WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Instagram, LLC v. Semen Semchenko, Igor Petrov, Ivan Ivanov

Case No. D2020-3127

1. The Parties

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

The Respondents are Semen Semchenko, Ukraine, Igor Petrov, Ukraine, and Ivan Ivanov, Ukraine.

2. The Domain Names and Registrar

The disputed domain names <buyinstagramfollowers3.com>, <buyinstagramsfollowerscheap.com>, <instafollowergratis.com>, <instagramfollowers24.com>, <instagramlikebot.com>, and <instagramsolutions.com> are registered with PDR Ltd. d/b/a PublicDomainRegistry.com (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 20, 2020. On November 20, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On November 21, 2020, the Registrar transmitted by email to the Center its verification response confirming that the Respondents are listed as the registrants 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 Respondents of the Complaint, and the proceedings commenced on November 24, 2020. In accordance with the Rules, paragraph 5, the due date for Response was December 14, 2020. The Respondents did not submit any response. Accordingly, the Center notified the Respondents’ default on December 20, 2020.

The Center appointed Dr. Clive N.A. Trotman as the sole panelist in this matter on December 28, 2020. 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, launched in 2010 and acquired by Facebook in 2012, is a highly popular online social network for photo and video sharing. It has been rated the 25th most visited website in the world, with more than 1 billion monthly active accounts.

The Complainant’s product is known as “Instagram”, and also as “Insta”, both of which words have been registered widely as trademarks. A selection of trademarks representative for the purposes of the present proceeding is as follows:

INSTAGRAM, United States Patent and Trademark Office (USPTO), registered May 22, 2012, registration number 4146057, in class 9;
INSTAGRAM, European Union Intellectual Property Office (EUIPO), registered December 24, 2015, registration number 014493886, in classes 25, 35, 38, 41, 45;

Design only (as described in detail), USPTO, registered February 13, 2018, registration number 5399502, in classes 14 and 16;

INSTA, USPTO, registered October 18, 2016, registration number 5061916, in class 9;
INSTA, EUIPO, registered November 19, 2015, registration number 014810535, in class 9.

The Complainant owns a number of domain names incorporating its trademark including <instagram.com>, <instagram.net>, <instagram.org>, and <instagram.ca>. The Complainant also has a strong presence on other social media platforms including Facebook, Twitter, and LinkedIn.

The Respondents have not provided any background information, except for the contact details provided to the Registrar at the time of registration of the disputed domain names. The Complainant believes all six disputed domain names to be under the control of the same entity. The disputed domain names were registered as follows:

<buyinstagramfollowers3.com>, registered on May 20, 2019 in the name of Semen Semchenko, which resolved to a website that offered the sale of Instagram “likes” and “followers”;

<buyinstagramsfollowerscheap.com>, registered on May 5, 2020 in the name of Igor Petrov, which resolved to a website offering the sale of Instagram “followers”, and had a link to another website offering the sale of Instagram “likes” and “followers”;

<instafollowergratis.com>, registered on April 30, 2019 in the name of Ivan Ivanov, which resolved to a website offering the sale of Instagram “followers”.

<instagramfollowers24.com>, registered on April 30, 2019 in the name of Ivan Ivanov, which resolved to a website that appeared to be offering the sale of Instagram “followers” and had a link to another website offering the sale of Instagram “likes” and “followers”;

<instagramlikebot.com>, registered on May 6, 2019 in the name of Ivan Ivanov, which resolved to a
blog-style website site about buying Instagram followers online and which had a link to another website offering the sale of Instagram “likes” and “followers”;

<instagramsolutions.com>, registered on May 17, 2019 in the name of Semen Semchenko, which did not resolve to a website because the server IP address could not be found.

5. Parties’ Contentions

A. Complainant

The Complainant submits that it would be fair and equitable to all parties for the Complaints in respect of all six disputed domain names, which have been brought against three different Respondents variously, to be consolidated. The Complainant says that, according to its analysis, the disputed domain names are under common control; there is no apparent reason why it would not be equitable to allow the Complainant to file a single Complaint against a single Respondent; to require the Complainant to file a separate Complaint for each disputed domain name would result increased time and costs; the Complainant’s substantive arguments in each instance are the same; and that the relevant filings, including annexes, are not unreasonably voluminous.

