WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Instagram, LLC v. Andrew Tannous
Case No. D2019-0237
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 Andrew Tannous of Dubai, United Arab Emirates.
2. The Domain Names and Registrar
The disputed domain names <businessinstagram.business>, <businessinstagram.com>, <businessinstagram.company>, <businessinstagram.info>, <businessinstagram.net>, and <businessinstagram.org> are 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 31, 2019. On January 31, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On January 31, 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.
The Center verified that the Complaint 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 February 4, 2019. In accordance with the Rules, paragraph 5, the due date for Response was February 24, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 25, 2019.
The Center appointed Selma Ünlü as the sole panelist in this matter on March 8, 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 social networking application which can be used on both iOS and Android operating systems. It has rapidly acquired and developed considerable goodwill and renown worldwide since its first launch on October, 2010. Acquired by Facebook, Inc. in 2012, Instagram today is one of the world’s fastest growing photo/video sharing and editing software and online social network with more than 1 billion active users monthly worldwide. The Instagram application has 3.73 million registered users in 2015 and 8.7 million in 2017 in the United Arab Emirates where the Respondent is domiciled.
Instagram’s website available at “www.instagram.com” is ranked the 16th most visited website in the world according to web information company Alexa. Instagram is currently the 10th most downloaded app for iOS phones in the United Arab Emirates according to applications information company App Annie.
The Complainant owns the registered INSTAGRAM trademark in many jurisdictions (see, for example, International trademark registration no. 1129314 for INSTAGRAM, registered March 15, 2012). Prior UDRP panels have recognized the strength and renown of the Complainant’s INSTAGRAM trademark and ordered the transfer of 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 in the United Arab Emirates where the Respondent resides, alongside with the other registrations in different jurisdictions.
The disputed domain name <businessinstagram.com> was registered on April 5, 2015; <businessinstagram.info>, <businessinstagram.business>, <businessinstagram.org>, and <businessinstagram.company> were registered on August 13, 2017; and <businessinstagram.net> was registered on August 19, 2017. According to the evidence submitted by the Complainant, the disputed domain name <businessinstagram.com> has been used as a website containing various sections including those relating to cars, restaurants, property listings, jobs and community postings and also displays commercial banners advertising third-party content. The other disputed domain names redirect to the website of “www.businessinstagram.com”. The Respondent’s website displays a graphic of a camera lens in the top left corner.
The Respondent has also registered several domain names including the third-party trademarks SNAPCHAT and FIRESTARTER.
The Complainant sent several enforcement requests asking the Respondent to stop using the Complainant’s trademark and disable the websites associated with the disputed domain names. The Respondent replied stating that he owned the domain names consisting of the term “businessinstagram” under the “.com”, “.org”, “.business”, “.company”, “.net” and “.ae” extensions and that he was willing to sell them for USD 10 million.
Thereon, the Complainant’s lawyers in France sent a cease-and-desist letter by email asking the Respondent to cease use of disputed domain names and transfer them to the Complainant. The Respondent did not reply.
On September 30, 2018, the Complainant’s lawyers in the United Arab Emirates called the Respondent. The Respondent stated that he would be willing to transfer the disputed domain names in return for “a good financial offer”. The Complainant did not agree.
The Respondent has not submitted any 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 decision that the disputed domain names 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 names incorporate its INSTAGRAM trademark as its leading element, followed by the term “business” which is a descriptive phrase and does not prevent the confusing similarity.
Finally, the Complainant argues that the generic Top-Level Domains (“gTLD”) such as “.com”, “.info”, “.business”, “org”, “.company”, and “.net” also should not be taken into consideration while determining confusing similarity since it is a standard registration requirement.
Rights or Legitimate Interests
The Complainant alleges that the Respondent is not and has never been authorized or 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 names.
Therefore, the Complainant argues that the Respondent is in no way authorized to use the Complainant’s INSTAGRAM trademarks in the disputed domain names and is not using the disputed domain names in connection with a bona fide offering of goods or services. This can also be understood from the fact that the Respondent has placed several commercial banners to the website and the use of the gTLD “.business” and the phrase “business” itself within the disputed domain names are naturally contrary the concept of a bona fide offering of goods or services. Furthermore, the Complainant also states that the disputed domain name <businessinstagram.com> resolves to a website (to which the other five disputed domain names also resolve) with a camera lens on the upper left corner of the web page which is identical to the logo of the Complainant. The Complainant submits that having the identical trademark of the Complainant with the same logo of the Complainant’s website will mislead Internet users. Additionally, despite all the similarities, there is also no disclaimer indicating that there is no relationship between the Complainant and the Respondent on the Respondent’s website.
