WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Maplebear Inc., d/b/a Instacart v. Ankit Patel
Case No. D2017-1229
1. The Parties
Complainant is Maplebear Inc., d/b/a Instacart of San Francisco, California, United States of America (“United States”), represented internally.
Respondent is Ankit Patel of Schaumburg, Illinois, United States.
2. The Domain Name and Registrar
The disputed domain name <instacartclone.com> (the “Domain Name”) is registered with GoDaddy.com, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 27, 2017. On June 27, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On the same date, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing Respondent’s 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 Respondent of the Complaint, and the proceedings commenced on June 30, 2017. In accordance with the Rules, paragraph 5, the due date for Response was July 20, 2017. The Center received informal email communications from a third party on June 30, 2017 and July 21, 2017. Complainant submitted a communication in reply to the aforementioned third-party communications on July 21, 2017.
The Center appointed Robert A. Badgley as the sole panelist in this matter on July 28, 2017. 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
Complainant describes itself as a “well-known platform for obtaining grocery delivery services in the United States.” Complainant’s “Instacart” mobile application is available on Apple, Android, and Microsoft devices and is available at Complainant’s website located at “www.instacart.com”. Consumers may avail themselves of the Complainant’s service by effectively doing their grocery shopping via their phone or computer rather than traveling to the store in question.
Complainant owns a number of trademark registrations for its INSTACART mark, including United States Patent and Trademark Office (“USPTO”) Registration No. 4,903,628. This USPTO mark was registered on February 23, 2016, and reflects a date of first use in commerce of September 10, 2013. Complainant also owns a stylized mark featuring a tilted carrot, registered by the USPTO under Registration No. 4,816,310 on September 22, 2015.
The Domain Name was registered on May 11, 2015. The Domain Name resolves to a website featuring the words “Instacart clone” and a carrot resembling the carrot registered as a trademark by Complainant. The home page of Respondent’s website states: “Multi Store Grocery Script at affordable price. Start your own Instacart, Shopwings, Happy Fresh, Grofers, Honestbee.” Below this text is a hyperlink bearing the phrase “See Pricing.”
5. Parties’ Contentions
Complainant asserts that it has satisfied all three elements required under the Policy for a transfer of the Domain Name.
Respondent did not submit any response to the Complaint. An unidentified third party, however, submitted an email stating as follows:
Please visit instacartclone.com and see Disclaimer.
And we don't share any intellectual property or code.
We just help entrepreneurs to set them online business as Instacart.
As far as business model is concerned we don’t think its patented. As Amazon Fresh, Shopwings and others have same business model and we don’t see any problem there.
Also people who may buy our solution have business model of online shopping from neighbourhood stores.
What We can do
Put a disclaimer like this in footer of our site and FAQ of our non-affiliation with Instacart and its holding company Maplebear Inc. and remove any material that Maplebear inc. finds problem with tarnishing their image.
Submit Domain to Maplebear Inc. in case the Registrar or any committee set by Registrar who is acting as Arbitration tells us do to so with convincing response. We weren’t told of any violation and this is the first time we have been told and we wish to comply apart from bearing and paying any fees.
Having said so
If using Instacart name is a problem then there are many such solutions as listed below :
[specific web addresses redacted]
What We can’t do
We cannot pay any fees or any charges associated but can only comply with norms as said and do as said above. We love Instacart and this is our fair response. Awaiting a fair reply.”
6. Discussion and Findings
Paragraph 4(a) of the Policy lists the three elements which Complainant must satisfy with respect to the Domain Name:
(i) the Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) Respondent has 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.
A. Identical or Confusingly Similar
The Panel concludes that Complainant has rights in the mark INSTACART through registration and use. The Panel further concludes that the Domain Name is confusingly similar to this mark. The Domain Name incorporates Complainant’s mark in its entirety and merely adds the term “clone”. This additional term does not reduce the confusing similarity between the INSTACART mark and the Domain Name.
Complainant has established Policy, paragraph 4(a)(i).
B. Rights or Legitimate Interests
Pursuant to paragraph 4(c) of the Policy, Respondent may establish its rights or legitimate interests in the Domain Name, among other circumstances, by showing any of the following elements:
(i) before any notice to you [Respondent] 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 [Respondent] (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 [Respondent] 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 Panel concludes that Respondent lacks rights or legitimate interests in respect of the Domain Name. Even assuming that the person purporting to respond to the Complaint speaks for Respondent, the Panel concludes that Respondent’s apparent use of the Domain Name is illegitimate. It appears from the record that Respondent is using the Domain Name to attract visitors to a website where the visitors may seek to establish a business in direct competition with Complainant. It also seems clear from Respondent’s website that it charges customers money to avail themselves of Respondent’s facilitation of the creation of a business to offer the same services as Complainant offers. This is manifestly illegitimate.
Complainant has established Policy, paragraph 4(a)(ii).
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides that the following circumstances, “in particular but without limitation,” are evidence of the registration and use of the Domain Name in “bad faith”:
(i) circumstances indicating that Respondent has registered or has acquired the Domain Name primarily for the purpose of selling, renting, or otherwise transferring the Domain Name registration to Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of its documented out of pocket costs directly related to the Domain Name; or
(ii) that Respondent has 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 Respondent has engaged in a pattern of such conduct; or
(iii) that Respondent has registered the Domain Name primarily for the purpose of disrupting the business of a competitor; or
(iv) that by using the Domain Name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website or other on line location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product or service on Respondent’s website or location.
For essentially the same reasons as are set forth above in the context of “rights or legitimate interests,” the Panel concludes that Respondent has registered and is using the Domain Name in bad faith. First, it is clear that Respondent had Complainant’s INSTACART mark in mind when registering the Domain Name. The fact that Respondent’s website relates to the same services – remote grocery shopping via computer or mobile app – underscores this finding, as does the fact that Respondent’s website features a tilted carrot similar to the carrot that Complainant has registered as a trademark.
With respect to bad faith use of the Domain Name, it is clear that Respondent is seeking to attract, for commercial gain, Internet users to its website by means of a false and confusing association between Complainant’s INSTACART mark and the Domain Name.
Complainant has established Policy paragraph 4(a)(iii).
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name <instacartclone.com> be transferred to Complainant.
Robert A. Badgley
Date: August 1, 2017