WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Instagram, LLC v. Registration Private, Domains By Proxy, LLC / Murat Sander

Case No. D2021-0526

1. The Parties

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

Respondent is Registration Private, Domains By Proxy, LLC, United States / Murat Sander, Turkey.

2. The Domain Name and Registrar

The disputed domain name is <instagram-login-page.com> which is registered with Wild West Domains, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 19, 2021. On February 19, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 19, 2021, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from those in the Complaint. The Center sent an email communication to Complainant on February 22, 2021, providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on February 22, 2021.

The Center verified that the Complaint together with the amended 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 Respondent of the Complaint, and the proceedings commenced on February 25, 2021. In accordance with the Rules, paragraph 5, the due date for Response was March 17, 2021. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on March 19, 2021.

The Center appointed Gerardo Saavedra as the sole panelist in this matter on April 1, 2021. This Panel finds that it was properly constituted. This 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

Complainant, a company from the United States, is the provider of the Instagram application or app (the “Instagram App” or “App”), officially released in 2010, which is an online photo and video sharing social networking application.

Complainant has rights over the INSTAGRAM mark for which it holds European Union Trade Mark registration No. 014493886 in classes 25, 35, 38, 41 and 45, registered on December 24, 2015, with the European Union Intellectual Property Office, United States registration No. 4146057 in class 9, registered on May 22, 2012, with the United States Patent and Trademark Office; and International registration No. 1129314 in classes 9 and 42, registered on March 15, 2012.

Complainant is the registrant of the domain names <instagram.com> registered on June 4, 2004, <instagram.dk> registered on January 14, 2011, and <instagram.org.in> registered on November 13, 2012, among others.

The disputed domain name was registered on September 6, 2020. At the time the Complaint was filed the disputed domain name did not resolve to an active website since it returned an error message showing, among others, “This site can’t be reached instagram-login-page.com’s server IP address could not be found”.

5. Parties’ Contentions

A. Complainant

Complainant’s assertions may be summarized as follows.

Since it was launched in 2010, the Instagram App rapidly developed considerable goodwill and renown worldwide, with 100,000 users in only one week, 1 million registered users in only two months (by December 21, 2010) and over 10 million registered users by September 2011, less than a year after it was launched. Acquired by Facebook in April 2012, the Instagram App reached over 100 million monthly active users by February 2013, 400 million monthly active users by September 2015, 800 million monthly active users by September 2017, and currently it has more than 1 billion monthly active users.

Complainant has secured ownership of numerous trademark registrations for INSTAGRAM in many jurisdictions around the world. Given the exclusive online nature of Complainant’s business, Complainant’s domain names consisting of its mark are not only the heart of its entire business but also the main way for its millions of users to avail themselves of its services. Complainant is the registrant of numerous domain names consisting of or including its INSTAGRAM mark under a wide range of generic Top-Level Domains (gTLDs) as well as under numerous country code Top-Level Domains (ccTLDs).

Complainant’s website available at “www.instagram.com” is ranked the 27th most visited website in the world, according to web information company Alexa. Instagram has consistently ranked amongst the top “apps” for mobile devices, and has been the recipient of numerous awards, including “App of the Year” in 2011 from Apple Inc. Currently available in over 31 languages, the Instagram App is the 4th most downloaded application in the world, as per App Annie Top App rankings in 2021.

The disputed domain name incorporates the INSTAGRAM mark in its entirety, with the addition of the descriptive terms “login” and “page” separated by hyphens. Complainant’s INSTAGRAM mark is clearly recognizable as the leading element of the disputed domain name. The combination of Complainant’s INSTAGRAM mark together with the terms “login” and “page” does not prevent a finding of confusing similarity between the disputed domain name and such mark, which remains clearly recognizable in the disputed domain name.

Respondent has no rights or legitimate interests in the disputed domain name. Respondent is unable to invoke any of the circumstances set out in paragraph 4(c) of the Policy, in order to demonstrate rights or legitimate interests in the disputed domain name.

Respondent is not affiliated with Complainant in any way. Complainant has not granted any authorization for Respondent to make use of its INSTAGRAM mark, in a domain name or otherwise.

Respondent is not commonly known by the disputed domain name. The disputed domain name has been registered using a privacy service and it is not being used in the promotion of any business or any other online service that might give rise to Respondent being commonly known by the disputed domain name. Respondent’s name bears no resemblance to the disputed domain name whatsoever.

Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services, and is not making a legitimate noncommercial or fair use of the disputed domain name. At the time of filing, the disputed domain name does not resolve to an active webpage, and to the best of Complainant’s knowledge, the disputed domain name has not been used to resolve to any website and has not been used for any other use. Thus, such passive holding cannot confer any rights or legitimate interests in the disputed domain name.

Given the renown of the INSTAGRAM mark, and the nature of the disputed domain name itself, it is not possible to conceive of any use of the disputed domain name by Respondent that would not be illegitimate, as it would inevitably create a false association with Complainant.

The disputed domain name was registered and is being used in bad faith.

Complainant’s INSTAGRAM mark is inherently distinctive and well known throughout the world. It has been continuously and extensively used since 2010, and rapidly acquired considerable reputation and goodwill worldwide. Respondent could not credibly argue that it did not have prior knowledge of said Complainant’s mark at the time it registered the disputed domain name.

Respondent registered the disputed domain name having no authorization to make use of the INSTAGRAM mark in a domain name or otherwise, thereby creating a misleading impression of association with Complainant, in bad faith. When confronted with a combination of the INSTAGRAM mark together with the descriptive terms “login” and “page”, many Internet users would be confused and wrongly assume that the disputed domain name is owned by or connected with or otherwise endorsed by Complainant. It is unlikely that Respondent could have registered the disputed domain name for legitimate purposes other than to somehow create an impression of association between the disputed domain name and Complainant.

Respondent is not making any apparent substantive use of the disputed domain name. Such non-use of the disputed domain name is similar to passive holding, which would not prevent a finding of bad faith, since there simply cannot be any actual or contemplated good faith use of the disputed domain name as this would invariably result in misleading diversion and taking unfair advantage of Complainant’s rights. Further, Respondent has taken active steps to conceal its identity behind a privacy service.

As a result of its longstanding and widespread use, the INSTAGRAM mark has become exclusively associated with Complainant. Considering the nature of the disputed domain name, there is a high risk that the disputed domain name may be used by Respondent for fraudulent activities (e.g., phishing, unauthorized account access, hacking, etc.). The disputed domain name in Respondent’s hands represents an abusive threat hanging over the head of Complainant (i.e., an abuse capable of being triggered by Respondent at any time) and therefore a continuing abusive use.

Complainant requests that the disputed domain name be transferred to Complainant.

B. Respondent

Respondent did not reply to Complainant’s contentions.

6. Discussion and Findings

Paragraph 15(a) of the Rules instructs the Panel to “decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”.

As regards who is the proper Respondent in this case, pursuant to paragraph 1 of the Rules “Respondent means the holder of a domain-name registration against which a complaint is initiated”. The Complaint filed with the Center named Domains By Proxy LLC as Respondent. At the Center’s request, the Registrar sent its registrar verification on February 19, 2021, disclosing Murat Sander as the registrant of the disputed domain name, and thus Complainant filed an amended Complaint adding Murat Sander as Respondent. Since the real underlying registrant has been promptly disclosed, this Panel decides to have Murat Sander as the proper Respondent and thus further references to Respondent herein shall be understood to Murat Sander.¹

The lack of Response from Respondent does not automatically result in a favorable decision for Complainant (see Berlitz Investment Corp. v. Stefan Tinculescu, WIPO Case No. D2003-0465, and section 4.3 of the WIPO Overview 3.0). The burden for Complainant, under paragraph 4(a) of the Policy, is to show: (i) that the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; (ii) that 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.

A. Identical or Confusingly Similar

It is undisputed that Complainant has rights over the INSTAGRAM mark.

Since the addition of a gTLD after a domain name is technically required, it is well established that such element may be disregarded where assessing whether a domain name is identical or confusingly similar to a mark. The disputed domain name identically reflects the INSTAGRAM mark, albeit followed by the terms “-login-page”. It is clear to this Panel that the INSTAGRAM mark is recognizable in the disputed domain name and that the addition of such terms in the disputed domain name does not avoid its confusing similarity with said mark (see sections 1.7 and 1.8 of the WIPO Overview 3.0).

Thus, this Panel finds that Complainant has satisfied paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

Complainant has alleged and Respondent has failed to deny that Respondent has no rights or legitimate interests in respect of the disputed domain name.

