WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Instagram, LLC v. Contact Privacy Inc. Customer 0154295130 / Carlos Alberto Bejarano
Case No. D2019-1089
1. The Parties
The Complainant is Instagram, LLC, United States of America, represented by Hogan Lovells (Paris) LLP, France.
The Respondent is Contact Privacy Inc. Customer 0154295130, Canada / Carlos Alberto Bejarano, Italy.
2. The Domain Name and Registrar
The disputed domain name <lnstaglam.com> is registered with Tucows Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 10, 2019. On May 10, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 13, 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 May 14, 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 May 16, 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 May 21, 2019. In accordance with the Rules, paragraph 5, the due date for Response was June 10, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 11, 2019.
The Center appointed Antony Gold as the sole panelist in this matter on June 17, 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 the owner of the online photo and video sharing social networking application (“Instagram”). Instagram has developed rapidly since it was launched in October 2010. It now has over 1 billion monthly active users and over 95 million photos and videos are shared each day. The Complainant’s website at “www.instagram.com” is ranked as the fifteenth most visited website in the world and the eleventh most visited website in Italy, where the Respondent is based.
The Complainant has a large number of trade mark registrations to protect its trading style. These include, by way of example only, European Union Trade Mark registration No. 014493886 for INSTAGRAM, registered on December 24, 2015 in classes 25, 35, 38, 41 and 45. The Complainant also owns a large number of domain names consisting of, or including, the trade mark INSTAGRAM.
The disputed domain name was registered on March 24, 2019. As at April 1, 2019 it resolved to a webpage which looked very similar to the login page for the Complainant’s website. It currently resolves to a webpage which states that the website is inactive and warns visitors that “Attackers on lnstaglam.com may trick you into doing something dangerous like installing software or revealing your personal information (for example, passwords, phone numbers or credit cards)”.
5. Parties’ Contentions
The Complainant says that the disputed domain name is confusingly similar to its INSTAGRAM trade marks, full details of one of these marks being set out above. It is generally accepted that, when assessing whether a domain name is identical or confusingly similar to a trade mark, a domain name suffix, such as “.com”, is irrelevant as it is a functional element. The remainder of the disputed domain name consists of a typo-squatted version of the Complainant’s trade mark, in that the first letter, “I”, and the seventh letter, “R”, in the Complaint’s INSTAGRAM trade mark have each been replaced by an “L”. The disputed domain name looks visually similar to the Complainant’s trade mark, particularly when written in lower case. In other decisions under the Policy, previous UDRP panels have held that obvious or common misspellings of a trade mark within a domain name are insufficient to distinguish it from a complainant’s trade mark.
The Complainant also submits that the Respondent has no rights or legitimate interests in respect of the disputed domain name. Once a complainant has made a prima facie showing that a registrant does not have rights or a legitimate interests in a domain name, the burden shifts to the respondent to provide evidence of its rights or interests.
The Respondent is unable to invoke any of the circumstances set out at paragraph 4(c) of the Policy in order to demonstrate rights or legitimate interests in the disputed domain name. He is not a licensee of the Complainant, nor has he been otherwise authorized or allowed by the Complainant to make any use of its trade mark. Furthermore, the Respondent has not, prior to any notice of this dispute, used or made demonstrable preparations to use, the disputed domain name in connection with a bona fide offering of goods and services. The disputed domain name was previously used by the Respondent to point to a webpage impersonating the Complainant, where Instagram users were asked to provide confidential information in order to log in to their Instagram account. It is therefore clear that the disputed domain name was being used in connection with a phishing scheme that sought illegitimately to collect the account information of Instagram users for personal gain. Such use of a domain cannot constitute a bona fide offering of goods and services; see Instagram, LLC v. Joker Bey, Jokerdayi / Omer Ulku, Takipcizevki, WIPO Case No. D2018-2710. The Respondent cannot assert that he is commonly known by the disputed domain name, given the Complainant’s notoriety and the fact that INSTAGRAM is an inherently distinctive trade mark, exclusively associated with the Complainant. Nor can the Respondent assert that he has made, or is currently making, a legitimate non-commercial or fair use of the disputed domain name without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue. Finally, given the fame of the Complainant’s trade mark, it is not possible to conceive of any plausible actual or contemplated use of the disputed domain name that would not be illegitimate.
