WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Instagram, LLC v. Whois protection / Hulmiho Ukolen, Poste restante
Case No. D2018-1304
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 Whois protection, Czech Republic / Hulmiho Ukolen, Poste restante of Helsinki, Finland.
2. The Domain Name and Registrar
The disputed domain name <instagramhelp.com> (the “Domain Name”) is registered with Gransy, s.r.o. d/b/a subreg.cz (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 11, 2018. On June 12, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On June 14, 2018, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on June 22, 2018, providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on June 27, 2018.
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 Respondent of the Complaint, and the proceedings commenced on June 29, 2018. In accordance with the Rules, paragraph 5, the due date for Response was July 19, 2018. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on July 23, 2018.
The Center appointed Dinant T. L. Oosterbaan as the sole panelist in this matter on August 2, 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.
4. Factual Background
Complainant is an online photo and video sharing social networking application. Complainant’s application is available in over 31 languages and has over 800 million monthly active users.
According to the evidence submitted by Complainant, Complainant has obtained multiple registrations for the trademark INSTAGRAM, including:
- European Union Trade Mark INSTAGRAM number 014493886, filed on August 20, 2015, and registered on December 24, 2015;
- International trademark INSTAGRAM number 1129314, registered on March 15, 2012 (includes European Union designation).
In addition Complainant has multiple domain names and websites consisting of or containing the INSTAGRAM mark.
The Domain Name <instagramhelp.com> was registered on September 26, 2015. The Domain Name currently does not resolve to an active webpage and is offered for sale on the Afternic website. The Domain Name previously contained sponsored pay-per-click links. The International trademark registration of Complainant was issued prior to the registration of the Domain Name.
5. Parties’ Contentions
Complainant submits that the Domain Name is confusingly similar to Complainant’s INSTAGRAM trademark. The Domain Name identically reproduces Complainant’s INSTAGRAM trademark in its entirety. The only difference between the Domain Name and Complainant’s trademark is the addition of the generic term “help”, which reinforces the confusing similarity with Complainant’s INSTAGRAM trademark as Complainant provides its official support service through the Instagram Help Centre, available at “www.instagram.com”. Users of the application of Complainant are therefore likely to believe that the Domain Name is related to Complainant’s help/support service.
Complainant submits that Respondent has no rights or legitimate interests in the Domain Name. Respondent is not a licensee of Complainant, nor has it been otherwise allowed to make any use of Complainant’s trademark. According to Complainant, Respondent cannot assert that, prior to any notice of this dispute, it was using, or had made demonstrable preparations to use, the Domain Name in connection with a bona fide offering of goods or services. Complainant submits that currently the Domain Name is offered for sale. Furthermore, Respondent was until very recently using the Domain Name to redirect to a parking page with sponsored links targeting Complainant’s INSTAGRAM trademark. Complainant asserts that such use of the Domain Name cannot possibly be considered a bona fide offering of goods or services as Respondent is clearly seeking to unduly profit from Complainant’s goodwill for his own financial gain.
Complainant asserts that the Domain Name was registered and was being used in bad faith. According to Complainant, Respondent registered the Domain Name in full knowledge of Complainant’s distinctive and well-known trademark. Furthermore, Complainant contends that the fact that the Domain Name is offered for sale is a clear demonstration that Respondent registered the Domain Name primarily for the purpose of selling it for valuable consideration in excess of its documented out-of-pocket costs directly related to the Domain Name.
Complainant submits that Respondent is using the Domain Name to intentionally attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with Complainant’s trademark as to the source, sponsorship, affiliation or endorsement of the website. According to Complainant Respondent deliberately used the Domain Name, identically reproducing Complainant’s INSTAGRAM trademark, in conjunction with the term “help”, which is related to Complainant’s services, seeking to attract Internet users searching for Complainant and divert them to its own website. Complainant asserts that Internet users would expect to find a website that is registered to, operated or authorized by, or otherwise connected with Complainant at the Domain Name that identically reproduces Complainant’s INSTAGRAM trademark in conjunction with the term “help”, particularly as it suggests that Complainant is using the Domain Name to provide help or support to its users (Complainant’s official support service is available at “www.instagram.com”). Thus, there is no doubt that Respondent is intentionally using the Domain Name to deliberately cause confusion amongst Internet users as to the source or sponsorship of Respondent’s website. In addition Complainant submits that Respondent was previously using the Domain Name to resolve to a parking page displaying pay-per-click links targeting Complainant’s INSTAGRAM trademark. Such use of the Domain Name, from which Respondent (or a third party) is undoubtedly obtaining financial gain, is clearly in bad faith as Respondent is seeking to take advantage of Complainant’s goodwill and renown to attract traffic to its website and increase its revenues.
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
Paragraph 15(a) of the Rules instructs the Panel to “decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”.
Paragraph 4(a) of the Policy requires that the complainant proves each of the following three elements to obtain an order that the disputed domain name should be transferred or cancelled:
(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.
