Complainant is Instagram, LLC, United States of America (“United States), represented by Tucker Ellis, LLP, United States.
Respondent is Registration Private, Domains By Proxy, LLC, United States / Adam Green, United States.
The disputed domain name <instagrampayments.com> is registered with GoDaddy.com, LLC (the ”Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 29, 2021. On March 29, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 29, 2021, the Registrar transmitted by email to the Center its verification response Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on March 31, 2021, providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on April 3, 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 Respondent of the Complaint, and the proceedings commenced on April 14, 2021. In accordance with the Rules, paragraph 5, the due date for Response was May 4, 2021. An email communication sent by a third party was received by the Center on April 14, 2021.
The Center appointed Scott R. Austin as the sole panelist in this matter on June 2, 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.
The following facts appear from the Complaint (as amended) and its Annexes.
Since October 2010, Complainant has operated under the trademark INSTAGRAM (the “INSTAGRAM Mark”) an active website as an online social network for Internet users to engage in photo and video sharing and connect with each other on their mobile devices. Complainant currently has over one billion monthly active users and 500 million daily active users, with more than 95 million photos and videos shared per day. Web information company Alexa ranks Complainant’s official website, accessed at “www.instagram.com“ (“Official Website”), as the 23rd most visited website in the world, and the INSTAGRAM Mark ranks 19th in Interbrand’s current Best Global Brands report. In 2018, Complainant began providing payment services to its users through its platform, which expanded in 2019 with its mobile app “Instagram Checkout” feature and again in 2020 with its mobile app “Instagram Shop” feature integrated with Facebook Pay, which payment services all have garnered significant media attention.
Complainant has secured ownership of a large number of trademark registrations for the INSTAGRAM Mark across various jurisdictions worldwide, including but not limited to the following:
United States Trademark Registration No. 4146057, INSTAGRAM, registered on May 22, 2012, for “Downloadable computer software for modifying the appearance and enabling transmission of photographs” in class 9 and claiming a first use date of October 6, 2010.
European Union Intellectual Property Office (EUIPO) Trademark Registration No. 014493886, INSTAGRAM, registered on December 24, 2015, for a range of goods and services covering classes 25, 35, 38, 41, and 45.
International Registration No. 1129314, registered on March 15, 2012, for a range of goods and services covering International Classes 9 and 42, designating Australia, European Union, Japan, Israel, Republic of Korea, Norway, Singapore, Switzerland, and Turkey.
Complainant is also the owner of the domain name <instagram.com> from which Complainant operates its Official Website offering Complainant’s social networking, online payment and shopping services.
The disputed domain name was registered on July 2, 2018, and as of the filing of the Complaint was inactive, resolving to a blank web page.
Complainant contends that the disputed domain name is identical or confusingly similar to Complainant’s trademark; that Respondent has no rights or legitimate interests in respect of the disputed domain name; and that the disputed domain name was registered and is being used in bad faith.
Respondent did not file a Response. On April 14, 2021, the Center received a communication from an email address nearly identical to the one identified by the Registrar as belonging to Respondent. The Panel notes that the email communication was in response to the Center’s “Notification of Complaint and Commencement of Administrative Proceeding” communication sent to the Parties and thus, the Panel will treat this communication as coming from Respondent. Respondent stated “What is this about? Keep getting messages but not sure why. Can someone call me on my cell?” and provided a cell phone number.
Respondent did not file any substantive response in reply to Complainant’s contentions.
There are no exceptional circumstances within paragraph 5(e) of the Rules to prevent this Panel from determining the present dispute based upon the Complaint (as amended), notwithstanding the failure of any person to lodge a substantive formal Response in compliance with the Rules. Under paragraph 14 of the Rules, where a party does not comply with any provision of the Rules, the Panel shall “draw such inferences therefrom as it considers appropriate”.
Where no substantive Response is filed, however, Complainant must still make out its case in all respects under paragraph 4(a) of the Policy. To succeed, Complainant must demonstrate that all the elements listed in paragraph 4(a) of the Policy have been satisfied:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights;
(ii) Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
The Panel will address each of these requirements in turn.
The standard of proof under the Policy is often expressed as the “balance of the probabilities” or “preponderance of the evidence” standard. Under this standard, an asserting party needs to establish that it is more likely than not that the claimed fact is true. See, WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 4.2.
