WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Instagram, LLC v. Instagram ??????
Case No. D2017-1736
1. The Parties
Complainant is Instagram, LLC of Menlo Park, California, United States of America ("United States"), represented by Hogan Lovells (Paris) LLP, France.
Respondent is Instagram ?????? of Istanbul, Alaska, no country specified1.
2. The Domain Name and Registrar
The disputed domain name <mainstagram.com> 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 September 8, 2017. On September 8, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 12, 2017, the Registrar transmitted by email to the Center its verification response confirming that 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 Respondent of the Complaint, and the proceedings commenced on September 25, 2017. In accordance with the Rules, paragraph 5, the due date for Response was October 15, 2017. Respondent did not submit any response. Accordingly, the Center notified Respondent's default on October 17, 2017.
The Center appointed Frederick M. Abbott as the sole panelist in this matter on October 20, 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 is the owner of registrations for the word trademark and service mark INSTAGRAM on the Principal Register of the United States Patent and Trademark Office (USPTO), including registration number 4146057, registration dated May 22, 2012, in international class (IC) 9, covering "[d]ownloadable computer software for modifying the appearance and enabling transmission of photographs", and; registration number 4170675, registration dated July 10, 2012, in IC 42, covering "[p]roviding a website that gives users the ability to upload photographs; technical support services", as further specified. Complainant is the owner of registrations for the word and the stylized word trademark and service mark INSTAGRAM on the register of the Turkish Patent and Trademark Office (TurkPatent), including grant number 2012/85440, dated April 28, 2015, in ICs 9 and 42, and; grant number 2013/74099, grant dated May 20, 2015. Complainant is also the owner of international registration number 11293144 for INSTAGRAM in ICs 9 and 42, covering a number of countries including the European Union (EM) and Turkey (TR).
Complainant operates the INSTAGRAM online photo and video sharing social networking application with principal address at "www.instagram.com". As of the time of this proceeding, Complainant's social networking service has over 700 million monthly active users and 400 million daily active users, including over 27 million users in Turkey. As part of its service, Complainant offers a select group of users (i.e. certain public figures and celebrities) the possibility to obtain a "verified badge" for their INSTAGRAM accounts. This verified badge service is designed to protect individuals who have a high likelihood of being impersonated by unauthorized third parties.
As of the date of this proceeding, the disputed domain name is directed to an inactive website.
The disputed domain name is associated with mail exchanger (MX) records. Complainant obtained a sample email from the address "[…]@mainstagram.com" that displays the "Instagram Blue Verification Badge" on the subject line and also displays in the body of the email INSTAGRAM's camera logos and stylized trademark. As submitted by Complainant:
"The email contains the following message in Turkish inviting the user to verify his or her Instagram account by providing his or her account details: 'Merhaba! Instagram'daki mavi onayli rozet, hesabinin orjinalligini belirtir. Hesabinizi hazirlayin! Basvurmadan once, hazir oldugundan emin olmak icin hesabiniza gozatin. Formu gonderdikten sonra, hesabin dogrulanip dogrulanmavacagini bildirmekicin e-posta' (Translation: "Hello! The blue approved badge in Instagram indicates that the account is authentic. Prepare your account! Log in to your account to make sure you are ready before applying. After submitting the form, send an email to let us know if the account is verified.")".
Respondent was previously the registrant of another domain name incorporating Complainant's INSTAGRAM trademark, i.e. <instagramsecurity.com>.
The registration agreement between Respondent and the Registrar subjects Respondent to dispute settlement under the Policy. The Policy requires that domain name registrants submit to a mandatory administrative proceeding conducted by an approved dispute resolution service provider, one of which is the Center, regarding allegations of abusive domain name registration and use (Policy, paragraph 4(a)).
5. Parties' Contentions
Complainant alleges that it is the owner of rights in the trademark INSTAGRAM as evidenced by registrations in various jurisdictions, including the United States and Turkey.
Complainant argues that the disputed domain name is confusingly similar to its INSTAGRAM trademark. It notes that the disputed domain name incorporates the entirety of Complainant's trademark. Complainant contends that the addition of a two-letter prefix is insufficient to diminish confusing similarity between the trademark and the disputed domain name.
Complainant contends that Respondent lacks rights or legitimate interests in the disputed domain name because: (1) Respondent is not a licensee of Complainant, and has not been otherwise authorized or allowed by Complainant to make any use of Complainant's trademark; (2) Respondent has not made demonstrable preparations to use, or used, the disputed domain name in connection with a bona fide offering of goods or services prior to notice of this dispute; (3) Respondent has not been commonly known by Complainant's trademark; (4) Respondent is not making a legitimate noncommercial or fair use of the disputed domain name, and; (5) in light of the well-known character of Complainant's trademark it is not possible to conceive of any plausible actual or contemplated active use by Respondent of the disputed domain name that would not be illegitimate.
Complainant asserts that Respondent registered and is using the disputed domain name in bad faith because: (1) Respondent must have been aware of Complainant's well-known trademark at the time it registered the disputed domain name, which is confirmed by Respondent's use of Complainant's distinctive logo and trademark in emails transmitted subsequent to registration; (2) Respondent could not have chosen the disputed domain name for any reason other than to deliberately cause confusion among Internet users as to the source of the website or email in order to take unfair advantage of Complainant's goodwill and reputation; (3) Respondent's passive holding of the disputed domain name does not preclude a finding of bad faith given the circumstances of this case, including in particular the well-known character of Complainant's INSTAGRAM trademark and Respondent's use of that trademark in email correspondence making use of the disputed domain name; and (4) Respondent obviously provided false contact information in its registration of the disputed domain name, constituting additional evidence of bad faith intent.
