WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Instagram, LLC v. Temp name Temp Last Name, Temp Organization
Case No. D2019-0109
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 Respondent is Temp name Temp Last Name, Temp Organization of Turkey.
2. The Domain Name and Registrar
The disputed domain name <lnstagramsecuritycenter.com> is registered with Nics Telekomunikasyon A.S. (the “Registrar”).
3. Procedural History
The Complaint in English was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 18, 2019. On January 18, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 20, 2019, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
Pursuant to the Complaint submitted in English and the registrar verification dated January 20, 2019 stating that Turkish is the language of the registration agreement of the disputed domain name, on January 21, 2019, the Center sent a request in English and Turkish that the Parties submit their comments on the language of the proceeding. On January 21, 2019, the Complainant submitted its request for English to be the language of the proceeding. The Respondent did not submit any request regarding the language of the proceeding.
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 the Respondent of the Complaint, and the proceedings commenced on January 28, 2019. In accordance with the Rules, paragraph 5, the due date for Response was February 17, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 18, 2019.
The Center appointed Selma Ünlü as the sole panelist in this matter on February 27, 2019. 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 in this administrative proceeding, Instagram, LLC is a world famous online photo and video sharing application which can be used on both iOS and Android operating system. The online photo and video sharing application was named as “Instagram” since its first launch on October 6, 2010 and since then the mobile application has 1 billion active users monthly, 500 million daily active users and 95 million photos and/or videos shared daily through the mobile application. Moreover, the mobile application has 37 million active users in 2018 in Turkey where the Respondent is resident. The mobile application of the Complainant also keeps growing.
The Complainant’s website available at “www.instagram.com” is ranked 16th most visited website in the world according to web information company Alexa. The Complainant is currently the 11th most downloaded app for IOS phones in Turkey according to applications information company App Annie.
The Complainant owns the registered INSTAGRAM trademarks around the world. Prior UDRP panels have recognized the strength and renown of the Complainant’s INSTAGRAM trademark and ordered the transfer of disputed domain names to the Complainant. (e.g., Instagram, LLC v. Saddam Hussain, WIPO Case No. D2018-0078).
The term “Instagram” is highly distinctive and is exclusively associated with the Complainant.
As the Panel examined the registrations of the Complainant, it has been noted that the Complainant has several trademark registrations for INSTAGRAM before the Turkish Patent and Trademark Office (“TPTO”) of where the Respondent resides in the jurisdiction alongside with the other registrations in different jurisdictions. Besides, INSTAGRAM trademark is registered to well-known trademarks registry under the well-known trademark number T/03173 before TPTO.
The disputed domain name <lnstagramsecuritycenter.com> was registered on October 20, 2018. According to the evidence submitted by the Complainant, the disputed domain name has not been used as a website, however, shortly after registration of the disputed domain name, the Respondent commenced use of the disputed domain name in connection with a fraudulent email scheme. The emails which was sent to an Instagram user on October 28, 2018 contains a link to file an objection where the Instagram users is invited to click, leading the Instagram user to an unsafe online location, unaffiliated with the Complainant.
The Respondent has not submitted any formal Response to the contentions raised in the Complaint.
5. Parties’ Contentions
Pursuant to paragraph 4(i) of the Policy, the Complainant requests the Panel to bring a verdict regarding the disputed domain name to be transferred to the Complainant. The Complainant submits the grounds for these proceedings listed in paragraph 4(a) of the Policy.
In summary, the Complainant contends the following:
The Complainant states that it owns registered and well-known INSTAGRAM trademarks and the Complainant itself is one of the leading companies of the relevant industry.
The Complainant asserts that the disputed domain name incorporates its INSTAGRAM trademark as its leading element, followed by two terms of “security” and “center” which do not prevent the confusing similarity. The term “lnstagram” is written with a lowercase letter “L” instead of an uppercase letter of “i” and consequently it appears visually similar to the Complainant’s trademarks INSTAGRAM.
