WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Instagram, LLC v. Super Privacy Service LTD c/o Dynadot / Zayed

Case No. D2019-2897

1. The Parties

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

The Respondent is Super Privacy Service LTD c/o Dynadot, United States / Zayed, United Arab Emirates.

2. The Domain Name and Registrar

The disputed domain name <instagram.info> is registered with Dynadot, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 26, 2019. On November 26, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 26, 2019, 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 28, 2019. In accordance with the Rules, paragraph 5, the due date for Response was December 18, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 19, 2019.

The Center appointed Reyes Campello Estebaranz as the sole panelist in this matter on December 23, 2019. 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 is a United States company, founded in 2010 and acquired by Facebook, Inc. in 2012. It operates globally providing an online mobile photo and video sharing social networking application (or “app”) that allows users across the globe to edit and share photos/videos and exchange messages in an online social network, via smartphones including iOS and Android operating systems. The nature of the Complainant’s business is exclusively online, being its main website linked to the domain name <instagram.com>, and being active on various social media forums, including Facebook, Twitter and LinkedIn.

The Complainant holds registered trademark rights in the mark INSTAGRAM in many jurisdictions, being the owner of a substantial trademark portfolio, of which the following are sufficient representative for the present proceeding:

- United States Trademark No. 4,146,057, INSTAGRAM, word mark, registered May 22, 2012, in class 9;
- International Trademark No. 1129314, INSTAGRAM, word mark, registered March 15, 2012, in classes 9 and 42;
- United Arab Emirates Trademark No. 239855, INSTAGRAM, word mark, registered May 18, 2016, in class 9.

The Complainant further owns numerous domain names comprising its trademark INSTAGRAM, under various generic Top-Level Domains (“gTLDs”) and country code Top-Level Domains (“ccTLDs”), which are linked to its corporate websites in connection with its products and services. Among others, <instagram.com> was registered on June 4, 2004, <instagram.dk> was registered on January 14, 2011, and <instagram.org.in> was registered on November 13, 2012.

The disputed domain name was registered on May 19, 2014. At the date of this decision, the disputed domain name is inactive, resolving to a black landing page lacking any content apart from the word “Zayed” and an emoji of winking face. However, according to evidence provided by the Complainant, between May 20, 2014 and November 25, 2015, the disputed domain name was linked to a Dynadot parking page displaying pay-per-click (“PPC”) links, many of which related to the Complainant.

5. Parties’ Contentions

A. Complainant

Key contentions of the Complaint may be summarized as follows:

The trademark INSTAGRAM has acquired considerable reputation and goodwill worldwide, being ranked amongst the top apps for mobile devices and receiving numerous awards, including “App of the Year” in 2011 from Apple Inc. Currently, the Complainant’s app is the third most downloaded app for iOS smartphones worldwide, according to applications information company App Annie, and the Complainant’s website (linked to the domain name <instagram.com>) is ranked the 26th most visited website worldwide, according to web information company Alexa. The Complainant’s app launch (in October 2010), as well as its acquisition by Facebook, Inc. (in 2012), and its exponential growth and explosive popularity has been widely reported by specialized technology publications (including Tech Crunch and Mashable.com), as well as mainstream media including major international publications (such as the New York Times, The Washington Post, The Telegraph, and The Guardian). The Complainant has also made substantial investments to develop a strong presence online by being active on various social media forums (including Facebook, Twitter and LinkedIn), for instance its official page has over 60 million likes on Facebook, and over 36 million followers on Twitter. The Complainant provides extensive evidence in support of these allegations; including screen captures of its official website, its social media pages and Wikipedia, as well copies of apps’ rankings and press articles. The fame of the INSTAGRAM trademark has been recognized in various prior proceedings under the Policy (e.g., Instagram, LLC v. Saddam Hussain, WIPO Case No. D2018-0078, and Instagram LLC v. Omer Ulku, WIPO Case No. D2018-1700).

The Complainant sent a cease-and-desist letter and a subsequent reminder to the Respondent (on October 24, 2019 and October 31, 2019, respectively), including information about the Complainant’s trademark rights and requesting inter alia the voluntary transfer of the disputed domain name. However, the Respondent did not reply to these communications.

