The Complainant is Instagram, LLC of Menlo Park, California, United States of America (“United States”), represented by Hogan Lovells (Paris) LLP, France.
The Respondent is Alexander Montaz of New York, New York, United States.
The disputed domain name <appeal-instagram.me> is registered with GoDaddy.com, LLC (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 26, 2018. On October 29, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On the same day, 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 November 6, 2018. In accordance with the Rules, paragraph 5, the due date for Response was November 26, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent of its default on November 27, 2018.
The Center appointed Dennis A. Foster as the sole panelist in this matter on December 3, 2018. 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.
Based in the United States, the Complainant is a global supplier of online social network services that involve photo and video sharing. It operates under the INSTAGRAM service mark, which has been registered with many jurisdictions throughout the world, including with the United States Patent and Trademark Office (“USPTO”) (e.g., Registration No. 4146057; registered on May 22, 2012).
The Respondent owns the disputed domain name, <appeal-instagram.me>, which was registered on December 21, 2017. The disputed domain name does not currently resolve to a website, but previously resolved to a website that resembled the Complainant’s primary website and sought personal information from Internet users.
- The Complainant, a United States company, was launched on October 6, 2010. The Complainant oversees an online photo and video sharing social network that currently has over one billion active users worldwide. Moreover, the Complainant has the fourteenth most visited website in the world, and its application is consistently ranked among the most used on mobile devices.
- The Complainant conducts business under the INSTAGRAM service mark, which is registered with many jurisdictions around the world, including with the USPTO. The Complainant has also registered many domain names that contain its mark, including its official website, <instagram.com>.
- The disputed domain name, <appeal-instagram.me>, is confusingly similar to the Complainant’s INSTAGRAM mark. The disputed domain name incorporates the mark in full, with the addition of the generic term “appeal” and a hyphen. Those additions fail to distinguish the disputed domain name from the mark. Also, the inclusion of the country code Top-Level Domain (“ccTLD”), “.me”, which represents Montenegro, is inconsequential for the purpose of a confusing similarity comparison.
- The Respondent has no rights or legitimate interests in the disputed domain name. The Complainant has not licensed or authorized the Respondent to use the Complainant’s service mark in any manner. Also, the Respondent cannot rely upon Policy paragraph 4(c) to justify ownership of the disputed domain name.
- The disputed domain name does not presently resolve to a website, but resolved previously to a website that mimicked the Complainant’s official website and requested personal information of Internet users that likely related to illegitimate phishing efforts. Furthermore, the Respondent was previously associated with another domain name that included an internationally famous mark and again requested personal information from Internet users that could be used for fraudulent purposes. Also, the Respondent could not possibly claim that he has been commonly known as the disputed domain name.
- The disputed domain name was registered and is being used in bad faith. The Complainant’s INSTAGRAM mark is very distinctive and famous throughout the world. Therefore, the Respondent must have registered the disputed domain name with full knowledge of that mark and the Complainant’s rights in the same. Given the Respondent’s registration of another domain name that incorporated illegitimately another famous mark, he has engaged in a pattern of bad faith domain name registration.
- The Respondent has used the disputed domain name intentionally for commercial gain based on the likely confusion between that name and the Complainant’s mark. Moreover, the disputed domain name’s resolution to a website that copies much of the Complainant’s own website, and that solicits personal information from unsuspecting Internet users, is further evidence of bad faith registration and use. Finally, there are no disclaimers on the Respondent’s website, which only adds to the intentional confusion that Internet users would likely encounter in distinguishing the disputed domain name from the Complainant’s offerings.
The Respondent did not reply to the Complainant’s contentions.
Pursuant to Policy paragraphs 4(a)(i) - (iii), the Panel may find for the Complainant and order a transfer of the disputed domain name, <appeal-instagram.me>, provided the Complainant demonstrates that:
- The disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
- The Respondent has no rights or legitimate interests in respect of the disputed domain name; and
- The disputed domain name has been registered and is being used in bad faith.
The Complainant has established its rights in the INSTAGRAM service mark to the Panel’s satisfaction by submitting evidence of registration for the mark with the USPTO. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.2.1 (“Where the complainant holds a nationally or regionally registered trademark or service mark, this prima facie satisfies the threshold requirement of having trademark rights for purposes of standing to file a UDRP case.”); and The SANS Institute v. WhoisGuard, WIPO Case No. D2007-0426 (“Complainant has established rights in the SANS mark through registration with the USPTO.”).
The Panel notes that the disputed domain name, <appeal-instagram.me>, is not identical to the INSTAGRAM service mark. The dictionary term, “appeal”, is inserted into the disputed domain name along with a hyphen. However, these additions fail to avoid a finding by the Panel of confusing similarity between the disputed domain name and the Complainant’s mark. Also, the inclusion in the disputed domain name of the ccTLD, “.me”, is irrelevant in this comparison. See LIDL Stiftung & Co. KG v. Whois Agent, Whois Privacy Protection Service, Inc. / Jean-pierre CHAVE, WIPO Case No. D2018-2149 (“Previous UDRP panels have found confusing similarity when a respondent merely adds a hyphen and a generic term to a Complainant’s mark.”); and Instagram, LLC v. Muhittin Ozer, WIPO Case No. D2016-0584 (finding <online-instagram.com> to be confusingly similar to the INSTAGRAM mark).
Accordingly, the Panel concludes that the Complainant has demonstrated that the disputed domain name is identical or confusingly similar to a service mark in which the Complainant has rights.
