WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Instagram, LLC v. Dogukan Elmas
Case No. D2019-1813
1. The Parties
The Complainant is Instagram, LLC, United States of America (“United States”), represented by Hogan Lovells (Paris) LLP, France.
The Respondent is Dogukan Elmas, Turkey.
2. The Domain Name and Registrar
The disputed domain name <instagramhelpconfirm.com> is 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 July 29, 2019. On July 29, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 31, 2019, and on August 6, 2019, the Registrar transmitted by email to the Center its verifications indicating that one of the domain names which was initially included in the Complaint had already expired. Accordingly, on August 8, 2019, the Center requested the Complainant to submit an amended Complaint, removing the expired domain name. The Complainant filed an amended Complaint on August 13, 2019.
The Registrar also indicated that the language of the Registration Agreement was Turkish. The Center sent an email communication to the Complainant on August 14, 2019, inviting the Complainant to provide sufficient evidence of an agreement between the Parties for English to be the language of proceeding, a Complaint translated into Turkish, or a request for English to be the language of proceeding. The Complainant filed a request for English to be the language of proceeding on the same day. No comment was received from the Respondent on the language of proceeding.
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 August 20, 2019. In accordance with the Rules, paragraph 5, the due date for Response was September 9, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 10, 2019. Further to the latter notification, several email communications were received from the Respondent; notably the two emails received on September 11, 2019, in which the Respondent offered to transfer the disputed domain name. On the same day, the Center sent to the Parties a possible settlement email. The Complainant did not respond to the latter email, accordingly, the Center proceeded to the panel appointment stage.
The Center appointed Kaya Köklü as the sole panelist in this matter on September 19, 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.
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 8 to the Complaint).
The Complainant holds and operates its website at “www.instagram.com”, which is ranked as one of the most visited websites in Turkey and worldwide (cf. Annex 4 to the Complaint). Furthermore, the Complainant is the registered owner of many additional domain names consisting of or including the INSTAGRAM trademark (cf. Annex 5 to the Complaint).
The creation date of the disputed domain name is May 27, 2018.
The Respondent is an individual from Turkey.
According to the provided documents by the Complainant, the disputed domain name does not currently resolve to an active website. However, according to Annex 7 to the Complaint, the disputed domain name was 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 “will be deactivated within 48 hours” due to an alleged copyright infringement, unless the user provides feedback and submits its birthday, telephone number, username, email, and password.
5. Parties’ Contentions
The Complainant requests the transfer of the disputed domain name.
The Complainant is of the opinion that the disputed domain name is 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 name.
Finally, it is argued that the Respondent has registered and is using the disputed domain name in bad faith. The Complainant believes that the Respondent was fully aware of the Complainant’s INSTAGRAM trademark, when registering the disputed domain name. The Complainant is further of the opinion that the Respondent at least tried to obtain private and confidential information from users by misleading them.
The Respondent did not reply to the Complainant’s contentions.
In various email communications with the Center on September 10 and 11, 2019, the Respondent merely stated that the disputed domain name has not been actively used in the past five months and that it has no access anymore due to copyright reasons.
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 formally 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 name is 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 name; and
(iii) the disputed domain name has been registered and is 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.
The Panel finds that the disputed domain name is confusingly similar to the Complainant’s INSTAGRAM trademark. The disputed domain name comprises the INSTAGRAM trademark in its entirety.
As stated at sections 1.8 and 1.9 of the WIPO Overview 3.0, where the relevant trademark is recognizable within the disputed domain name, the addition of other terms would not prevent a finding of confusing similarity. Hence, the mere addition of the dictionary terms “help” and “confirm” does not, in view of the Panel, serve to avoid a finding of confusing similarity between the disputed domain name 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 name 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 name.
In the absence of a formal 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 name. Particularly, the Panel finds on the available record that the disputed domain name was intended to be used in connection with probably 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 name. The Panel is convinced that the Respondent deliberately has chosen the disputed domain name 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.
In addition, the Panel notes that the nature of the disputed domain name carries a risk of implied affiliation or association, as stated in section 2.5.1 of the WIPO Overview 3.0.
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.
Due to the wide recognition of the Complainant’s trademark also in Turkey, the Panel believes that INSTAGRAM is a well-known trademark. At the date of registration of the disputed domain name, 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 the website linked to the disputed domain name (cf. Annex 7 to the Complaint), indicates that the Respondent has deliberately chosen the Complainant’s trademark as the distinctive part of the disputed domain name to mislead Internet users in order to obtain private and confidential 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, probably for fraudulent activities.
Additionally, the Panel finds that the Respondent’s failure to respond to the Complainant’s contentions also supports the conclusion that it has registered and is using the disputed domain name in bad faith.
The fact that the disputed domain name is currently inactive 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 name was registered and is being used in bad faith and the Complainant consequently has satisfied the third element of the Policy, namely, 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 disputed domain name <instagramhelpconfirm.com> be transferred to the Complainant.
Date: October 3, 2019