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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Instagram, LLC, WhatsApp Inc. v. Chandrasekaran S

Case No. D2020-1957

1. The Parties

The Complainant is Instagram, LLC, WhatsApp Inc., United States of America, represented by Hogan Lovells (Paris) LLP, France.

The Respondent is Chandrasekaran S, India.

2. The Domain Names and Registrars

The disputed domain names <instagramcloneapps.com>, <whatsappclonescript.com>, <whatsappestudio.com> and <whatsappupdatez.com> are registered with PDR Ltd. d/b/a PublicDomainRegistry.com (the “Registrar”).

The disputed domain name <instagramclonescript.com> is registered with Good Domain Registry Pvt Ltd. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 27, 2020. On July 27, 2020, the Center transmitted by email to the Registrars a request for registrar verification in connection with the disputed domain names. On July 28, 2020, the Registrar PDR Ltd. d/b/a PublicDomainRegistry.com transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the disputed domain names <instagramcloneapps.com>, <whatsappclonescript.com>, <whatsappestudio.com> and <whatsappupdatez.com>. On July 28, 2020, the Registrar Good Domain Registry Pvt Ltd. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the disputed domain name <instagramclonescript.com>.

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 July 29, 2020. In accordance with the Rules, paragraph 5, the due date for Response was August 28, 2020. The Respondent transmitted numerous informal communications from August 18, 2020 to September 4, 2020. The Respondent was also granted an extension period of 10 days to submit its Response to August 28, 2020. No formal response was submitted.

The Center appointed Alistair Payne as the sole panelist in this matter on September 16, 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.

4. Factual Background

The Complainant companies (“the Complainant”) are wholly owned subsidiaries of Facebook, Inc. Instagram, LLC. (“Instagram”) is the very well reputed global online photo and video sharing social networking application and currently has over 1 billion monthly active users and 500 million daily active users, with more than 95 million photos and videos shared per day. WhatsApp, Inc. (“WhatsApp”) is the provider of one of the world’s most popular mobile messaging applications with more than one billion global users.

Instagram and WhatsApp own numerous trade mark registrations worldwide including Instagram’s Indian trade mark registration No. 3042394 for the word mark INSTAGRAM registered on August 27, 2015, and WhatsApp’s Indian trade mark registration for the word mark WHATSAPP registered on May 24, 2011. Each of Instagram and WhatsApp own numerous domain names incorporating their respective trade marks, including <instagram.com> and <whatsapp.com>.

The Respondent is based in Chennai, India. The disputed domain names are as follows:

- <whatsappupdatez.com>, which was registered on October 13, 2018 and redirects to the website/webpage associated with the domain name <whatsappupdatez.com> which previously promoted the ZoeChat application and currently indicates “The website wouldn’t be live in the future”;

- <instagramcloneapps.com>, which was registered on September 24, 2018 and resolves to a website entitled “Snipo Feed”, which purports to allow users to “make use of an Instagram clone script to build and launch your own photo/video-sharing mobile application similar to the successful Instagram application”.

- <whatsappclonescript.com>, which was registered on December 8, 2018 and points to a parking page displaying sponsored links in particular for “online secure video sharing”, “Watsapp” and “Whatsapp App”.

- <whatsappestudio.com> which was registered on September 23, 2018 redirects to the website/webpage associated with the domain name <whatsappupdatez.com> which was previously the website promoting the ZoeChat application and currently the webpage indicating “The website wouldn’t be live in the future”.

- <instagramclonescript.com>, which was registered on December 8, 2018 and resolves to a page indicating that the associated website has been suspended.

5. Parties’ Contentions

A. Complainant

The Complainant submits that each of the disputed domain names wholly incorporate either the INSTAGRAM or the WHATSAPP trade marks with the addition of descriptive terms such as such as “clone apps”, “clone script” and “e studio” before the “.com” generic Top-Level Domain (“gTLD”) root. It says that each of the disputed domain names is therefore confusingly similar to either its INSTAGRAM or its WHATSAPP trade marks.

The Complainant submits that the Respondent has not been authorised or licensed to use the Complainant’s trade marks, that the Respondent is not known by any of the disputed domain names and that the Respondent has never attempted to secure, nor has it secured any trade mark registration in relation to the terms “Instagram” or “whatsapp” or any of the disputed domain names and that he is not making a legitimate noncommercial or fair use of any of the disputed domain names. In summary the Complainant says that using any of the disputed domain names in relation either to a clone script site, the “Zoe Chat Application”, a site featuring sponsored links to competitor services, or in the case of <instagramclonescript.com> to a blocked page that does not appear to have ever resolved to an active site, does not amount to the provision of a legitimate or bona fide service by the Respondent. As a result, the Complainant submits that the Respondent has no rights or legitimate interests in any of the disputed domain names.

