WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Instagram, LLC v. Perfect Privacy, LLC and Lo Tim Fu
Case No. D2017-1951
1. The Parties
The Complainant is Instagram, LLC of Menlo Park, California, United States of America ("United States"), represented by Hogan Lovells (Paris) LLP, France.
The Respondents are Perfect Privacy, LLC of Jacksonville, Florida, United States and Lo Tim Fu of Hong Kong, China (hereafter referred to as "Respondent").
2. The Domain Name and Registrar
The disputed domain name <instagram-360.com> (the "Domain Name") is registered with Network Solutions, LLC (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on October 6, 2017. On October 6, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On October 9 and October 10, 2017, the Registrar transmitted by emails to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on October 11, 2017 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on October 13, 2017.
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 Respondent of the Complaint, and the proceedings commenced on October 17, 2017. In accordance with the Rules, paragraph 5, the due date for Response was November 6, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on November 7, 2017.
The Center appointed Nicholas Smith as the sole panelist in this matter on November 15, 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
The Complainant is a United States company that provides an online photo and video sharing social networking application, known as Instagram. Instagram was launched on October 6, 2010 and as of December 2016 had 600 million users. Presently Instagram has over 700 million monthly active uses and 400 million daily active users, with more than 95 million photos and videos shared per day. Its website at "www.instagram.com" is the 18th most visited website in the world.
The Complainant is the owner of numerous trade mark registrations of the word mark "INSTAGRAM" (the "INSTAGRAM Mark") including registrations in the United States since 2012 and the European Union since 2015.
The Domain Name <instagram-360.com> was created on May 26, 2017. It is presently inactive but for a period of time prior to the institution of these proceedings resolved to a website ("Respondent's Website"), that purported to promote a product, described as "Instagram 360" allowing the creation and sharing of panorama photos. The Respondent's Website included the use of the Complainant's "multiple photos logo" and screenshots from what appeared to be Instagram's mobile application. On June 27, 2017 the Respondent issued a media release that appeared to promote its particular product or products while strongly suggesting that it was or was associated with the Complainant, including statements like "We're inspired by the visual stories you tell on Instagram" and use of the Domain Name for a contact email address.
5. Parties' Contentions
The Complainant makes the following contentions:
(i) that the Domain Name is confusingly similar to the Complainant's INSTAGRAM Mark;
(ii) that the Respondent has no rights nor any legitimate interests in respect of the Domain Name; and
(iii) that the Domain Name has been registered and is being used in bad faith.
The Complainant is the owner of the INSTAGRAM Mark. It holds several registrations for the INSTAGRAM Mark around the world. Additionally many prior UDRP panels have found the INSTAGRAM Mark to be well-known and well-regarded internationally. The Domain Name consists of the INSTAGRAM Mark in its entirety with the addition of a hyphen and the number "360". Prior panels deciding under the Policy have held that the additions of hyphens and numbers are insufficient to diminish the confusing similarity between a domain name and a complainant's trade mark.
The Respondent is not commonly known by the Domain Name nor has it conducted a legitimate business under the Domain Name. The Complainant has not authorized or licensed the Respondent to use the INSTAGRAM Mark. There is no noncommercial use of the Domain Name. The Domain Name is used by the Respondent to operate a website that reproduces the INSTAGRAM Mark and offers similar services to those as the Complainant, namely software applications to enable the viewing of photographs online. This use does not amount to a bona fide offering of goods and services from the Domain Name.
Given the reputation of the Complainant's well-known INSTAGRAM Mark and the use to which the Domain Name has been put, it is inconceivable that the Respondent registered the Domain Name unaware of the Complainant's rights. The Domain Name revolves to a website which appears to offer competing online photo sharing services under the INSTAGRAM Mark. By using the Domain Name, the Respondent is attempting to intentionally attract for commercial gain Internet users to its website by creating a likelihood of confusion with the Complainant's INSTAGRAM Mark. This conduct amounts to registration and use of the Domain Name in bad faith.
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
To prove this element the Complainant must have trade or service mark rights and the Domain Name must be identical or confusingly similar to the Complainant's trade or service mark.
The Complainant is the owner of the INSTAGRAM Mark, having registrations for the INSTAGRAM Mark as a trade mark in various locations around the world including the United States and European Union.
