WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Instagram, LLC v. Jane Dew
Case No. D2019-0708
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 Jane Dew of Grand Cayman, Cayman Islands.
2. The Domain Name and Registrar
The disputed domain name <instagrambegenihilesi.org> (the “Domain Name”) is registered with DropCatch.com LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 28, 2019. On March 29, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On March 29, 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 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 April 3, 2019. In accordance with the Rules, paragraph 5, the due date for Response was April 23, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 24, 2019. Informal respondent communication indicating an attempt to settle the dispute was received on April 24, 2019. Accordingly, the Center sent a possible settlement email to the Parties on April 25, 2019. The Complainant sent a communication to the Center on April 25, 2019 informing the Center that it should proceed with the case because no settlement could be reached. On the same date the Center informed the Parties that it will proceed to panel appointment.
The Center appointed Mathias Lilleengen as the sole panelist in this matter on April 29, 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 is an online photo and video sharing social networking application. Since it was launched on October 6, 2010, Instagram rapidly grew to over 10 million registered users by September 2011. Acquired by Facebook in April 2012, the Complainant currently has 1 billion monthly active users and 500 million daily active users, with more than 95 million photos and videos shared per day. The Complainant's website, “www.instagram.com” is ranked as the 16th most visited website in the world. Currently available in over 31 languages, the Instagram app is the 5th most downloaded application in the world.
The Complainant is the registrant of numerous domain names such as <instagram.com>, <instagram.co.at>, <instagram.com.br>, <instagram.net.br>, <instagram.org.cn>, <instagram.dk>, <instagram.de>, <instagram.org.in>, <instagram.mk> and <instagram.ch>. Prior domain name dispute panels have recognized the strength and renown of the Complainant’s INSTAGRAM trademark, and ordered the respondents to transfer domain names to the Complainant, see e.g. WIPO Case No. D2018-2906 <instagramhilesi.org>, <instagramhizmetlerim.com> et al., WIPO Case No. D2018-2198 <instagramsecurity.com> and WIPO Case No. D2018-0669 <instagramhelpsupport.com>.
The Complainant owns numerous trademark registrations in the term INSTAGRAM, such as United States trademark No. 4146057 registered on May 22, 2012, European Union Trade Mark No. 014493886 registered on December 24, 2015 and International trademark No. 1129314 registered on March 15, 2012.
According to the Registrar, the Domain Name was registered on December 17, 2018. At the time of filing the Complaint, the Domain Name redirected to dynamic websites, including a webpage prominently displaying the logo of Google and purportedly providing rewards (e.g. smart phones) to Google users. The Domain Name also previously pointed to a parking page containing sponsored links. At the time of drafting the Decision, the Domain Name resolved to a webpage requesting the Internet users to click for a “security check”.
5. Parties’ Contentions
The Complainant has registered trademark rights in INSTAGRAM. The Complainant submits that the Domain Name is confusingly similar to the Complainant’s INSTAGRAM trademark. The Domain Name incorporates the Complainant’s INSTAGRAM trademark in its entirety with the addition “begen ihilesi”. According to the Complaint, this addition means “celebrity” in Turkish, and it does not prevent a finding of confusing similarity.
The Complainant submits that the Respondent has no rights or legitimate interests in the Domain Name. The Complainant asserts that the Respondent is unable to demonstrate rights or legitimate interests in the Domain Name. The Respondent has not been allowed by the Complainant to make any use of its trademarks. The Respondent cannot assert that she was using, or had made demonstrable preparations to use, the Domain Name in connection with a bona fide offering of goods or services. The Domain Name redirects to dynamic websites, including a webpage displaying the logo of Google and purportedly providing rewards to Google users. Such use cannot constitute a bona fide offering of goods or services. The fact that the Domain Name was previously used to point to a parking page containing sponsored links does not represent a bona fide offering of goods or services either, as the Respondent was attempting to capitalize on the Complainant’s reputation and goodwill. The Respondent cannot conceivably assert that she is commonly known by the Complainant’s trademark, given the Complainant’s notoriety and the fact that INSTAGRAM is a distinctive trademark exclusively associated with the Complainant. The Complainant argues that it is simply not possible to conceive any plausible actual or contemplated active use of the Domain Name that would not be illegitimate.