The Complainant has established trademark rights in INSTAGRAM, the disputed domain name incorporates this mark in its entirety without any addition or alteration, and the applicable gTLD “.info” may be disregarded for the purposes of assessment under the first element, as it is viewed as a standard registration requirement. Therefore, the disputed domain name is identical to the Complainant’s trademark in accordance with paragraph 4(a)(i) of the Policy.

The Respondent has no rights or legitimate interests in the disputed domain name, being unable to invoke any of the circumstances set out in paragraph 4(c) of the Policy. The Respondent has no license or authorization to use the mark INSTAGRAM, has not used or made demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods, and is not making a legitimate noncommercial or fair use of the disputed domain name. The disputed domain name resolves to a black landing page lacking any substantive content other than the word “Zayed” together with a winking face emoji, and previously resolved to a Dynadot parking page displaying PPC links (presumably created automatically by the Registrar), which does not amount to any substantial business activity being similar to passive holding. There is no evidence that the Respondent is commonly known by the disputed domain name. Despite the disputed domain name being registered behind a privacy service, its seems to belong to an entity or individual named “Zayed”, which bears no resemblance to the term “instagram”, and to the best of the Complainant’s knowledge, the Respondent has not sought to register any trademark containing this term.

The disputed domain name was registered in bad faith. Due to the inherent distinctiveness and well-known worldwide character of the trademark INSTAGRAM, as well as its continuous and extensive use in connection with the Complainant’s online photo sharing social network, the Respondent could not credibly claim to have been unaware of the Complainant and its mark at the time of the disputed domain name’s registration. In 2014, the Complainant had already gained substantial international notoriety, the term “instagram” is highly distinctive and is exclusively associated with the Complainant, and the disputed domain name is identical to this term, which creates a high risk of implied affiliation to the Complainant and its mark. Further, the Respondent has not shown any bona fide intent in relation to the disputed domain name during five years, since its registration.

The disputed domain name is being used in bad faith. The Respondent is not making any apparent substantive use of the disputed domain name, similarly to passive holding, which would not prevent a finding of bad faith. All relevant factors in applying the passive holding doctrine are present in this case. The trademark INSTAGRAM is distinctive and is exclusively associated with the Complainant. The Respondent failed to reply to the Complainant’s cease-and-desist letter and subsequent reminder. The Respondent has taken active steps to conceal its identity by registering the disputed domain name behind a privacy service, and the physical contact address for the underlying registrant appears to be false or incomplete. Further, due to the nature of disputed domain name, being identical to the Complainant’s trademark, and the high risk of implied affiliation, there is no plausible good-faith use of the disputed domain name without having the effect of misleading consumers.

The presence of the disputed domain name in the Respondent’s hands represents an abusive threat hanging over the head of the Complainant (i.e., an abuse capable of being triggered by the Respondent at any time) and therefore a continuing abusive use.

The Complainant requests the transfer of the disputed domain name.

B. Respondent

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

6. Discussion and Findings

Paragraph 4(a) of the Policy provides that, in order to divest a respondent of a domain name, a complainant must demonstrate each of the following:

(i) the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and

(ii) the respondent no rights or legitimate interests in respect of the domain name; and

(iii) the domain name has been registered and is being used in bad faith.

The Complainant has made the relevant assertions as required by the Policy. The dispute is properly within the scope of the Policy and the Panel has authority to decide the dispute.

Paragraph 15(a) of the Rules provides that “[a] Panel shall 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”. The Panel has taken into consideration all of the evidence, annexed material and submissions provided by the Parties, and has performed some limited independent research under the general powers of the Panel articulated inter alia in paragraphs 10 and 12 of the Rules. See section 4.8 of the WIPO Overview 3.0.

The Complaint has been filed against the privacy service and a “Zayed”. The Registrar has confirmed that “Super Privacy Service LTD c/o Dynadot” is the registrant for the disputed domain name. Accordingly, the Panel will indistinctively refer both as the Respondent in the below discussion.

