WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Instagram, LLC v. Super Privacy Service LTD c/o Dynadot / Baytun Baris, DomainBoo.com and Heidi Nicholson
Case No. D2020-1274
1. The Parties
The Complainant is Instagram, LLC, United States of America (“United States”), represented by Hogan Lovells (Paris) LLP, France.
The Respondents are Super Privacy Service LTD c/o Dynadot, United States / Baytun Baris, DomainBoo.com, Turkey and Heidi Nicholson, Turkey.
2. The Domain Names and Registrar
The disputed domain names <buyinstagramfollowers.net>, <howtogetfollowersoninstagram.com>, <howtogetinstagramfollowers.com>, <instagramautolike.com>, <instagramforpc.com>, <instagramforpc.net>, <instagramservices.com>, <instagramshop.com>, <instagramverification.com>, <outstagram.com> and <uptagram.com> are registered with Dynadot, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 20, 2020. On May 20, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On May 21, 2020, the Registrar transmitted by email to the Center its verification response:
(a) confirming it is the Registrar for the disputed domain names;
(b) confirming the registration agreements are in English;
(c) confirming Baytun Baris, DomainBoo.com (the “Second Respondent”) is the registrant of the disputed domain names except <instagramshop.com> and confirming the Second Respondent’s contact details; and
(d) disclosing registrant and contact information for the disputed domain name <instagramshop.com> which differed from the named Respondent and contact information in the Complaint.
The Center sent an email communication to the Complainant on May 22, 2020, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant either:
(1) to amend the Complaint adding the Registrar-disclosed registrants as formal Respondents and provide relevant arguments or evidence demonstrating that all named Respondents are, in fact, the same entity and/or that all domain names are under common control; or
(2) to file a separate complaint.
The Complainant filed an amended Complaint on May 27, 2020.
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 Respondents of the Complaint, and the proceedings commenced on May 29, 2020. In accordance with the Rules, paragraph 5, the due date for Response was June 18, 2020. The Respondents did not submit any response. Accordingly, the Center notified the Respondents’ default on June 19, 2020.
The Center appointed Warwick A. Rothnie as the sole panelist in this matter on June 26, 2020. 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 operates the well-known Instagram social media service. It was launched in 2010. According to the Complaint, its online photo and video sharing service developed 100,000 users in only one week. Its service had one million registered users in two months and over 10 million registered users by September 2011. The Complainant was acquired by Facebook in April 2012. The Complainant’s service had:
(a) over 100 million active users by February 2013;
(b) 400 million active users each month by September 2015; and
(c) 800 million active users each month by September 2017.
The Complainant says it currently has over one billion active users each month; 34 million of whom are in Turkey.
The Complainant’s official Facebook page at <https://www.facebook.com/instagram> has over 60 million “likes” and its Twitter account, “@instagram”, has almost 37 million followers. According to web traffic information provided by Alexa, the Complainant’s website at “www.instagram.com” is the 30th most visited site in the world. According to data collected by the applications information company App Annie, the Instagram app is the fifth most downloaded app for iPhones in Turkey.
The Complainant owns numerous registered trademarks. They include:
(a) United States Registered Trademark No. 4146057, INSTAGRAM, for downloadable software in International Class 9 and which was registered on May 22, 2012;
(b) European Union Trademark No. 014493886, INSTAGRAM, for a range of goods and services in International Classes 25, 35, 38, 41, and 45 which was filed on August 20, 2015 and registered on December 24, 2015; and
(c) International Trademark Registration No. 1129314, INSTAGRAM, for downloadable computer software in International Class 9 and website and technical support and computer services in International Class 42. The International Registration was registered on March 15, 2012 and, amongst other countries, designates Turkey.
The disputed domain names were registered on various dates ranging between June 24, 2015 and December 5, 2017. Within that range, the disputed domain name <instagramshop.com>, which is registered to Heidi Nicholson (the “Third Respondent”), was registered on January 17, 2016.
The disputed domain name <instagramshop.com> resolves to a website offering marketing services related to the Complainant. At the top of the landing page is a stylised representation of an owl’s head. There is a banner headline, “Experienced Media Agency” under which appears the text:
“The most preferred company of Social Media Users in the world. Your Social Media Success Starts Right Here! We provide Instagram followers automatic likes to all your shares. We have clients all over the world, customer privacy and customer satisfaction are our main rules.”
Under the heading “Our Instagram Marketing Services”, it states:
"With everything from strategy creation to campaign analysis, we can help you achieve your Instagram objective of choice, whether it be to raise awareness, increase consideration, or earn conversions."
On the “Terms and Conditions” page, it states that “uptagram offers its customers the option to refund their money if a customer’s needs are not met”.
