WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Instagram, LLC v. FBS Inc, Whoisprotection.biz / Mert Turan
Case No. D2019-1472
1. The Parties
The Complainant is Instagram, LLC, United States of America, represented by Hogan Lovells (Paris) LLP, France.
The Respondent is FBS Inc, Whoisprotection.biz, Turkey / Mert Turan, Turkey.
2. The Domain Name and Registrar
The disputed domain name <lnstagramcopyright.xyz> (the “Domain Name”) is registered with FBS Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 25, 2019. On June 25, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On June 26, 2019, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on June 27, 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 in English on June 28, 2019.
The Registrar confirmed that the language of the Registration Agreement is in Turkish, whereas the Complaint was submitted in English. On June 27, 2019, The Center sent the Parties a language of the proceeding email in English and Turkish, in which they were invited to comment on the language of the proceeding. The Complainant replied to this request on the same day, confirming its request that English be the language of the proceeding. No response was received from the Respondent.
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 in English and Turkish of the Complaint, and the proceedings commenced on July 4, 2019. In accordance with the Rules, paragraph 5, the due date for Response was July 24, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 25, 2019.
The Center appointed Dilek Ustun Ekdial as the sole panelist in this matter on August 2, 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, Instagram, LLC (hereinafter as “Instagram” or the “Complainant”), is a well-known online photo and video sharing social networking application. It was launched on October 6, 2010.
Currently, Instagram has over 1 billion monthly active users and 500 million daily active users, with more than 95 million photos and videos shared per day.
The Complainant owns numerous trademark registrations for INSTAGRAM in many jurisdictions around the world, including in Turkey where the Respondent is based, in connection with its online photo and video sharing services. Such trademark registrations include but are not limited to the following:
− Turkish Trademark No. 2013/74099, for INSTAGRAM, registered on May 20, 2015;
− Turkish Trademark No. 2012/85440, for INSTAGRAM, registered on April 28, 2015;
− United States of America Trademark No. 4146057, for INSTAGRAM, registered on May 22, 2012 (first use in commerce on October 6, 2010);
− International Trademark No. 1129314, for INSTAGRAM, registered on March 15, 2012.
The Domain Name <lnstagramcopyright.xyz> was registered on April 5, 2019 and does not currently resolve to an active website.
5. Parties’ Contentions
The Complainant alleges the following:
The Domain Name incorporates a typosquatted version of the Complainant’s INSTAGRAM trademark (the initial “i” in the term “instagram” has been replaced by “l”), which looks visually similar to the Complainant’s trademark notably when it is written in lower case. Therefore, the Domain Name is confusingly similar to the trademark INSTAGRAM.
The Complainant submits that the addition of the term “copyright” reinforces the confusing similarity with the Complainant’s trademark as Instagram actually provides a webpage dedicated to copyright issues at “https://help.instagram.com/126382350847838” and it is generally accepted that the generic Top-Level Domain Names (“gTLD”) “.xyz” is irrelevant when assessing the confusing similarity between the Domain Name and the Complainant’s trademark.
The Complainant also alleges the following:
The Complainant submits that the Respondent has no rights or legitimate interests in respect of the Domain Name as it is unable to invoke any of the circumstances set out in paragraph 4(c) of the Policy.
The Respondent is not known by the Domain Name, nor has it been licensed or otherwise allowed to make any use of the Complainant’s trademark. Prior to notice of this dispute, the Respondent cannot assert it was using the Domain Name in connection with a bona fide offering of goods nor can the Respondent assert it has made or is currently making a legitimate noncommercial or fair use of the Domain Name without intent for commercial gain, giving it was previously associated with a phishing scam.
Moreover, given the renowned popularity of the Complainant’s trademark, it is impossible to conceive of any use by the Respondent that would be legitimate.
The Complainant asserts that the Domain Name was registered and is being used in bad faith.
According to the Complainant, given the Complainant’s renown and goodwill worldwide, it would be inconceivable for the Respondent to argue that he did not have knowledge of the Complainant’s INSTAGRAM trademark at the time of registration of the Domain Name in 2019.
