The Complainant is Instagram, LLC, United States of America (“United States”), represented by Hogan Lovells (Paris) LLP, France.
The Respondent is A S, United States, represented by The Law Offices of Aaron Krowne, PLLC, United States.
The disputed domain name <instagramcommerce.com> is registered with GoDaddy.com, LLC (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 26, 2020. On May 26, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 27, 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 May 28, 2020. In accordance with the Rules, paragraph 5, the due date for Response was June 17, 2020. On June 3, 2020, the Center received an email communication from the Respondent’s representative. On June 4, 2020, the Center informed the Parties that if they wished to explore settlement options, the Complainant should submit a request for suspension. On June 12, 2020, the Complainant requested the Center to continue the proceeding. A further communication was submitted to the Center by the Respondent’s representative on June 16, 2020, stating “[the Respondent] declines to participate”. On June 17, 2020, the Center informed the Parties that it would proceed with panel appointment.
The Center appointed William R. Towns as the sole panelist in this matter on June 23, 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 is widely known for its highly successful Instagram online photo and video sharing social networking application. The Complainant launched the Instagram application in October 2010, and due to the Instagram application’s popularity and growth it now hosts over one billion monthly active accounts worldwide. According to Alexa, the Complainant’s “www.instagram.com” website is ranked as the 29th most visited website in the world. The Complainant consistently has placed among the “top” apps for mobile devices, receiving numerous awards including “App of the Year” from Apple Inc. in 2011. The Complainant was acquired by Facebook in 2012.
The Complainant owns trademark registrations for INSTAGRAM in multiple jurisdictions, including:
- United States Registration No. 4146057, filed on September 19, 2011, and registered on May 22, 2012 (first use in commerce October 6, 2010);
- United States Registration No. 4795634, filed on March 4, 2013, and registered on August 18, 2015 (first use in commerce May 13, 2013);
- European Union Trade Mark Registration No. 014493886, filed on August 20, 2015, and registered on December 24, 2015;
- International Trademark Registration No. 1129314, registered on March 15, 2012.
The Complainant also is the registrant of a numerous domain names reflecting the INSTAGRAM mark.
According to the Registrar’s WhoIs records, the Respondent is the registrant of the disputed domain name <instagramcommerce.com>, created on February 29, 2016. The disputed domain name resolves to a parking page provided by the Registrar, is not linked to an active website, and appears to be passively held.
The Complainant on March 9, 2020, issued a cease and desist letter by email and registered post to the Respondent, and followed up with a reminder to the Respondent on March 23. 2020. The Respondent through his representative replied to the Complainant on April 28, 2020. The Respondent’s representative submitted that the Respondent did not dispute that the disputed domain name contained the word “Instagram” nor that the Complainant had legitimate rights in one or more corresponding marks, however, the disputed domain name was registered in good faith for use with online marketing advisory services the Respondent provides, maintaining that such activities would constitute a fair use of the disputed domain name under the United States Anticybersquatting Consumer Protection Act (ACPA).
The Respondent declined to transfer the dispute domain name voluntarily to the Complainant, but stated he would be “open to a workout of some amicable arrangement”. The Complainant replied on May 5, 2020, offering the Respondent the sum of USD 75 in exchange for the prompt transfer of the dispute domain name, and seeking a reply from the Respondent by May 8, 2020. The Complainant, having heard nothing further from the Respondent as of May 26, 2020, filed its Complaint with the Center.
The Respondent’s representative contacted the Center on June 3, 2020, stating he had acted to accept the Complainant’s USD 75 offer by email on May 13, 2020. According to the Respondent’s representative, the email was spam-blocked and as a result was not received by the Complainant. The Center advised the Parties on June 4, 2020, that the proceedings could be suspended pursuant to paragraph 17 of the Rules in order to implement a settlement agreement. However, the Complainant on June 12, 2020, informed the Center it would not agree to a suspension. The Respondent’s representative on June 16, 2020, indicated that the Respondent declined to participate to the proceedings.
