WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Instagram, LLC v. Faruk Ozcan

Case No. D2019-0845

1. The Parties

The Complainant is Instagram, LLC, United States of America (“United States”), represented by Hogan Lovells (Paris) LLP, France.

The Respondent is Faruk Ozcan, Turkey.

2. The Domain Names and Registrar

The disputed domain names

<copright-instagram.com>
<copright-instagram.xyz>
<instagram-copyright.com>
<instagramhelpsecuritycenters.com>
<instagramhelpsecuritycenters.xyz>
<lnstagram-copyright.com>
<lnstagram-copyright.xyz>
<lnstagram-help.com>
<mail-lnstagram.com>

are registered with Nics Telekomunikasyon A.S. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 12, 2019. On April 15, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On April 17, 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 Registrar confirmed that the language of the registration agreement is in Turkish, whereas the Complaint was submitted in English. On April 18, 2019, The Center sent the Parties a language of proceedings email in which they were invited to substantiate their arguments on the language of proceedings. The Complainant replied to this request on the same day, arguing in favor of English being the language of proceedings. No response received from the Respondent.

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 25, 2019. In accordance with the Rules, paragraph 5, the due date for Response was May 15, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 16, 2019.

The Center appointed Kaya Köklü as the sole panelist in this matter on May 20, 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 a United States based company, which provides online photo and video sharing services. These services are provided through its online platform, which primarily consists of a mobile application and a website. Users of the Complainant’s services can upload, edit and share images and videos and are able to follow shared content by other users. Based on uncontested information provided in the case record, the Complainant reached over 1 billion people using the Complainant’s services monthly. Alone in Turkey, where the Respondent is located, the Complainant has more than 37 million active users.

The Complainant is the owner of the trademark INSTAGRAM, which is registered in a large number of jurisdictions. For instance, the Complainant is the owner of the United States Trademark Registration No. 4146057, registered on May 22, 2012. The Complainant is further the owner of the Turkish Trademark Registration No. 2013 74099, registered on May 20, 2015. The registered trademarks provide protection for various goods and services, in particular International Classes 9, 38, 41 and 42 (cf. Annex 11 to the Complaint).

The Complainant holds and operates its website at “www.instagram.com”, which is ranked as one of the most visited websites worldwide. Furthermore, the Complainant is the registered owner of many additional domain names consisting of or including the INSTAGRAM trademark (cf. Annex 7 to the Complaint).

The creation dates of the disputed domain names are as follows:

<copright-instagram.com> February 11, 2019
<copright-instagram.xyz> February 11, 2019
<instagram-copyright.com> February 11, 2019
<instagramhelpsecuritycenters.com> November 11, 2018
<instagramhelpsecuritycenters.xyz> November 11, 2018
<lnstagram-copyright.com> February 11, 2019
<lnstagram-copyright.xyz> February 11, 2019
<lnstagram-help.com> November 23, 2018
<mail-lnstagram.com> November 21, 2018

The Respondent is an individual from Turkey.

According to the provided documents by the Complainant (particularly Annex 9 to the Complaint), most of the disputed domain names are either not resolving to an active website or are resolving to a parking page of a third party promoting similar domain names for registration. However, some of the disputed domain names were at least previously associated with a website featuring the Complainant’s figurative INSTAGRAM trademark and creating the false impression that respective user accounts with the Complainant may be deleted if the user does not object or validates his email address.

5. Parties’ Contentions

A. Complainant

The Complainant requests the transfer of the disputed domain names.

The Complainant is of the opinion that the disputed domain names are confusingly similar to its INSTAGRAM trademark.

Furthermore, the Complainant argues that the Respondent has no rights or legitimate interests in respect of the disputed domain names.

Finally, it is argued that the Respondent has registered and is using the disputed domain names in bad faith. The Complainant believes that the Respondent was fully aware of the Complainant’s trademarks, when registering the disputed domain names. The Complainant is further of the opinion that the Respondent apparently tries to mislead Internet users and to gain illegitimate benefits by freeriding on the goodwill of the well-known INSTAGRAM trademark.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

6.1. Language of the Proceeding

The Panel determines in accordance with the Complainant’s request and the Rules, paragraph 11(a), that the language of these administrative proceedings shall be English. Although the language of the registration agreement is Turkish, the Panel finds that it would be inappropriate, given the circumstances of this case, to conduct the proceedings in Turkish and request a Turkish translation of the Complaint while the Respondent has failed to raise any objection or even to respond to the Complaint or respond to the Center’s communication about the language of the proceedings, even though communicated in Turkish and in English. The Panel notes that the Respondent was given the opportunity to respond in Turkish and that this opportunity remained unused by the Respondent. Consequently, the Panel is convinced that the Respondent will not be prejudiced by a Decision being rendered in 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.

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 a 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 bears the burden of proving that all these requirements are fulfilled, even if the Respondent has not replied to the Complainant’s contentions. Stanworth Development Limited v. E Net Marketing Ltd., WIPO Case No. D2007-1228.

However, concerning the uncontested information provided by the Complainant, the Panel may, where relevant, accept the provided reasonable factual allegations in the Complaint as true. See, section 4.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).

