The Complainant is Instagram, LLC, United States of America (“United States”), represented by Hogan Lovells (Paris) LLP, France.
The Respondent is Mohammed Arshad, CelebLook, United Kingdom.
The disputed domain name <instagramclothing.com> is registered with Paragon Internet Group Ltd t/a Paragon Names (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 24, 2020. On August 25, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 11, 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 September 14, 2020. In accordance with the Rules, paragraph 5, the due date for Response was October 4, 2020. An informal communication by the Respondent was sent to the Center on September 15, 2020.
The Center appointed Andrea Mondini as the sole panelist in this matter on October 14, 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, Instagram LLC, is a world-renowned online photo and video-sharing social network application. Launched in 2010 and acquired in 2012 by Facebook, Inc., Instagram is today one of the fastest growing online social networks worldwide.
The Complainant owns several registrations for the trademark INSTAGRAM, including United States Trademark Registration No. 4,146,057, INSTAGRAM, registered on May 22, 2012 and the European Union Trademark (“EUTM”) registration No. 014493886, registered on December 24, 2015.
The disputed domain name was registered on May 10, 2017, and resolves to an inactive website.
The Complainant in essence contends the following:
On July 24, 2020, the Complainant sent a cease and desist letter to the Respondent. The Respondent did not reply. Prior to the sending of this letter, the disputed domain name was redirected to a website at “www.jumper.love”. At the time of filing of the Complaint, the disputed domain name resolved to an inactive website.
The trademark INSTAGRAM is an inherently distinctive mark, and the Complainant owns numerous registrations for this trademark throughout the world.
The disputed domain name is confusingly similar to the Complainant’s marks because it incorporates the INSTAGRAM mark in its entirety. The addition of the term “clothing” does not dispel confusion.
The Respondent is not commonly known by the disputed domain name. The Complainant has not licensed or otherwise authorized the Respondent to use the INSTAGRAM trademark. The Respondent has no association with the Complainant, no rights or legitimate interests in the disputed domain name, or any rights in the INSTAGRAM trademark.
The disputed domain name has been registered and used in bad faith, because the Respondent must have known the Complainant’s trademark when it registered the disputed domain name.
By using the disputed domain name, the Respondent intentionally attempted to attract, for commercial gain, Internet users to his website, thereby creating a likelihood of confusion with the Complainant's mark.
The Respondent has further used the disputed domain name in bad faith by passively holding it without a legitimate purpose.
The Respondent did not reply to the Complainant’s contentions, but sent an informal communication to the Center on September 15, 2020 stating: “Hi please advise what is the issue with this domain name that I purchased several years ago and have not used for last few years.”
According to paragraph 4(a) of the Policy, in order to succeed, a complainant must establish each of the following elements:
(i) the disputed domain name is identical or confusingly similar to the trademark 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 shown that it holds trademark registrations for the word marks INSTAGRAM.
The Panel finds that the disputed domain name is confusingly similar to the Complainant’s trademark because it incorporates in its entirety the distinctive trademark INSTAGRAM. The addition of the word "clothing" does not dispel confusing similarity. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, (“WIPO Overview 3.0”), section 1.8.
Accordingly, the Panel finds that the Complainant has satisfied the requirement under paragraph 4(a)(i) of the Policy.
The Complainant contends, credibly, that it has not authorized the Respondent to register or use the disputed domain name and that there is no relationship whatsoever between the Parties.
In the absence of any Response on the substance, the Panel concludes that the Respondent was not authorized or licensed to use the Complainant’s trademark in the disputed domain name and that there is no indication of any bona fide offering of goods or services under the disputed domain name nor any legitimate noncommercial or fair use of the disputed domain name. Further, there is no evidence showing that the Respondent has been commonly known by the disputed domain name. Accordingly, the Panel finds that the Respondent does not have rights or legitimate interests in the disputed domain name.
Therefore, the Panel finds that the Complainant has satisfied the requirement under paragraph 4(a)(ii) of the Policy.
The INSTAGRAM trademark is inherently distinctive and well known throughout the world. The Panel thus concludes that the Respondent must have been aware of this trademark and its reputation when it registered the disputed domain name, so that the disputed domain name was registered in bad faith.
The Respondent used the disputed domain name in bad faith by redirecting it to a website “www.jumper.love” offering clothing items, thereby attempting to attract, for commercial gain, Internet users to that website and creating a likelihood of confusion with the Complainant’s mark as to the source or affiliation of the Respondent's website and the products on that website.
Following the receipt of the cease and desist letter, the disputed domain name stopped resolving to an active website. Nevertheless, considering the distinctiveness and reputation of the Complainant’s trademark and the failure of the Respondent to submit a response, the inactive use of the disputed domain name without a legitimate purpose, under the circumstances of this case, does not prevent a finding of bad faith under the doctrine of passive holding. See WIPO Overview 3.0, section 3.3.
Accordingly, the Panel concludes that the disputed domain name has been registered and used in bad faith.
The Panel therefore finds that the Complainant has satisfied the requirement under 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 <instagramclothing.com> be transferred to the Complainant.
Andrea Mondini
Sole Panelist
Date: October 15, 2020