WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Instagram, LLC v. Sedat Das, Arda Arda, Domain Admin, whoisprotection biz, Domain Admin Domain Admin, whoisprotection biz

Case No. D2016-2382

1. The Parties

The Complainant is Instagram, LLC of Menlo Park, California, United States of America (“United States”), represented by Kilpatrick Townsend & Stockton LLP, United States.

The Respondents are Sedat Das (the “Respondent 1”), Arda Arda (the “Respondent 2”), Domain Admin, whoisprotection biz (the “Respondent 3”), Domain Admin Domain Admin, whoisprotection biz (the “Respondent 4”), all from Istanbul, Turkey, self-represented.

2. The Domain Names and Registrars

The original Complaint filed on November 24, 2016 pertained to 36 domain names. As the result of the submission of three amendments to the Complaint (which will be further elaborated below), the Complaint as amended refers to 21 disputed domain names. Three such domain names expired during the proceedings and have been deemed withdrawn.

The disputed domain names <instagla.com>, <instagmania.com>, <instagramci.com>, <instagramdatakip.com>, <instagramdi.com>, <instagramfotosu.com>, <instagramkusu.com>, <instagrampi.com>, <instagramq.com> and <instagramxphoto.com> are registered with FBS Inc (the “Registrar 1”).

The disputed domain names <instagda.com> and <instagramcn.com> are registered with PDR Ltd. d/b/a PublicDomainRegistry.com (the “Registrar 2”).

The disputed domain names <instagramtakipcisitesi.com>, <instagramtr.com> and <instagsa.com> are registered with GoDaddy.com, LLC (the “Registrar 3”).

The disputed domain names <instagrampicleri.com>, <instagor.com> and <instagta.com> are registered with Realtime Register B.V. (the “Registrar 4”).

The disputed domain names <instafotom.com>, <instafotom.net> and <instagmy.com> expired and became unregistered after submission of the Complaint and, have been deemed withdrawn.

3. Procedural History

The Complaint in English was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 24, 2016. On November 24, 2016, the Center transmitted by email to the Registrars a request for registrar verification in connection with the disputed domain names. On November 25, 2016, the Registrar 4 transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. On November 26, 2016, the Registrar 2 transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names which differed from the named Respondent and contact information in the Complaint. On November 28, 2016, the Registrar 1 transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names which differed from the named Respondent and contact information in the Complaint. On November 29, 2016, the Registrar 3 transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names which differed from the named Respondent and contact information in the Complaint. On February 13, 2017, the Registrar 4 transmitted by email to the Center another verification response confirming that the Respondent is listed as the registrant and providing the contact details. The Center sent the Complainant notifications that the Complaint was administratively deficient and email communications providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint, on November 29, 2016 and December 6, 2016. The Complainant filed three amended Complaints on December 2, 2016, December 10, 2016 and February 13, 2017.

Pursuant to the Complaint submitted in English and the registrar verification of the Registrar 1 dated November 28, 2016 stating that Turkish is the language of the registration agreements of the related disputed domain names, on November 30, 2016, the Center sent a request in English and Turkish that the Parties submit their comments on the language of the proceeding. On December 2, 2016, the Complainant submitted its request for English to be the language of the proceeding. The Respondents did not raise any objection to the Complainant’s request on the language of the proceeding but submitted their informal communications in Turkish.

On December 14, 2016, the Complainant requested suspension of the proceedings in order to engage in settlement discussions with the Respondent. On December 15, 2016, the Center notified the suspension of the proceedings until January 14, 2017. On January 13, 2017, the Complainant requested an extension of the suspension, which was granted until February 13, 2017. On February 10, 2017, the Complainant submitted signed settlement forms in relation to settlement agreements for 12 domain names, and requested reinstitution of the proceedings in relation to the remaining disputed domain names.