Ownership of a nationally registered trademark constitutes prima facie evidence that the complainant has the requisite rights in a mark for purposes of paragraph 4(a)(i) of the Policy. WIPO Overview 3.0, section 1.2.1. Complainant has demonstrated its rights because it has shown that it is the holder of numerous valid and subsisting trademark registrations for its famous INSTAGRAM Mark. See Advance Magazine Publishers Inc., Les Publications Conde Nast S.A. v. Voguechen, WIPO Case No. D2014-0657.
With Complainant’s rights in the INSTAGRAM Mark established, the remaining question under the first element of the Policy is whether the disputed domain name (disregarding the Top-Level Domain (“TLD”) “.com” in which the domain name is registered) is identical or confusingly similar to Complainant’s INSTAGRAM Mark. It is well accepted that the first element functions primarily as a standing requirement and that the threshold test for confusing similarity involves a “reasoned but relatively straightforward comparison between the complainant’s trademark and the disputed domain name”. WIPO Overview 3.0, section 1.7.
Prior UDRP panels have held “the fact that a domain name wholly incorporates a complainant’s registered mark is sufficient to establish identity or confusing similarity for purposes of the Policy despite the addition of other words to such marks”. Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903; see also Instagram, LLC v. Igor Petrov, WIPO Case No. D2020-3127 (addition of words “buy”, “followers”, “cheap”, “like”, “bot”, and “solutions” to INSTAGRAM mark did not prevent confusing similarity); Facebook, Inc. v. Daniel Khrayzat, WIPO Case No. D2019-2813 (facebookglobalpay.com and facebookglobalpayment.com found confusingly similar to FACEBOOK mark).
The disputed domain name incorporates Complainant’s INSTAGRAM Mark in its entirety with the addition of the term “payments” and thereby adds a term related to Complainant’s services under Complainant’s INSTAGRAM Mark. As in the decisions cited above, this Panel finds this added term does not prevent a finding of confusing similarity between the disputed domain name and Complainant’s INSTAGRAM Mark.
Complainant’s INSTAGRAM Mark is recognizable as incorporated in its entirety into the disputed domain name and for that reason the Panel finds the disputed domain name confusingly similar to the INSTAGRAM Mark in which Complainant has rights.
Complainant has satisfied paragraph 4(a)(i) of the Policy.
Under the second element of the Policy, a complainant is first required to make out a prima facie case that the respondent lacks rights or legitimate interests in the disputed domain name. If a complainant makes that showing, the burden of production on this element shifts to the respondent to come forward with relevant evidence of such rights or legitimate interests in the domain name. If the respondent fails to come forward with such evidence, a complainant is generally, deemed to have satisfied the second element. WIPO Overview 3.0, section 2.1. See also, Malayan Banking Berhad v. Beauty, Success & Truth International, WIPO Case No. D2008-1393. Respondent has not come forward to show any rights or legitimate interests in the disputed domain name under the Policy at paragraph 4(c).
Complainant has established, prima facie, that Respondent lacks rights or legitimate interests in the disputed domain name. First, it is clear from the record submitted that Respondent is not a licensee of or affiliated with Complainant, nor has Complainant consented to or granted any authorization for Respondent to make use of Complainant’s INSTAGRAM Mark in a domain name or otherwise. Complainant has also shown that Respondent is not commonly known by the disputed domain name because Respondent is listed in the WhoIs record submitted with the initial Complaint as Registration Private, Domains By Proxy, LLC, and thereafter revealed by the involved registrar to be an individual, identified as the additional respondent in the amended Complaint. Neither Respondent bears any resemblance to the disputed domain name whatsoever.
It is generally regarded as prima facie evidence of no rights or legitimate interests if a complainant shows that the disputed domain name is identical or confusingly similar to a complainant’s trademark, that the respondent is not commonly known by the disputed domain name, and that a complainant has not authorized the respondent to use its mark (or an expression which is confusingly similar to its mark), whether in the disputed domain name or otherwise. See, Roust Trading Limited v. AMG LLC, WIPO Case No. D2007-1857.
Complainant also contends that since the disputed domain name resolves to an inactive or “blank” web page that Respondent has no genuine actual or legitimate business which uses the name or mark INSTAGRAM, or any similar name and has not used the INSTAGRAM mark or name (or any similar name) in connection with the bona fide offering of goods or services so that it benefits from any goodwill as such term is reflected in the disputed domain name.
