WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Instagram, LLC. v. WhoisGuard Protected, WhoisGuard, Inc. / Alex Viznigaev
Case No. D2019-2741
1. The Parties
The Complainant is Instagram, LLC., United States of America (“United States”), represented by Hogan Lovells (Paris) LLP, France.
The Respondent is WhoisGuard Protected, WhoisGuard, Inc., Panama / Alex Viznigaev, Russian Federation.
2. The Domain Nameand Registrar
The disputed domain name <ìnstaɡram.com> (xn--nstaram-yya574a.com) is registered with NameCheap, Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 8, 2019. On November 8, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 11, 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 November 15, 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 November 19, 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 November 21, 2019. In accordance with the Rules, paragraph 5, the due date for Response was December 11, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 13, 2019.
The Center appointed Fabrizio Bedarida as the sole panelist in this matter on December 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, Instagram, LLC is one of the world’s leading online photo and video sharing social networks. Since it was launched on October 6, 2010, the Complainant rapidly developed considerable goodwill and renown worldwide. Today, the Complainant 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’s website (available at “www.instagram.com”) is ranked as the 27th most visited website in the world, according to the web information company Alexa. Instagram has also consistently ranked amongst the top apps available for mobile devices. Currently available in over 31 languages, Instagram is the 5th most downloaded application in the world and the 7th in Russia (where the Respondent is based) as per App Annie Top App rankings in 2019.
The strength and renown of the Complainant’s INSTAGRAM trademark has already been recognized by previous UDRP panels.
The Complainant has proven to be the owner of the INSTAGRAM trademark, which enjoys protection through numerous registrations worldwide.
The Complainant is, inter alia, the owner of:
Russian trademark INSTAGRAM, registration number 511271, registered on April 16, 2014;
United States trademark INSTAGRAM, registration number 4170675, registered on July 10, 2012;
European Union trademark INSTAGRAM, registration number 14493886, registered on December 24, 2015.
The disputed domain name was registered on August 22, 2019.
The Complainant’s trademark registrations predate the registration of the disputed domain name.
5. Parties’ Contentions
The Complainant claims that:
A. the disputed domain name is confusingly similar to the Complainant’s registered trademark. In this regard the Complainant submits that the disputed domain name has been registered using the Punycode and can therefore be displayed with non ASCII characters. Consequently the disputed domain name (<xn‑‑nstaram-yya574a.com>) can be displayed as <ìnstaɡram.com>.
B. the Respondent has no rights or legitimate interests whatsoever with respect to the disputed domain name; and
C. the Respondent registered and is using the disputed domain name in bad faith.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
In order for the Complainant to obtain a transfer of the disputed domain name, paragraphs 4(a)(i) – (iii) of the Policy require that the Complainant must demonstrate to the Panel that:
(i) The disputed domain name is identical or confusingly similar to a trademark 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 established rights in the INSTAGRAM trademark.
The disputed domain name has been registered using Punycode and can therefore be displayed as <ìnstaɡram.com>.
This Panel agrees with the Complainant’s assertion that this use of Punycode to create the disputed domain name is irrelevant in countering the confusing similarity between the Complainant’s renowned INSTAGRAM trademark and the disputed domain name.
In fact, it has already been held by previous UDRP panels that “the use of Punycode to create a domain name indistinguishable from a well-known trademark manifestly does not prevent a finding of identity or confusing similarity between the two”. See Inter Ikea Systems B.V. v. Domain Admin, WhoIs Privacy Corp., WIPO Case No. D2017-2211 (<ıĸea.com>).
Therefore, the Panel finds the disputed domain name to be confusingly similar to the INSTAGRAM trademark in which the Complainant has rights.
Accordingly, the Panel finds that the Complainant has satisfied paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
This Panel finds that the Complainant has made a prima facie case that the Respondent does not have rights or legitimate interests in the disputed domain name. The Respondent does not appear to be commonly known by the name “instagram” or by any similar name. The Respondent has no connection or affiliation with the Complainant, and the Complainant has not licensed or otherwise authorized the Respondent to use or register any domain name incorporating the Complainant’s trademark. The Respondent does not appear to make any legitimate noncommercial or fair use of the disputed domain name, nor any use in connection with a bona fide offering of goods or services. The Respondent has not come forward with any explanation that demonstrates any rights or legitimate interests in the disputed domain name.
The Panel finds that the Complainant has satisfied paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
The Panel, on the basis of the evidence presented, accepts and agrees with the Complainant’s contentions that the disputed domain name was registered and has been used in bad faith.
The INSTAGRAM trademark is a fanciful name with no meaning. It has been registered and used for several years all over the world, it enjoys a widespread reputation and high degree of recognition as a result of its fame and renown and thus the INSTAGRAM mark is not one that traders could legitimately adopt other than for the purpose of creating the impression of an association with the Complainant.
Consequently, the Panel finds that the Respondent knew of the Complainant’s marks and intentionally intended to create an association with the Complainant and its business at the time of registration of the disputed domain name.
The Panel also agrees with the Complainant’s assertion that given the Complainant’s renown worldwide and notably the Respondent’s use of Punycode to make the disputed domain name look highly similar to the Complainant’s trademark, it would be inconceivable for the Respondent to argue that he registered the disputed domain name for any legitimate purpose other than to target the Complainant’s in an attempt either to trade upon the Complainant’s reputation and goodwill or to conduct fraudulent activities.
Further inference of bad faith registration and use of the disputed domain name is given by the fact that the Respondent deliberately chose to conceal his identity by means of a privacy protection service.
Accordingly, the Panel finds, on the basis of the evidence presented, that the Respondent registered and is using the disputed domain name in bad faith.
Therefore, the Complainant has satisfied 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 <ìnstaɡram.com> (xn--nstaram-yya574a.com) be transferred to the Complainant.
Date: December 24, 2019