The Complainant is Instagram, LLC, United States of America (“United States”), represented by Hogan Lovells (Paris) LLP, France.
The Respondent is Asif Ibrahim, Asif Ibrahim, United Kingdom.
The disputed domain name <instagrammart.com> (the “Disputed Domain Name”) is registered with Register SPA (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 1, 2020. On October 2, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 5, 2020, 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.
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 October 20, 2020. In accordance with the Rules, paragraph 5, the due date for Response was November 9, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 19, 2020.
The Center appointed Nicholas Weston as the sole panelist in this matter on November 27, 2020. 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 operates a social media business with over 1 billion monthly active users. The Complainant holds registrations for the trademark INSTAGRAM in numerous countries, which it uses to designate computer software programs, user manuals, and related documentation. United States Trademark Registration No. 4146057, for example, shows a filing date of September 19, 2011 and was registered on May 22, 2012.
The Complainant owns numerous domain names that comprise or contain the trade mark INSTAGRAM, including the domain name <instagram.com> and has from October 2010 operated an active website as an online social network for Internet users to engage in photo and video sharing.
The Respondent registered the Disputed Domain Name <instagrammart.com> on December 28, 2017. The Disputed Domain Name resolves to an inactive webpage.
The Complainant cites its registered trademarks including International trademark registration No. 1129314 registered in 2012 and numerous other registrations around the world, for the mark INSTAGRAM as prima facie evidence of ownership.
The Complainant submits that the mark INSTAGRAM is well-known and that its rights in that mark predate the Respondent’s registration of the Disputed Domain Name <instagrammart.com>. It submits that the Disputed Domain Name is confusingly similar to its trademark, because the Disputed Domain Name incorporates in its entirety the INSTAGRAM trademark and that the similarity is not removed by the additional word “mart” or the addition of the generic Top-Level Domain (“gTLD”) “.com”.
The Complainant contends that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name because the Respondent is not a licensee of the Complainant, is unable to invoke any of the circumstances set out in paragraph 4(c) of the Policy, and given the passive use of the Disputed Domain Name, has made no demonstrable preparations to use the Disputed Domain Name in connection with a bona fide offering of goods or services.
Finally, the Complainant alleges that the registration and use of the Disputed Domain Name was, and currently is, in bad faith, contrary to the Policy and Rules having regard to the fame and prior use of the Complainant’s trademarks.
The Respondent did not reply to the Complainant’s contentions.
Under paragraph 4(a) of the Policy, the Complainant has the burden of proving the following:
(i) that the Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and
(iii) that the Disputed Domain Name has been registered and is being used in bad faith.
The Complainant has produced sufficient evidence to demonstrate that it has registered trademark rights in the mark INSTAGRAM in numerous countries including the United Kingdom, where the Respondent appears to be located. The requirements of the first element for purposes of the Policy may be satisfied by a trademark registered in any country (see Thaigem Global Marketing Limited v. Sanchai Aree, WIPO Case No. D2002-0358).
Turning to whether the Disputed Domain Name is identical or confusingly similar to the INSTAGRAM trademark, the Panel observes that the Disputed Domain Name comprises: (a) an exact reproduction of the Complainant’s trademark INSTAGRAM; (b) followed by the word “mart”; (c) followed by the gTLD “.com”.
It is well-established that the gTLD used as technical part of a domain name may be disregarded (see Autodesk v. MumbaiDomains, WIPO Case No. D2012-0286). The relevant comparison to be made is with the second-level portion of the Disputed Domain Name, specifically: “instagrammart”.
It is also well established that where a domain name incorporates a complainant’s well-known and distinctive trademark in its entirety, it may be confusingly similar to that mark despite the addition of a word or, in this case, the dictionary word “mart”: (see Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903; Wal-Mart Stores, Inc. v. Kuchora, Kal, WIPO Case No. D2006-0033).
This Panel accepts the Complainant’s contention that the dictionary word “mart” after the Complainant’s registered trademark is an additional element that does not serve to distinguish the Disputed Domain Name. The addition of the word “mart”, which on one meaning connotes a marketplace, located after the mark, does nothing to avoid the conclusion that the Disputed Domain Name is confusingly similar to the Complainant’s INSTAGRAM mark.
The Panel finds that the Complainant has established paragraph 4(a)(i) of the Policy.