Complainant requests the Panel to direct the Registrar to transfer the disputed domain name to Complainant.
Respondent did not reply to Complainant's contentions.
6. Discussion and Findings
The Policy is addressed to resolving disputes concerning allegations of abusive domain name registration and use. The Panel will confine itself to making determinations necessary to resolve this administrative proceeding.
It is essential to Policy proceedings that fundamental due process requirements be met. Such requirements include that a respondent have notice of a proceeding that may substantially affect its rights. The Policy and the Rules establish procedures intended to ensure that respondents are given adequate notice of proceedings commenced against them and a reasonable opportunity to respond (see, e.g., Rules, paragraph 2(a)).
The Center formally notified the Complaint to Respondent at the email and physical addresses provided in its records of registration. The express courier delivery service record shows that physical delivery could not be completed because of inaccurate registrant address data. There is no indication in the case file record that the email transmission encountered difficulty. The Center took those steps prescribed by the Policy and the Rules to provide notice to Respondent, and those steps are presumed to satisfy notice requirements.
Paragraph 4(a) of the Policy sets forth three elements that must be established by a complainant to merit a finding that a respondent has engaged in abusive domain name registration and use and to obtain relief. These elements are that:
(i) the disputed 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 disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
Each of the aforesaid three elements must be proved by a complainant to warrant relief.
A. Identical or Confusingly Similar
Complainant has furnished evidence of rights in the trademark and service mark (hereinafter "trademark") INSTAGRAM based on use in commerce and as evidenced by registration in the United States, Turkey and other jurisdictions (see "Factual Background", supra). Respondent has not contested Complainant's assertion of such rights. The Panel determines that Complainant owns rights in the trademark INSTAGRAM.
The disputed domain name incorporates Complainant's trademark in its entirety, adding as prefix the letters "ma". Complainant's trademark is well-known and distinctive. The placement of the two letters in front of Complainant's trademark does not modify that trademark such as to avoid a finding of confusing similarity under the first element of paragraph 4(a) of the Policy. Internet users would be likely to confuse the disputed domain name with Complainant's distinctive and well-known trademark. The Panel determines that the disputed domain name is confusingly similar to Complainant's INSTAGRAM trademark.
The Panel determines that Complainant has rights in the trademark INSTAGRAM and that the disputed domain name is confusingly similar to that trademark.
B. Rights or Legitimate Interests
The second element of a claim of abusive domain name registration and use is that Respondent has no rights or legitimate interests in respect of the disputed domain name (Policy, paragraph 4(a)(ii)). The Policy enumerates several ways in which a respondent may demonstrate rights or legitimate interests:
"Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):
(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". (Policy, paragraph 4(c)).
Complainant's allegations to support Respondent's lack of rights or legitimate interests in the disputed domain name are outlined above in section 5A, and the Panel finds that Complainant has made a prima facie showing that Respondent lacks rights or legitimate interests in the disputed domain name.
Respondent has not replied to the Complaint, and has not attempted to rebut Complainant's prima facie showing of lack of rights or legitimate interests.
Respondent's use of the disputed domain name in connection with an inactive website does not establish rights or legitimate interests in favor of Respondent.
Respondent's use of the disputed domain name does not otherwise manifest rights or legitimate interests.
The Panel determines that Complainant has established that Respondent lacks rights or legitimate interests in the disputed domain names.
C. Registered and Used in Bad Faith
In order to prevail under the Policy, Complainant must demonstrate that the disputed domain name "has been registered and is being used in bad faith" (Policy, paragraph 4(a)(iii)). Paragraph 4(b) of the Policy states that "for the purposes of Paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith". These include: "(i) circumstances indicating that [the respondent has] registered or [the respondent has] 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 [the respondent's] documented out-of-pocket costs directly related to the domain name; (ii) [the 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 [the respondent has] engaged in a pattern of such conduct;" or "(iv) by using the domain name, [the respondent has] intentionally attempted to attract, for commercial gain, Internet users to [the respondent's] 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 [the respondent's] website or location or of a product or service on [the respondent's] website or location."
Respondent has used the disputed domain name in connection with an email account that has been used to solicit information from Internet users by conveying the false impression that the request for information originates with Complainant. Respondent's intended use of that information is not established on the record of this proceeding. Nonetheless, soliciting personal information under false pretenses gives rise to an inference that bad faith use of that information is intended. Respondent has not attempted to rebut that inference. Respondent has intentionally attempted to attract Internet users to an online location (i.e. the email sender's address and corresponding email) by creating a likelihood of confusion with Complainant as the source of that location with the presumed purpose of taking unfair advantage of those Internet users. It is reasonable to infer that such purpose involves an intent for commercial gain, though in any event the list of bad faith circumstances in paragraph 4(b) is nonexhaustive. The Panel considers that evidence of Respondent's deceptive intent is sufficient here to establish bad faith whether or not for commercial gain.
Use by Respondent of the disputed domain name in connection with an active website is not a precondition to a finding of bad faith registration and use. However, having already made a finding of bad faith, the Panel need not address the potential additional ground of passive bad faith registration and use. The Panel notes that Respondent has not attempted to provide any explanation for its registration of the disputed domain name incorporating Complainant's well-known and distinctive trademark in its entirety.
The Panel determines that Respondent registered and is using the disputed domain name in bad faith within the meaning of paragraph 4(b) of the Policy.
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 <mainstagram.com> be transferred to the Complainant.
Frederick M. Abbott
Date: November 4, 2017
1 The Panel notes that Respondent's address and contact details in the WhoIs record and provided by the Registrar appear to be falsified.