The Complainant is Instagram, LLC, United States of America, represented by Hogan Lovells (Paris) LLP, France.
The Respondent is Zafer Demir, Yok, Turkey.
The disputed domain name <lnstagramhelpcenter.com> is registered with Tucows Inc. (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 10, 2019. On May 10, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 13, 2019, 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 23, 2019. In accordance with the Rules, paragraph 5, the due date for Response was June 12, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 13, 2019.
The Center appointed Antony Gold as the sole panelist in this matter on June 24, 2019. 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 the owner of the online photo and video sharing social networking application “Instagram”. Instagram has developed rapidly since it was launched in October 2010. It now has over 1 billion monthly active users and over 95 million photos and videos are shared each day. The Complainant’s website at “www.instagram.com” is ranked as the fifteenth most visited website in the world and the twenty-third most visited website in Turkey, where the Respondent is seemingly based, according to web information company Alexa. Its “Instagram” app is the fifth most downloaded application in Turkey as per App Annie Top App rankings in 2019.
The Complainant has a large number of trade mark registrations to protect its trading style. These include, by way of example only:
- European Union Trade Mark registration No. 014493886 for INSTAGRAM, registered on December 24, 2015 in classes 25, 35, 38, 41 and 45;
- Turkish Trade Mark registration No. 2012/85440 for INSTAGRAM, registered on April 28, 2015 in classes 9 and 42.
The Complainant also owns a large number of domain names consisting of, or including, the term “Instagram”.
The disputed domain name was registered on August 20, 2018. It does not resolve to an active website. The contact details for the Respondent shown in the WhoIs record would appear to be inaccurate in that, notwithstanding the Turkish address shown in the record for the Respondent, the international dialing code for the Respondent’s telephone number is actually the dialing code for Italy. Furthermore, when typing the Respondent’s address, as set out in the WhoIs record, into Google’s web mapping service, the search does not resolve to an actual location.
The Complainant says that the disputed domain name is confusingly similar to its INSTAGRAM trade marks, full details of two of these marks being set out above. It is generally accepted that, when assessing whether a domain name is identical or confusingly similar to a trade mark, the domain name suffix, such as “.com”, is irrelevant as it is a functional element. The remainder of the disputed domain name consists of a typo-squatted version of the Complainant’s INSTAGRAM trade mark in which the initial “I” in INSTAGRAM has been replaced with an “L” and the generic term “help center” has been added. The first word of the disputed domain name looks very similar to the Complainant’s trade mark, particularly when the “L” is written in lower case. Such an obvious or common misspelling of the Complainant’s trade mark is insufficient to distinguish the disputed domain name from it. Furthermore, the generic term “help center” reinforces the confusing similarity with the Complainant’s mark because the Complainant actually provides help services through a dedicated page on its primary website.
The Complainant further submits that the Respondent has no rights or legitimate interests in respect of the disputed domain name. Once a complainant has made a prima facie showing that a registrant does not have rights or a legitimate interests in a domain name, the burden shifts to the respondent to provide evidence of its rights or interests.
The Respondent is unable to invoke any of the circumstances set out at paragraph 4(c) of the Policy whereby a respondent can establish rights or legitimate interests in a domain name. In particular, the Respondent is not a licensee of the Complainant, nor has he been otherwise authorized or allowed by the Complainant to make any use of its trade mark. The disputed domain name does not resolve to a website, there is no evidence that it has ever done so and, accordingly, it is being passively held. Such passive holding is not considered a bona fide offering of goods and services; see Facebook, Inc. v. Mirza Azim, WIPO Case No. D2016-0950. The Respondent cannot conceivably assert that he is commonly known by the disputed domain name, given the Complainant’s notoriety and the fact that INSTAGRAM is a distinctive trade mark, exclusively associated with the Complainant. Nor can the Respondent assert that he has made, or is making, a legitimate noncommercial or fair use of the disputed domain name pursuant to paragraph 4(c)(iii) of the Policy. The fact that the disputed domain name falsely suggests affiliation with the Complainant will generally exclude fair use; see section 2.5 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).
Finally, the Complainant says that the disputed domain name was registered and is being used in bad faith. Whilst none of the factors listed in paragraph 4(b) of the Policy as indicating bad faith appear relevant, there are other factors which strongly indicate bad faith registration. Given the Complainant’s renown and goodwill worldwide, it would be inconceivable for the Respondent to argue that he did not have knowledge of the Complainant’s INSTAGRAM trade mark as at the time of registration of the disputed domain name in August 2018. The Respondent therefore had full knowledge of the Complainant’s rights at the time of registration. Previous UDRP panels deciding under the Policy have held that actual and constructive knowledge of a complainant’s rights at the time of registration of the domain name constitutes strong evidence of bad faith.