The Complainant also argues that the above-stated terms of “security” and “center” are descriptive words therefore the disputed domain name is confusingly similar to the Complainant’s trademarks.
Finally, the Complainant argues that the generic Top-Level Domain (“gTLD”) as “.com” also should not be taken into consideration while determining the likelihood of confusion since it is a standard registration requirement.
Rights or Legitimate Interests
The Complainant alleges that the Respondent is not and has never been agreed with, authorized, and granted a license by the Complainant regarding the Complainant’s trademarks. The Respondent does not have any rights or legitimate interests in the disputed domain name.
Therefore, the Complainant argues that the Respondent is in no way authorized to use the Complainant’s INSTAGRAM trademarks in the disputed domain name and is not using the disputed domain name in connection with bona fide offering of goods or services. This matter can also be understood from the fact that the Respondent has been sending several emails leading the users to click on a button which will possibly direct them to a third-party website unaffiliated with the Complainant or its abuse team.
Finally, the Respondent alleges that the Respondent is not known by the disputed domain name either. The name of the Respondent, according to the Complainant’s allegations, seems as “Temp name Temp Last Name, Temp Organization” which does not have any relation with disputed domain name.
Registered and Used in Bad Faith
The Complainant indicates that the disputed domain name has been registered in bad faith. The Complainant contends that the trademarks INSTAGRAM are well-known marks throughout the world with its billions of active users. It further claims that the Respondent must have been aware of the Complainant and its marks at the time that it registered the disputed domain name. Whereas, the mobile application of the Complainant has 37 million active users in Turkey, where the Respondent is resident. Accordingly, the Respondent should be aware of the Complainant and its marks. The emails sent to the users of the Complainant’s mobile application pretending that the email has been sent by the abuse team of the Complainant are also showing the bad faith of the Respondent.
The Complainant also argues that the uses of the disputed domain name are also conducted in bad faith since the said emails are designed to lead the users to a third party website which has no relation with the Complainant to obtain, possibly, their confidential credentials and/or personal information.
Furthermore, the said email which is submitted as Annex 3 with the Complaint has a footer as “© Instagram, 1 Hacker Way, Menlo Park, CA 94025” where is an area near by the Menlo Park campus of Facebook who acquired the mobile application Instagram in April 2012.
According to the allegations of the Complainant, all factors stated above clearly shows that the bad faith of the Respondent.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
6.1. Language of the Proceeding
Paragraph 11(a) of the Rules provides that the language of the proceedings shall be the language of the Registration Agreement unless otherwise agreed by the Parties, or specified in the Registration Agreement, subject to the Panel to determine otherwise.
The Panel considers that the Complainant will be unable to communicate in Turkish and the Respondent had sent several emails in English which is evidence for the Panel that the Respondent is able to understand and communicate in English. The Panel further notes that the Respondent did not object for English to be the language of the proceeding and did not reply to the Complainant’s contentions. Therefore, the Panel holds the language of the proceeding is English.
6.2. Substantive Issues
According to paragraph 15(a) of the Rules, the Panel shall decide the Complaint in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable and on the basis of the Complaint where no Response has been submitted.
In accordance with paragraph 4(a) of the Policy, the Complainant must prove that each of the three following elements is satisfied:
(i) The disputed domain name is identical or confusingly similar to the trademark 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.
Paragraph 4(a) of the Policy states that the Complainant has the burden of proving that all these requirements are fulfilled.
A. Identical or Confusingly Similar
The Policy requires the Complainant to demonstrate that the disputed domain name is identical or confusingly similar to a trademark in which the Complainant has rights. The Panel is satisfied that the Complainant is the owner of the INSTAGRAM trademarks and INSTAGRAM trademark is a well-known trademark.
The Panel finds that the addition of the terms “security” and “center” are irrelevant when determining whether the disputed domain name is confusingly similar to the Complainant’s trademark since the Complainant’s trademark is included in its entirety and is clearly recognizable.
