WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Instagram, LLC v. Jonathan Weaver, The Ginn Mill

Case No. D2021-0413

1. The Parties

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

The Respondent is Jonathan Weaver, The Ginn Mill, United States, self-represented.

2. The Domain Name and Registrar

The Disputed Domain Name <instograhm.com> (the “Disputed Domain Name”) is registered with GoDaddy.com, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 10, 2021. On February 11, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On February 11, 2021, 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 February 17, 2021. In accordance with the Rules, paragraph 5, the due date for Response was March 9, 2021. The Center received two email communications from the Respondent on February 18 and March 4, 2021 requesting information about the proceeding. Pursuant to paragraph 6 of the Rules, on March 23, 2021, the Center informed the Parties that it would proceed with panel appointment. On March 23, 2021, the Center received an additional email communication from the Respondent, questioning why it had received the submissions related to the proceeding.

The Center appointed Lynda M. Braun as the sole panelist in this matter on May 11, 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 Panel has not considered the Respondent’s emails referenced above in arriving at its decision in this proceeding.

4. Factual Background

The Complainant is a well-known online photo- and video-sharing social-networking application. Since its launch in 2010, the Complainant has grown rapidly and has developed considerable goodwill and renown worldwide. Acquired by Facebook, Inc. in 2012, the Complainant today is considered the world's fastest growing photo- and video-sharing and editing software and online social network, with more than 1 billion monthly active accounts worldwide.

The Complainant owns the following trademark registrations, among many others:

- INSTAGRAM, United States Trademark Registration No. 4146057, registered on May 22, 2012 in international class 9;

- INSTAGRAM, European Union Trademark No. 014493886, registered on December 24, 2015 in international classes 25, 35, 38, 41, and 45; and

- INSTAGRAM, International Trademark Registration No. 1129314, registered on March 15, 2012 in international classes 9 and 42 (designating certain countries).

The aforementioned trademarks will hereinafter collectively be referred to as the “INSTAGRAM Mark”.

The Complainant also owns numerous domain names incorporating the INSTAGRAM Mark under a wide range of generic Top-Level Domain Names (“gTLD”) as well as under numerous country code Top-Level Domain Names (“ccTLD”). Specifically, the Complainant owns the domain name <instagram.com>, which resolves to its principal website at “www.instagram.com”.

The Disputed Domain Name was registered on November 10, 2019 and at the time of the decision resolved to a parking page displaying pay-per-click hyperlinks.

On November 12, 2020, and again on December 4, 2020, the Complainant’s representative sent a cease-and-desist letter to the Respondent, demanding that the Respondent transfer the Disputed Domain Name to the Complainant. Between December 4, 2020 and December 15, 2020, the parties engaged in an exchange of letters.

5. Parties’ Contentions

A. Complainant

The following are the Complainant’s contentions:

- the Disputed Domain Name is confusingly similar to the Complainant’s trademark;

- the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and

- the Disputed Domain Name was registered and is being used in bad faith.

The Complainant seeks the transfer of the Disputed Domain Name from the Respondent to the Complainant in accordance with paragraph 4(i) of the Policy.

B. Respondent

The Respondent did not submit a formal Response but did send several email communications to the Complainant between December 4, 2020 and December 15, 2020, asking what the proceeding was about, and addressing administrative issues related to the proceeding, albeit nothing substantive.

6. Discussion and Findings

Paragraph 4(a) of the Policy requires that the Complain ant prove the following three elements in order to prevail in this proceeding:

(i) The Disputed Domain Name is identical or confusingly similar to a 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 was registered and is being used in bad faith.

A. Identical or Confusingly Similar

This element consists of two parts: first, does the Complainant have rights in a relevant trademark and, second, is the Disputed Domain Name identical or confusingly similar to that trademark. The Panel concludes that the Disputed Domain Name is confusingly similar to the INSTAGRAM Mark as set forth below.

First, the Complainant has established rights in the INSTAGRAM Mark based on its years of use as well as its registered trademarks for the INSTAGRAM Mark in the United States, where the Respondent purportedly resides, and in many jurisdictions worldwide. The general consensus is that registration of a mark satisfies the threshold requirement of having trademark rights for purposes of standing to file a UDRP case. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), at section 1.2.1 . Here, the Panel finds that the Complainant has rights in the INSTAGRAM Mark.

The Disputed Domain Name <instograhm.com> incorporates a misspelling of the INSTAGRAM Mark, followed by the gTLD “.com”. Here, the incorporated misspelling consists of the letter “a” in “INSTA” being replaced with the letter “o”, and the letter “h” being added before the letter “m” in “GRAHM”. This misspelling, where the INSTAGRAM Mark is still recognizable, does not prevent a finding of confusing similarity between the INSTAGRAM Mark and the Disputed Domain Name.¹ Such modification to a trademark is commonly referred to as “typosquatting”, as such conduct seeks to wrongfully take advantage of errors by users in typing domain names into their web browser’s location bar. See WIPO Overview 3.0, at section 1.9 (“A domain name which consists of a common, obvious, or intentional misspelling of a trademark is considered by panels to be confusingly similar to the relevant mark for purposes of the first element.”); see also Express Scripts, Inc. v. Whois Privacy Protection Service, Inc. / Domaindeals, Domain Administrator, WIPO Case No. D2008-1302.

Further, the addition of a gTLD such as “.com” in a domain name is technically required. Thus, it is well established that, as here, such element may typically be disregarded when assessing whether a domain name is identical or confusingly similar to a trademark. See Proactiva Medio Ambiente, S.A. v. Proactiva, WIPO Case No. D2012-0182 and WIPO Overview 3.0, section 1.11.