So far as bad faith use of the disputed domain name is concerned, the Respondent does not appear ever to have actively used the disputed domain name. Passive holding of the disputed domain name does not preclude a finding of bad faith given the overall circumstances of the case. In this respect, see section 3.3 of the WIPO Overview 3.0 and Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003, which found that the passive holding of a domain name can constitute bad faith in certain circumstances, particularly where the trade mark in question has a strong reputation and is widely known.
The Respondent did not reply to the Complainant’s contentions.
Dealing, first, with the Respondent’s failure to file a response to the Complaint, paragraph 14(b) of the Rules provides that if a party, in the absence of exceptional circumstances, does not comply with a provision of, or requirement under these Rules, the Panel shall be entitled to draw such inferences from this omission as it considers appropriate.
Paragraph 4(a) of the Policy provides that the Complainant proves each of the following three elements in order to succeed in its Complaint:
(i) the disputed domain name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
(ii) the 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 Complainant has provided evidence of its many trade marks for INSTAGRAM, including the specific marks in respect of which details are provided above. These establish its rights in INSTAGRAM.
For the purpose of considering whether the disputed domain name is identical or similar to the Complainant’s trade mark, the generic Top-Level Domain (“gTLD”) “.com” is disregarded as this is a technical requirement of registration. The substitution of an “L” in place of the first letter of the disputed domain name and the addition of the descriptive words “help center” do not avoid there being confusing similarity between the disputed domain name and the Complainant’s trade mark. As explained at section 1.8 of the WIPO Overview 3.0: “Where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element.”
The Panel accordingly finds that the disputed domain name is confusingly similar to a trade mark in which the Complainant has rights.
Paragraph 4(c) of the Policy provides, without limitation, examples of circumstances whereby a respondent might demonstrate that it has rights or legitimate interests in a domain name. In summary, these are if a respondent has used or prepared to use the domain name in connection with a bona fide offering of goods and services, if a respondent has been commonly known by the domain name, or if a respondent has made a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark in issue.
How these provisions are usually applied in practice is dealt with at section 2.1 of the WIPO Overview 3.0. This explains that the consensus view of panelists is that “[w]hile the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the often impossible task of ʻproving a negativeʼ, requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element”.
The passive holding of the disputed domain name does not amount to use or preparations to use it in connection with a bona fide offering of goods and services. Nor is there any evidence which indicates that the Respondent is commonly known by the disputed domain name. Nor does a passive holding of the disputed domain name comprise a legitimate noncommercial or fair use of it.
The Complainant has made out (at least) a prima facie case that the Respondent does not have rights or legitimate interests in the disputed domain names and the burden of production therefore shifts to the Respondent. The Respondent, having failed to respond to the Complaint, has self-evidently failed to satisfy it.
In addition, the Panel notes that the nature of the disputed domain name carries a risk of implied affiliation.
The Panel therefore finds that the Respondent has no rights or legitimate interests with respect to the disputed domain name.
The Complainant’s evidence establishes the widespread repute of its INSTAGRAM trade mark as at the date of registration of the disputed domain name in August 2018.
Whilst the Respondent’s passive holding of the disputed domain name does not fit precisely within any of the specific circumstances of bad faith and use set out at paragraph 4(b) of the Policy, those circumstances are not exhaustive. As the panel said in Telstra (supra): “Furthermore, it must be recalled that the circumstances identified in paragraph 4(b) are ‘without limitation’ - that is, paragraph 4(b) expressly recognises that other circumstances can be evidence that a domain name was registered and is being used in bad faith.”
In this respect, section 3.3 of the WIPO Overview 3.0, explains that; “From the inception of the UDRP, panelists have found that the non-use of a domain name (including a blank or ‘coming soon’ page) would not prevent a finding of bad faith under the doctrine of passive holding. While panelists will look at the totality of the circumstances in each case, factors that have been considered relevant in applying the passive holding doctrine include: (i) the degree of distinctiveness or reputation of the complainant’s mark, (ii) the failure of the respondent to submit a response or to provide any evidence of actual or contemplated good-faith use, (iii) the respondent’s concealing its identity or use of false contact details (noted to be in breach of its registration agreement), and (iv) the implausibility of any good faith use to which the domain name may be put”.
Applying these factors, briefly, to the current circumstances: (i) the Complainant’s mark is very well-known and the Respondent will have been aware of it as at the time of its registration of the disputed domain name; (ii) the Respondent has not replied to the Complaint; (iii) the contact details provided by the Respondent are incomplete and at least partially erroneous; (iv) having regard to the repute of the Complainant’s INSTAGRAM trade mark, it is impossible to think of any good faith use to which the disputed domain name could be put by the Respondent.
The Respondent’s passive holding of the disputed domain name therefore has the characteristics which are associated with bad faith registration and use, as set out at section 3.3 of the WIPO Overview 3.0 and in the decisions of other panels, including the panel in Telstra (supra).
The Panel therefore finds that the Respondent has registered and used the disputed domain name in bad faith.
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 <lnstagramhelpcenter.com> be transferred to the Complainant.
Antony Gold
Sole Panelist
Date: July 3, 2019