The Complainant contends that it has the requisite rights in its registered trademarks INSTA and INSTAGRAM and that the disputed domain names are identical or confusingly similar to those trademarks. The generic Top-Level Domain (“gTLD”) attaching to each disputed domain name is not relevant to confusing similarity. Each of the disputed domain names contains recognisably one of the Complainant’s trademarks, accompanied by generic words or numbers that do not prevent a finding of confusing similarity with the trademark. Some of the additional generic words relate to the Complainant’s activities and are likely to reinforce confusing similarity with the Complainant’s trademarks.

The Complainant further contends that the Respondents have no rights or legitimate interests in respect of the disputed domain names. The Respondents are not licensees of the Complainant and have not been authorised to use the Complainant’s trademarks.

The Complainant says the Respondents cannot assert any rights or legitimate interests in the disputed domain names by claiming legitimacy under the terms of paragraph 4(c) of the Policy. There has been no bona fide offering of goods or services through the disputed domain names because, with the exception of <instagramsolutions.com>, they ultimately resolve to websites offering the sale of Instagram “followers” and “likes”, trading on the goodwill of the Complainant’s trademarks, on a scale that can only indicate that the offers are fraudulent. Any such activity is specifically contrary to the Instagram Terms of Use. The disputed domain name <instagramsolutions.com> has not been used at all. The Respondents cannot claim to be commonly known by the disputed domain names and there has been no legitimate noncommercial or fair use of them.

The Complainant contends that the disputed domain names were registered and are being used in bad faith. The Complainant’s trademarks INSTA and INSTAGRAM, which are incorporated into the disputed domain names, are so well known that the Respondents must have been aware of them and registration of the disputed domain names was therefore in bad faith.

The Complainant says a previous complaint under the Policy against two of the present Respondents resulted in the transfer of four domain names, incorporating the Complainant’s trademarks, to the Complainant. Thus, the Respondents have engaged in a pattern of the registration of domain names in order to prevent the owner of the trademark from reflecting the trademark in a corresponding domain name.

The Complainant also says that the Respondents have intentionally attempted to attract Internet users to their websites, for commercial gain, by confusion with the Complainant’s trademarks, by offering to sell Instagram “likes” and “followers”, thereby trading on the goodwill embodied in the Complainant’s trademarks. In addition to using the Complainant’s trademarks, the Respondents have created websites that have a similar look and feel to the Complainant’s websites and in several instances display a representation of a logo trademark registered to the Complainant. The Respondents’ actions are likely to destroy the authenticity of the user experience of the Complainant’s clients and to damage the Complainant’s reputation and goodwill. The sourcing of the purported Instagram “followers” and “likes” offered for sale is likely to be fraudulent.

The Complainant has cited previous decisions under the Policy that it considers relevant to its position.

The Complainant requests the transfer of the disputed domain names.

B. Respondents

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

6. Discussion and Findings

A. Procedural Matters

Paragraph 4(a) of the Policy states that a Respondent is required to submit to a mandatory administrative proceeding in the event that the Complainant asserts to the applicable dispute-resolution provider, in compliance with the Rules, that:

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

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

(iii) your 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 jurisdiction to decide the dispute.

Paragraph 10(e) of the Rules states: “A Panel shall decide a request by a Party to consolidate multiple domain name disputes in accordance with the Policy and these Rules”. The Complainant has requested that the proceedings against the three Respondents in respect of the six disputed domain names shall be consolidated.

In deciding the request, the Panel has taken into account the following submissions by the Complainant:

- all of the disputed domain names were registered using the same email address;

- the registrant’s country for each disputed domain name is Ukraine;

- the disputed domain names have a similar string comprising one of the Complainant’s trademarks with the addition of various generic terms or numbers;

- at least three of the disputed domain names, namely <buyinstagramsfollowerscheap.com>, <instagramfollowers24.com>, and <instagramlikebot.com> contain a hyperlink to the same website at “www.followerspromotion.com”, offering Instagram “likes” and “followers” for sale;

- all disputed domain names except <instagramsolutions.com> resolve to websites offering to sell Instagram “followers” and “likes”;

- the disputed domain name <instagramsolutions.com>, although not currently resolving, was registered in the name of Semen Semchenko who also figures in the WhoIs record of the presently resolving disputed domain name <buyinstagramfollowers3.com>;

- all six disputed domain names were registered under the “.com” gTLD.