The Panel will proceed to analyze whether the three elements of paragraph 4(a) of the Policy are satisfied in this proceeding.
A. Identical or Confusingly Similar
Pursuant to paragraph 4(a)(i) of the Policy, Complainant must first of all establish rights in a trademark or service mark and secondly that the Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights.
Complainant has established that it is the owner of several trademark registrations for INSTAGRAM. The Domain Name <instagramhelp.com> incorporates the entirety of the INSTAGRAM trademark as its distinctive element. Many UDRP panels have found that a disputed domain name is confusingly similar to a complainant’s trademark where the disputed domain name incorporates a complainant’s trademark in its entirety. The addition of the common, descriptive and non-distinctive term “help” and the generic Top-Level Domain (“gTLD”) “.com” is insufficient to avoid a finding of confusing similarity.
The Panel finds that Complainant has proven that the Domain Name is confusingly similar to Complainant’s trademarks under paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
In the opinion of the Panel, Complainant has made a prima facie case that Respondent lacks rights or legitimate interests in the Domain Name. Complainant has not licensed or otherwise permitted Respondent to use any of its trademarks or to register the Domain Name incorporating its trademarks. Respondent is not making a legitimate noncommercial or fair use of the Domain Name with intent for commercial gain to misleadingly divert consumers or to tarnish the trademarks of Complainant.
Based on the undisputed submission and evidence provided by Complainant the Domain Name currently does not resolve to an active website. It is currently offered for sale at a price of USD 10,000. At different times the Domain Name redirected to a parking page with sponsored links mentioning Complainant’s INSTAGRAM trademarks; this parking contained the following message: “The Sponsored Listings displayed above are served automatically by a third party. Neither the service provider nor the domain name owner maintain any relationship with the advertisers. In case of trademark issues please contact the domain owner directly.”
The Panel does not consider such use a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the Domain Name. In addition, the website under the Domain Name does not accurately and prominently disclose the relationship between Respondent and Complainant as the holder of the well-known INSTAGRAM trademarks, in particular as there has never been any business relationship between Complainant and Respondent. Respondent is also not commonly known by the Domain Name nor has he acquired any trademark or service mark rights.
No Response to the Complaint was filed and Respondent has not rebutted Complainant’s prima facie case.
Under these circumstances, the Panel finds that Respondent has no rights or legitimate interests in the Domain Name under paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
The Panel finds that the Domain Name has been registered and is being used in bad faith.
Noting the well-known status of the INSTAGRAM marks and the overall circumstances of this case, the Panel finds it more likely than not that Respondent knew or should have known Complainant’s well-known INSTAGRAM marks.
The Panel notes that the Domain Name resolved to a website containing sponsored listings and pay-per-click links. The Panel also notes that the Domain Name incorporates Complainant’s well-known trademarks in its entirety, which indicates, in the circumstances of this case, that Respondent registered and used the Domain Name with the intention to attract, for commercial gain, Internet users to the website by creating a likelihood of confusion with the trademarks of Complainant as to the source, sponsorship, affiliation, or endorsement of its website or location or of a service on its website or location, which constitutes registration and use in bad faith pursuant to paragraph 4(b)(iv) of the Policy. As noted by previous UDRP panels, the fact that such links may be generated automatically does not prevent a finding of bad faith.
The Panel also notes the undisputed assertion of Complainant that it appears that bad faith registration and use is further indicated by the fact that the Domain Name is offered for sale, which indicates that Respondent likely registered the Domain Name primarily for the purpose of selling, renting, or otherwise transferring the Domain Name registration for valuable consideration in excess of its documented out-of-pocket costs directly related to the Domain Name.
The Panel also notes that there is currently no active website under the Domain Name. Passive holding of the Domain Name does not prevent the Panel from finding registration and use in bad faith.
The Panel finally notes that Respondent has been found to have registered and used domain names in bad faith in multiple other cases under the Policy, which suggests a pattern of such conduct on the part of Respondent (see inter alia Abbott Laboratories v. Domain May Be For Sale, Check afternic.com Domain Admin, Whois protection, this company does not own this domain name s.r.o. / Hulmiho Ukolen, Poste restante, WIPO Case No. D2017-2124; AdvancedMD, Inc. v. Domain Admin, Whois protection, this company does not own this domain name s.r.o. / Hulmiho Ukolen, Poste restante, WIPO Case No. D2017-0876; iS3, Inc. v. Hulmiho Ukolen, Poste restante / Domain Admin, Whois protection, this company does not own this domain name s.r.o., WIPO Case No. D2016-0933 and LEGO Juris A/S v. Hulmiho Ukolen, Poste restante / Domain Admin, Whois protection, this company does not own this domain name s.r.o., WIPO Case No. D2016-0927).
The Panel finds that Complainant has proven that the Domain Name has been registered and is being used in bad faith and paragraph 4(a)(iii) of the Policy has been satisfied.
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 <instagramhelp.com> be transferred to Complainant.
Dinant T. L. Oosterbaan
Date: August 9, 2018