On February 20, 2017, the Center noted to the Parties that the domain names <instafotom.com> and <instafotom.net> had expired and the registration had lapsed, and that the domain names would be deemed withdrawn from the Complaint.

The Center verified that the Complaint together with the amended Complaints 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 February 22, 2017. In accordance with the Rules, paragraph 5, the due date for Response was March 14, 2017. The Respondent did not submit any formal response. Accordingly, the Center informed that it would proceed to appoint the Administrative Panel on March 15, 2017.

On March 21, 2017, the Center noted to the Parties that the domain name <instagmy.com> had expired and the registration had lapsed, and that the domain name would be deemed withdrawn from the Complaint.

The Center appointed Kaya Köklü as the sole panelist in this matter on March 24, 2017. 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.

4. Factual Background

The Complainant is a United States based company, which provides highly popular online photo and video sharing services. These services are provided through its online platform, which primarily consists of a mobile application and a website. Users of the Complainant’s services can upload, edit and share images and videos and are able to follow shared content by other users. Based on uncontested information provided in the case record, the Complainant reached over 500 million people using the Complainant’s services monthly. In 2012, the Complainant announced a Turkish language version of its services (Annex O to the Complaint).

The Complainant is the owner of the word mark INSTAGRAM and the word and figurative trademark INSTA (in combination with a camera design), which are both registered in a large number of jurisdictions. For instance, the Complainant is the owner of the United States Trademark Registration No. 4146057 for INSTAGRAM, registered on May 22, 2012 and No. 4531884 for INSTA, registered on May 20, 2014. The Complainant is further the owner of the Turkish Trademark Registration No. 2013 74099 for INSTAGRAM, registered on May 20, 2015 and No. 2013 74082 for INSTA, also registered on May 20, 2015. The registered trademarks cover various goods and services, in particular International Classes 9, 38, 41 and 42.

The creation dates of the disputed domain names are as follows:

<instagla.com> February 24, 2016

<instagmania.com> April 7, 2016

<instagramci.com> May 8, 2016

<instagramdatakip.com> November 8, 2015

<instagramdi.com> April 29, 2016

<instagramfotosu.com> March 18, 2016

<instagramkusu.com> October 9, 2014

<instagrampi.com> April 7, 2016

<instagramq.com> September 28, 2015

<instagramxphoto.com> March 18, 2016

<instagda.com> October 3, 2016

<instagramcn.com> October 5, 2016

<instagramtakipcisitesi.com> December 30, 2014

<instagramtr.com> May 11, 2016

<instagsa.com> August 10, 2016

<instagrampicleri.com> August 30, 2016

<instagor.com> December 14, 2016

<instagta.com> August 27, 2016

The Respondent is composed of various domain name privacy registration services and an individual from Istanbul, Turkey, who apparently acts under different names (all of them jointly accepted and referred to as “the Respondent” in the following decision).

According to the provided documents by the Complainant (particularly Annex Q to the Complaint), the Respondent is using or at least used most of the disputed domain names as an INSTRAGRAM web viewer, which allows users to browse content on the Complainant’s INSTAGRAM platform (cf. Annexes AA, BB, R, S, T and W to the Complaint). In addition, some of the disputed domain names resolve or at least resolved to pornographic content (cf. Annex Z to the Complaint) or to a phishing website (cf. Annex Y to the Complaint).

At the time of the Decision, most of the disputed domain names were not active.

5. Parties’ Contentions

A. Complainant

The Complainant requests the transfer of the disputed domain names.

The Complainant is of the opinion that the disputed domain names are confusingly similar to its INSTAGRAM and INSTA trademarks.

Furthermore, the Complainant argues that the Respondent has no rights or legitimate interests in respect of the disputed domain names.

