satisfied its burden of proof under paragraph 4(a)(i) of the Policy as the first element of the Policy.
The Complainant contends that the Respondent has no rights or legitimate interests in the disputed domain name.
Even though the Respondent has not filed a response to the Complaint and has not contested the Complainant’s assertions, the Panel will have to consider whether the Respondent’s use of the disputed domain name would indicate the Respondent’s rights or legitimate interests in the disputed domain name.
According to paragraph 4(c) of the Policy the following circumstances, if proved, demonstrate a respondent’s rights or legitimate interests in a domain name:
(i) the respondent’s use of or demonstrable preparations to use the domain name or corresponding name in connection with a bona fide offering of goods or services prior to notice of the dispute; or
(ii) the respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if it has acquired no trademark or service mark rights; or
(iii) the respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
A respondent may show its rights or legitimate interests, non-exhaustively, by producing evidence to support the circumstances under paragraphs 4(c) of the Policy.
By not responding to the Complainant’s contentions, the Respondent in this proceeding has not attempted to demonstrate his rights or legitimate interests. As stated in WIPO Overview 3.0 in section 2.1 “if the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element.”
The Panel further notes that there is no other evidence before any notice of the dispute with the Complainant, that the Respondent was using the disputed domain name for a bona fide offering of goods or services.
According to the Complainant, the website at the disputed domain name allows Internet users to navigate the Complainant’s website anonymously and is used for creating an impression that it is associated with the Complainant and its activity by using similar design of the Complainant’s website.
The described use of the disputed domain name <inst4gram.com>, in the Panel’s view, proves that the Respondent was not involved in bona fide offering of goods or services in respect of the disputed domain name under paragraph 4(c)(i) of the Policy.
The Panel finds that it may not be a typical case of reseller. However, if we consider it as a reseller case, according to Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903, the use of a trademark in a domain name by a third party is only to be regarded as a bona fide offering of goods or services within the meaning of paragraph 4(c) of the Policy if the following conditions are satisfied:
a) the respondent must actually be offering the goods or services at issue;
b) the respondent must use the site to sell only the trademarked goods;
c) the site must accurately and prominently disclose the registrant’s relationship with the trademark owner;
d) the respondent must not try to corner the market in all domain names, thus depriving the trademark owner of reflecting its own mark in a domain name.
The fact that the Respondent published a disclaimer on his website does not negate the lack of bona fide offering of services noting that the Respondent uses commercial banners related to third parties. In addition, the service provides by the Respondent to navigate Instagram anonymously is not in compliance with the Complainant’s API Platform Policy and generally with any legitimate or fair use business for the purposes of UDRP.
As to paragraph 4(c)(ii) of the Policy, there is no evidence that the Respondent has been commonly known by the disputed domain name.
The Panel recalls that the Respondent registered the disputed domain name in 2018, and this is long after the Complainant has registered its innovative and distinctive INSTAGRAM trademark from 2012. The trademark and the Complainant’s activity are well known and highly recognized within its industry.
There is no further evidence that the Respondent is making or has made legitimate noncommercial or fair use of the disputed domain name. Moreover, the Respondent is using the disputed domain name with the purpose of gaining profit. Therefore, paragraph 4(c)(iii) of the Policy does not apply.
The Panel finds the Complainant has established its prima facie case to show that the Respondent has no rights or legitimate interests in the disputed domain name, which has not been rebutted by the Respondent, and, accordingly, the Complainant has satisfied the requirements under paragraph 4(a)(ii) of the Policy as the second element of the Policy.
Paragraph 4(b) of the Policy, provides that the following circumstances are deemed to evidence that a respondent has registered and is using 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 the complainant, for valuable consideration in excess of its 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 online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation or endorsement of its website or location or of a product or service on its website or location.
The Complainant contends that the Respondent has violated the bad faith provision of the Policy because the disputed domain name has been registered with the Respondent’s knowledge of the Complainant’s trademark, worldwide activity and reputation.
The Complainant’s first use and first registration of INSTAGRAM trademark predate any use the Respondent may have made of the disputed domain name. The disputed domain name was registered in 2018 years after the Complainant’s first use of this registered trademark.
The website at the disputed domain name allows Internet users to navigate the Complainant’s website anonymously. Further, there are commercial banners related to third parties at the website for commercial gain using the Complainant’s reputation and goodwill.
It is the Panel’s view, under the present circumstances, that the Respondent most likely registered the disputed domain name with full awareness of the Complainant’s trademark as well as the goodwill associated with it.
It is clear in the Panel’s opinion that in the mind of an Internet user, the disputed domain name could be associated with the Complainant’s trademark, which is likely to be confusing to the public as suggesting either an operation of the Complainant or one associated with or endorsed by it despite of the Respondent’s disclaimer. This disclamer cannot be sufficient to remove this confusion as the notice was written in fine print at the bottom of the website whereas the Respondent prominently state on the top of the website “Instagram Online Web Viewer”. Therefore, the Panel finds that the mere existence of a disclaimer in this case cannot cure such bad faith. See section 3.7 of the WIPO Overview 3.0.
Further, the Respondent has never been granted permission to register the disputed domain name. The Respondent takes advantage of INSTAGRAM trademark by intentionally attempting to attract visitors to the Respondent’s website by creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation or endorsement of the Respondent’s website or a product or service on the Respondent’s website.
The Panel finds that the Respondent’s registration and use of the disputed domain name shows the Respondent’s intent to rely on a risk of confusion with the Complainant’s activity and trademark as to the source, sponsorship, affiliation or endorsement of the disputed domain name and the website associated with it.
This conduct has been considered as bad faith under the Policy, as in Philip Morris Incorporated v. Alex Tsypkin, WIPO Case No. D2002-0946, in which the Panel stated: “It follows from what has been said about legitimacy that the Panel is satisfied that Respondent is using the disputed domain name intentionally to attempt to attract, for commercial gain, Internet users to his web site by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation or endorsement of his web site. Pursuant to Policy paragraph 4(b)(iv), this constitutes evidence of both bad faith registration and bad faith use, for the purposes of paragraph 4(a)(iii).”
These findings, together with the finding that the Respondent has no rights or legitimate interests in the disputed domain name, lead the Panel to conclude that the disputed domain name was registered and is being used by the Respondent in bad faith.
Additionally, the fact that the Respondent has deliberately chosen to conceal his identity behind the privacy protection is an additional indication of bad faith by the Respondent as it is highlighted in the WIPO Overview 3.0 in section 3.6: “where it appears that a respondent employs a privacy or proxy services merely to avoid being notified by a UDRP proceedings filed against it, the panel tend to find that this supports an inference of bad faith.”
Therefore, the Panel finds that the Respondent has registered and used the disputed domain name in bad faith and, accordingly, the Complainant has satisfied the requirements of paragraph 4(a)(iii) of the Policy as the third element of the Policy.
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 <inst4gram.com> be transferred to the Complainant.
Irina V. Savelieva
Sole Panelist
Date: January 2, 2020