WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Instagram, LLC v. Ozgur Kalyoncu, Seo Master and Huseyin Erdem
Case No. D2016-1710
1. The Parties
The Complainant is Instagram, LLC of Menlo Park, California, United States of America ("United States"), represented by Kilpatrick Townsend & Stockton LLP, United States of America.
The Respondents are Ozgur Kalyoncu, Seo Master (the "First Respondent") of Istanbul, Turkey and Huseyin Erdem (the "Second Respondent") of Balikesir, Turkey.
2. The Domain Names and Registrar
The disputed domain names <instagify.com>, <instagramapi.com>, <instagy.com> and <onlineinstagram.com> are registered with GoDaddy.com, LLC (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on August 23, 2016. On August 23, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On August 23, 2016 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 Complainant submitted an amended Complaint on August 26, 2016.
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 Respondents of the Complaint, and the proceedings commenced on August 29, 2016. In accordance with the Rules, paragraph 5, the due date for Response was September 18, 2016. The Respondents did not submit any response. Accordingly, the Center notified the Respondents' default on September 19, 2016.
The Center appointed Clive Duncan Thorne as the sole panelist in this matter on September 27, 2016. 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. Consolidation of Respondents
The Complainant requests consolidation of the Respondents on the grounds that the four disputed domain names are operated or controlled by a common enterprise being carried out by the First Respondent.
The Panel has looked at the WhoIs searches exhibited to the Complaint and is satisfied that three of the disputed domain names, <instagify.com>, <instagramapi.com> and <onlineinstagram.com>, are registered in the names of the First Respondent.
The fourth disputed domain name <instagy.com>, which according to an update of the WhoIs dated August 15, 2016 is registered in the name of the Second Respondent. An earlier WhoIs search updated on June 16, 2016 exhibited at Annex G to the Complaint refers to the registered owner of <instagy.com> as the said First Respondent.
The Complainant submits that consolidation of multiple Respondents may be appropriate under paragraphs 3(c) and 10(e) of the Rules even where differently named domain name registrants are involved, where the particular circumstances of a given case indicate the common control is being exercised over the disputed domain names or the websites to which the domain names resolve.
The Complainant refers to a number of previous decisions including Penske Truck Leasing Co., L.P. v. "Steven DelCorso" / "Tonya Wilson, DartsMail, LLC", WIPO Case No. D2016-0521 which held that where the undisputed evidence indicates that the disputed domain names are more likely than not to be under the common control of an unknown entity, the Respondents should be consolidated.
In an earlier case Guccio Gucci S.p.A v. Andrea Hubner , Beijing Harmony Software Co.Ltd., jiang wang, brian miller, Pornsawang Chotima, Domain Whois Protection Service, Whois Agent, Jie Zhou, Jayzhou, Hi to every day in Zhengzhou Medical Devices Co., Ltd., tian jin hua jin you xian gong si, lihong jay, hu, lizhu hu, da tou, Tamia Liu, Wang Jie, Yijiwangluo., WIPO Case No. D2012-2212, the Panel set out a series of arguments which could be relied upon by the Complainant seeking consolidation. These include:
(1) The use of common registration information such as administrative contact details, technical contact details, postal addresses, email addresses, IP addresses, and telephone and fax numbers;
(2) The use of the same or similar names in the registration information;
(3) Resolving disputed domain names to the same or similar websites;
(4) Using the same domain name servers;
(5) Using the same registrars; and
(6) Close similarity between the disputed domain names, each of which incorporates the Trade Mark in its entirety in conjunction with non-distinctive, generic or geographical terms.
In the present case the Complainant requests consolidation of the Respondents on the grounds that all of the disputed domain names are operated or controlled by a common enterprise being carried out by the First Respondent. In particular:
(i) The disputed domain names are operated and controlled by a common entity or enterprise being carried out by the First Respondent;
(ii) The Respondent for the three of the disputed domain names in dispute has the same name, phone number, similar email and similar address located in Istanbul;
(iii) The disputed domain names are registered with the same registrar, i.e. GoDaddy.com, LLC;
(iv) The disputed domain name <instagy.com> was previously registered to the First Respondent with identical contact information as is shown by the search at Annex G.
(v) <instagy.com>, <instagify.com> and <onlineinstagram.com> currently all resolve to identical Instagram web viewers.
The evidence before the Panel is that all four of the disputed domain names were previously registered in the name of the First Respondent. However, <instagy.com> is now registered in the name of the Second Respondent. The four disputed domain names are all registered with GoDaddy.com, LLC.