It is further noted that the Panel has taken note of the WIPO Overview 3.0 and, where appropriate, will decide consistent with the consensus views captured therein.

A. Identical or Confusingly Similar

To begin with, the Panel confirms that the Complainant has satisfied the threshold requirement of having relevant trademark rights. As evidenced in the Complaint, the Complainant is the owner of various INSTAGRAM trademarks, which are registered in many jurisdictions since at least 2012, including in Turkey. Due to the wide recognition of the Complainant’s trademark also in Turkey, the Panel believes that INSTAGRAM is a well-known trademark.

The Panel finds that the disputed domain names are confusingly similar to the Complainant’s INSTAGRAM trademark. Most of the disputed domain names comprise the INSTAGRAM trademark in its entirety. The remaining disputed domain names incorporate a confusingly similar misspelling of the INSTAGRAM trademark, namely by replacing the first letter “I” with the letter “L”, followed by descriptive terms like “copyright”, “help” or “security”.

As stated at section 1.8 and 1.9 of the WIPO Overview 3.0, where the relevant trademark (even in case of a misspelling) is recognizable within the disputed domain name, the addition of other terms would generally not prevent a finding of confusing similarity. Particularly, the mere addition of the above mentioned dictionary terms does, in view of the Panel, not serve to avoid a finding of confusing similarity between the disputed domain names and the Complainant’s INSTAGRAM trademark.

In view of the above, the Panel is satisfied that the Complainant has met the requirements under paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

While the burden of proof remains with the Complainant, the Panel recognizes that this would often result in the impossible task of proving a negative, in particular as the evidence needed to show the Respondent’s rights or legitimate interests is primarily within the knowledge of the Respondent. Therefore, the Panel agrees with prior UDRP panels that the Complainant is required to make out a prima facie case before the burden of production shifts to the Respondent to show that it has rights or legitimate interests in the disputed domain names to meet the requirements of paragraph 4(a)(ii) of the Policy. Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455.

With its Complaint, the Complainant has provided prima facie evidence that the Respondent has no rights or legitimate interests, particularly no license to use the Complainant’s INSTAGRAM trademark in a confusingly similar way within the disputed domain names. In addition, the Panel notes, the nature of the disputed domain names carries a risk of implied affiliation or association, as stated in section 2.5.1 of the WIPO Overview 3.0.

The Panel finds that, based on the Panel’s findings and discussion below and further under the third element, that the Respondent does not have a right or legitimate interest in the disputed domain names according to the Policy, paragraph 4(a)(ii) and 4(c).

In the absence of a Response, the Respondent has failed to demonstrate any of the nonexclusive circumstances evidencing rights or legitimate interests under the Policy, paragraph 4(c) or provide any other evidence of a right or legitimate interest in the disputed domain names. Particularly, the Panel finds on the available record that at least some of the disputed domain names were intended to be used in connection with ill intentions. The Respondent was apparently well aware of the Complainant’s INSTAGRAM trademark, its business and its provided services long before registering and using the disputed domain names. The Panel is convinced that the Respondent deliberately has chosen the disputed domain names in order to cause confusion with the Complainant’s trademarks among Internet users. Bearing this in mind, the Panel does not see sufficient basis for assessing a bona fide offering of goods or services by the Respondent.

Consequently, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

The Panel believes that the Respondent deliberately attempted to create a likelihood of confusion among Internet users in order to obtain private information and/or to freeride on the goodwill of the Complainant’s INSTAGRAM trademark, for illegitimate purposes, particularly for the following reasons.

At the date of registration of the disputed domain names, the Respondent was obviously well aware of the Complainant’s well-known INSTAGRAM trademark.

Furthermore, the way of previously using the Complainant’s trademark on websites linked to some of the disputed domain names (cf. Annex 9 to the Complaint), indicates that the Respondent has deliberately chosen the Complainant’s trademark as the distinctive part of the disputed domain names to mislead Internet users in order to obtain private information from them. In view of the Panel, this strongly indicates the Respondent’s bad faith intentions to gain illegitimate benefit by freeriding on the notoriety and goodwill of the Complainant’s INSTAGRAM trademark.

Additionally, the Panel finds that the Respondent’s failure to respond to the Complaint also supports the conclusion that it has registered and is using the disputed domain name in bad faith.

The fact that most of the disputed domain names are currently inactive or resolve to a parking page does not change the Panel’s findings in this respect.

Taking all facts of the case into consideration, the Panel believes that this is a typical cybersquatting case, which the UDRP was designed to stop. In view of the Panel, the disputed domain names were registered and are being used in bad faith and that the Complainant consequently has satisfied the third element of the Policy, namely, paragraph 4(a)(iii) of the Policy.

7. Decision

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

<copright-instagram.com>
<copright-instagram.xyz>
<instagram-copyright.com>
<instagramhelpsecuritycenters.com>
<instagramhelpsecuritycenters.xyz>
<lnstagram-copyright.com>
<lnstagram-copyright.xyz>
<lnstagram-help.com>
<mail-lnstagram.com>

be transferred to the Complainant.

Kaya Köklü
Sole Panelist
Date: June 3, 2019