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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Instagram, LLC v. Anna Maria Lindemann

Case No. D2019-0906

1. The Parties

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

The Respondent is Anna Maria Lindemann, Germany.

2. The Domain Name and Registrar

The disputed domain name <instagram-validatedbadge.com> (the “Disputed Domain Name”) is registered with PSI-USA, Inc. dba Domain Robot (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 19, 2019. On April 23, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On April 24, 2019, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Disputed Domain Name, which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on April 25, 2019, providing the registrant and contact information disclosed by the Registrar and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on April 26, 2019.

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 the Respondent of the Complaint and the proceedings commenced on April 29, 2019. In accordance with the Rules, paragraph 5, the due date for Response was May 19, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 22, 2019.

The Center appointed Michael D. Cover as the sole panelist in this matter on May 31, 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, which launched in October 2010. It currently has over 1 billion monthly active users and 500 million daily active users, with more than 95 million phots and videos shared per day. The Complainant was acquired by Facebook in April 2012.

The Complainant’s website is at “www.instagram.com” and has been consistently ranked one of the most visited websites in the world and ranked amongst the top apps available for mobile devices. The Complainant’s growth and popularity has been widely-reported in a wide spectrum of the media, as set out in Annex 5 to the Complaint.

The Complainant is the registrant of numerous domain names consisting of or including the term “Instagram”, including <instagram.com>, <instagram.de> and <instagram.net.ru> and many others as set out in Annex 6 to the Complaint.

The Complainant is the proprietor of numerous registration of its INSTAGRAM trademark, including in the European Union, the United States, and as an International Trademark, as set out in Annex 11 to the Complaint (e.g. United States Patent and Trademark Office (USPTO) reg. no. 4146057, registered on May 22, 2012).

All that is known about the Respondent is the registrant’s geographical location in Germany.

The Disputed Domain Name was registered on August 12, 2018. Before the Disputed Domain Name was suspended at the Complainant’s request, the Disputed Domain Name resolved to a website featuring an INSTAGRAM logo, as set out in Annex 10 to the Complaint, and which, amongst other things, provided an “Instagram Approved Account participation form”, where users were asked to provide, inter alia, confidential account information.

5. Parties’ Contentions

A. Complainant

Trademark or service mark in which the Complainant has rights

The Complainant states that it owns numerous trademark registrations around the world for its trademark INSTAGRAM, all of which predate the registration of the Disputed Domain Name, and it has therefore established its rights in what it calls the term INSTAGRAM.

Identical or Confusingly Similar

The Complainant submits that the Disputed Domain Name is confusingly similar to its INSTAGRAM trademark. The Complainant notes that the Disputed Domain Name reproduces the Complainant’s INSTAGRAM trademark in its entirety and notes that prior Panels have held that, when a domain name wholly incorporates a Complainant’s registered mark, that is sufficient to establish identity or confusing similarity for purposes of the Policy.

The Complainant continues that the addition of the term “validated badge” in fact reinforces the confusing similarity with the Complainant’s INSTAGRAM trademark, as the Complaint actually provides authentication services on its webpage at “www.help.instagram.com/854227311295302”. The Complainant finally submits under this section that it is generally accepted that the suffix, such as “.com”, is irrelevant when assessing whether a domain name is identical or confusingly similar to a trademark, as such a suffix is a functional element.

The Complainant therefore concludes that the Disputed Domain is confusingly similar to the Complainant’s trademark in accordance with paragraph 4 (a) (i) of the Policy.

Rights or Legitimate Interests

The Complainant submits that the Respondent has no rights or legitimate interests in the Disputed Domain Name. The Complainant notes that numerous previous Panels have found that, under the Policy, once the Complainant makes a prima facie case that the registrant does not have rights or legitimate interests in the domain name, the evidentiary burden shifts to the registrant to rebut the showing by providing evidence of its rights or legitimate interests in the domain name.

The Complainant states that it has not authorized or licensed the Respondent to use its INSTAGRAM trademark. The Complainant goes on to state that the Respondent cannot assert that, prior to any notice of this dispute, the Respondent was using or making demonstrable preparations to use the Disputed Domain Name in connection with a bona fide offering of goods or service. In fact, continues the Complainant, the Disputed Domain Name was previously used to point to a webpage impersonating Instagram.

The Complainant continues that the Complainant cannot conceivably assert that the Complainant has made or is making legitimate noncommercial or fair use of the Disputed Domain Name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark at issue. The Complainant draws the Panel’s attention to the fact that the Disputed Domain Name falsely suggests affiliation with the Complainant. The Complainant adds that, given the overwhelming renown of the Complainant’s trademark INSTAGRAM worldwide, it is not plausible to conceive of any actual or contemplated use of the Disputed Domain Name that would not be illegitimate.

The Complainant asserts that the Respondent has no rights or legitimate interests in the Disputed Domain Name in accordance with paragraph 4 (a) (ii) of the Policy.

