The Complainant is Instagram, LLC, United States of America, represented by Hogan Lovells (Paris) LLP, France.
The Respondent is Peter Malandrinos, United States of America (“United States”).
The disputed domain name <instagrams.info> is registered with GoDaddy.com, LLC (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 29, 2021. On April 30, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 30, 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 the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on May 2, 2021 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on May 6, 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 the Respondent of the Complaint, and the proceedings commenced on May 10, 2021. In accordance with the Rules, paragraph 5, the due date for Response was May 30, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 29, 2021.
The Center appointed Nicolas Ulmer as the sole panelist in this matter on July 16, 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 owns and operates a well-known online photo and video sharing social network application, called Instagram. According to the Complaint, Instagram was launched in 2010 and rapidly developed renown and users, acquiring more than 19 million registered users by September 2011. The Complainant was acquired by Facebook in 2012. The Complaint states that Instagram currently has more than 1 billion monthly active users, and that Instagram’s website, “www.instagram.com”, is ranked the 23rd most visited website in the world. The Complainant’s essential activity is online.
The Complainant has registered trademarks for INSTAGRAM in many jurisdictions, including the following trademarks:
− United States Trademark No. 4146057, INSTAGRAM, registered on May 22, 2012 (first use in commerce on October 6, 2010);
− European Union Trademark No. 014493886, INSTAGRAM, registered on December 24, 2015; and
− International Trademark No. 1129314, INSTAGRAM, registered on March 15, 2012.
Relatively little is known of the Respondent, who appears to be an individual located in the United States.
The disputed domain name was registered on August 19, 2020, and currently resolves to a blank page.
The Complainant asserts that the disputed domain name contains the entirety of its highly recognizable and famous trademark, such that it is evidently confusingly similar to it. The Complainant further contends that the Respondent is not using the disputed domain name for any bona fide services, has not been given any permission from the Complainant to use its trademark, and therefore has no rights or legitimate interests in the disputed domain name. Finally, the Complainant asserts that the disputed domain name was registered and used in bad faith, and that the absence of active use of the disputed domain name should not here prevent a finding of bad faith.
Thereupon the Complainant requests that the disputed domain name be transferred to it.
The Complainant’s assertions and evidence are, where necessary or appropriate, further discussed in Section 6, below.
The Respondent did not reply to the Complainant’s contentions.
The disputed domain name begins with and contains the entirety of the Complainant’s highly recognizable name and trademark, with the addition of the letter “s” at the end. This is then followed by the generic Top-Level Domain (“gTLD”) “.info”. Neither of these additions prevent a finding of confusing similarity. Moreover, the gTLD “info” may be disregarded for purposes of determining confusing similarity in connection with paragraph 4(a)(i) of the Policy. See, WIPO Overview 3.0, Section 1.11.1.
It follows that the Complainant has proven the requirements of paragraph 4(a)(i) of the Policy.
The Complainant has here made clear that the Respondent is not its licensee and that it knows of no basis on which the Respondent would have rights or legitimate interests in the disputed domain name. It is furthermore obvious that the Respondent is not called <instagrams.info>.
The Complainant needs to establish at least a prima facie case that the Respondent has no rights or legitimate interests in respect of the disputed domain name. See Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455. Once such a prima facie case is made, the burden shifts to the Respondent to demonstrate that it has such rights or legitimate interests. See also, Meizu Technology Co., Ltd v. “osama bin laden”, WIPO Case No. DCO2014-002; H & M Hennes & Mauritz v. Simon Maufe, Akinsaya Odunayo Emmanuel and Nelson Rivaldo, WIPO Case No. D2014-0225.
In the instant case, and as noted above, the Complainant has clearly asserted and explained that there appears no basis for the Respondent to have any legitimate interests or rights in the disputed domain name, establishing such a prima facie case
There is furthermore no evidence or indicia before the Panel to suggest that the Respondent has any rights or legitimate interests in the disputed domain name. In addition, the construction of the disputed domain name is such that it carries of a risk of implied affiliation, which cannot constitute fair use.
The Respondent having failed to answer the Complaint, the Complainant has accordingly met its burden under paragraph 4(a)(ii) of the Policy.
The Complainant has established that its trademark is inherently distinctive and well known throughout the world, especially the online world; this has also been the finding of several UDRP panels cited by the Complainant. See Instagram, LLC v. Saddam Hussain, WIPO Case No. D2018-0078; Instagram, LLC v. Omer Ulku, WIPO Case No. D2018-1700.
It is not here credible to believe that the disputed domain name was registered without knowledge of the Complainant and its trademarks; it is also very difficult to conceive of what good faith use the Respondent could make of the disputed domain name.
The Complainant explains that while the Respondent appears not to be making any current active use of the disputed domain name this should not prevent a finding of bad faith where, as here: (i) the Complainant’s mark is so well known, (ii) the Respondent has failed to respond with any evidence of good faith use or intentions, and (iii) it is implausible that the disputed domain name could be put to any good faith use. See, WIPO Overview 3.0, section 3.3. The Panel concurs with this analysis.
Further, the Panel notes that the Respondent has been involved in prior UDRP proceedings resulting in decisions in favor of the complainants. See e.g., Philip Morris USA Inc. v. Peter Malandrinos, WIPO Case No. D2020-2760; International Business Machines Corporation v. Peter Malandrinos, WIPO Case No. D2020-2736.
The Complainant has therefore established bad faith registration and use within the meaning of 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, <instagrams.info>, be transferred to the Complainant.
Nicolas Ulmer
Sole Panelist
Date: July 30, 2021