The Complainant adds that, the Domain Name was previously used by the Respondent in connection with phishing schemes. Given the content of the message and the link displayed in the email, it is reasonable to believe that the Respondent was attempting to redirect Internet users to his website through the link “Review Complaint”, where unsuspecting Instagram users may have been deceived into providing their account credentials or other personal information. Such use of the Domain Name to send phishing emails cannot constitute a bona fide offering of goods or services under the Policy.
The Complainant refers to Syngenta Participations AG v. Guillaume Texier, Gobain ltd, WIPO Case No. D2017-1147 (“A registrant cannot acquire rights or legitimate interests by the use of a domain name as an email address from which to send phishing emails.”).
Finally, the Domain Name was registered through a privacy registration service.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 15(a) of the Rules requires the Panel to decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.
Under paragraph 4(a) of the Policy, the Complainant bears the burden of showing:
(i) that the Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) that the Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) that the Domain Name has been registered and is being used in bad faith.
6.1. Language of the Proceeding
Although the language of the Registration Agreement of the Domain Name is Turkish, the Panel determines in accordance with the Rules, paragraph 11(a) that the language of this administrative proceeding shall be English.
Noting the Complainant’s submission on the language of the proceeding, the Panel finds that it would be inappropriate to conduct the proceeding in Turkish and request a Turkish translation of the Complaint, noting that the Respondent has failed to raise any objection with regard to the language of the proceeding, or to respond in any way to the Complaint.
6.2. Substantive Issues
A. Identical or Confusingly Similar
The Domain Name <Instagramcopyright.xyz> contains the Complainant’s well-known trademark INSTAGRAM where the letter “L” is written in lowercase appearing as an uppercase “i” letter. This is a clear case of typosquatting. Therefore, the Panel concluded that there is an obvious misspelling of the Complainant’s trademark, and the Panel is of the opinion that the disputed domain name is confusingly similar to the Complainant’s trademark.
The Panel further notes that the descriptive term “copyright” does not prevent a finding of confusing similarity. See section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”). The addition of other terms does not avoid the confusing similarity.
The gTLD “.xyz” generally is not taken into consideration when examining the confusing similarity between the Complainant’s trademark and the Domain Name.
Therefore, the Panel finds that the Domain Name is confusingly similar to the trademark INSTAGRAM in which the Complainant has rights, satisfying the condition of the Policy, paragraph 4(a)(i).
B. Rights or Legitimate Interests
The Respondent has not provided any evidence of the circumstances specified in paragraph 4(c) of the Policy, or any other circumstances giving rise to a right or legitimate interest in the Domain Name.
It is clear that the Respondent has not demonstrated any bona fide offering of goods and services by using the Domain Name. Nor has the Respondent shown that it has been commonly known by the Domain Name. Rather, the evidence of the Complaint suggests that the Respondent has used the Domain Name in an attempt to trade off the goodwill associated with the Complainant’s trademark.
The Complainant also showed, inter alia, that the Respondent has neither a license nor any other permission to use the Complainant’s trademark in the Domain Name.
The Panel finds that the Complainant has made a prima facie case that the Respondent lacks rights or legitimate interests, and the Respondent has failed to demonstrate such rights or legitimate interests.
Therefore, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name.
C. Registered and Used in Bad Faith
The Panel is of the opinion that when the Respondent registered the Domain Name he knew that INSTAGRAM was the trademark of the Complainant and registered the Domain Name to take advantage of the trademark; accordingly finds that the Respondent registered the Domain Name in bad faith.
The use of the Domain Name as part of a phishing scam obviously constitutes use in bad faith and the fact that the Domain Name does not currently resolve to an active website does not alter this conclusion, since passive holding of a domain name containing a famous trademark, especially in conjunction with the privacy service, can still constitute bad faith.
There is no suggestion that the Respondent had any intention of legitimate use, that he enjoys a legitimate connection to the Domain Name or that there is conceivable good faith use for the Domain Name. After examining all circumstances surrounding the registration and use of the Domain Name, the Panel finds that the Respondent registered and is using the Domain Name in bad faith.
Accordingly, the Panel finds that the Complainant has satisfied the third element 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 <lnstagramcopyright.xyz> be transferred to the Complainant.
Dilek Ustun Ekdial
Date: August 16, 2019