The Complainant is Instagram, LLC, United States of America, represented by Hogan Lovells (Paris) LLP, France.
The Respondent is Abdullah Bulut, Turkey.
The disputed domain names <instagramprofil.com> and <instagramprofil.xyz> (the “Domain Names”) are registered with Nics Telekomunikasyon A.S. (the “Registrar”).
The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on November 17, 2020. On November 18, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Names. On November 19, 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 Registrar also indicated that the language of the Registration Agreement was Turkish. The Center sent an email communication in English and Turkish, to the Parties on November 23, 2020 inviting the Complainant to provide sufficient evidence of an agreement between the Parties for English to be the language of the proceeding, a Complaint translated into Turkish, or a request for English to be the language of the proceeding. The Complainant filed a request for English to be the language of the proceeding on November 25, 2020. The Respondent did not comment on 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, and the proceedings commenced on December 1, 2020. In accordance with the Rules, paragraph 5, the due date for Response was December 21, 2020. On December 3, 2021, the Respondent sent an informal email in Turkish to the Center indicating that it could transfer the Domain Names. The Center sent an email on the same day to the Parties regarding a possible settlement, in response to which the Complainant stated that it did not wish to settle. The Respondent did not submit any formal response. Accordingly, the Center informed the Parties that it was proceeding to panel appointment on December 29, 2020. The Respondent submitted another informal email in Turkish on December 30, 2020, along the same lines.
The Center appointed Dilek Ustun Ekdial as the sole panelist in this matter on January 18, 2021. 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 an online photo and video sharing social networking application, which was launched on October 6, 2010.
Currently, the Complainant has over 1 billion monthly active users and 500 million daily active users, with more than 95 million photos and videos shared per day.
The Complainant owns numerous trademark registrations for INSTAGRAM in many jurisdictions around the world, including in Turkey where the Respondent is based, in connection with its online photo and video sharing services. Such trademark registrations include but are not limited to the following:
− Turkish Trademark No. 2013/74099, for INSTAGRAM, registered on May 20, 2015;
− Turkish Trademark No. 2012/85440, for INSTAGRAM, registered on April 28, 2015;
− United States of America Trademark No. 4146057, for INSTAGRAM, registered on May 22, 2012 (first use in commerce on October 6, 2010);
− European Union Trade Mark No. 14493886, INSTAGRAM, registered on December 24, 2015; and
− International Trademark No. 1129314, for INSTAGRAM, registered on March 15, 2012.
The Complainant owns a number of domain names incorporating its trademark including <instagram.com>, <instagram.dk>, <instagram.org.in>, and <instagram.ae>. The Complainant also has a presence on other social media platforms including Facebook, Twitter, and LinkedIn.
The Domain Name <instagramprofil.com> was registered on December 14, 2019 and does not currently resolve to an active website, as for the Domain Name <instagramprofil.xyz>, it was also registered on December 14, 2019 and resolves to a hosting parking page.
The Complainant contends that it has the requisite rights in its registered trademark INSTAGRAM and that the Domain Names are identical or confusingly similar to that trademark. The Domain Names both comprise the Complainant’s INSTAGRAM trademark as their leading element, followed by the word “profil”, i.e., Turkish for “profile”, under the generic Top-Level Domains (“gTLD”) “.com” and”.xyz”.
The Complainant submits that the Respondent has no rights or legitimate interests in respect of the Domain Names as it is unable to invoke any of the circumstances set out in paragraph 4(c) of the Policy.
The Respondent is not known by the Domain Names, nor has it been licensed or otherwise allowed to make any use of the Complainant’s trademark. Prior to notice of this dispute, the Respondent cannot assert it was using the Domain Names in connection with a bona fide offering of goods nor can the Respondent assert it has made or is currently making a legitimate noncommercial or fair use of the Domain Names without intent for commercial gain.
Moreover, given the renowned popularity of the Complainant’s trademark, it is impossible to conceive of any use by the Respondent that would be legitimate.
The Complainant asserts that the Domain Names were registered and are being used in bad faith.
According to the Complainant, 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 trademark at the time of registration of the Domain Names in 2019.
The Complainant adds that, the Respondent is not making any apparent substantive use of the Domain Names and that the non-use of a domain name would not prevent a finding of bad faith under the doctrine of passive holding.
Lastly, the Complainant stated that the Respondent appears to have provided false or incomplete contact details, together with invalid telephone and fax numbers.
The Respondent did not reply to the Complainant’s contentions.
The Panel determines in accordance with the Complainant’s request and the Rules, paragraph 11(a), that the language of this administrative proceeding shall be English. Although the language of the Registration Agreement is Turkish, 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 did not formally reply to the Complainant’s contentions, and it even indicated its willingness to comply with the requested remedy. Consequently, the Panel is convinced that the Respondent will not be prejudiced by a decision being rendered in English.
Paragraph 15(a) of the Rules requires the Panel to decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.
Under paragraph 4(a) of the Policy, the Complainant bears the burden of showing:
(i) that the Domain Names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) that the Respondent has no rights or legitimate interests in respect of the Domain Names; and
(iii) that the Domain Names have been registered and are being used in bad faith.
The Domain Names <instagramprofil.com> and <instagramprofil.xyz> contain the Complainant’s well-known trademark INSTAGRAM with the dictionary term “profil” the addition of which does not prevent a finding of confusing similarity between the Domain Names and the Complainant’s trademark. See section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).
The gTLDs “.com” and “.xyz” generally are not taken into consideration when examining the confusing similarity between the Complainant’s trademark and the Domain Names.
Therefore, the Panel finds that the Domain Names are confusingly similar to the trademark INSTAGRAM in which the Complainant has rights, satisfying the condition of the Policy, paragraph 4(a)(i).
The Respondent has not provided any evidence of the circumstances specified in paragraph 4(c) of the Policy, or any other circumstances giving rise to a right or legitimate interest in the Domain Names.
It is clear that the Respondent has not demonstrated any bona fide offering of goods and services by using the Domain Names. Nor has the Respondent shown that it has been commonly known by the Domain Names.
The Complainant also showed, inter alia, that the Respondent has neither a license nor any other permission to use the Complainant’s trademark in the Domain Names.
The Panel finds that the Complainant has made a prima facie case that the Respondent lacks rights or legitimate interests, and the Respondent has failed to demonstrate such rights or legitimate interests.
Therefore, the Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Names.
The Panel is of the opinion that when the Respondent registered the Domain Names it knew that INSTAGRAM was the trademark of the Complainant and registered the Domain Names to take advantage of the trademark; accordingly the Panel finds that the Respondent registered the Domain Names in bad faith.
As regards the use in bad faith of the Domain Names, pointing to an inactive website and a hosting parking page, the Panel considers that bad faith may exist even in cases of so-called “passive holding”, as found in the landmark UDRP decision Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003. In the circumstances of this case, the Panel finds that such passive holding amounts to bad faith.
There is no suggestion that the Respondent had any intention of legitimate use, that it enjoys a legitimate connection to the Domain Names or that there is conceivable good faith use for the Domain Names. After examining all circumstances surrounding the registration and use of the Domain Names, the Panel finds that the Respondent registered and is using the Domain Names in bad faith.
Accordingly, the Panel finds that the Complainant has satisfied 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 Domain Names, <instagramprofil.com> and <instagramprofil.xyz>, be transferred to the Complainant.
Dilek Ustun Ekdial
Sole Panelist
Date: February 4, 2021