Lastly, the Complainant says that the disputed domain name was registered and is being used in bad faith. So far as bad faith registration is concerned, the Complainant’s INSTAGRAM trade mark has been continuously and extensively used since its launch and is very well-known, including in Italy where the Respondent is based. It would be inconceivable that the Respondent did not have knowledge of the Complainant’s trade mark at the time of his registration of the disputed domain name in March 2019. The Respondent’s use of the disputed domain name to point to a website impersonating the Complainant’s official login page leaves no doubt as the Respondent’s awareness of the Complainant as at the time of registration. Prior panels have held that actual and constructive knowledge of a complainant’s rights at the time of registration constitutes strong evidence of bad faith; see eBay Inc. v. Sunho Hong, WIPO Case No. D2000-1633. The Respondent could not have chosen the disputed domain name for any reason other than to deliberately cause confusion amongst Instagram users as to the source of the webpage in order to facilitate his phishing scheme for commercial gain, which clearly constitutes bad faith. The Respondent’s bad faith is also demonstrated by his use of a privacy registration service as at the date of registration of the disputed domain name.
The Respondent’s use of the disputed domain name is also in bad faith in that it has been used to intentionally attract, for commercial gain, Internet users to his website by creating a likelihood of confusion with the Complainant’s trade mark as to the source, sponsorship, affiliation or endorsement of his website that is in the circumstances described at paragraph 4(b)(iv) of the Policy. Given the nature of the disputed domain name as well as the “look and feel” of the webpage to which it initially resolved, Instagram users would have had no doubt as to the authenticity of the website. Such use as part of a phishing scheme constitutes bad faith use; see, for example; Inter-Continental Hotels Corporation v. Whois Agent, Whois Privacy Protection Service, Inc. / Fred Adams, WIPO Case No. D2016-0715. Furthermore, the fact that the disputed domain name is no longer pointing to that webpage does not cure the Respondent’s bad faith; see Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Dealing, first, with the Respondent’s failure to file a response to the Complaint, paragraph 14(b) of the Rules provides that if a party, in the absence of exceptional circumstances, does not comply with a provision of, or requirement under these Rules, the Panel shall be entitled to draw such inferences from this omission as it considers appropriate.
Paragraph 4(a) of the Policy provides that the Complainant proves each of the following three elements in order to succeed in its Complaint:
(i) the disputed domain name is identical or confusingly similar to a trade mark or service mark 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.
A. Identical or Confusingly Similar
The Complainant has provided evidence of its many trade marks for INSTAGRAM, including the specific mark in respect of which details are provided above. These establish its rights in INSTAGRAM.
For the purpose of considering whether the disputed domain name is identical or similar to the Complainant’s trade mark, the generic Top-Level Domain (“gTLD”) “.com” is disregarded as this is a technical requirement of registration. The substitution of an “l” in place of the first and seventh letters of the disputed domain name does not avoid the confusing similarity between the disputed domain name and the Complainant’s trade mark. As explained at section 1.7 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”); “While each case is judged on its own merits, in cases where a domain name incorporates the entirety of a trademark, or where at least a dominant feature of the relevant mark is recognizable in the domain name, the domain name will normally be considered confusingly similar to that mark for purposes of UDRP standing”.
The Panel accordingly finds that the disputed domain name is confusingly similar to a trade mark in which the Complainant has rights.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides, without limitation, examples of circumstances whereby a respondent might demonstrate that it has rights or legitimate interests in a domain name. In summary, these are if a respondent has used or prepared to use the domain name in connection with a bona fide offering of goods and services, if a respondent has been commonly known by the domain name, or if a respondent has made a legitimate non-commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark in issue.