Finally, it is argued that the Respondent has registered and is using the disputed domain names in bad faith. The Complainant believes that the Respondent was fully aware of the Complainant’s trademarks, when registering the disputed domain names. The Complainant is further of the opinion that the Respondent apparently tries to mislead Internet users and to gain illegitimate benefits by freeriding on the goodwill of the well-known INSTAGRAM and INSTA trademarks.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

However, the Center received two informal email communications in Turkish from the Respondent. On December 12, 2016, the Respondent indicated that it would agree to transfer most of the disputed domain names, except in particular for seven of them, namely <instagramcn.com>, <instagramkusu.com>, <instagrampicleri.com>, <instagramtakipcisitesi.com>, <instagsa.com>, <instagta.com> and <instagda.com>. In respect of these seven disputed domain names, which the Respondent explicitly does not want to transfer voluntarily, it argues that its way of use does not infringe the Complainant’s platform policy and is in line with the application program interface (API) of the Complainant. Furthermore, the Respondent asserts that it has used the Complainant’s trademarks on the websites linked to the disputed domain names without changing or modifying them. The Center received a further email communication from the Respondent on February 25, 2017, in which the Respondent mainly repeats its previously raised allegations. In its email communications, the Respondent did not submit any documents or evidence to support its assertions.

No further communications have been filed by the Respondent.

6. Discussion and Findings

6.1. Procedural Issues

A. Language of the Proceeding

The Panel determines in accordance with the Complainant’s request and the Rules, paragraph 11(a), that the language of these administrative proceedings shall be English. Although the language of the registration agreement of 10 disputed domain names is Turkish (with the remaining disputed domain names having English registration agreements), the Panel finds that it would be inappropriate, given the circumstances of this case, to conduct the proceedings in Turkish and request a Turkish translation of the Complaint while the Respondent has failed to raise any objection or even to formally respond to the Complaint or respond to the Center’s communication about the language of the proceedings, even though communicated in Turkish and in English. The Panel notes that the Respondent was given the opportunity to respond in Turkish. Consequently, the Panel is convinced that the Respondent will not be prejudiced by a Decision being rendered in English.

B. Consolidation of Multiple Domain Names

The Panel notes that the Respondents are “Sedat Das”, “Arda Arda”, “Domain Admin, whoisprotection biz”, and “Domain Admin Domain Admin, whoisprotection biz”. All of the disputed domain names are registered to Sedat Das, except for <instagramtr.com> (Arda Arda), <instagramdi.com> (Domain Admin Domain Admin), and <instagramq.com> (Domain Admin). The latter two of these domain names were revealed by the relevant Registrar to be registered by Sedat Das.

Furthermore, the <instagramtr.com> domain name was previously held by Sedat Das and only after the submission of the Complaint did the disputed domain name registration change to “Arda Arda”. Despite the change, the contents of the website have remained the same, suggesting that the disputed domain name has remained under the control of Sedat Das. In any event, the Panel accepts the Complainant’s contentions but considers that, due to the apparent cyberflight in violation of paragraph 8(a) of the UDRP, the Panel is entitled to treat the registrant prior to the transfer (Sedat Das) as the registrant of <instagramtr.com> for purposes of the proceeding. Apple Inc. v. Stanley Pace (a.k.a. Jordan Smith, Chris Carter, sunhei.org, Keith Besterson, Shahamat, Staci Michele and Courtney Culbertson) and Fundacion Private Whois, WIPO Case No. D2013-1313.

Pursuant to paragraph 3(c) of the Rules, a single complaint may be brought in respect of multiple domain names “provided that the domain names are registered by the same domain name holder.” In this case, the Panel is satisfied that the disputed domain names (and the websites to which they resolve) are subject to common control and that the consolidation would be fair and equitable to all parties (see paragraph 4.16 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition).

Applying this principle to the facts of this case (together with the fact that the Respondents did not contest the Complainant’s assertions) this Panel finds that there is a common person that has control over the disputed domain names. The Panel will therefore, for the purpose of this decision, refer only to “the Respondent.”

