WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Instagram, LLC v. Can Guguk
Case No. D2019-2548
1. The Parties
The Complainant is Instagram, LLC, United States of America (“United States”), represented by Hogan Lovells (Paris) LLP, France.
The Respondent is Can Guguk, Turkey.
2. The Domain Names and Registrars
The disputed domain name <instagram.homes> is registered with Dominion Domains, LLC (the “Registrar”).
The disputed domain name <instagram.moi> is registered with EnCirca, Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 16, 2019. On October 17, 2019, the Center transmitted by email to the Registrars a request for registrar verification in connection with the disputed domain names. On October 17, 2019 and October 21, 2019, the Registrars transmitted by email to the Center their verification responses confirming that the Respondent is listed as the registrant and providing the contact details.
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 October 24, 2019. In accordance with the Rules, paragraph 5, the due date for Response was November 13, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 14, 2019.
The Center appointed Kaya Köklü as the sole panelist in this matter on November 18, 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 34 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 13 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 8 to the Complaint).
Both disputed domain names were registered on March 3, 2019.
The Respondent is an individual from Turkey.
According to the provided documents by the Complainant (cf. Annex 10 to the Complaint), the disputed domain names were resolving to similar active websites in Turkish, offering services related to the Complainant’s social media platform, such as the sale of “followers”, “likes” or “views”. Also, according to Annex 11 to the Complaint, the Respondent is the registered owner of further domain names comprising the Complainant’s INSTAGRAM trademark, namely <instagram.net.tc>, <instagram.org.tc> and <instagram.pro.tc>.
Prior to initiation of the administrative proceedings, the Complainant tried in vain to solve the dispute amicably by sending a cease-and-desist letter to the Respondent and asking for the transfer of the disputed domain names (cf. Annex 12 to the Complaint).
5. Parties’ Contentions
The Complainant requests the transfer of the disputed domain names.
The Complainant is of the opinion that the disputed domain names are identical to its INSTAGRAM trademark.
Furthermore, the Complainant argues that the Respondent has no rights or legitimate interests in respect of the disputed domain names and that that the Respondent has registered and is using the disputed domain names in bad faith.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
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.
The Panel finds that the disputed domain names are identical to the Complainant’s INSTAGRAM trademark, as they incorporate the INSTAGRAM trademark in its entirety without any additions or amendments.
In the Panel’s view, the mere addition of the generic Top-Level Domain (“gTLD”) “.homes” or “.moi” has no distinguishing effect and, as a general principle, may be disregarded when assessing identity or confusing similarity between a domain name and a trademark (in line with prior UDRP panels concerning the use of a gTLD within a domain name, cf. V&S Vin & Sprit AB v. Ooar Supplies, WIPO Case No. D2004-0962; Google Inc. v. Nijat Hassanov, WIPO Case No. D2011-1054).
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 within the disputed domain names.
Further, the Panel finds that the disputed domain names, which are identical to the Complainant’s INSTAGRAM trademark, carry a high risk of implied affiliation or association, as stated in section 2.5.1 of the WIPO Overview 3.0.
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 does not see sufficient basis for assessing any kind of bona fide offering of goods or services by the Respondent.
Hence, the Panel concludes that the Respondent does not have a right or legitimate interest in the disputed domain names according to the Policy, paragraph 4(a)(ii).
C. Registered and Used in Bad Faith
The Panel believes that the Respondent registered and is using the disputed domain names in bad faith, 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, choosing the disputed domain names which are identical to the Complainant’s INSTAGRAM trademark indicates that the Respondent has deliberately targeted the Complainant. The disputed domain names were resolving to similar active websites in Turkish, offering services related to the Complainant’s social media platform, such as the sale of “followers”, “likes” or “views”. Therefore the Panel is convinced that the Respondent is using the disputed domain names to intentionally attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s INSTAGRAM trademark as to the source, sponsorship, affiliation or endorsement of the website linked to the disputed domain names.
Taking the facts of the case into consideration, the Panel believes that this is a typical cybersquatting case, which the UDRP was designed to stop. Hence, the Panel concludes that 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.
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 <instagram.homes> and <instagram.moi> be transferred to the Complainant.
Date: December 2, 2019