Prior UDRP panels have held consistently that if a complainant can make a prima facie case that a respondent has no rights or legitimate interests in a disputed domain name, then the respondent must rebut that case with evidence that it does have those rights or interests. See WIPO Overview 3.0, section 2.1 (“...where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name.”).
In this case the Panel believes that the Complainant has established such a prima facie case by demonstrating that the disputed domain name is confusingly similar to the Complainant’s service mark, and by contending credibly that the Respondent has not been licensed or authorized in any manner to use that mark in connection with a domain name or otherwise.
As the Respondent has failed to file a Response in rebuttal to the Complainant’s contentions, the Panel will search for a possible rebuttal elsewhere in the record, using Policy paragraph 4(c) as a guide and regarding as true any reasonable assertion found in the Complaint that is not false on its face. See Kapadokya Balonculuk Turizm Ticaret Ltd. Şti. v. Halil Uluer, WIPO Case No. D2009-0620 (“As the Respondent failed to submit a response and rebut the allegations made against him, the Panel accepts the Complainant’s contentions as true.”); and Philip Morris USA Inc. v. Sylvester Spinetta, WIPO Case No. D2004-0317 (“Under the Policy and Rules, when a Respondent defaults, the Panel may choose to accept the Complainant’s contentions as true, but must determine whether those facts constitute a violation of the Policy, sufficient to order cancellation or transfer of the disputed domain name.”).
Backed by clear evidence, the Complainant reasonably contends, and the Panel accepts, that the disputed domain name is not now linked to a functioning website but was connected to a website through which the Respondent was likely engaging in a phishing scheme. The Complainant’s evidence, in the form of a webpage screenshot, shows that the former website resembled the Complainant’s official website and suggested that Internet users might log into an existing account or set up a new account. Either act could cause those users to expose personal information to the Respondent, who could use that information for illegitimate purposes. In the Panel’s opinion, such phishing scams fail to constitute “a bona fide offering of goods or services” pursuant to Policy paragraph 4(c)(i). See Diamond Hill Investment Group, Inc. v. Richard Stroud, WIPO Case No. D2016-0510 (“The Panel finds that the use of the Domain Name to divert Internet traffic to a scam or a phishing scheme is not a bona fide offering of goods or services.”); Cantor Fitzgerald Securities, Cantor Index Limited v. Cantor Index Limited, WIPO Case No. D2010-2204 (“This fraud, called phishing, cannot constitute a bona fide offering of goods or services.”).
The Complainant asserts, and the Panel agrees, that Policy paragraph 4(c)(ii) cannot be applied successfully in this case, because there is no evidence that the Respondent, Alexander Montaz, has ever been known commonly as “appeal-instagram”. Moreover, the above-referenced use to which the disputed domain name is being employed, i.e., a phishing operation, does not, in the Panel’s view, constitute “a legitimate noncommercial or fair use” of that name per Policy paragraph 4(c)(iii). See Yahoo! Inc. v. Ifeanyi Alusigwe, Tritonell Constructions Nig. Lt, WIPO Case No. D2017-0722 (“...the Respondent is not making legitimate noncommercial or fair use of the [disputed] Domain Names, but rather is using the same to perpetrate a phishing scheme...”); and The Royal Bank of Scotland Group Plc v. irbs, WIPO Case No. D2012-0854 (“The Respondent is using the disputed domain name <i-rbs.com> for phishing purposes. Therefore, it is not making a legitimate noncommercial or fair use of the disputed domain name.”)
As a result, the Panel finds that the Complainant has shown that the Respondent has no rights or legitimate interests in the disputed domain name.
The Complainant cites several reasons for the Panel to conclude that the Respondent registered and is using the disputed domain name in bad faith. The Panel finds that only one reason need be sustained to reach that conclusion. As explained above, the Panel accepts the Complainant’s contention that the ultimate purpose for which the disputed domain name is being used is to phish for personal information as a means for the Respondent to profit illegitimately. The Panel believes that this is a particularly injurious way in which cyber-squatters like the Respondent seek in bad faith to violate the marks and rights of legitimate businesses. Previous UDRP panels have reached the same conclusion, and the Panel finds little difficulty in determining that the disputed domain name was registered and is being used in bad faith. See, for example, Datamatics Global Services Limited, CIGNEX Datamatics Technologies Limited v. Registration Private, Domains By Proxy, LLC / Avinash Gupta, WIPO Case No. D2017-2595 (“The use of a disputed domain name in a ‘phishing’ scheme is in itself evidence that the disputed domain name was registered and is being used in bad faith.”); The Royal Bank of Scotland Group plc v. Secret Registration Customer ID 232883 / Lauren Terrado, WIPO Case No. D2012-2093 (“Use of a disputed domain name for the purpose of defrauding Internet users by the operation of a ‘phishing’ website is perhaps the clearest evidence of registration and use of a domain name in bad faith.”); and Halifax plc v. Sontaja Sunducl, WIPO Case No. D2004-0237 (“In particular, the availability of the online registration pages, and the apparent potential for ‘phishing’ and obtaining information by deception, is not just evidence of bad faith but possibly suggestive of criminal activity.”).
Consequently, the Panel determines that the Complainant has proved that the disputed domain name was registered and is being used in bad faith.
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, <appeal-instagram.me>, be transferred to the Complainant.
Dennis A. Foster
Sole Panelist
Date: December 17, 2018