The Complainant submits that the disputed domain name is confusingly similar to the Complainant’s INSTAGRAM mark, observing that the Complainant’s mark is clearly recognizable in its entirety in the disputed domain name. The Complainant maintains that the inclusion of the descriptive term “commerce” following “instagram” in the disputed domain name does not dispel the confusing similarity of the disputed domain name to the Complainant’s INSTAGRAM mark, and that the generic Top-Level Domain Name (“gTLD”) “.com” is disregarded. The Complainant asserts that the INSTAGRAM mark has been recognized by UDRP panels as a well-known mark, citing Instagram, LLC v. Andrew Tannous, WIPO Case No. D2019-0237; Instagram, LLC v. Saddam Hussain, WIPO Case No. D2018-0078.
The Complainant maintains that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant avers that the Respondent has not been licensed or otherwise authorized to use the Complainant’s mark, and contends that the Respondent has not been commonly known by the disputed domain name, but rather as “A S”, which according to the Complainant does not accurately reflect the identity of the Respondent. The Complainant asserts that prior to any notice of the dispute, the Respondent had neither used nor made demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods or services, and maintains that the Respondent cannot contend otherwise. The Complainant further observes that the disputed domain name since registration continuously has resolved to a parking page provided by the Registrar lacking any substantive content. The Complainant submits that the Respondent has not made a legitimate noncommercial or other fair use of the disputed domain name.
The Complainant maintains that the Respondent has registered and used the disputed domain name in bad faith. The Complainant submits that the INSTAGRAM mark is inherently distinctive and well known in connection with its photo-sharing network, and has been used continuously since 2010. According to the Complainant, the fame of its INSTAGRAM mark is evidenced by the number of cybersquatters that have sought to exploit the consumer recognition and goodwill attached to the mark. The Complainant notes that UDRP panels recognizing the strength and renown of the INSTAGRAM mark have ordered transfers of such disputed domain names to the Complainant, again citing Instagram, LLC v. Saddam Hussain, supra.
The Complainant reiterates that according to the pre-Complaint communications, the Respondent has not denied awareness of the Complainant and the Complainant’s rights in the INSTAGRAM mark. The Complainant maintains that the Respondent’s claim to have registered the disputed domain name for use with the Respondent’s online marketing business carries with it a risk of implied affiliation with the Complainant. The Complainant submits that no plausible good faith use the disputed domain name could be put to by the Respondent without misleading consumers as to the source or affiliation of the disputed domain name. The Complainant submits that the disputed domain name resolves to a parking page provided by the Registrar without substantive content and that such non-use of the disputed domain name is similar to passive holding, and would not prevent a finding of bad faith, citing Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003. The Complainant reiterates that the Respondent registered the disputed domain name as “A S”, which does not accurately reflect the true identity of the Respondent.
The Respondent did not submit a formal response to the Complaint. As previously noted, the Respondent’s representative announced the Respondent would be boycotting the proceedings. However, also as previously noted, during the pre-Complaint communications, the Respondent’s representative submitted that the disputed domain name was registered in good faith for use with online marketing advisory services the Respondent provides, maintaining that such activities would constitute a fair use of the disputed domain name under the ACPA.
The Policy is addressed to resolving disputes concerning allegations of abusive domain name registration and use. Milwaukee Electric Tool Corporation v. Bay Verte Machinery, Inc. d/b/a The Power Tool Store, WIPO Case No. D2002-0774. Accordingly, the jurisdiction of this Panel is limited to providing a remedy in cases of “the abusive registration of domain names”, also known as “cybersquatting”. Weber-Stephen Products Co. v. Armitage Hardware, WIPO Case No. D2000-0187. See Final Report of the First WIPO Internet Domain Name Process, April 30, 1999, paragraphs 169-177. The term “cybersquatting” is most frequently used to describe the deliberate, bad faith abusive registration of a domain name in violation of rights in trademarks or service marks. Id. at paragraph 170. Paragraph 15(a) of the Rules provides that the panel shall decide a complaint on the basis of statements and documents submitted and in accordance with the Policy, the Rules and any other rules or principles of law that the panel deems applicable.