Print outs included in Annexes to the Complaint show that the disputed domain names <uptagram.com> and <oustagram.com> resolved to websites offering the sale of Instagram “followers” and “automatic likes”. Their content and presentation is very similar.
The landing page for each included at the top the same text, “The most preferred company of Social Media Users in the world. ….” also presented on the disputed domain name <instagramshop.com> page. Amongst other things, they state:
"All Instagram packages include essential features, such as uptagram Protection which prevents followers from dropping. The Most Reliable Place to Buy Instagram Followers. Live Customer Service to Help You 24 Hours a Day, 7 Days a Week. Need to boost your profile? Try auto like service to receive interactions to all of your shares.
BUY INSTAGRAM FOLLOWERS THAT ARE TRULY ACTIVE, GUARANTEED.
Ensure your brand’s safety and privacy with world-class social marketing services from Uptagram."
A number of images on all three websites are the same or very close.
The disputed domain names < howtogetinstagramfollowers.com> and < instagramservices.com> point to parking pages which display pay-per-click (PPC) advertising. The parking pages are provided by the Registrar and state that the website is coming soon. Then follow a range of “Related Links” such as “Get Real Instagram Followers”, “Insta Followers Real:” “Instagram Followers Boost” and “Get IG Followers” amongst others.
The disputed domain name:
(1) <instagramverification.com> resolves to a webpage provided by the Registrar which simply states “Coming soon”;
(2) <instagramforpc.com> resolves to an “Under Construction” page suggesting that the website is scheduled to go live in some 50 days. Curiously, the print out included in the Annexes to the Complaint indicates that the website is scheduled to go live in 50 days, 23 hours, 59 minutes and 41 seconds. At the time this decision is being prepared, several weeks later, the countdown is at 50 days, 23 hours, 28 minutes and 24 seconds but restarts at 50 days, 23 hours, 59 minutes and 59 seconds if one logs off and then navigates back to the page.
(3) <instagramforpc.net> resolves to an Index page;
(4) <instagramautolike.com> did not resolve to an active website shortly before the Complaint was filed, but featured a figurative trademark consisting of the device of a stylised owl and the word “uptagram”; and
(5) <buyinstagramfollowers.net> and <howtogetfollowersoninstagram.com> do not resolve to any kind of website.
5. Discussion and Findings
No response has been filed. The Complaint has been sent, however, to the Respondents at the physical and electronic coordinates confirmed as correct by the Registrar in accordance with paragraph 2(a) of the Rules. The Panel also notes that some of the disputed domain names have apparently been redirected to the Complainant’s home page since the Complaint was filed.
Bearing in mind also the duty of the holder of a domain name to provide and keep up to date correct WhoIs details, therefore, the Panel finds that the Respondent has been given a fair opportunity to present its case.
When a respondent has defaulted, paragraph 14(a) of the Rules requires the Panel to proceed to a decision on the Complaint in the absence of exceptional circumstances. Accordingly, paragraph 15(a) of the Rules requires the Panel to decide the dispute on the basis of the statements and documents that have been submitted and any rules and principles of law deemed applicable.
Paragraph 4(a) of the Policy provides that in order to divest a respondent of a disputed domain name, the complainant must demonstrate each of the following:
(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. Consolidation of complaints
The Complainant has requested consolidation of its Complaint against the Third Respondent relating to <instagramshop.com> with all the other disputed domain names held by the Second Respondent.
Paragraph 3(c) of the Rules expressly permits a complaint to relate to more than one domain name where all the domain names are registered by the same domain name holder. Notwithstanding this express provision, panels have frequently held that the Panel’s powers under paragraph 10(e) of the Rules may permit consolidation of multiple domain name disputes, subject to satisfaction of the other requirements of Policy and Rules. In particular, paragraph 10(b) of the Rules requires the Panel to ensure that all parties are treated equally and each is given a fair opportunity to present his, her or its case.
In accordance with those requirements, UDRP panels have typically allowed joinder against multiple respondents who have registered different domain names where, amongst other things, the domain names in question, or the websites to which they resolve, appear to be under common control and consolidation would be fair and equitable to all parties. The onus of establishing that these requirements have been met falls on the party seeking consolidation. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 4.11.
In the present case, there are a number of factors which point to all disputed domain names being held by the same person or under common control.
First, each of the disputed domain names is formed around the Complainant’s trademark INSTAGRAM.
Secondly, according to the WhoIs information provided by the Registrar, the email address for both the Second and Third Respondents is the same.