Disregarding the ".com" domain for the purposes of the comparison the Panel notes that the Domain Name wholly incorporates the INSTAGRAM Mark and adds the suffix "-360". Prior panels have found that "when a domain name wholly incorporates a complainant's trade mark, that is sufficient to establish identity or confusing similarity for purposes of the Policy." See Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525. Panels have also concluded that the addition of a hyphen and a number is not sufficient to diminish the confusing similarity between a domain name and complainant's trade mark, see Scottgames, LLC v. Ong Dai Vu Hao, Tran Tich Quan, Delvin Dragon and Tran Dai, WIPO Case No. D2016-1367 involving the domain name <fnaf-4.com>.
The addition of the suffix "-360" does not operate to distinguish the Domain Name from the INSTAGRAM Mark in any significant way. The Panel finds that the Domain Name is confusingly similar to the Complainant's INSTAGRAM Mark. Consequently, the requirement of paragraph 4(a)(i) of the Policy is satisfied.
B. Rights or Legitimate Interests
To succeed on this element, a complainant must make out a prima facie case that the respondent lacks rights or legitimate interests in the domain name. If such a prima facie case is made out, then the burden of production shifts to the respondent to demonstrate rights or legitimate interests in the domain name.
Paragraph 4(c) of the Policy enumerates several ways in which a respondent may demonstrate rights or legitimate interests in a domain name:
"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 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))
The Respondent is not affiliated with the Complainant in any way. It has not been authorized by the Complainant to register or use the Domain Name or to seek the registration of any domain name incorporating the INSTAGRAM Mark or a mark similar to the INSTAGRAM Mark. There is no evidence that the Respondent is commonly known by the Domain Name or any similar name. There is no evidence that the Respondent has used or made demonstrable preparations to use the Domain Name in connection with a bona fide offering of goods or services or for a legitimate noncommercial use.
The Domain Name is presently inactive but until recently the Domain Name linked to the Respondent's Website, which, without the permission of the Complainant:
(a) prominently displayed the Complainant's INSTAGRAM Mark and reproduced the Complainant's "multiple photo logo", potentially indicating that the Respondent was in some way connected with the Complainant; and
(b) offered services that appear to directly compete with the Complainant's photo sharing services.
Such use is not a bona fide offering of goods or services. The use of a domain name that contains the Complainant's INSTAGRAM Mark to advertise photo sharing services in competition with the Complainant does not amount to a bona fide offering of goods or services.
The Complainant has established a prima facie case that the Respondent lacks rights or interests in the Domain Name. The Respondent has had an opportunity to rebut the presumption that it lacks rights or legitimate interests but has chosen not to do so. The Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name under paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
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:
(i) circumstances indicating that the Respondent has registered or has acquired the Domain Name primarily for the purpose of selling, renting, or otherwise transferring the Domain Name's registration to the Complainant who is the owner of the trade mark or service mark or to a competitor of the Complainant, for valuable consideration in excess of its documented out-of-pocket costs directly related to the Domain Name; or
(ii) The Respondent has registered the Domain Name in order to prevent the owner of the trade mark 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
(iii) The Respondent has registered the Domain Name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the Domain Name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its web site 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.
The Panel finds that it is likely that the Respondent was aware of the Complainant and its reputation in the INSTAGRAM Mark at the time of the Domain Name was registered. The Respondent's Website reproduces a screen shot of the Complainant's mobile application and purports to offer photo sharing services in direct competition with the Complainant. Furthermore it is improbable that a person would register a domain name containing "instagram" for photo sharing services without knowledge of the Complainant, who provides photo sharing services under the INSTAGRAM Mark to over 700 million users. In the circumstances, the registration of the Domain Name in awareness of the INSTAGRAM Mark and in the absence of rights or legitimate interests amounts to registration in bad faith.
The Respondent is using the Domain Name to intentionally attempt to attract, for commercial gain, Internet users to a website, by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation or endorsement of its website. The Respondent has used the Domain Name to operate a website that advertises its photo sharing services in direct competition with the Complainant. It has done so while purporting to be the Complainant or closely connected to the Complainant. It therefore is also likely to receive revenue from Internet users who happen to come across the Respondent's Website by means of confusion with the INSTAGRAM Mark and then purchase the Respondent's services.
For the reasons set out above, the Panel also finds that the Respondent has used the Domain Name in bad faith. Accordingly, the Panel finds that the Respondent has registered and used the Domain Name in bad faith under paragraph 4(a)(iii) 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 Domain Name, <instagram-360.com> be transferred to the Complainant.
Date: November 19, 2017