Complainant is Instagram, LLC, United States of America (“United States” or “U.S.”), represented by Tucker Ellis, LLP, United States.
Respondent is On Behalf Of lnstagramhelpsecure.com Owner, Whois Privacy Service, United States / Emir Zemir, United States.
The disputed domain name <lnstagramhelpsecure.com> is registered with Amazon Registrar, Inc. (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 7, 2021. On December 7, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 9, 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 Complainant on December 10, 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 December 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 Respondent of the Complaint, and the proceedings commenced on December 16, 2021. In accordance with the Rules, paragraph 5, the due date for Response was January 5, 2022. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on January 6, 2022.
The Center appointed Scott R. Austin as the sole panelist in this matter on January 18, 2022. 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, as well its mobile application that in recent years has consistently ranked among the top “apps” in the market. Complainant currently has more than 500 million daily active accounts and more than one billion monthly active users from all over the world. Web information company Alexa ranks Complainant’s official website, accessed through its domain name <instagram.com>, 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. Complainant also provides security features as part of its products, including login alerts and two-factor authentication, at <help.instagram.com>, its online “Help Center”. Complainant recently launched its Security Checkup feature, which helps users whose accounts may have been hacked walk through the steps needed to secure them. The steps include checking login activity, reviewing profile information, confirming the accounts that share login information and updating account recovery contact information such as their phone number or email.
Complainant’s use of the INSTAGRAM Mark in the United States and throughout the world over the past eleven years has resulted in the Mark being famous and one in which Complainant has established common law trademark rights. Complainant has also 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. 012111746, INSTAGRAM (using a stylized font), registered on March 6, 2014, for a range of goods and services covering a broad range of goods and services in classes 9, 38, 41, 42, and 45.
International Registration No. 1129314, INSTAGRAM, 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.
In addition to the <instagram.com> domain name from which Complainant operates its Official Website offering Complainant’s social networking, shopping and online Help Center security services, Complainant owns and operates numerous other domain names incorporating the INSTAGRAM Mark in combination with various generic and country code top-level domain extensions, including <instagram.net> and <instagram.org>.
The disputed domain name was registered on January 3, 2021, and as of the filing of the Complaint was inactive; attempts to access a website at the disputed domain name generated an error message indicating “the site cannot be reached”. Annexes to the Complaint show that the disputed domain is listed by credible domain name tracking services as among those domain names previously used in relation to spam, malware, or other bad conduct.
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 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 a 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.
Prior UDRP panels have held “in cases where a domain name incorporates the entirety of a trademark, or where at least a dominant feature of the relevant mark is recognizable in the domain name, the domain name will normally be considered confusingly similar to that mark for purposes of UDRP standing.” See WIPO Overview 3.0, section 1.7; see also, Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903.
Prior UDRP panels have also held that once it is established that the relevant mark is recognizable in the disputed domain name, the addition of other words to the mark does not prevent a finding of confusing similarity for purposes of the Policy. See e.g., Instagram, LLC v. Semen Semchenko, Igor Petrov, Ivan Ivanov, 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 followed by the terms “help” and “secure” but replaces the Mark’s initial letter “i “ with the lower case letter “l” which closely resembles the upper-case letter “I” and could easily be mistaken by consumers for an upper case “I” or overlooked as a typo. As in the decisions cited above, this Panel finds these added terms do not prevent a finding of confusing similarity between the disputed domain name and Complainant’s INSTAGRAM Mark. Nor does the typographical change made by Respondent to the INSTAGRAM Mark because common misspellings and typographical variations have consistently been found by prior panels to satisfy the confusingly similar prong of Policy paragraph 4(a)(i). See AltaVista v. O.F.E.Z. et al., Case No. D2000-1160 (misspelling or typographical variation of well-known mark deemed “confusingly similar” to complainant’s mark); see also Instagram, LLC v. Ahmet Yalman dfd dfdf et al., D2020-2424.
Finally, prior UDRP panels have found that the applicable Top-Level Domain (“TLD”) in a domain name (e.g., “.com”, “.club”, “.co”) is viewed as a standard registration requirement and as such is disregarded under the first element confusing similarity test. Accordingly, the TLD “.com” does not avoid a finding of confusing similarity. See WIPO Overview 3.0, section 1.11; see also Research in Motion Limited v Thamer Ahmed Alfarshooti, WIPO Case No. D2012-1146.
Complainant’s INSTAGRAM Mark is readily recognizable as incorporated in its entirety into the disputed domain name and for these reasons the Panel finds the disputed domain name confusingly similar to the INSTAGRAM Mark in which Complainant has rights, thus satisfying the first element of the Policy.
Under the second element of the Policy, a complainant is first required to make out a prima facie case that 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 respondent to come forward with relevant evidence of such rights or legitimate interests in the disputed domain name. If 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 “On behalf of lnstagramhelpsecure.com owner” and “WhoIs Privacy Service.”, and thereafter the involved Registrar revealed the registrant to be an individual identified as Respondent Emir Zemir in the amended Complaint. Respondent bears any resemblance to the disputed domain name whatsoever. Based on these facts, combined with the lack of evidence in the record to suggest otherwise, this Panel finds that Respondent is not commonly known by the disputed domain name or any variation thereof pursuant to Policy paragraph 4(c)(ii).
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 respondent); see also Fetzer Vineyards v. --, WIPO Case No. D2019-2285.
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 argument or evidence to rebut Complainant’s prima facie case. The Panel concludes, therefore, that Complainant has established, by a preponderance of the evidence that Respondent lacks rights or legitimate interests in the disputed domain name and 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 INSTAGRAM 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 term descriptive of a complainant’s services) 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 the disputed domain name involving Complainant’s INSTAGRAM Mark with the addition of the terms “help” and “secure” after Complainant’s development of its online Help Center featuring its recently launched Security Checkup services to “help” users whose accounts may have been hacked take the steps needed to “secure” their accounts, 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 a famous mark; it would be inconceivable that Respondent might have registered the disputed domain name without knowing of it;
(iii) the evidence of typosquatting to confuse consumers addressed in section 6A above, through the substitution of the initial letter “I” in Complainant’s INSTAGRAM Mark with a different letter, a lower- case “L” which resembles an upper case “i”; and
(iv) 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. Semen Semchenko, Igor Petrov, Ivan Ivanov, 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 Help Center and Security Check 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; see also,Instagram, LLC v. Asif Ibrahim, D2020-2552. 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 the foregoing reasons, the Panel finds that Respondent registered and used the disputed domain name in bad faith and has met its burden under 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 <lnstagramhelpsecure.com> be transferred to Complainant.
Scott R. Austin
Sole Panelist
Date: February 2, 2022