The Complainant submits that its INSTAGRAM and WHATSAPP trade marks are inherently distinctive and well known throughout the world and have rapidly acquired considerable goodwill and renown worldwide, including in India, where the Respondent is based and in any case would be obvious to the Respondent upon undertaking a Google search. The Complainant says that in view of its renown and goodwill worldwide and its trade mark rights established prior to the registration of the disputed domain names, it would be inconceivable for the Respondent to argue that he did not have knowledge of the Complainant’s trade marks when he registered the disputed domain names in 2018.

The Complainant further submits that in circumstances that the Respondent registered the disputed domain names between September and December 2018 and shortly after the Complainant obtained the transfer of the domain name <whatsappupdate.com> on September 4, 2018 in UDRP proceeding WhatsApp Inc. v. Chandru Printers, Praveen Chandru, WIPO Case No. D2018-1543, it is clear that the Respondent registered the disputed domain names in an attempt to circumvent this decision and to continue targeting the Complainant, which is clearly in bad faith.

In addition, the Complainant submits that the Respondent has engaged in a pattern of conduct within the meaning of paragraph 4(b)(ii) of the Policy by registering the five disputed domain names for the purpose of preventing the Complainant from reflecting its trade marks in corresponding domain names (see the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 3.1.2). It is also very likely, according to the Complainant, that the Respondent may be linked with the domain names <tinderboxsolutions.net> and <uberdoo.com> that target third party trade marks.

Finally, says the Complainant, the fact that the Respondent initially chose to conceal his identity by means of a privacy protection service for the disputed domain names <whatsappupdatez.com>, <instagramcloneapps.com> and <whatsappclonescript.com> is another strong indication of his bad faith and his intent to use the disputed domain names in a way which may be abusive or otherwise detrimental to the Complainant and its rights.

The Complainant submits that the Respondent is using the disputed domain names to intentionally attract, for commercial gain, Internet users to its websites by creating a likelihood of confusion with the Complainant’s trade mark as to the source, sponsorship, affiliation, or endorsement of its websites, in accordance with paragraph 4(b)(iv) of the Policy. It notes that except for the disputed domain name <instagramclonescript.com>, all the disputed domain names are either pointing or have pointed to commercial websites promoting clone applications in competition with the Complainant’s products or pointing to a parking page with sponsored links targeting the Complainant. It submits that the fact that the disputed domain names <whatsappupdatez.com> and <whatsappestudio.com> no longer resolve and that the disputed domain name <instagramclonescript.com> is being passively held, do not preclude a finding of bad faith in the overall circumstances of the case.

As far as passive holding is concerned, it notes that panelists will look at the totality of the circumstances in each case and that 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.” In this case the Complainant submits that the factors (i), (ii) and (iv) are applicable.

Lastly, the Complainant notes that despite its efforts to engage with the Respondent prior to submitting the present Complaint the Respondent has failed to provide any actual or contemplated good-faith use of the disputed domain names. In addition, the Complainant submits that after signing undertakings agreeing to transfer the disputed domain name <instagramcloneapps.com> on November 20, 2019, the Respondent has stalled in relation to its transfer and that this is a further indication of the Respondent’s bad faith.

B. Respondent

The Respondent did not submit a formal response to the Complainant’s contentions.

6. Discussion and Findings

The Complainant seeks the consolidation of complaints by two separate complainants in this case.

Consolidation is possible under the Policy where the complainants have a specific common grievance against the respondent, or the respondent has engaged in common conduct that has affected the complainants in a similar fashion, and (ii) it would be equitable and procedurally efficient to permit the consolidation (“See section 4.11 of the WIPO Overview 3.0).

In this case both Instagram and WhatsApp are wholly owned subsidiaries of Facebook, Inc. and as members of the same corporate group have a common legal interest in protecting the group’s trade mark rights for the purpose of consolidation. They have been the target of common conduct by the Respondent which has amounted to reproducing their respective trade marks in the disputed domain names and the Respondent has used them in a manner which has similarly affected their legal rights. In the circumstances of this case the Panel finds that it is equitable and procedurally efficient for the complaints by both parties to be consolidated into this single Complaint. Accordingly, the Complainant’s request for consolidation is granted.

A. Identical or Confusingly Similar

The Complainant has demonstrated that it owns numerous registered trade mark rights for its INSTAGRAM and WHATSAPP marks, including Instagram’s Indian trade mark registration No. 3042394 for the word mark INSTAGRAM registered on August 27, 2015 and WhatsApp’s Indian trade mark registration for the word mark WHATSAPP registered on May 24, 2011. Each of the disputed domain names wholly incorporates one or other of these trade marks and is confusingly similar to it. The addition of descriptive terms such as such as “clone apps”, “clone script” and “e studio” before the “.com” gTLD root does not detract from this finding. Accordingly, the Panel finds that the Complaint succeeds in relation to each of the disputed domain names under this element of the Policy.

B. Rights or Legitimate Interests

The Complainant has submitted that the Respondent has not been authorised or licensed to use the Complainant’s trade marks, that the Respondent is not known by any of the disputed domain names and that the Respondent has never attempted to secure, nor has it secured any trade mark registration in relation to the terms “instagram” or “whatsapp” or any of the disputed domain names and that he is not making a legitimate non-commercial or fair use of any of the disputed domain names.

