WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Instagram, LLC v. Mehmet Telli

Case No. D2018-2198

1. The Parties

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 Mehmet Telli of Ankara, Turkey.

2. The Domain Names and Registrar

The disputed domain names <instagramiletisim.com>, <instagramsecurity.com>, <instagramsecurity.net>, and <instagramsecurity.org> are registered with FBS Inc. (the “Registrar”).

3. Procedural History

The Complaint in English was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 27, 2018. On September 28, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On October 1, 2018, 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.

Pursuant to the Complaint submitted in English and the registrar verification dated October 1, 2018 stating that Turkish is the language of the registration agreement of the disputed domain names, on October 1, 2018, the Center sent a request in English and Turkish that the Parties submit their comments on the language of the proceeding. On October 1, 2018, the Complainant submitted its request for English to be the language of the proceeding. The Respondent did not submit any request regarding 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 October 12, 2018. In accordance with the Rules, paragraph 5, the due date for Response was November 1, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 2, 2018.

The Center appointed Dilek Ustun Ekdial as the sole panelist in this matter on November 15, 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.

4. Factual Background

The Complainant, Instagram LLC (hereinafter “Instagram” or the “Complainant”) is the well-known online photo and video sharing social networking application. It was launched on October 6, 2010.

Currently, Instagram has over 1 billion monthly active users and 400 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-sharing software. 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 Trademark No. 4146057, for INSTAGRAM, registered on May 22, 2012 (first use in commerce on October 6, 2010);

− International Trademark No. 1129314, for INSTAGRAM, registered on March 15, 2012.

The disputed domain names, <instagramiletisim.com>, <instagramsecurity.com>, <instagramsecurity.net>, and <instagramsecurity.org> were all registered on November 12, 2015.

5. Parties’ Contentions

A. Complainant

The Complainant alleges the following:

The disputed domain names are confusingly similar to the trademark INSTAGRAM.

The disputed domain names incorporate the Complainant’s INSTAGRAM trademark in its entirety.

The Complainant submits that the addition of the generic term “security” reinforces the confusing similarity with the Complainant’s INSTAGRAM trademarks as the Complainant provides its official “Security tips” through the Instagram Help Centre at “https://help.instagram.com/369001149843369”. Instagram users may therefore associate the disputed domain names with the Complainant’s Help service relating to account security.

The Complainant also adds that the addition of the term “iletisim” (“contact” in Turkish) is likely to lead Turkish Instagram users to believe that the disputed domain name <instagramiletisim.com> is affiliated with the Complainant.
Complainant also alleges the following:

The Complainant submits that the Respondent has no rights or legitimate interests in respect of the disputed 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 dispute 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 disputed 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 disputed domain names without intent for commercial gain, giving it was previously associated with a phishing scam.

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 disputed 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 trademarks at the time of registration of the disputed domain names in 2015.

The Respondent’s subsequent use of the disputed domain name <instagramiletisim.com> to point to a phishing website having the same “look and feel” as the Complainant’s official website leaves no doubt as to the Respondent's awareness of Instagram at the time of registration.

The Complainant further submits that the Respondent has engaged in a pattern of conduct within the meaning of paragraph 4(b)(ii) of the Policy by registering four domain names infringing upon the Complainant’s trademark rights for the purpose of preventing the Complainant from reflecting its trademarks in corresponding domain names.

Also the four disputed domain names were registered through a privacy registration service.

Finally, the Complainant asserts that the Respondent is using the disputed domain names in bad faith, i.e., by intentionally misdirecting Internet users to a website prominently containing the Complainant’s favicon in the address and having the same “look and feel” as the latter’s official website available at “www.instagram.com”. Such use of the disputed domain names as part of a phishing scam to harvest, no doubt for commercial gain, confidential account information from Instagram users as result of intentionally created confusion constitutes use in bad faith and the fact that the disputed domain names are now inactive does not cure the Respondent’s bad faith.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

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 disputed 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 disputed domain names; and

(iii) that the disputed domain names have been registered and is being used in bad faith.

6.1. Language of the Proceeding

Although the language of the Registration Agreement of the disputed domain names is Turkish, the Panel determines in accordance with the Rules, paragraph 11(a) that the language of this administrative proceeding shall be English.

Noting the Complainant’s submission on the language of proceedings, including that the disputed domain name <instagramiletisim.com> previously pointed to a website in English, the Panel finds that it would be inappropriate to conduct the proceeding in Turkish and request a Turkish translation of the Complaint, noting that the Respondent has failed to raise any objection with regard to the language of the proceeding, or to respond in any way to the Complaint.

6.2. Substantive Issues

A. Identical or Confusingly Similar

The disputed domain names <instagramiletisim.com>, <instagramsecurity.com>, <instagramsecurity.net>, and <instagramsecurity.org> contain the Complainant’s well-known trademark INSTAGRAM with the descriptive terms “iletisim” (meaning “contact” in Turkish) and “security”. See section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”). The addition of these terms does not avoid the confusing similarity.

The extensions “.com”, “.net”, and “.org” are generally not to be taken into consideration when examining the identity or similarity between the Complainant’s trademarks and the disputed domain names.

Therefore, the Panel finds that the disputed domain names are identical or confusingly similar to the trademark INSTAGRAM in which Complainant has rights, satisfying the condition of the Policy paragraph 4(a)(i).

B. Rights or Legitimate Interests

The Respondent has not provided any evidence of the type specified in paragraph 4(c) of the Policy, or any other circumstances giving rise to a right or legitimate interest in the disputed domain names. It is clear that the Respondent has not demonstrated any bona fide offering of goods and services by its using the disputed domain names. Nor has the Respondent shown that it has been commonly known by the disputed domain names. Rather, the evidence of the Complainant suggests that the Respondent has used the disputed domain names in an attempt to trade off the goodwill associated with the Complainant’s trademark.

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 disputed domain names or otherwise.

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.

The Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain names.

C. Registered and Used in Bad Faith

The Panel is of the opinion that when the Respondent registered the disputed domain names it knew that INSTAGRAM was the trademark of the Complainant, and accordingly finds that the Respondent registered the disputed domain names in bad faith.

The use of the disputed domain names as part of a phishing scam obviously constitutes use in bad faith and the fact that the disputed domain names are now inactive does not alter this conclusion, since passive holding of a domain name containing a famous trademark, especially in conjunction with the provision of false WhoIs information, can still constitute bad faith (Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003).

There is no suggestion that the Respondent had any intention of legitimate use, that it enjoys a legitimate connection to the disputed domain names or that there is conceivable good faith use for the disputed domain names. After examining all circumstances surrounding the registration and use of the disputed domain names, the Panel finds that the Respondent registered and is using the disputed domain names in bad faith.

Accordingly, the Panel finds in favor of the Complainant on the third element of the Policy.

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 names <instagramiletisim.com>, <instagramsecurity.com>, <instagramsecurity.net>, and <instagramsecurity.org> be transferred to the Complainant.

Dilek Ustun Ekdial
Sole Panelist
Date: December 3, 2018