Prior UDRP panels have held that use of a disputed domain name to resolve to a blank or inactive web page does not represent a bona fide use of the disputed domain name. See Indiamart Intermesh Ltd. v. Yi Zhi Ge, Ge Yi Zhi, WIPO Case No. D2019-0930 (disputed domain name linked to inactive website; absence of use does not confer any rights or legitimate interests on the respondent); see also Fetzer Vineyards v. --, WIPO Case No. D2019-2285.
Furthermore, prior UDRP panels have held that domain names that are identical to a complainant’s trademark carry a high risk of implied affiliation, and that such composition cannot constitute fair use if it effectively impersonates or suggests sponsorship or endorsement by the trademark owner. See WIPO Overview 3.0, section 2.5.1. The Panel notes that the disputed domain name consists of Complainant’s trademark coupled together with a term related to Complainant’s services. The Panel finds, therefore, that the disputed domain name carries a risk of implied affiliation with Complainant.
Finally, Complainant contends that Respondent’s registration of the subject domain name only a few months after Complainant’s launch of its payment services, strongly suggests that the subject domain name was registered to make an undue profit based on Complainant’s rights. Prior UDRP panels have found no rights or legitimate interests in the presence of such evidence. See Facebook, Inc. v. Daniel Khrayzat, WIPO Case No. D2019-2813 (no rights or legitimate interests where Respondent obtained disputed domain names FACEBOOK and ‘crypto’, ‘pay’, and/or ‘payment after news reports anticipated the complainant’s foray into cryptocurrency)
In view of the above, the Panel finds that Complainant has made out a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name. Respondent has not submitted any arguments or evidence to rebut Complainant’s prima facie case. The Panel determines, therefore, that Respondent does not have rights or legitimate interests in the disputed domain name and that Complainant has successfully met its burden under paragraph 4(a)(ii) of the Policy.
Complainant contends that because Respondent has created a domain name that is confusingly similar to Complainant’s INSTAGRAM Mark, as found in section 6A above, it is implausible to believe that Respondent did not have actual knowledge of Complainant’s famous mark when it registered its confusingly similar domain name. UDRP panels have consistently found that the mere registration of a domain name that is identical or confusingly similar (particularly domain names incorporating the mark plus a descriptive term) to a widely known or famous trademark by an unaffiliated entity can by itself create a presumption of bad faith. See, WIPO Overview 3.0, section 3.1.4.
The Panel also notes here additional factors under WIPO Overview 3.0, section 3.1.4, and cases cited thereunder, from which the Panel may infer bad faith registration:
(i) Respondent’s registration of a domain name involving Complainant’s INSTAGRAM Mark with the addition of the term “payments” only a few months after Complainant’s launch of its payment services, strongly suggests that the disputed domain name was registered to make an undue profit based on Complainant’s rights and to confuse consumers searching for Complainant and its services;
(ii) complainant’s INSTAGRAM Mark is so famous a mark that it would be inconceivable Respondent might have registered the disputed domain name without knowing of it; and
(iii) the lack of Respondent’s rights to or legitimate interests in the disputed domain name.
Given the circumstances of this case, such a showing is sufficient to establish bad faith registration. See, WIPO Overview 3.0, section 3.2.1.
Prior UDRP panels have found that the non-use of a domain name that is confusingly similar to a complainant’s mark constitutes use in bad faith. See Instagram, LLC v. Igor Petrov, WIPO Case No. D2020-3127 (finding non-resolving and passively held disputed domain name registered and used in bad faith). As found in section 6A above, Respondent has registered a domain name that is confusingly similar to Complainant’s famous INSTAGRAM Mark. Respondent has not substantively responded to the Complaint and concealed its identity via a privacy service. Finally, noting that the famous INSTAGRAM Mark is so obviously connected with Complainant, Complainant’s payment services are well publicized, and the disputed domain name clearly references the mark, the Panel finds it is implausible to conceive of any good faith use to which the disputed domain name may be put. See WIPO Overview 3.0, section 3.3. Accordingly, the registration and passive holding of the disputed domain name by Respondent, who has no connection with Complainant, supports a finding of bad faith under the Policy.
For these reasons, the Panel finds bad faith registration and use, and Complainant has met its burden under 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 <instagrampayments.com> be transferred to Complainant.
Scott R. Austin
Sole Panelist
Date: June 16, 2021