Based on the same facts, and with reference to former UDRP decisions, the Complainant argues that it would be inconceivable for the Respondent to argue that she did not have knowledge of the Complainant's INSTAGRAM trademark at the time of registration of the Domain Name. The Complainant further submits that the Respondent has engaged in a pattern of conduct by registering not only the Domain Name but also other domain names infringing upon third parties’ trademark rights, such as <google-image.com>, <nikesportsneaker.com>, <samsungindiaestore.com> and <youtubedownload.com>. The Complainant also points to that the Respondent has been involved as the respondent in a previous UDRP proceeding, where the domain name was ordered to be transferred, as additional evidence of such pattern of conduct. It is submitted that the Respondent is using the Domain Name to intentionally attract, for commercial gain, Internet users to associated websites by creating a likelihood of confusion with the Complainant’s trademarks as to the source, sponsorship, affiliation or endorsement of the website. The Domain Name was previously used to point to a parking page containing sponsored links and is currently being used to redirect to dynamic websites. By redirecting Internet users to such websites for commercial gain, the Respondent is, in the Complainant’s view, clearly trading on the Complainant’s reputation and goodwill and thus using the Domain Name in bad faith. The Respondent’s failure to reply to the cease and desist letter is further indication of bad faith.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
The Complainant has established rights in the trademark INSTAGRAM. The test for confusing similarity involves the comparison between the trademark and the Domain Name. In this case, the Domain Name incorporates the Complainant’s INSTAGRAM trademark in its entirety with the addition “begen ihilesi”. According to the Complaint it means “celebrity” in Turkish. This Panel has not been able to confirm this meaning in Turkish, but found out through Google Translate that it seems to mean “real estate” in the Western African Hausa language. Either way, the addition does not prevent a finding of confusing similarity. For the purpose of assessing confusing similarity, it is permissible for the Panel to ignore the generic Top-Level Domain (“gTLD”) “.org”, see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.11.
The Panel finds that the Domain Name is confusingly similar to a trademark in which the Complainant has rights in accordance with paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
The Complainant has made unrebutted assertions that is has not granted any authorization to the Respondent to register domain names containing the Complainant’s trademark or otherwise make use of the mark. Based on the evidence, the Respondent is not affiliated or related to the Complainant in any way. There is no evidence that the Respondent has registered the Domain Name as a trademark or acquired unregistered rights. There is no evidence of the Respondent’s use of, or 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. The fact that the Respondent has used the Domain Name to redirect to dynamic websites, including a webpage displaying the logo of Google and purportedly providing rewards to Google users, does not constitute a bona fide offering of goods or services. The fact that the Domain Name was previously used to point to a parking page containing sponsored links does not represent a bona fide offering of goods or services either. The Panel agrees with the Complainant, it is not possible to conceive a plausible active use of the Domain Name by the Respondent that would not be illegitimate.
The Panel finds the Respondent has no rights or legitimate interests in respect of the Domain Name in accordance with paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
Taking into account the Complainant’s fame and the Respondent’s use of the Domain Name, the Panel concludes that it is more likely than not that the Respondent knew of the Complainant and its business when she registered the Domain Name.
The Respondent has attempted to attract Internet users to the Respondent’s website for commercial gain by creating a likelihood of confusion with the Complainant’s marks as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website. Furthermore, the Respondent has engaged in a pattern of conduct by registering not only the Domain Name but also other domain names infringing upon third parties’ trademark rights. The Respondent’s failure to reply to the Complainant’s contentions further points to bad faith.
The Panel concludes that the Domain Name was registered and is being used in bad faith, within the meaning of 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 <instagrambegenihilesi.org> be transferred to the Complainant.
Date: May 3, 2019