WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Instagram, LLC v. Saddam Hussain
Case No. D2018-0078
1. The Parties
The Complainant is Instagram, LLC of Menlo Park, California, United States of America ("US"), represented by Hogan Lovells (Paris) LLP, France.
The Respondent is Saddam Hussain of New Delhi, India.
2. The Domain Name and Registrar
The disputed domain name <instragramworld.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 January 15, 2018. On the same day, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 16, 2018, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact.
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 PolicyUniform Domain Name Dispute Resolution Policy (the "Rules"), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution PolicyRules for Uniform Domain Name Dispute Resolution PolicyUniform 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 January 19, 2018. In accordance with the Rules, paragraph 5, the due date for Response was February 8, 2018. On January 24, 2018, the Respondent sent an email communication to the Center. On receipt of this email, the same day the Center notified the Parties of the possibility of suspending the proceeding in order to explore a possible settlement. On the same date the Complainant's representative sent an email to the Center saying that the Respondent had ignored the cease and desist letter previously sent by the Complainant, and therefore the Complainant had no intention of suspending the proceeding and wanted a full decision. The Respondent did not submit a formal response.
The Center appointed Fabrizio Bedarida as the sole panelist in this matter on February 14, 2018. 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. On February 17, 2018 the Respondent sent a second email to the Center.
4. Factual Background
The Complainant, Instagram, LLC is one of the world's leading online photo and video sharing social networks. Since it was launched on October 6, 2010, the Complainant rapidly developed considerable goodwill and renown worldwide. Today, the Complainant has over 800 million monthly active users and 500 million daily active users, including over 40 million monthly active users in India. The Complainant's website (available at "www.instagram.com") is ranked the 19th most visited website in India and the 16th most visited website in the world, according to web information company Alexa.
The Complainant has also made substantial investments in developing a strong presence online by being active on the different social media forums available, including: Facebook, Twitter, LinkedIn, YouTube and Google.
The Complainant is the registrant of numerous domain names consisting of or including the term Instagram, including <instagram.com> and <instagram.org.in> (India).
The strength and renown of the Complainant's INSTAGRAM trademark has already been recognized by previous UDRP panels.
The Complainant has proven to be the owner of the INSTAGRAM trademark, which enjoys protection through numerous registrations worldwide.
The Complainant is, inter alia, the owner of:
Indian trademark INSTAGRAM, number 2645946, filed on December 19, 2013;
US trademark INSTAGRAM, number 4146057, registered on May 22, 2012;
International trademark INSTAGRAM, number 1129314, registered on March 15, 2012.
The disputed domain name <instragramworld.com> was registered on November 19, 2017 and resolves to a parking page containing sponsored links.
The Complainant's trademark registrations predate the registration of the disputed domain name.
5. Parties' Contentions
The Complainant claims that the disputed domain name is confusingly similar to the Complainant's registered trademark; that the Respondent has no rights or legitimate interests whatsoever with respect to the disputed domain name; and that the Respondent registered and is using the disputed domain name in bad faith.
The Respondent did not submit a formal response, but, in response to the Center's notification of the Complaint, sent a short email on January 24, 2018, affirming that:
1) He doesn't understand the UDRP policy, but he knows that the Complainant is a "big firm in the world";
2) The disputed domain name <instragramworld.com> is different from INSTAGRAM trademark, and that the Complainant has only registered INSTAGRAM and INSTA as trademarks;
3) The Complainant has not registered <instragramworld.com> as a trademark;
4) He asserts to be a low middle class person without enough money to go to court, and therefore proposes that the Complainant buy the disputed domain name from the Respondent.
The Respondent sent a second email on February 17, 2018, affirming that if the Complainant wants the disputed domain name, he will give it to the Complainant.
6. Discussion and Findings
In order for the Complainant to obtain a transfer of the disputed domain name, paragraphs 4(a)(i) – (iii) of the Policy require that the Complainant must demonstrate to the Panel that:
(i) The disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) The 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.
A. Identical or Confusingly Similar
The Complainant has established rights in the INSTAGRAM trademark.
The disputed domain name consists of the INSTAGRAM trademark with the addition of an "r" and the generic term "world". This Panel agrees with the Complainant's assertion that the addition of the generic term "world" and the letter "r" in the disputed domain name is irrelevant in countering the confusing similarity between the Complainant's renowned INSTAGRAM trademark and the disputed domain name.
As correctly pointed out by the Complainant, it has already been held by previous UDRP panels that obvious misspellings of a trademark are insufficient to distinguish a domain name from a complainant's trademark. Further, the addition of the term "world" is also insufficient to diminish the confusing similarity with the Complainant's trademark as the Complainant's trademark is the dominant element and is clearly recognizable in the disputed domain name.