The Panel has also looked at Annex V to the Complaint which consists of extracts from the "onlineinstagram" web viewer "Public Browser" and "Instagy". As of April 18 and as of July 22, 2016, at the head of each extract are references to <publicbrowser.com> and <instagy.com>. At Annex U to the Complaint is an extract from a WhoIs record referring to <publicbrowser.com> which is dated April 1, 2016 and which shows the registrant as the First Respondent.
In the Panel's view the common ownership of the domain names <instagy.com> and <publicbrowser.com> and the identical nature of the web viewer extracts set out at Annex V is sufficient evidence of commonality between the Respondents of the type envisaged in the decision Guccio Gucci S.p.A v. Andrea Hubner , Beijing Harmony Software Co.Ltd., jiang wang, brian miller, Pornsawang Chotima, Domain Whois Protection Service, Whois Agent, Jie Zhou, Jayzhou, Hi to every day in Zhengzhou Medical Devices Co., Ltd., tian jin hua jin you xian gong si, lihong jay, hu, lizhu hu, da tou, Tamia Liu, Wang Jie, Yijiwangluo., supra, referred to above.
The Panel also takes into account that neither of the Respondents have chosen to respond to the Complaint. In these circumstances the Panel finds consolidation of the Respondents to be proper.
5. Factual Background
According to the Complainant, Instagram, LLC owns exclusive rights in the trademarks INSTAGRAM and INSTA in the United States and internationally as well as rights in the domain name <instagram.com>. These marks are used in connection with, amongst other things, photo video sharing and editing services and online social networking. The Complainant's services provided under the marks are provided through the Instagram platform, primarily the Complainant's mobile application and website located at <www.instagram.com>.
People and businesses use the Instagram service to capture and share moments, express primary images and videos. Instagram helps companies to reach their audiences through captivating imagery in a rich visual environment. Brands use the Instagram service to craft and communicate their brand image, tell visual stories and create community. Photographers, artists and performers use the Instagram service to share their work with the global community. The Complainant's marks are protected in countries throughout the world including the United States and Turkey, the latter being the domicile of the Respondents in the Complaint. Details of the Complainant's trademark registrations for the marks INSTAGRAM and INSTA in the United States and Turkey are set out in the Complaint. In addition printouts of these registrations from the United States Patent and Trademark Office ("USPTO") database as well as copies of the registrations from the Turkish Patent Institute are attached as Annex E to the Complaint.
The Complainant's rights in the mark INSTA commenced at least as early as November 2010 and in the mark INSTAGRAM commenced at least as early as the date of the launch of the Instagram service on October 6, 2010. In this context, the Complainant has inter alia the USPTO trademark registration no. 4,146,057 for INSTAGRAM, registered on May 22, 2012 and first used in commerce on June 10, 2010 and the USTPO trademark registration no. 4,531,884 for INSTA, registered on May 20, 2014 and first used in commerce in November 2010.
The Complainant also owns multiple registrations for the marks outside the United States including but not limited to Argentina, Australia, Canada, Chile, China, Colombia, the European Union, Israel, Japan, Malaysia, Mexico, Norway, Philippines, the Republic of Korea, the Russian Federation, Singapore, South Africa, Taiwan, Province of China, Switzerland and the United Kingdom of Great Britain and Northern Ireland ("United Kingdom"). Copies of these trademark registrations are set out at Annex F to the Complaint. Given the evidence adduced by the Complainant, the Panel is satisfied that the Complainant owns trademark rights in the marks INSTA and INSTAGRAM.
The four disputed domain names were registered by the Respondents well after the Complainant began using and established rights in the marks INSTAGRAM and INSTA, namely on September 19, 2014 (<instagramapi.com>), September 30, 2014 (<onlineinstagram.com>) March 12, 2015 (<instagy.com>) and April 4, 2015 (<instagify.com>). The disputed domain name <instagramapi.com> resolved to a website called "online Instagram" which promptly displayed the Complainant's mark INSTAGRAM at the top of its home page. This is set out in the Complaint. It should be noted that the icon on the top left corner of the homepage was styled in an identical script to that of the original Instagram logo. The disputed domain name <insagramapi.com> is currently inactive.
At the time of filing the Complaint, the disputed domain names <instagify.com> and <onlineinstagram.com> redirected to the websites "www.imgleak.com" and "www.publicbrowser.com" both of which are registered to the First Respondent. Copies of the WhoIs information for <imgleak.com> and <publicbrowser.com> are set out at Annex U to the Complaint. The disputed domain names <instagify.com>, <instagy.com> and <onlineinstagram.com> all redirect or respectively, resolve to identical websites described as "online Instagram web viewer" that allows users to browse Instagram content on the web and manage their Instagram accounts. The homepage of these websites states "we are trying to make Instagram much more useful". The Complainant regards this as a clear admission that the Respondents are specifically targeting the Complainant's consumers by offering a competing Instagram interface.