Finally, the Complainant alleges that the Respondent is not known by the disputed domain names either. Despite the Respondent having registered a company for “businessinstagram.com Limited” in United Kingdom, the company has been dissolved via compulsory strike-off as per section 1000(3) of the Companies Act 2006.
Registered and Used in Bad Faith
The Complainant indicates that the disputed domain names have been registered and used 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 names. Accordingly, the Respondent should be aware of the Complainant and its marks and this is strong evidence of bad faith.
The Complainant also argues that the Respondent has communicated with MarkMonitor and replied to MarkMonitor by stating his demand of USD 10 million for the sale of the disputed domain names. Afterwards, the lawyers of the Complainant from the United Arab Emirates contacted the Respondent (after the lawyers of the Complainant from Paris had sent the Respondent a cease-and-desist letter), and he answered the lawyers by soliciting “a good financial offer” in return for the transfer of the disputed domain names.
Furthermore, it is also stated by the Complainant that registering six domain names indicating the trademark of the Complainant is a pattern of abusive action. Additionally, the disputed domain names are different from the Complainant’s own domain name, <business.instagram.com>, by only the dot between the phrases “business” and “instagram” and this is purposefully done to mislead Internet users. Considering that the website of the Respondent at the disputed domain names has a visually similar web design to that of the Complainant’s website with regards to the placement of the camera lens figure, and that the website does not have a disclaimer explaining there is no relationship between the Respondent and the Complainant, it is obvious that the Respondent has intentionally attempted to attract Internet users for commercial gain by creating likelihood of confusion.
According to the allegations of the Complainant, all factors stated above clearly show the bad faith of the Respondent.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
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 names are 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 names; and
(iii) The disputed domain names have been registered and are being used in bad faith.
Paragraph 4(a) of the Policy states that the Complainant has the burden of proving that all of these requirements are fulfilled.
A. Identical or Confusingly Similar
The Policy requires the Complainant to demonstrate that the disputed domain names are 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 the INSTAGRAM trademark is a well-known trademark.
The Panel finds that the addition of the term of “business” is descriptive and lacking distinctive character.
Finally, the Panel finds that the addition of the gTLDs “.com”, “.info”, “.business”, “org”, “.company”, and “.net” is irrelevant when determining whether the disputed domain names are confusingly similar to the Complainant’s trademark (Association des Centres Distributeurs E. Leclerc – A.C.D. Lec v. Na Shan, WIPO Case No. D2017-1640; Groupon, Inc. v. Wun Li, CreateNext, Inc., WIPO Case No. D2017-1232). It has been stated in several previous UDRP decisions that gTLDs should typically be disregarded.
The Panel concludes that 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.
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 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.
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 names. Once the Complainant has made out a prima facie case, then the Respondent may demonstrate, by showing, inter alia, one of the above circumstances, rights or legitimate interests in the disputed domain names.
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 names for the purposes of the Policy.
There is no evidence submitted showing that the Respondent is known by the disputed domain name as well, and the Panel finds it cannot be so known as the Respondent has chosen its names (and apparently previously registered its business name) because of its association with the Complainant’s trademark (Tinder, Inc. v. GhostMonitor, Inc., Registration Private, c/o Domains by Proxy, LLC / Peter Bodnar, WIPO Case No. D2017-1212).
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 not been authorized to use the INSTAGRAM trademarks in the disputed domain names. 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 names, 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 was aware of the Complainant and its INSTAGRAM trademarks at the time of registration of the disputed domain names. 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 names 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) the Respondent had offered the Complainant the sale of the disputed domain names in return for USD 10 million. Upon the rejection of this offer, the Respondent stated that “a good financial offer” will also be sufficient. Upon the second rejection, the Respondent ended negotiation and communication of any kind.
The Panel is of the opinion that Internet users may fall into the false impression that the disputed domain names are the Complainant’s official domain names or are associated or sponsored by the Complainant.
Therefore, in light of the above-mentioned circumstances in the present case, the Panel finds that the disputed domain names have been registered and are 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 names <businessinstagram.business>, <businessinstagram.com>, <businessinstagram.company>, <businessinstagram.info>, <businessinstagram.net>, <businessinstagram.org> be transferred to the Complainant.
Date: March 22, 2019