Paragraph 4(a) of the Policy requires that the complainant prove each of the following three elements to obtain a decision that a domain name should be either cancelled or transferred:
(i) the 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 with respect to the domain name; and
(iii) the domain name has been registered and is being used in bad faith.
Cancellation or transfer of the domain name is the sole remedy provided to the complainant under the Policy, as set forth in paragraph 4(i).
Paragraph 4(b) of the Policy sets forth four situations under which the registration and use of a domain name is deemed to be in bad faith, but does not limit a finding of bad faith to only these situations.
Paragraph 4(c) of the Policy in turn identifies three means through which a respondent may establish rights or legitimate interests in a domain name. Although the complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, UDRP panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is primarily, if not exclusively, within the knowledge of the respondent. Thus, the view is that the burden of production shifts to the respondent to come forward with evidence of a right or legitimate interest in the domain name, once the complainant has made a prima facie showing. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 2.1. See, e.g., Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270.
The Panel finds that the disputed domain name <instagramcommerce.com> is confusingly similar to the Complainant’s INSTAGRAM mark, a well-known mark in which the Complainant has established rights through registration and use. In considering identity and confusing similarity, the first element of the Policy serves essentially as a standing requirement.1 The threshold inquiry under the first element of the Policy involves a relatively straightforward comparison between the complainant’s trademark and the disputed domain name.
In this instance, the Complainant’s INSTAGRAM mark is clearly recognizable in the disputed domain name. 2 The inclusion of the descriptive term “commerce” in the disputed domain name does not serve to dispel the confusing similarity of the disputed domain name to the Complainant’s mark. When the relevant trademark is recognizable in the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) does not preclude a finding of confusing similarity under paragraph 4(a)(i) of the Policy.3 GTLDs generally are disregarded when evaluating the identity or confusing similarity of the Complainant’s mark to the disputed domain name under paragraph 4(a)(i) of the Policy, irrespective of any ordinary meaning that might be ascribed to the gTLD.4
Accordingly, the Panel finds the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.
As noted above, once the complainant makes a prima facie showing under paragraph 4(a)(ii) of the Policy, paragraph 4(c) shifts the burden of production to the respondent to come forward with evidence of rights or legitimate interests in a domain name. The Panel is persuaded from the record of this case that a prima facie showing under paragraph 4(a)(ii) of the Policy has been made. It is undisputed that the Respondent has not been authorized to use the Complainant’s INSTAGRAM mark. The Respondent notwithstanding registered the disputed domain name, which incorporates the Complainant’s INSTAGRAM in its entirety. The disputed domain name has resolved to a parking page provided by the Registrar without developed content since its registration in February 2016, and currently a “website coming soon” page. Therefore, the disputed domain name has been passively held by the Respondent.
Pursuant to paragraph 4(c) of the Policy, a respondent may establish rights or legitimate interests in a domain name by demonstrating any of the following:
(i) before any notice to it of the dispute, the respondent’s use of, or demonstrable preparations to use, the domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; or
(ii) the respondent 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.
The Respondent, as previously discussed, has not submitted a formal response to the Complaint, in the absence of which the Panel may accept all reasonable inferences and allegations in the Complaint as true. See Talk City, Inc. v. Michael Robertson, WIPO Case No. D2000-0009. The Panel has carefully reviewed the record in this case, and finds nothing therein that would bring the Respondent’s registration and use of the disputed domain name within any of the “safe harbors” of paragraph 4(c) of the Policy.
