The Complainant is Instagram, LLC of Menlo Park, California, United States of America ("US"), represented by Kilpatrick Townsend & Stockton LLP, US.
The Respondent is Muhittin Ozer of Izmir, Turkey.
The disputed domain name <online-instagram.com> is registered with IHS Telekom, Inc. (the "Registrar").
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on March 25, 2016. On March 29, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 30, 2016, 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.
On April1, 2016, the Center notified the Parties in both English and Turkish that the language of the Registration Agreement for the disputed domain name was Turkish. On the same day, the Complainant requested for English to be the language of the proceeding. On April 6, 2016, the Respondent requested for Turkish to be the language of the proceeding.
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, in both English and Turkish, and the proceeding commenced on April 7, 2016. In accordance with the Rules, paragraph 5, the due date for Response was April 27, 2016. On April 27, 2016, the Center received an email communication from the Respondent. The Respondent did not however submit any formal response. Accordingly, the Center notified the Parties about the commencement of panel appointment process on May 6, 2016.
The Center appointed Gökhan Gökçe as the sole panelist in this matter on May 23, 2016. 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 a US based company providing photo/video sharing and online social networking services through the "Instagram" mobile application and the website "www.instagram.com". Through this application, users can edit and share images and videos and follow the content other users share on the platform.
As evidenced in the annexes to the Complaint, the Complainant owns and uses the trademark INSTAGRAM and has registered its mark in various countries including the US (Trademark registration no. 4,146,057) and Turkey (Trademark registration no. 2013/7409). In addition, the Complainant also has domain name registrations for the following: <instagram.com>, <instagram.co.at>, <instagram.ec>, <instagram.ht>, <instagram.pk>, <instagram.net.ru>, <instagram.lk>, <instagram.gen.tr>, and <instagram.ae>.
The Respondent has registered the disputed domain name <online-instagram.com> on January 19, 2015 and it is currently directed to "www.imgrum.net" a website in English which calls itself "an online Instagram web viewer" including various images which were shared on the Complainant's "Instagram" mobile application and allowing users to search the images shared on the Complainant's mobile application with the "search the instagram" search tool. At the bottom of the Respondent's homepage, there is a disclaimer in small font which reads "This product uses the Instagram API but is not endorsed or certified by Instagram. All Instagram™ logos and trademarks displayed on this application are property of Instagram."
In accordance with paragraph 4(i) of the Policy, the Complainant requests that the disputed domain name <online-instagram.com> be transferred to the Complainant. The Complainant submits the grounds for this proceeding listed in paragraph 4(a) of the Policy.
The Complainant owns and uses the trademark INSTAGRAM and has registered its mark in various countries including the US (Trademark registration no. 4,146,057) and Turkey (Trademark registration no. 2013/7409). The Complainant is the owner of the well-known social networking mobile application "Instagram" and site "www.instagram.com".
The Complainant states that the disputed domain name is confusingly similar to its trademark as it contains the trademark in its entirety with the addition of the descriptive term "online" and the ".com" generic Top-Level Domain ("gTLD"). The Complainant asserts that the incorporation of a trademark in its entirety may be sufficient to establish that a domain name is identical or confusingly similar to a complainant's registered mark. The Complainant further asserts that the addition of a gTLD suffix, for example ".com", is irrelevant for the assessment of confusing similarity between a trademark and a domain name.
The Complainant asserts that the use of the disputed domain name by the Respondent is an attempt to divert Internet users seeking the Complainant's goods and services, and that the Respondent explicitly describes his website as an "online Instagram web viewer" which allows consumers to search for Instagram usernames, view user profiles, likes, and comments, and browse popular photos on Instagram, which is the identical service offered by the Complainant via its "www.instagram.com" website. The Complainant further asserts that not only does the Respondent's website specifically target the Complainant's consumers, but also displays advertisements throughout the website and therefore the Respondent's use does not constitute a bona fide offering of good or services or legitimate noncommercial or fair use.
The Complainant contends that the Respondent's use of the disputed domain name is primarily a pretext for commercial advantage as the disputed domain name contains numerous advertisements throughout the website that redirect to unrelated third-party websites; and that the Respondent is not commonly known by the disputed domain name.
The Complainant contends that the Respondent undoubtedly registered the disputed domain name in bad faith with actual knowledge of the Complainant's INSTAGRAM mark due to international recognition and that the fact that the Respondent had registered as a user of the Complainant's "Instagram" mobile application is proof of the Respondent's knowledge of the Complainant's trademark and business.