The Complainant first contacted the First Respondent on or around March 4, 2015 and again on March 16, 2015 concerning the First Respondent's use and registration of the disputed domain name <onlineinstagram.com>. The First Respondent replied on May 15, 2015 stating that they had stopped using the disputed domain name. Copies of this correspondence are annexed at Annex X to the Complaint.
The Complainant's counsel contacted the First Respondent again on or around May 13, 2015 noting the continued alleged infringement of the Complainant's rights through use of the <onlineinstagram.com> and <instagify.com> disputed domain names, despite the prior letter. The Complainant's counsel requested that the First Respondent cease using the Complainant's marks and transfer both disputed domain names to the Complainant. Copies of the email from the Complainant's counsel together with follow up emails are set out at Annex Z and Annex AA to the Complaint.
The Panel takes into account that there is no Response filed and no evidence adduced by the Respondents. In these circumstances it finds the evidence adduced by the Complainant to be true and proceeds to determine the Complaint on the basis of the Complainant's evidence in the Complaint.
6. Parties' Contentions
The Complainant submits:
1. The disputed domain names are identical or confusingly similar to the Complainant's marks INSTAGRAM or INSTA.
2. The Respondents have no rights or legitimate interest in the infringing domain names.
3. The Respondents registered and used the disputed domain names in bad faith.
The Respondents did not reply to the Complainant's contentions.
7. Discussion and Findings
A. Identical or Confusingly Similar
The Complainant argues that the four disputed domain names all include the entirety of the Complainant's marks either INSTAGRAM or INSTA.
The Panel accepts this submission and based upon the Complainant's clear rights in the marks INSTAGRAM and INSTA and their use in the disputed domain names in connection with dictionary terms and other non-distinctive terms and finds that the disputed domain names are confusingly similar to the marks INSTAGRAM and INSTA.
B. Rights or Legitimate Interests
There is no evidence before the Panel that the Respondents have previously used the disputed domain names in connection with a bona fide offering of goods or services. Similarly there is no evidence before the Panel that the Respondents have been commonly known by the disputed domain names. Nor is there evidence that the Respondents are making a legitimate, non-commercial or fair use of the disputed domain names. To the contrary, the evidence adduced by the Complainant shows that the Respondents have attempted to divert Internet users seeking the Complainant's goods and services to its own sites. In particular, the Respondents explicitly describe all of the disputed domain names as an "Instagram web viewer" which allows consumers to browse Instagram content on the web and manage their Instagram accounts. These are essentially the same services offered by the Complainant on its website "www.instagram.com". Further, there is nothing on the websites which explains the relationship between the Respondents and the Complainant, leading to confusion as to the source or endorsement of the website material. In the absence of evidence to the contrary the Panel also finds that this use by the Respondents of the disputed domain names is essentially a pretext in order to obtain unjustified commercial advantage.
In the case of <instagramapi.com> this disputed domain name does not currently resolve to an active web page. It resolves to an inactive web page and the Panel is entitled to find following the Complainant's submission that the Respondents' failure to make current active use of this disputed domain name constitutes a failure to make a bona fide offering of goods or services and further establishes that the Respondents are not making a legitimate non-commercial or fair use of the disputed domain name.
It follows that the Complainant succeeds in proving this element.
C. Registered and Used in Bad Faith
The Complainant submits that given its worldwide portfolio of trademark rights and the fact that the mark INSTAGRAM is internationally recognised, the Respondents registered the disputed domain names in bad faith with actual knowledge of the Complainant's trademark rights.
The Panel also notes that the Respondents offer and have offered directly competing web services that rely wholly on the Complainant's own services through the Respondents' use of the disputed domain names. This is shown by Annexes S and V to the Complaint.
The Panel notes that the Respondents have registered and used the disputed domain names in order to trade off the goodwill associated with the Complainant's marks. The fact that the Respondents have registered four domain names which incorporate the Complainant's marks and offer or have offered online Instagram web viewers is itself evidence of a pattern of bad faith conduct. It is well established that the registration of multiple confusingly similar domain names to a complainant's trademark is indicative of a pattern of bad faith registration. The Panel further notes the Respondents prior communication promising to discontinue use of the disputed domain name < onlineinstagram.com>, and its failure to abide by its earlier commitment. Accordingly the Panel finds that the Respondents registered and used the disputed domain names 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 names <instagify.com>, <instagramapi.com>, <instagy.com> and <onlineinstagram.com> be transferred to the Complainant.
Clive Duncan Thorne
Date: October 12, 2016