The Panel concludes based on the record in this case that the Respondent was aware of the Complainant and had the Complainant’s well-known INSTAGRAM mark in mind when registering the disputed domain name. The Respondent, describing himself as an online marketing expert, adviser and turnaround specialist, claims to have registered the disputed domain name for use with online marketing advisory services. Yet the Respondent has passively held the disputed domain name for well over four years, and when provided with an opportunity has not brought forward any credible evidence of pre-Complaint preparations to use the disputed domain name in connection with a bona fide offering of goods or services. UDRP panels have consistently held that a showing of use or demonstrable preparations to use a domain name in connection with a bona fide offering of goods or services cannot be merely self-serving but rather should be inherently credible and supported by relevant pre-complaint evidence. See WIPO Overview 3.0, section 2.2 and cases cited therein.
Having regard to the totality of circumstances in the record, the Panel considers that the Respondent’s unsubstantiated fair use assertion is without merit. A respondent’s use of a domain name cannot be considered “fair” if it falsely suggests affiliation with the trademark owner, and UDRP panels generally have found that a domain name appropriating a complainant’s trademark plus an additional term carries a risk of implied affiliation if it effectively impersonates or suggests sponsorship or endorsement by the trademark owner. See WIPO Overview 3.0, sections 2.5 and 2.5.1. The use of a domain name cannot be “fair” if it suggests a non-existent affiliation with the trademark owner; nor can a use be “fair” if it is pretextual. See 201 Folsom Option JV, L.P. and 201 Folsom Acquisition, L.P. v. John Kirkpatrick, WIPO Case No. D2014-1359; Project Management Institute v. CMN.com, WIPO Case No. D2013-2035.
In view of the foregoing, the Panel concludes that the Respondent has neither used nor demonstrated preparations to use the disputed domain name in connection with a bona fide offering of goods or services, and that the Respondent is not making a legitimate noncommercial or fair use of the disputed domain name. Further, there is no indication that the Respondent has been commonly known by the disputed domain name within the meaning of paragraph 4(c)(ii) of the Policy.
Accordingly, the Panel finds the Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy.
Paragraph 4(b) of the Policy states that any of the following circumstances, in particular but without limitation, shall be considered evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that the respondent registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant (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) circumstances indicating that the respondent 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) circumstances indicating that the respondent registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) circumstances indicating that the respondent is using the domain name to intentionally attempt 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 the respondent’s website or location or of a product or service on its website or location.
The examples of bad faith registration and use set forth in paragraph 4(b) of the Policy are not meant to be exhaustive of all circumstances from which such bad faith may be found. See Telstra Corporation Limited v. Nuclear Marshmallows, supra. The overriding objective of the Policy is to curb the abusive registration of domain names in circumstances where the registrant seeks to profit from and exploit the trademark of another. See Match.com, LP v. Bill Zag and NWLAWS.ORG, WIPO Case No. D2004-0230.
For the reasons discussed under this and the preceding heading, the Panel concludes that the Respondent’s conduct in this case constitutes bad faith registration and use of the disputed domain name within the meaning of paragraph 4(a)(iii) of the Policy. The Panel finds that the Respondent was aware of the Complainant and had the Complainant’s distinctive and well-known INSTAGRAM mark in mind when registering the disputed domain name. The Panel considers that the Respondent more likely than not registered the disputed domain name in order to exploit or profit from the Complainant’s trademark rights.
The Respondent’s passive holding of the disputed domain name does not preclude a finding of bad faith in the attendant circumstances of this case. As set forth in Telstra Corporation Limited v. Nuclear Marshmallows, supra, “the relevant issue is not whether the Respondent is taking a positive action in bad faith in relation to the domain name, but instead whether, in all the circumstances of the case, it can be said that the Respondent is acting in bad faith. […] [I]t is possible, in certain circumstances, for inactivity by the Respondent to amount to the domain name being used in bad faith”. See also Red Bull GmbH v. Kevin Franke, WIPO Case No. D2012-1531. The Panel finds such circumstances to be present in this case.
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 <instagramcommerce.com> be transferred to the Complainant.
William R. Towns
Sole Panelist
Date: July 1, 2020
1 See WIPO Overview 3.0 , section 1.7 .
2 See WIPO Overview 3.0, section 1.8 and cases cited therein.
3 Id.
4 See WIPO Overview 3.0 , section 1.11 .