The Complainant states that it first made use of its INSTAGRAM mark in October 2010, and the mark has been recognized and relied upon by online consumers throughout the world to identify and distinguish the Complainant's website and services from the goods and services of others for years and that the Respondent's registration of the disputed domain name years after the Complainant had first used its mark is sufficient to satisfy the bad faith requirement.
The Complainant asserts that the Respondent is using the disputed domain name to divert Internet traffic for financial gain as the website linked to the disputed domain name contains hyperlinks to third party websites. The Complainant further asserts that the Respondent displayed the Complainant's marks and camera logo with the intent to cause confusion and that the Respondent has demonstrated a pattern of bad faith use and registration with the registration of the domain name <webtagram.net> which incorporates part of the Complainant's marks and is an online Instagram web viewer.
The Respondent did not submit a formal response to the Complainant's contentions. However, the Center received an email communication from the Respondent on April 27, 2016 stating that he is aware of the Complainant's website and that the services he is providing are with respect to this website. The Respondent further states that he did not know that he could not use the Complainant's registered trademark in the disputed domain name and that he does not have any objection to the transfer of the disputed domain name to the Complainant.
Under paragraph 11 of the Rules, unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement. In the present case, the language of the Registration Agreement is Turkish.
The Complainant submitted its Complaint in English and requested the language of the proceeding to be English. The Respondent has not submitted a response, however requested the language of the proceeding to be Turkish; therefore there is no agreement between the Parties with respect to the language of the proceeding.
Although the Respondent has requested the language of the proceeding to be Turkish, in the email communication dated April 27, 2016, the Respondent stated that he read and understood the Complaint. Further, the language used in the content of the website to which the disputed domain name resolves to and the disputed domain name is in English and as the Complainant is a US headquartered company, it would be cumbersome and to the Complainant's disadvantage to be forced to translate the entire Complaint to Turkish, Wordpress Foundation v. duanxiangwang, WIPO Case No. D2011-0836. In light of these facts, the Panel has decided English to be the language of the proceeding.
The Respondent did not submit a formal response however, has stated in his email communication dated April 27, 2016 that he has no objection to the transfer of the disputed domain name to the Complainant.
The Panel recognizes that the previous UDRP panels have held that "a genuine unilateral consent to transfer by the Respondent provides a basis for an immediate order for transfer without consideration of the paragraph 4(a) elements", Williams-Sonoma, Inc. v. EZ-Port, WIPO Case No. D2000-0207. Although the Panel has the authority to order a transfer based on the Respondent's consent without further analysis, the Panel has decided to address the merits because the Respondent has not expressly admitted bad faith and the Complainant has alleged that the Respondent has a pattern of bad faith use which suggests that the Respondent may make abusive registrations of other domain names in the future.
According to paragraph 4(a) of the Policy, the following three elements must be proven by the Complainant, to merit a finding that the disputed domain name be transferred to the Complainant:
(a) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(b) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(c) the disputed domain name has been registered and is being used in bad faith.
The Policy requires the Complainant to demonstrate that the disputed domain name is identical or confusingly similar to a trademark in which the Complainant has rights. The Panel is satisfied that the Complainant is the owner of the trademark INSTAGRAM as evidenced in the annexes to the Complaint and Turkish Patent Institute records. Further, while not dispositive under the first element, the Panel notes the Complainant has registered a number of domain names incorporating its trademark INSTAGRAM.
In relation to the disputed domain name, it is clear that the disputed domain name fully incorporates the Complainant's trademark and the only difference between the disputed domain name and the Complainant's trademark is the addition of the descriptive term "online" and the ".com" extension. The Panel finds the addition of a descriptive word does not provide sufficient distinctiveness and the addition of the ".com" extension is irrelevant when determining whether the disputed domain name is confusingly similar to the Complainant's trademark, Hoffmann-La Roche AG v. Fred Baker, WIPO Case No. D2015-0566; PRL USA Holdings, Inc. v. Spiral Matrix, WIPO Case No. D2010-1941. It has been stated in several decisions by other UDRP panels that the incorporation of a trademark in its entirety into a domain name may be sufficient to establish that the domain name is identical or confusingly similar to a registered trademark, Bayerische Motoren Werke AG, Sauber Motorsport AG v. Petaluma Auto Works, WIPO Case No. D2005-0941. The Panel recognizes the Complainant's rights and concludes that the disputed domain name is confusingly similar to the Complainant's INSTAGRAM trademark.