6.2. Substantive Issues

According to paragraph 14(a) and 15(a) of the Rules, the Panel shall decide the Complaint in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable and on the basis of the Complaint where no formal Response has been submitted.

In accordance with paragraph 4(a) of the Policy, the Complainant must prove that each of the three following elements is satisfied:

(i) the disputed domain names are identical or confusingly similar to the trademarks in which the Complainant has rights; and

(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain names; and

(iii) the disputed domain names have been registered and are being used in bad faith.

Paragraph 4(a) of the Policy states that the Complainant bears the burden of proving that all these requirements are fulfilled, even if the Respondent has not formally replied to the Complaint. Stanworth Development Limited v. E Net Marketing Ltd., WIPO Case No. D2007-1228.

However, concerning the uncontested information provided by the Complainant, the Panel may, where relevant, accept the provided reasonable factual allegations in the Complaint as true. Belupo d.d. v. WACHEM d.o.o., WIPO Case No. D2004-0110.

It is further noted that the Panel has taken note of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”) and, where appropriate, will decide consistent with the WIPO Overview 2.0.

A. Identical or Confusingly Similar

To begin with, the Panel confirms that the Complainant has satisfied the threshold requirement of having trademark rights in INSTAGRAM and INSTA. As evidenced in the Complaint, the Complainant is the owner of various INSTAGRAM and INSTA trademarks, which are registered in many jurisdictions since at least 2012, including in Turkey. Due to the undisputable wide recognition of the Complainant’s trademarks also in Turkey, the Panel believes that these are well-known trademarks.

In light of this pre-assessment, the Panel finds that the disputed domain names are confusingly similar to the Complainant’s INSTAGRAM and INSTA trademarks. Each disputed domain name fully incorporates the mark INSTA as the distinctive first part of the domain name. Some of the disputed domain names even comprise the INSTAGRAM trademark in its entirety. In view of the Panel, the addition of dictionary terms or other non-distinctive letters do not create a new distinctiveness of the disputed domain names in relation to the Complainant’s registered trademarks. The Panel rather concludes that the disputed domain names are likely to confuse Internet users into their believing that the disputed domain names are affiliated or endorsed by the Complainant or that the use of the disputed domain names is at least authorized by the Complainant, particularly as the web viewer services provided by the Respondent are essentially the same services as provided by the Complainant.

In view of the above, the Panel is satisfied that the Complainant has met the requirements under paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

While the burden of proof remains with the Complainant, the Panel recognizes that this would often result in the impossible task of proving a negative, in particular as the evidence needed to show the Respondent’s rights or legitimate interests is primarily within the knowledge of the Respondent. Therefore, the Panel agrees with prior UDRP panels that the Complainant is required to make out a prima facie case before the burden of production shifts to the Respondent to show that it has rights or legitimate interests in the disputed domain names to meet the requirements of paragraph 4(a)(ii) of the Policy. Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455.

With its Complaint, the Complainant has provided prima facie evidence that the Respondent has no rights or legitimate interests, particularly no license to use the Complainant’s INSTAGRAM and INSTA trademarks in a confusingly similar way within the disputed domain names.

The Panel finds that, based on the Panel’s findings and discussion below and further under the third element, that the Respondent does not have a right or legitimate interest in the disputed domain names according to the Policy, paragraph 4(a)(ii) and 4(c).

In its email communications to the Center, the Respondent does not even deny not to have rights or legitimate interests in most of the disputed domain names. The Respondent defends itself only in respect of seven out of the 18 disputed domain names, namely regarding <instagramcn.com>, <instagramkusu.com>, <instagrampicleri.com>, <instagramtakipcisitesi.com>, <instagsa.com>, <instagta.com> and <instagda.com>. The Respondent asserts that it uses these seven disputed domain names in compliance with the Complainant’s platform policy and it’s API. The Respondent, however, did not submit any documentation or evidence that would support its assertion. The Panel finds this allegation not convincing and believes that this is a self-serving assertion only. Even if the Respondent’s way of using the websites linked to the seven above mentioned disputed domain names complies with the Complainant’s platform policy and API, the Panel does not see how the registration and use of the disputed domain names under the circumstances of this case give rights or legitimate interests to the Respondent for purposes of the Policy.