Accordingly, the Panel finds that the first element of paragraph 4(a) of the Policy has been met by the Complainant.

B. Rights or Legitimate Interests

Under the Policy, a complainant has to make out a prima facie case that the respondent lacks rights or legitimate interests in the disputed domain name. Once such a prima facie case is made, the respondent carries the burden of production of evidence to rebut this by demonstrating rights or legitimate interests in the disputed domain name. If the respondent fails to do so, the complainant may be deemed to have satisfied paragraph 4(a)(ii) of the Policy. See WIPO Overview 3.0, section 2.1.

In this case, the Panel finds that the Complainant has made out a prima facie case. The Respondent has not submitted any arguments or evidence to rebut the Complainant’s prima facie case. Further, the Complainant has not authorized, licensed or otherwise permitted the Respondent to use its INSTAGRAM Mark. The name of the Respondent has no apparent connection to the Disputed Domain Name that would suggest that it is related to a trademark or trade name in which the Respondent has rights. Nor does the Complainant have any type of business relationship with the Respondent. Based on the use made of the Disputed Domain Name to resolve to a landing page that contains pay-per-click hyperlinks, the Panel finds that the Respondent is not making a bona fide offering of goods or services nor making a legitimate noncommercial or fair use of the Disputed Domain Name. Panels have found that use of a disputed domain name to resolve to a third-party website for commercial gain does not constitute a bona fide offering of goods or services, nor is it a legitimate noncommercial or fair use. See F. Hoffmann-La Roche AG v. Dean Gagnon, WIPO Case No. D2007-1009 (“The use of a domain name comprising a third party’s renown trademark to redirect to a search engine consisting of third parties’ links, most probably for profit purposes, cannot be considered a use in connection with a bona fide offering of goods and services.”).

Accordingly, the Panel finds that the second element of paragraph 4(a) of the Policy has been met by the Complainant.

C. Registered and Used in Bad Faith

The Panel finds that, based on the record, the Complainant has demonstrated the Respondent’s bad faith registration and use of the Disputed Domain Name pursuant to paragraph 4(b) of the Policy.

First, the Respondent has demonstrated bad faith registration and use by attracting, for commercial gain, Internet users to the Respondent’s website and creating a likelihood of confusion with the Complainant’s INSTAGRAM Mark. The use of a domain name to attract Internet users to a registrant’s website or other online location by creating a likelihood of confusion with a complainant’s mark as to the source, sponsorship, affiliation or endorsement of the registrant’s online location for commercial gain demonstrates registration and use in bad faith. Thus, the Respondent’s use of the significant goodwill in the INSTAGRAM Mark to display third party hyperlinks and potentially collect click-through fees is evidence of bad faith under Policy, paragraph 4(b)(iv). See Fox News Network, LLC v. Warren Reid, WIPO Case No. D2002-1085; Volvo Trademark Holding AB v. Unasi, Inc., WIPO Case No. D2005-0556; Lewis Black v. Burke Advertising, LLC, WIPO Case No. D2006-1128.

Second, the Respondent’s registration of the Disputed Domain Name that contains misspellings of the INSTAGRAM Mark in an effort to take advantage of a typographical error is evidence of bad faith registration and use. See Nutricia International BV v. Eric Starling, WIPO Case No. D2015-0773. Since the Respondent misspelled the Disputed Domain Name to misdirect users from the Complainant’s website to the Respondent’s pay-per-click landing page by capitalizing on potential typing mistakes, such conduct is per se evidence of bad faith. See ESPN, Inc. v. XC2, WIPO Case No. D2005-0444 (“It is well-settled that the practice of typosquatting, of itself, is evidence of the bad faith registration of a domain name.”).

Finally, the Panel concludes that the Respondent has engaged in a pattern of abusive domain name registration in connection with domain names that contain the registered trademarks of well-known third parties, which is evidence of bad faith. In its Complaint, the Complainant identifies the Respondent’s organization as the registrant of several other domain names that incorporate the trademarks of well-known social media platforms. Examples of these infringing domain names include: <facetweetogram.com>, <facetwittagrambook.com>, <twittagrambook.com>, and <twitteragram.com>. Such conduct has been held to constitute bad faith registration and use within the meaning of paragraph 4(a)(iii) of the Policy. Therefore, the Panel finds that the Respondent’s pattern of registering such domain names is further evidence of bad faith pursuant to paragraph 4(b)(ii) of the Policy. See, e.g., Facebook, Inc., Instagram, LLC, WhatsApp Inc., Facebook Technologies, LLC v. Jurgen Neeme, hello@thedomain.io and Jay Neeme, WIPO Case No. D2019-1582.

Accordingly, the Panel finds that the third element of paragraph 4(a) of the Policy has been met by the Complainant.

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 Name <instograhm.com> be transferred to the Complainant.

Lynda M. Braun
Sole Panelist
Date: May 14, 2021

¹ Prior UDRP panels have found domain names consisting of misspellings of the Complainant's INSTAGRAM Mark in a Disputed Domain Name to be confusingly similar to the mark. See, e.g., Instagram, LLC v. Abdunnur Rustem, Global Taekwondo Federation, WIPO Case No. D2018-2037; see also Instagram, LLC v. Domain Admin, Whois Privacy Corp. and Ferhat Sizer, WIPO Case No. D2019-1431.