The Panel finds that the requirements in paragraph 4(a)(i) of the Policy are fulfilled, consequently, the Panel finds for the Complainant on the first element of the Policy.
In accordance with paragraph 4(a)(ii) of the Policy, the Complainant must prove that the Respondent has no rights or legitimate interests in respect of the disputed domain name. It is established in numerous UDRP panel decisions that it is difficult for a complainant to prove a negative and for that reason the complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests in a domain name, Belupo d.d. v. WACHEM d.o.o., WIPO Case No. D2004-0110. Once the complainant makes a prima facie case, the burden of demonstrating rights or legitimate interests in the domain name shifts to the respondent. The Policy at paragraph 4(c) provides various ways in which a respondent may demonstrate rights or legitimate interests in the domain name. If the respondent fails to do so, a complainant is generally deemed to have satisfied paragraph 4(a)(ii) of the Policy.
The Complainant contends the use of the disputed domain name by the Respondent is an attempt to divert Internet users seeking the Complainant's goods and services, and therefore does not constitute a bona fide offering of good or services or legitimate noncommercial or fair use; the Respondent's use of the disputed domain name is primarily a pretext for commercial advantage; and the Respondent is not commonly known by the disputed domain name.
In his email communication dated April 27, 2016, the Respondent did not object to the Complainant's contentions and accepted that he is aware of the Complainant's registered trademark and services and that the services he is providing are with respect to the Complainants website. Therefore, the Panel concludes that the Respondent has no rights or legitimate interests in the disputed domain name.
The requirements of paragraph 4(a)(ii) of the Policy are fulfilled and consequently the Panel finds in favor of the Complainant on the second element of the Policy.
Finally, the Complainant must show that the disputed domain name has been registered and is being used in bad faith under paragraph 4(a)(iii) of the Policy.
Paragraph 4(b) of the Policy provides a non-exhaustive list of circumstances that, if found by a panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that the respondent has registered or 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 that complainant, for valuable consideration in excess of your 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 the respondent's website or other on-line 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 the respondent's website or location.
The Complainant's trademark INSTAGRAM was registered and was being used before the Respondent's registration of the disputed domain name. The website associated with the disputed domain name calls itself "an online Instagram web viewer" and includes a disclaimer which states "This product uses the Instagram API but is not endorsed or certified by Instagram. All Instagram™ logos and trademarks displayed on this application are property of Instagram." Further, the Responded has accepted that he is aware of the Complainant's registered trademark and services. Therefore, there is no doubt that the Respondent was well aware of the Complainant's trademark INSTAGRAM at the time the disputed domain name was registered. The Panel, in accordance with previous decisions issued under the Policy, is of the opinion that actual knowledge of the Complainant's trademark at the time of registration of the disputed domain name is to be considered as an inference of bad faith, Parfums Christian Dior v. Javier Garcia Quintas and Christiandior.net, WIPO Case No. D2000-0226.
Further, the website associated with the disputed domain name contains several areas for advertisements, which suggests that the Respondent's use of the disputed domain name is commercial and the Respondent's website contains various images which were shared on the Complainant's "Instagram" mobile application and allows users to search the images shared on the Complainant's mobile application with the "search the Instagram" tool. The Panel is therefore in the opinion that by using the disputed domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website and other on-line 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. The Jennifer Lopez Foundation v. Jeremiah Tieman, Jennifer Lopez Net, Jennifer Lopez, Vaca Systems LLC, WIPO Case No. D2009-0057
The Panel also notes that the disclaimer on the Respondent's website is not sufficient to avoid confusion as the disclaimer is written in small font at the bottom of the homepage and the Respondent's prominent use of the expressions "an online Instagram web viewer" and "search the Instagram" at the top of the webpage. Broan-Nutone, LLC v. Ready Set Sales, WIPO Case No. D2010-0920.
After examining all circumstances surrounding the registration and use of the disputed domain name, the Panel finds that the Respondent registered and is using the disputed domain name in bad faith. Accordingly, the Panel finds in favor of the Complainant on 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, <online-instagram.com>, be transferred to the Complainant.
Gökhan Gökçe
Sole Panelist
Date: June 8, 2016