How these provisions are usually applied in practice is dealt with at section 2.1 of the WIPO Overview 3.0. This explains that the consensus view of panelists is that “[w]hile the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the often impossible task of ʻproving a negativeʼ, requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element”.
Dealing with these grounds in reverse order, neither the former use of the disputed domain name to point to a copy of the Complainant’s login page, with the intent of misleading Instagram users into thinking they had reached the Complainant’s website, nor the current non-use of the disputed domain name are regarded as comprising a legitimate non-commercial or fair use of it. Nor is there any evidence which indicates that the Respondent is commonly known by the disputed domain name. As to whether the use to which the disputed domain name might amount to a bona fide offering of goods and services, the only known website to which it has previously resolved comprised a fake copy of the Complainant’s login page. As explained at section 2.13.1 of the WIPO Overview 3.0; “….the use of a domain name for illegal activity (e.g., the sale of counterfeit goods or illegal pharmaceuticals, phishing, distributing malware, unauthorized account access/hacking, impersonation/passing off, or other types of fraud) can never confer rights or legitimate interests on a respondent”.
Whilst the disputed domain name does not presently resolve to an active website, this does not mean that the Respondent could now be considered to have a right or legitimate interest in it. The Respondent’s underlying intentions with respect to the disputed domain name are apparent and the fact that the disputed domain name is presently not in active use does not change that. See, for example, “Dr. Martens” International Trading GmbH and “Dr. Maertens” Marketing GmbH v. Godaddy.com, Inc., WIPO Case No. D2017-0246 where the domain name in issue did not resolve to an active website and the panel found that it was appropriate to take into account the overall circumstances of the case in determining whether a respondent should be considered to have rights or a legitimate interest in it.
The Complainant has made out a prima facie case that the Respondent does not have rights or legitimate interests in the disputed domain name and the burden of production therefore shifts to the Respondent. The Respondent, having failed to respond to the Complaint, has self-evidently failed to satisfy it.
The Panel therefore finds that the Respondent has no rights or legitimate interests with respect to the disputed domain name.
C. Registered and Used in Bad Faith
The Complainant’s evidence establishes the widespread repute of its INSTAGRAM trade mark as at the date of registration of the disputed domain name in March 2019. As, shortly thereafter, the disputed domain name resolved to a web page evidently intended to confuse Internet users into believing that it was the online login portal for the Complainant’s Instagram website, it is clear that the disputed domain name was registered for this purpose.
Paragraph 4(b) of the Policy sets out, without limitation, circumstances which, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith. The circumstance set out in paragraph 4(b)(iv) of the Policy are if a respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of its website.
The use to which the Respondent has previously put the disputed domain name falls precisely within paragraph 4(b)(iv). The belief of Instagram users encountering the Respondent’s website that they had reached the login portal for the Complainant’s Instagram website will have been reinforced because of the confusing similarity between the disputed domain name and the Complainant’s INSTAGRAM trade mark. Moreover, as explained above, the use of a domain name for per se illegitimate activity can never confer rights or legitimate interests on a respondent and is considered evidence of bad faith. See section 3.1.4 of the WIPO Overview 3.0.
The fact that the Respondent is not presently making any actual use of the disputed domain name is not a bar to a finding of bad faith registration and use; see section 3.3 of the WIPO Overview 3.0, which sets out a number of factors which earlier UDRP panels have regarded as relevant when considering whether passive holding of a domain name should be considered as bad faith use. These are: “(i) the degree of distinctiveness or reputation of the complainant’s mark, (ii) the failure of the respondent to submit a response or to provide any evidence of actual or contemplated good-faith use, (iii) the respondent’s concealing its identity or use of false contact details (noted to be in breach of its registration agreement), and (iv) the implausibility of any good faith use to which the domain name may be put”. All of these factors are applicable to the Respondent’s passive holding of the disputed domain name.
The Panel therefore finds that the disputed domain name was registered and is being used in bad faith.
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 <lnstaglam.com> be transferred to the Complainant.
Date: June 28, 2019