A. Identical or Confusingly Similar

In cases where a domain name incorporates the entirety of a trademark, or where at least a dominant feature of the relevant mark is recognizable in the domain name, the domain name will normally be considered identical or confusingly similar to that mark for purposes of the Policy. See section 1.7, WIPO Overview 3.0.

Further, the applicable gTLD in a domain name is considered a standard technical registration requirement and, as such, is generally disregarded under the first element confusing similarity test, irrespective of its particular ordinary meaning, although said meaning may be relevant to the assessment of the second and third elements. See section 1.11, WIPO Overview 3.0.

The Complainant indisputably has rights in the registered trademark INSTAGRAM. The disputed domain name incorporates this mark in its entirety without any alteration or addition. The Complainant’s trademark INSTAGRAM is therefore directly recognizable in the disputed domain name, and the gTLD “.info” is a technical requirement, generally disregarded for the purpose of the analysis of the confusing similarity. Accordingly, this Panel finds that the disputed domain name is identical to the Complainant’s mark, and the first element of the Policy under paragraph 4(a)(i) has been satisfied.

B. Rights or Legitimate Interests

Although the Complainant bears the burden of establishing all three elements of paragraph 4(a) of the Policy, prior UDRP panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is primarily if not exclusively within the knowledge of the Respondent. Thus, the consensus view is that paragraph 4(c) of the Policy shifts the burden of production of rights or legitimate interests in the disputed domain name to the Respondent, once the Complainant has made a prima facie showing indicating the absence of such rights or legitimate interests.

The Complainant has asserted that the Respondent does not own any trademark for the word “Instagram” and the Respondent is not a licensee or has been otherwise authorized to use the mark INSTAGRAM. Further, the Complainant has alleged there is no evidence that the Respondent is commonly known by the disputed domain name, not the Respondent has any other rights, or made any demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods or services or for any legitimate noncommercial or fair purpose.

This effectively shifts the burden to the Respondent of producing evidence of rights or legitimate interests in the disputed domain name. However, the Respondent has not replied to the Complainant’s contentions.

Paragraph 4(c) of the Policy provides for the Respondent to contest the Complainant’s prima facie case under paragraph 4(a)(ii) of the Policy and to establish rights or legitimate interests in the disputed domain name by demonstrating, without limitation:

“(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or

(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.”

The evidence provided by the Complainant shows the disputed domain name was temporally (during the first year after its registration, between May 20, 2014 and November 25, 2015) linked to a Dynadot parking page displaying PPC links, many of which related to the Complainant, which presumably was created automatically by the Registrar. Since then, during approximately four years, the disputed domain name is being linked to a black landing page containing only the word “Zayed” and an emoji of winking face, not showing any bona fide intent to use the disputed domain name in connection to a legitimate noncommercial or fair use or to any bona fide offering of goods or services,.

Furthermore, a core factor in assessing fair use of the disputed domain name is that it does not falsely suggest affiliation with the Complainant’s trademark. See section 2.5, WIPO Overview 3.0. The disputed domain name incorporates the Complainant’s trademark in its entirety without any alteration or addition, being identical to the Complainant company name and its reputed trademark. Therefore, the Panel considers that there is a high risk of implied affiliation. The Panel further notes the extensive presence of the trademark INSTAGRAM over the Internet, as well as the extensive use of this mark worldwide, including United Arab Emirates and its capital Abu Dhabi, where the Respondent is apparently located according to historic WhoIs records provided by the Complainant, where there are numerous users of the Complainant’s app. The Panel, in use of the general powers articulated in the Policy, has visited the Complainant’s app and performed various searches over the Internet.

The Panel further considers remarkably the Respondent’s attitude of deliberately choosing not to reply to the Complaint, not providing any explanation connected to the above-mentioned circumstances (included in paragraph 4(c) of the Policy) or any other that may be considered as a fair use or legitimate interests in the disputed domain name.