Further, the Panel accepts the Complainant’s submissions that the use of the disputed domain names in relation either to a clone script site, the “Zoe Chat Application”, a site featuring sponsored links to competitor services or, in the case of <instagramclonescript.com> to a blocked page that does not appear to have ever resolved to an active site, does not amount to the provision of a legitimate or bona fide service by the Respondent.

The Panel finds that the Complainant has made out a prima facie case that the Respondent has no rights or legitimate interests in any of the disputed domain names. Although the Respondent did not file a formal response to the Complaint, it did send various emails Center in relation to earlier discussions between the parties dating from 2019, concerning the possible transfer of the disputed domain names. It is notable that in this correspondence the Respondent did not rebut the case made out by the Complainant under this element of the Policy but rather acknowledged its previous infringement of the Complainant’s trade mark rights and that it was prepared to transfer at least one of the disputed domain names. However, in spite of an extension granted by the Center for the Respondent to file a Response, none of the disputed domain names were transferred to the Complainant and no response was filed.

As a result the Panel finds that the Respondent has not rebutted the prima facie case made out by the Complainant and accordingly that the Complaint also succeeds under this element of the Policy in relation to each of the disputed domain names.

C. Registered and Used in Bad Faith

The Complainant’s trade mark registrations for INSTAGRAM and WHATSAPP, as noted above, were registered some years prior to the registration of each of the disputed domain names. The Panel finds both trade marks to be distinctive and accepts that they are exceedingly well reputed on a global basis, including in India and have a significant presence on search engines such as Google. On this basis and considering the prior case in which the parties were concerned WhatsApp Inc. v. Chandru Printers, Praveen Chandru, supra and in which the domain name<whatsappupdate.com> was transferred to the Complainant, it seems inconceivable that the Respondent did not have knowledge of the Complainant’s trade marks when he registered the disputed domain names in 2018.

The Complainant has submitted that the Respondent has engaged in a pattern of conduct within the meaning of paragraph 4(b)(ii) of the Policy by registering the five disputed domain names for the purpose of preventing the Complainant from reflecting its trade marks in corresponding domain names (WIPO Overview 3.0, section 3.1.2). Noting also the previous UDRP Decision, WhatsApp Inc. v. Chandru Printers, Praveen Chandru,supra, which was decided prior to the registration of any of the disputed domain names, the Panel accepts this submission and also notes the likelihood that the Respondent may also be linked with the domain names <tinderboxsolutions.net> and <uberdoo.com> that also target third party trade marks and which further reinforces a pattern of conduct under this head.

It is clear that the Respondent is using, or has used, four of the disputed domain names to intentionally attract, for commercial gain, Internet users to its websites by creating a likelihood of confusion with the Complainant’s trade mark as to the source, sponsorship, affiliation, or endorsement of its websites, in accordance with paragraph 4(b)(iv) of the Policy. Apart from the disputed domain name <instagramclonescript.com>, all the disputed domain names are either pointing or have pointed to commercial websites promoting clone applications in competition with the Complainant’s products or they point or pointed to a parking page with sponsored links targeting the Complainant. The fact that the disputed domain names <whatsappupdatez.com> and <whatsappestudio.com> no longer resolve to such a site do not preclude a finding of bad faith in these circumstances.

The disputed domain name <instagramclonescript.com> is being passively held and does not appear to have ever resolved to an active site. Factors that have been considered relevant by past UDRP panels in finding bad faith based on the passive holding doctrine are noted at section 3.3 of the WIPO Overview 3.0include: (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. The Panel finds that in this case the Complainant’s marks are highly distinctive, the Respondent has failed to respond with any evidence of its good faith use, the Respondent initially used a privacy protection service for three of the disputed domain names and considering the extremely high degree of reputation attaching to each of the Complainant’s marks there is no plausible good faith use to which the Respondent good have put each of the disputed domain names. As a result, the Panel finds that the disputed domain name <instagramclonescript.com> is being passively held in bad faith.

Two additional factors that reinforce the Panel’s view of the Respondent’s bad faith are (i) the fact that the Respondent signed undertakings agreeing to transfer the disputed domain name <instagramcloneapps.com> on November 20, 2019, but even after many months had passed, never managed to effect the transfer; and (ii) the fact that the Respondent initially chose to conceal his identity by means of a privacy protection service for the disputed domain names <whatsappupdatez.com>, <instagramcloneapps.com> and <whatsappclonescript.com>.

Accordingly, the Panel finds that each of the disputed domain names were registered and have been used in bad faith and that the Complaint also succeeds under this element 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: <instagramcloneapps.com>, <instagramclonescript.com>, <whatsappclonescript.com>, <whatsappestudio.com>, <whatsappupdatez.com> be transferred to the Complainant.

Alistair Payne
Sole Panelist
Date: September 18, 2020

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