Whilst the Complainant’s last point is of no consequence and the other points differ in their impact on the matter, taking into account that no Respondent has contested the request for consolidation of the Complaints, the Panel finds it more probable than not that all six disputed domain names are effectively under the control of a single guiding mind or entity. The Panel grants the Complainant’s request to consolidate the Complaints.

The Respondent will hereafter be referred to in the singular.

B. Identical or Confusingly Similar

The Panel is satisfied by the evidence presented that the Complainant holds and has rights in the trademarks INSTA and INSTAGRAM. The gTLD “.com” in the disputed domain names will be disregarded in the determination of confusing similarity.

The Complainant’s trademark INSTA is prominent in the disputed domain name <instafollowergratis.com>. The threshold is conventionally low for the purposes of paragraph 4(a)(i) of the Policy and the visibility of the Complainant’s trademark in the disputed domain name is found to be sufficient in this instance for a finding of confusing similarity with the trademark. The additional words “follower” and “gratis” are found not to detract from confusing similarity and do not prevent a finding of confusing similarity.

The other disputed domain names, <buyinstagramfollowers3.com>, <buyinstagramsfollowerscheap.com>, <instagramfollowers24.com>, <instagramlikebot.com>, and <instagramsolutions.com>, all feature the Complainant’s trademark INSTAGRAM and are found to be confusingly similar to it. The additional prefix or suffix words or numbers, i.e., “buy”, “followers”, “3”, “cheap”, “24”, “like”, “bot”, and “solutions”, are found not to be distinguishing. None of them, alone or in combination, prevent a finding of confusing similarity.

The Panel finds for the Complainant under paragraph 4(a)(i) of the Policy in respect of all six disputed domain names.

C. Rights or Legitimate Interests

The Complainant has asserted that the Respondent has no rights or legitimate interests in respect of the disputed domain names. The Respondent is not a licensee of the Complainant and has not been authorised to use the Complainant’s trademarks.

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 a 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 Respondent has not responded and has made no claim of rights or legitimate interests in the disputed domain names with reference to paragraphs 4(c)(i), (ii) or (iii) of the Policy or otherwise. According to the Complainant’s enquiries, there has been no bona fide offering of goods or services through the disputed domain names. There has been no use at all of the disputed domain name <instagramsolutions.com>, and the remaining five, by resolving to websites that offer to facilitate the sale of Instagram “followers” and “likes”, are trading on the goodwill of the Complainant’s trademarks and cannot be bona fide. There is no evidence the Respondent has been commonly known by the disputed domain names or evidence of any legitimate noncommercial or fair use of them.

The Panel finds that the Respondent does not have rights or legitimate interests in the disputed domain names and finds for the Complainant under paragraph 4(a)(ii) of the Policy.

D. Registered and Used in Bad Faith

The Complainant must prove under paragraph 4(a)(iii) of the Policy that the disputed domain name has been registered and is being used in bad faith. Paragraph 4(b) of the Policy lists four alternative circumstances, without limitation, that shall be evidence of the registration and use of a domain name in bad faith by a respondent, namely:

“(i) circumstances indicating that you have registered or you have acquired the domain name 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 website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location”.

The Panel has examined the usage of the disputed domain names <buyinstagramfollowers3.com>, <buyinstagramsfollowerscheap.com>, <instagramfollowers24.com>, <instagramlikebot.com>, and <instagramsolutions.com> (the “resolving disputed domain names”) by means of the screen captures of the websites to which they resolve, produced in evidence by the Complainant.

Common to all the resolving disputed domain names is that they offer a service to people wanting to profit from the Complainant’s Instagram social network. Simply put, an Instagram user can make money by being recognised as an “influencer”. An influencer may portray goods or services, such as fashion or travel, in a positive light on Instagram in return for payment in cash or kind from the proprietors of the goods or services. In order to succeed on any scale, it is essential for the influencer to have a large following and for the proprietor of the goods or services to believe it is reaching a large potential audience in return for its payments to the influencer. A valued influencer will have tens of thousands, preferably hundreds of thousands, and in rare instances millions of genuine “followers”, together with a somewhat smaller but proportionate number of “likes”. The need for an influencer to have many “followers” and “likes” has spawned a sub-industry trading in advice as to how to get them faster and in quantity, including by the sale and purchase of inauthentic “followers” and “likes”.