In this case the letter “L” is written lowercase it seems like it is an uppercase “i” letter. This is a clear case of typosquatting. Therefore, the Panel concluded that there is an obvious misspelling and the Panel is of the opinion that the disputed domain name is confusingly similar to the Complainant’s trademark.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy states that a respondent may establish its rights or legitimate interests in a domain name, among other circumstances, by showing any of the following elements:
(i) before any notice to you [the 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 [the 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 [the Respondent] are making a legitimate non-commercial 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 burden of proof is on the Complainant to demonstrate a prima facie case that the Respondent does not have rights or legitimate interests in the disputed domain name. Once the Complainant has made out a prima facie case, then the Respondent may, by, inter alia, showing one of the above circumstances, demonstrate rights or legitimate interests in the disputed domain name.
In light of the evidence submitted in the case file, e.g., trademark registration certificates etc., it is clear to the Panel that the Complainant has earlier and lawful rights in the INSTAGRAM trademarks. Therefore, the Panel finds on the current record that the Complainant has proved rights in the INSTAGRAM trademarks and considering the evidence about the use, has also established a prima facie case that the Respondent does not have any rights or legitimate interests in the disputed domain name for the purposes of the Policy.
The Complainant has not granted the Respondent any right or license to use the INSTAGRAM trademarks.
Consequently, in the absence of an official response, the Panel accepts the Complainant’s allegations as true that the Respondent has no authorization to use the INSTAGRAM trademarks in the disputed domain name. Hence, as the Complainant has made out its prima facie case, and as the Respondent has not demonstrated any rights or legitimate interests as illustrated under paragraph 4(c) of the Policy, nor has the Panel found any other basis for finding any rights or legitimate interests of the Respondent in the disputed domain name, the Panel concludes that the Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
Finally, the Complainant must show that the disputed domain name has been registered and is being used in bad faith under paragraph 4(a)(iii) of the Policy.
Paragraph 4(b) of the Policy provides a non-exhaustive list of circumstances that, if found by a 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 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; or
(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
(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 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.
By consideration of the foregoing, the Panel is of the opinion that due to the earlier rights of the Complainant in the INSTAGRAM trademarks, as well as its extensive and intensive usage, the Respondent, who appears to be located in Turkey where the Complainant has a strong recognition, was aware of the Complainant and its INSTAGRAM trademarks at the time of registration of the disputed domain name. See, e.g., Ebay Inc. v. Wangming, WIPO Case No. D2006-1107; General Electric Company v. CPIC NET and Hussain Syed, WIPO Case No. D2001-0087. Referring to Parfums Christian Dior v. Javier Garcia Quintas and Christiandior.net, WIPO Case No. D2000-0226, the Panel believes that the awareness of the Complainant’s trademark at the time of the registration of the disputed domain name is to be considered an inference of bad faith registration.
Moreover, the Panel notes that:
(i) the Respondent did not submit any official response and is in default;
(ii) the Complainant’s trademark has a strong reputation and is registered as a well-known trademark;
(iii) Annex 3 of the Complaint is an email sent by the email service providing by the disputed domain name. The Panel finds this email to be evidence of the Respondent’s phishing activities.
The Panel is of the opinion that Internet users may fall into the false impression that the disputed domain name is the Complainant’s official domain name or related such as its abuse team, associated or sponsored by the Complainant.
Finally, Annex 3 submitted by the Complainant also indicates a footer as “© Instagram, 1 Hacker Way, Menlo Park, CA 94025” which is increases the risk for Internet user of the mobile application of the Complainant to believe that the email is sent by the Complainant and the Panel of the opinion that such footer has been placed to the end of the email to provide this very end. Therefore, the Panel finds that the placement of the footer in the email is another evidence showing the bad faith of the Respondent.
Therefore, in light of the above-mentioned circumstances in the present case, the Panel finds that the disputed domain name has been registered and is being used in bad faith and that the Complainant has established the third element 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 disputed domain name <lnstagramsecuritycenter.com> be transferred to the Complainant.
Date: March 13, 2019