All the above-mentioned circumstances lead the Panel to conclude that the Respondent has not produced evidence to rebut the Complainant’s prima facie case, and all these cumulative facts and circumstances point to consider that the Respondent lacks any rights or legitimate interests in the disputed domain name. Therefore, the second element of the Policy under paragraph 4(a)(ii) has been established.

C. Registered and Used in Bad Faith

The Policy, paragraph 4(a)(iii), requires that the Complainant establish that the disputed domain name “has been registered and is being used in bad faith.”

At the time of the disputed domain name’s registration, this Panel considers unlikely that the Respondent did not know about the INSTAGRAM mark, and did not have it in mind. Several factors in this case lead to this conclusion.

The Panel notes the extensive presence of the trademark INSTAGRAM over the Internet, as well as its extensive use and promotion worldwide, including United Arab Emirates, where the Respondent is apparently located according to historic WhoIs records provided by the Complainant. The Complainant’s trademark is used and registered in many jurisdictions worldwide, being considered notorious in the mobile apps sector and well known by the public in general, and being the Complainant’s website (linked to the domain name <instagram.com>) ranked the 26th most visited website worldwide, according to web information company Alexa. The reputation of the trademark INSTAGRAM has been recognized by prior decisions under the Policy. The Panel further notes the term “instagram” is highly distinctive, and is exclusively associated with the Complainant, not being a term included in the dictionary, but a coined word created by the Complainant. Under these circumstances, the disputed domain name incorporates the Complainant’s trademark in its entirety without any addition or alteration, which intrinsically creates a high likelihood of confusion or a high risk of implied affiliation.

Further, the disputed domain name has been used in bad faith. It was temporally used in connection to a Dynadot parking page displaying PPC links, many of which related to the Complainant, which presumably was created automatically by the Registrar. With respect to “automatically” generated PPC links, the Respondent cannot disclaim responsibility for content appearing on the website associated with the disputed domain name. Neither the fact such links were generated presumably by a third party such as the Registrar, nor the fact the Respondent may not have directly profited, would by itself prevent a finding of bad faith. See section 3.5, WIPO Overview 3.0.

Afterwards, for approximately four years, the disputed domain name is being linked to a black landing page, which lacks any content apart the word “Zayed” and an emoji of winking face. The Panel considers such use is similar to a passive holding, which does not prevent a finding of bad faith. See section 3.3, WIPO Overview 3.0.

The Panel further notes the reaction of the Respondent to the Complainant’s cease-and-desist communication and to the notification of the Complaint, deliberately choosing not to reply to the Complainant’s contentions, and not providing any explanation or evidence supporting any legitimate rights or interests in the disputed domain name.

Furthermore, the Respondent has taken active steps to conceal its identity by registering the disputed domain name behind a privacy service, and presumably has provided false or incomplete contact details, according to the historic WhoIs records provided by the Complainant, which are further evidence of bad faith.

The Policy’s non-exhaustive list of bad faith circumstances in paragraph 4(b) includes the following:

“(i) circumstances indicating that you have registered or you have acquired the domain names primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or

(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or

(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.”

Taking into account all cumulative circumstances of this case, the Panel considers that the disputed domain name was very likely registered and used, targeting the mark INSTAGRAM, with the intention of creating a likelihood of confusion as to the affiliation or association with the Complainant and its reputed trademark, trying to misleadingly attract Internet users to the Respondent’s site and disrupting the Complainant’s business. It is further possible that the Respondent may attempt to obtain private information and data from its website visitors or through emails connected to the disputed domain name, based on their association with the Complainant and the reputed trademark INSTAGRAM.

Given the exclusive online nature of the Complainant’s business, the Panel considers the registration and use of the disputed domain name constitutes a serious threat not only to the core of the Complainant’s business, but also to the millions of users accessing and downloading the Complainant’s app online.

All the above-mentioned leads the Panel to conclude that the disputed domain name was registered and is being used in bad faith. Accordingly, the Panel concludes that the Complainant has met its burden of establishing that the Respondent registered and is using the disputed domain name in bad faith under 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 name <instagram.info> be transferred to the Complainant.

Reyes Campello Estebaranz
Sole Panelist
Date: December 30, 2019