The evidence in the file shows that Complainant’s INSTAGRAM mark has become well-known. Complainant contends that it has no relationship with Respondent, that it has not authorized Respondent to use such mark, and that Respondent is not commonly known by the disputed domain name. The evidence also shows that Complainant is the registrant of, among others, the domain name <instagram.com> and that the latter resolves to an active website which features Complainant’s Instagram App. Although there appears to be no active website associated with the disputed domain name, it seems to this Panel that the nature of the disputed domain name carries a risk of implied affiliation.²

This Panel considers that Complainant has established a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name (see Intocast AG v. Lee Daeyoon, WIPO Case No. D2000-1467, and section 2.1 of the WIPO Overview 3.0). In the file there is no evidence of circumstances of the type specified in paragraph 4(c) of the Policy or of any other circumstances giving rise to a possible right to or legitimate interest in the disputed domain name by Respondent.

Based on the aforesaid, this Panel concludes that paragraph 4(a)(ii) of the Policy is satisfied.

C. Registered and Used in Bad Faith

Complainant contends that Respondent’s registration and use of the disputed domain name is in bad faith, which Respondent chose not to rebut.

Taking into consideration that Complainant’s registration and use of the INSTAGRAM mark preceded the creation of the disputed domain name, and the widespread use and recognition of said mark and the App identified thereunder, this Panel is of the view that Respondent must have been aware of their existence at the time it obtained the registration of the disputed domain name.

The evidence supplied by Complainant shows that the disputed domain name does not resolve to an active website. The concept of a domain name “being used in bad faith” is not limited to a domain name with an active website on the Internet. Several UDRP decisions have held that the passive holding of a domain name that incorporates a well-known trademark, without obvious legitimate purpose, may be deemed to be bad faith use under paragraph 4(a)(iii) of the Policy.³ It seems to this Panel that there are no basis to conceive a legitimate use of the disputed domain name by Respondent. In reaching that conclusion, this Panel has taken into account, in addition to the circumstances mentioned above, the following: (i) Complainant is a well-established company, (ii) Respondent is using Complainant’s mark at the disputed domain name (albeit with a suffix) without Complainant’s authorization, (iii) the risk of implied affiliation of the disputed domain name with Complainant, its mark, and its App, (iv) Respondent’s use of a privacy service to hide its name and contact details, and (v) Respondent’s failure to appear in this proceeding.

In sum, the overall evidence indicates that Respondent’s choice of the disputed domain name was deliberate for its confusing similarity with, and with the likely intention to benefit from the reputation and goodwill of, Complainant’s INSTAGRAM mark, which denotes bad faith.

In light of the above, this Panel finds that Complainant has satisfied paragraph 4(a)(iii) of the Policy.

7. Decision

For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, this Panel orders that the disputed domain name <instagram-login-page.com> be transferred to Complainant.

Gerardo Saavedra
Sole Panelist
Date: April 15, 2021

¹ The use of privacy service providers, the disclosure of underlying registrants and the determination of the proper respondent have been dealt with in several UDRP panel decisions. For instance, see The iFranchise Group v. Jay Bean / MDNH, Inc. / Moniker Privacy Services [23658], WIPO Case No. D2007-1438. See also section 4.4.5 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).

² See “Dr. Martens” International Trading GmbH and “Dr. Maertens” Marketing GmbH v. Godaddy.com, Inc., WIPO Case No. D2017‑0246: “Respondent’s lack of use of the Domain Name is a strong indication of its lack of rights or legitimate interests in the Domain Name”. See also section 2.5.1 of the WIPO Overview 3.0.

³ See Ferrari S.p.A. v. Ms. Lee Joohee (or Joo-Hee), WIPO Case No. D2003-0882: “Respondent has provided no evidence or suggestion of a possible legitimate use of the Domain Name. Thus, in the words of Telstra, it is not possible to conceive of any plausible actual or contemplated active use of the Domain Name by the Respondent that would not be illegitimate”. See also Flight Refuelling Ltd v. Neog Inc, WIPO Case No. D2005-0503: “there is no website that corresponds to the domain name [...] the Panel is satisfied that Respondent is acting in bad faith. The domain name is unconnected with the business of Respondent, and intimately connected with that of Complainant. The Panel cannot conceive of a situation in which Respondent could use the name in good faith, and Respondent has not suggested that there are any”. See also section 3.3 of the WIPO Overview 3.0.