At the time of screen capture, the website of the disputed domain name <buyinstagramfollowers3.com>, of which the first 12 screen pages are produced in evidence, had assorted advice about Instagram, notably including major headings “Buy 1,000 Instagram followers”, “Buy likes and followers on Instagram”, “Buy Instagram Accounts” and “Buy Instagram Followers Boost your Business Presence”. The Complainant’s trademarked logo appeared several times.

The disputed domain name <buyinstagramsfollowerscheap.com> resolved to a website featuring “Awesome New Packages” and an Instagram trademark, and offered priced packages ranging up to the “Ultimate”, which promises 50,000 “followers” and 5,000+ “likes”, with a six-month guarantee, for USD 99. The website claimed to have delivered over 3 million “followers”.

The disputed domain name <instafollowergratis.com> led to a website headed “Instagram” and “Free Instagram Followers”. One of the several subheadings was “Why Use Our Service”, detailing how to obtain “1,999 Instagram followers in the blink of an eye”, with a requirement, among others, to download certain games from elsewhere.

The website to which the disputed domain name <instagramfollowers24.com> resolved was headed “Insagram [sic] Followers Hack” and claimed “530,000 Followers generated today”. A user of this website was required to provide further information in order to proceed, however it was clear from what was displayed, including, “This is the world’s first online working Instagram Followers Service which provides free followers everyday!”, that it was designed to allow users to circumvent the legitimate route to gaining “followers”.

The disputed domain name <instagramlikebot.com> was headed “Global Smm Panel Blog”. The first subheading stated, if illogically, “How to Buy followers on Instagram for free”. Later subheadings included “Buy 2,500 Instagram likes”, “Buy 10,000 Instagram Followers”, and “Actually make money with social media just by investing in Instagram followers”. The Complainant’s registered logo trademark was displayed several times.

Each of the resolving disputed domain names had content that included multiple usages of the Complainant’s trademark name or logo. Whether or not a respective website used the word “buy”, it may reasonably be concluded from the totality of the evidence that the considerable effort and investment into each website, and the accompanying effort and investment into schemes for the delivery of unearned “followers” and “likes”, had been for the ultimate purpose of the Respondent’s commercial gain. On the evidence, and on the balance of probabilities, the Panel finds the resolving disputed domain names to have been used intentionally to attract Internet users by confusion with the Complainant’s trademark for commercial gain, in bad faith, in the terms of paragraph 4(b)(iv) of the Policy. The Panel further finds, on the balance of probabilities, that the five resolving disputed domain names were registered for the bad faith purposes for which they have been used.

The provisions of paragraph 4(b) of the Policy are without limitation. Whilst previous decisions under the Policy are not formally precedential, it has long been held by numerous UDRP panels that the registration of a domain name intentionally incorporating a famous trademark, whether used substantively or not, by an entity that must reasonably have been aware of that trademark and could make no conceivable good faith use of the domain name, in and of itself constitutes registration and use in bad faith. The non-resolving disputed domain name <instagramsolutions.com> is passively held. Having regard to the totality of the evidence, and in the absence of any satisfactory explanation from the Respondent, the Panel finds the disputed domain name <instagramsolutions.com> to have been registered and used in bad faith.

Accordingly, on the evidence and on the balance of probabilities, the Panel finds the disputed domain names <buyinstagramfollowers3.com>, <buyinstagramsfollowerscheap.com>, <instafollowergratis.com>, <instagramfollowers24.com>, <instagramlikebot.com> and <instagramsolutions.com> to have been registered and used in bad faith in the terms of 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, the Panel orders that the disputed domain names <buyinstagramfollowers3.com>, <buyinstagramsfollowerscheap.com>, <instafollowergratis.com>, <instagramfollowers24.com>, <instagramlikebot.com>, and <instagramsolutions.com> be transferred to the Complainant.

Dr. Clive N.A. Trotman
Sole Panelist
Date: January 7, 2021