Registered and Used in Bad Faith

The Complainant asserts that the Disputed Domain Name was registered and was being used in bad faith. The Complainant notes that paragraph 4(b) of the Policy lists four factors which, in particular but without limitation, may be evidence of the registration and use of a domain name in bad faith and submits that paragraph 4(b)(iv) of the Policy is of particular relevance in this case. The Panel notes that this is the paragraph that deals with the intentional attempt to attract, for commercial gain, Internet users to a respondent’s website by creating a likelihood of confusion.

The Complainant states that its INSTAGRAM trademark is inherently distinctive and well known throughout the world in connection with its photo-sharing social network and that this trademark has acquired considerable goodwill and renown worldwide. The Complainant continues that it would be inconceivable for the Respondent to argue that the Respondent did not have knowledge of the Complainant’s INSTAGRAM trademark at the time of the registration of the Disputed Domain Name in 2018. The Complainant also draws attention to what it describes as the same “look and feel” of the website to which the Disputed Domain Name resolved to the Complainant’s official Help Center.

The Complainant submits that the Respondent has been using the Disputed Domain Name to intentionally attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation or endorsement of the website, in accordance with paragraph 4(b)(iv) of the Policy.

In view of the foregoing, the Complainant asserts that the Disputed Domain Name has been registered and is being used in bad faith in accordance with paragraph 4 (a) (iii) of the Policy.

Remedy requested by the Complainant

The Complainant requests that the Panel order that the Disputed Domain Name be transferred to the Complainant.

B. Respondent

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

6. Discussion and Findings

The Complainant must demonstrate that, on the balance of probabilities, the Disputed Domain Name is identical or confusingly similar to a trademark in which the Complainant has rights, the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name, and the Disputed Domain Name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

The Panel accepts that the Complainant has established registered rights in its INSTAGRAM trademark. The Complainant’s INSTAGRAM trademark has been registered since at least as early as 2012 and extensive use has been made of that trademark by the Complainant since at least as early as 2010, to the extent that the use has been so great that the trademark has become well-known. This was well before the registration of the Disputed Domain Nam in 2018.

The Panel also accepts that the Disputed Domain Name is confusingly similar to the Complainant’s INSTAGRAM trademark, in which it has rights. It has long been established that the addition of the generic Top-Level Domain “.com” does not avoid a finding that the Disputed Domain Name is confusingly similar to the Complainant’s trademark, in this case the Complainant’s trademark INSTAGRAM. Further, the Disputed Domain Name incorporates the Complainant’s trademark in full. Whilst the element “-validatedbadge” is a longer descriptive element than is sometimes found in such cases, it is nonetheless a descriptive element and one which is indicative of certain services provided by the Complainant under its INSTAGRAM trademark. The Complainant’s INSTAGRAM trademark is recognizable within the disputed domain name and this supports the finding that the Disputed Domain Name is confusingly similar to the Complainant’s trademark in which it has rights.

The Panel accordingly finds that the Disputed Domain Name is confusingly similar to the Complainant’s trademark INSTAGRAM in which it has rights and the paragraph 4 (a) (i) of the Policy has been satisfied by the Complainant.

B. Rights or Legitimate Interests

The Panel accepts that the Respondent has no rights or legitimate interests in the Disputed Domain Name. The Complainant has not authorized or licensed the Respondent to use the INSTAGRAM trademark. The Panel accepts the Complainant’s submission that the burden has shifted onto the Respondent in that regard.

The Respondent has not demonstrated use or demonstrable preparations to use the Disputed Domain Name in connection with a bona fide offering of goods or services, that it has been commonly-known by the Disputed Domain Name, nor that it has been making legitimate noncommercial use of the Disputed Domain Name, without intent for commercial gain or to misleadingly divert consumers or to tarnish the INSTAGRAM trademark of the Complainant. The use of the Disputed Domain Name has involved pointing at a website which purported to provide certain services which were the same as certain of those provided by the Complainant.

The Panel therefore finds that the Respondent has no rights or legitimate interests in the Disputed Domain Name and that paragraph 4 (a) (ii) of the Policy has been met.

C. Registered and Used in Bad Faith

The Panel accepts that the Disputed Domain Name has been registered and used in bad faith. The use of the Disputed Domain Name in connection with the website that requested confidential information from users and had the same look and feel as the official website of the Complainant further supports the finding of bad faith registration and use.

The Policy, paragraph 4(b), sets out the non-limiting list of circumstances which shall be evidence of the registration and use of a domain name in bad faith. In this instance, in view of the well-known nature of the Complainant’s INSTAGRAM trademark, it is a reasonable inference that the Respondent was aware of the Complainant’s rights when registering the Disputed Domain name.

The use of the website detailed above in this Decision constitutes the intention of attempting to attract, for commercial gain, Internet users to an online location, by creating a likelihood of confusion with the Complainant’s INSTAGRAM trademark as to the source or affiliation of a service on the Respondent’s website.

The Panel finds that the Disputed Domain Name has been registered and is being used in bad faith and that paragraph 4 (a) (iii) of the Policy has been satisfied by the Complainant.

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 Name <instagram-validatedbadge.com> be transferred to the Complainant.

Michael D. Cover
Sole Panelist
Date: June 17, 2019

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