Therefore, the Panel finds the disputed domain name to be confusingly similar to the INSTAGRAM trademark in which the Complainant has rights.
Accordingly, the Panel finds that the Complainant has satisfied paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
This Panel finds that the Complainant has made a prima facie case that the Respondent does not have rights or legitimate interests in the disputed domain name. The Respondent does not appear to be commonly known by the name "instagram" or by any similar name. The Respondent has no connection or affiliation with the Complainant, and the Complainant has not licensed or otherwise authorized the Respondent to use or register any domain name incorporating the Complainant's trademark. The Respondent does not appear to make any legitimate noncommercial or fair use of the disputed domain name, nor any use in connection with a bona fide offering of goods or services. The Respondent is using the disputed domain name to resolve to a parking page containing sponsored links. The Respondent has not come forward with any explanation that demonstrates any rights or legitimate interests in the disputed domain name. The Respondent has not formally replied to the Complainant's contentions, claiming any rights or legitimate interests in the disputed domain name. In fact, the Respondent's email sent in response to the Center's Notification of Complaint does not contain any denial and/or rebuttal of the Complainant's assertions regarding the Respondent's lack of rights or legitimate interests in respect of the disputed domain name and the Respondent's bad faith registration and use of the disputed domain name, nor any information regarding the existence of any rights and/or legitimate interest disputed in the domain name or in a corresponding name. It is therefore the Panel's opinion that the Respondent's communication amounts to an admission of knowledge of the Complainant or at least to further inference of the Respondent's lack of any rights and/or legitimate interests in the disputed domain name.
The Panel finds that the Complainant has satisfied paragraph 4(a) (ii) of the Policy.
C. Registered and Used in Bad Faith
The Panel, on the basis of the evidence presented, accepts and agrees with the Complainant's contentions that the disputed domain name was registered and has been used in bad faith.
The INSTAGRAM trademark is a fanciful name with no meaning. It has been registered and used for several years all over the world, it enjoys a widespread reputation and high degree of recognition as a result of its fame and renown and thus the INSTAGRAM mark is not one that traders could legitimately adopt other than for the purpose of creating the impression of an association with the Complainant.
Consequently, the Panel finds that the Respondent knew of the Complainant's marks and intentionally intended to create an association with the Complainant and its business at the time of registration of the disputed domain name. The Panel also agrees with the Complainant's assertion that the Respondent registered the disputed domain name primarily for the purpose of selling, renting, or otherwise transferring it to the Complainant.
Further inference of bad faith registration and use of the disputed domain name is given by the fact that the Respondent has never replied to the contentions made in the Complainant's cease-and-desist letter. The Respondent has not denied the assertions of bad faith made by the Complainant in the pre-action communications and in this proceeding, so it is therefore reasonable to assume that if the Respondent had legitimate purposes for registering and using the disputed domain name, he would have responded to these assertions.
On the contrary, the Respondent has sent numerous unsolicited emails to the Complainant's representatives, before and even after receiving the Complainant's cease and desist letter. In these, all identical, emails (the first documented one is dated November 22, 2017), the Respondent, without explicitly saying so, is nonetheless evidently proposing to sell the disputed domain name to the Complainant. From the content of these emails: "I have Domain instragramworld.com, its very use full to your firm and its similar for instragram.com. are you interest for this domain please mail on this e-mail id", which is self-explanatory, it appears clear that the Respondent considers the disputed domain name similar to the Complainant's trademark, and can be inferred that the main scope of its registration was to sell it to the Complainant. It also constitutes further evidence that the Respondent was aware of the Complainant's INSTAGRAM trademark when he registered the disputed domain name.
It is the Panel's opinion that also the Respondent's second email to the Center, on the balance of probabilities, constitutes further inference of bad faith. This email comes well after the Complainant's unanswered cease-and-desist letter, and also after the refusal of the Complainant to suspend the proceeding to explore settlement options with the Respondent and the Complainant's request to have a full decision on the matter. Therefore, it appears to be a last attempt either to slow down the proceeding, or to avoid the rendering of an adverse decision. In fact, if the Respondent really wanted to offer in good faith to transfer the disputed domain name to the Complainant, then he should have answered the Complainant's cease and desist letter and/or at least promptly reply to the notification of the present proceeding offering to transfer the disputed domain name to the Complainant without any attempt to sell it.
In addition, the Respondent is using the disputed domain name to direct Internet users to a website featuring links to third-party websites from which it may be inferred that the Respondent derives commercial benefit.
Accordingly, the Panel finds, on the basis of the evidence presented, that the Respondent registered and is using the disputed domain name in bad faith.
Therefore, the Complainant has satisfied 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 disputed domain name <instragramworld.com> be transferred to the Complainant.
Date: February 19, 2018