All in all, the Respondent has failed to demonstrate any of the nonexclusive circumstances evidencing rights or legitimate interests under the Policy, paragraph 4(c) or provide any other evidence of a right or legitimate interest in the disputed domain names. Particularly, the Panel finds on the available record that the disputed domain names were intended to be used in connection with offering of services in bad faith and the clear intention to freeride on the Complainant’s goodwill. The Respondent was apparently well aware of the Complainant’s INSTAGRAM and INSTA trademarks, its business and its provided services long before registering and using the disputed domain names. The Panel is convinced that the Respondent deliberately has chosen the disputed domain names in order to cause confusion with the Complainant’s trademarks among Internet users, particularly as the mainly provided web viewer services by the Respondent are essentially the same services as provided by the Complainant. In any case, the Panel does not see sufficient basis for assessing a bona fide offering of goods or services by the Respondent.

Consequently, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

The Panel believes that the Respondent deliberately attempted to create a likelihood of confusion among Internet users and/or to freeride on the goodwill of the Complainant’s INSTAGRAM and INSTA trademarks, apparently for illegitimate commercial gain, particularly for the following reasons.

At the date of registration of the disputed domain names, the Respondent was obviously well aware of the Complainant’s well-known INSTAGRAM and INSTA trademarks.

Furthermore, the way of using the Complainant’s trademarks on some of the websites linked to the disputed domain names (cf. Annexes R, S and W to the Complaint), indicates that the Respondent has deliberately chosen the Complainant’s trademarks as the distinctive part of the disputed domain names to mislead Internet users who are searching for the services provided by the Complainant. Using some of the disputed domain names for pornographic content (cf. Annex Z to the Complaint) and for illegal phishing activities (cf. Annex Y to the Complaint) further indicates the Respondent’s bad faith intentions.

The Panel also notes that the Respondent used various privacy services when creating the disputed domain names. Although privacy services might be legitimate in many cases, it is for the Panel difficult to see in the present case why the Respondent should need to protect its identity except to make it difficult for the Complainant to protect its trademark rights. The Panel rather believes that the choice of the disputed domain names (which fully incorporate the Complainant’s trademark INSTA and partly incorporate its trademark INSTAGRAM), the content as well as the design of the Respondent’s corresponding websites rather indicate that the Respondent deliberately opted for a privacy shield in order to prevent an efficient enforcement of legitimate trademark rights by the Complainant.

In view of the Panel, all this strongly indicates the Respondent’s bad faith intentions to gain illegitimate benefit by freeriding on the notoriety and goodwill of the Complainant’s INSTAGRAM and INSTA trademarks.

The fact that most of the disputed domain names are currently inactive does not change the Panel’s findings in this respect.

Taking all facts of the case into consideration, the Panel believes that this is a typical cybersquatting case, which the UDRP was designed to stop. In view of the Panel, the disputed domain names were registered and are being used in bad faith and that the Complainant consequently has satisfied the third element of the Policy, namely, paragraph 4(a)(iii) of the Policy.

7. Decision

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 names <instagla.com>, <instagmania.com>, <instagramci.com>, <instagramdatakip.com>, <instagramdi.com>, <instagramfotosu.com>, <instagramkusu.com>, <instagrampi.com>, <instagramq.com>, <instagramxphoto.com>, <instagda.com>, <instagramcn.com>, <instagramtakipcisitesi.com>, <instagramtr.com>, <instagsa.com>, <instagrampicleri.com>, <instagor.com> and <instagta.com> be transferred to the Complainant.

Kaya Köklü
Sole Panelist
Date: April 7, 2017