Paragraph 4(c) of the Policy lists the ways that the respondent may demonstrate rights or legitimate interests in the disputed domain name. The Policy also places the burden on the complainant to establish the absence of respondent’s rights or legitimate interests in the disputed domain name. Because of the inherent difficulties in proving a negative, the consensus view is that the complainant need only put forward a prima facie case that the respondent lacks rights or legitimate interests. The burden of production then shifts to the respondent to rebut that prima facie case (see World Wrestling Federation Entertainment, Inc v. Ringside Collectibles, WIPO Case No. D2000-1306; WIPO Overview of WIPO Panel Views on Selected URDP Questions, Third Edition (“WIPO Overview 3.0”), section 2.1).
The Complainant contends that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name because it is not his name, there is no license from the Complainant to use the Complainant’s trademark, there is no evidence of the Respondents’ use, or demonstrable preparations to use, the Disputed Domain Name in connection with a bona fide offering of goods and services, and the evidence is that it resolves to a an inactive placeholder webpage with no substantive content.
On any objective view, the Respondent is not a reseller with a legitimate interest in a domain name incorporating a manufacturer’s mark, such that it could meet the tests set out in Oki Data Americas, Inc. v. ASD, Inc. WIPO Case No. D2001-0903, supra. The uncontested evidence is that the Respondent has not made, and is not currently making, a legitimate noncommercial or fair use of the Disputed Domain Name, without intent for commercial gain to misleadingly divert consumers pursuant to paragraph 4(c)(iii) of the Policy. Nor, alternatively, does paragraph 4(c)(ii) of the Policy apply.
This Panel accepts that the Complainant has made out a prima facie case that the Respondent lack rights or legitimate interests in the Disputed Domain Name and, in the absence of a Response by the Respondent, the Panel finds that the Complainant has satisfied the requirement under paragraph 4(a)(ii) of the Policy.
The third element of the Policy that the complainant must also demonstrate is that the disputed domain name has been registered and used in bad faith. Paragraph 4(b) of the Policy sets out certain circumstances to be construed as evidence of both of these conjunctive requirements.
The Panel finds that the evidence in the case shows the Respondent registered and has used the Disputed Domain Name in bad faith.
On the issue of registration, the trademark INSTAGRAM is so famous a mark that it would be inconceivable the Respondent might have registered the Disputed Domain Name without knowing of it. See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003; Instagram, LLC v. Sedat Das, Arda Arda, Domain Admin, whoisprotection biz, Domain Admin Domain Admin, whoisprotection biz, WIPO Case No. D2016-2382(“the Respondent was obviously well aware of the Complainant’s well-known INSTAGRAM and INSTA trademarks”); Instagram, LLC v. Ellie Walker, WIPO Case No. D2018-0669 (“the Trade Marks are famous throughout the world”); Facebook, Inc., WhatsApp Inc., Instagram, LLC, Oculus VR, LLC v. Domain Admin / This Domain is For Sale, HugeDomains.com, WIPO Case No. D2018-0150 (“Complainants’ well-known marks FACEBOOK, FB, INSTAGRAM, and WHATSAPP”); Instagram, LLC v. Saddam Hussain, WIPO Case No. D2018-0078 (“The INSTAGRAM trademark is a fanciful name with no meaning. It has been registered and used for several years all over the world, it enjoys a widespread reputation and high degree of recognition as a result of its fame and renown…”).
On the issue of use, the Complainant’s evidence is that the Disputed Domain Name is passively held. Previous UDRP panels have found that the non-use of a domain name would not prevent a finding of bad faith under the doctrine of passive holding. While panels 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” (see WIPO Overview 3.0, section 3.3). This Panel notes that the evidence is that all four of these factors are present in this proceeding.
In the absence of any evidence to the contrary, this Panel accepts the Complainant’s evidence and finds that the Respondent has taken the Complainant’s trademark INSTAGRAM and incorporated it in the Disputed Domain Name along with the dictionary word “mart”, without the Complainant’s consent or authorization, for the purpose of capitalizing on the reputation of the trademark to infringe upon the Complainant’s rights.
Accordingly, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(iii) 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 <instagrammart.com> be transferred to the Complainant.
Nicholas Weston
Sole Panelist
Date: December 3, 2020