Thirdly, although the disputed domain name <instagramshop.com> is registered in the name of the Third Respondent, the terms and conditions page proceeds on the basis that “uptagram” is the person or entity operating the website. One of the other disputed domain names is <uptagram.com>, but it is registered in the name of the Second Respondent.
Fourthly, both these websites feature the same stylised representation of an owl’s head.
Also, as noted above, the page to which the disputed domain name <instagramautolike.com> resolved featured a trademark featuring the word element “uptagram”. This disputed domain name is also held by the Second Respondent.
Fifthly, the terms and conditions on both pages, and also the website at <oustagram.com> are also the same or very similar, both in content and format.
Sixthly, the websites to which both of the disputed domain names <instagramshop.com> and <uptagram.com> resolve each state that the physical location of the entity running them is the same place in Golden Valley, Minnesota in the United States. The physical address posted on the website to which <outstagram.com> resolves is in Washington DC.
Seventh, all three websites feature the same banner or headline text on the landing page:
The most preferred company of Social Media Users in the world. Your Social Media Success Starts Right Here! We provide Instagram followers automatic likes to all your shares. We have clients all over the world, customer privacy and customer satisfaction are our main rules.”
Eighth, a number of the graphics and text, including the terms and conditions of use on all three websites are also the same or have close resemblance.
In these circumstances, it appears that all disputed domain names are held under common control. It would not promote efficiency or expedition to require the Complainant to file separate complaints. Given the common involvement of “uptagram” in the three operating websites, including one held by the Third Respondent, it does not appear unduly onerous or likely to cause prejudice to either the Second or Third Respondents if consolidation be permitted.
It appears to the Panel to be fair and equitable to all Parties, and indeed procedurally efficient, therefore to consolidate all of the disputed domain names in the one Complaint.
For ease of reference, the Panel will refer just to the “Respondent” unless it becomes necessary in a particular case to distinguish between particular Respondents or disputed domain names.
B. Identical or Confusingly Similar
The first element that the Complainant must establish is that the disputed domain name is identical with, or confusingly similar to, the Complainant’s trademark rights.
There are two parts to this inquiry: the Complainant must demonstrate that it has rights in a trademark and, if so, the disputed domain name must be shown to be identical or confusingly similar to the trademark.
The Complainant has proven ownership of registered trademarks for INSTAGRAM. Given the length and extent of that use, there can be little doubt that the Complainant also has rights over that term as an “unregistered” trademark (where such rights are recognised).
The second stage of this inquiry simply requires a visual and aural comparison of the disputed domain name to the proven trademarks. In undertaking that comparison, it is permissible in the present circumstances to disregard the generic Top-Level Domain (“gTLD”) component as a functional aspect of the domain name system. Questions such as the scope of the trademark rights, the geographical location of the respective parties and other considerations that may be relevant to an assessment of infringement under trademark law are not relevant at this stage. Such matters, if relevant, may fall for consideration under the other elements of the Policy. See e.g., WIPO Overview 3.0, sections 1.7 and 1.11.
All but two of the disputed domain names include the Complainant’s trademark as a whole.
Disregarding the gTLD, therefore, the addition of descriptive elements to these disputed domain names, such as “shop” or “for pc” or “services” or “how to buy”, does not avoid a finding of confusing similarity. See e.g.,WIPO Overview 3.0, section 1.8.
The Complainant contends that the remaining two disputed domain names, <uptagram.com> and <oustagram.com>, are cases where two (“up”) or three (“ous”) letters have been substituted for the letters “ins” in its trademark. So, they should be treated as cases of misspelling or typosquatting. See e.g., WIPO Overview 3.0, section 1.9.
Bearing in mind that this requirement under the Policy is understood as a filter to ensure that complainants have some supportable basis to invoke the remedies under the Policy (i.e., trademark rights), the Panel considers the approach urged by the Complainant is appropriate in the present case. Both disputed domain names readily bring to mind the Complainant’s trademark. All the more so when regard is had to the context in which they are used.
Accordingly, the Panel finds that the Complainant has established that each disputed domain name is confusingly similar to the Complainant’s trademark and the requirement under the first limb of the Policy is satisfied.
C. Rights or Legitimate Interests
The second requirement the Complainant must prove is that the Respondent has no rights or legitimate interests in the disputed domain names.
Paragraph 4(c) of the Policy provides that the following circumstances can be situations in which the Respondent has rights or legitimate interests in a disputed domain name:
(i) before any notice to [the Respondent] of the dispute, [the Respondent’s] use of, or demonstrable preparations to use, the [disputed] domain name or a name corresponding to the [disputed] domain name in connection with a bona fide offering of goods or services; or
(ii) [the Respondent] (as an individual, business, or other organization) has been commonly known by the [disputed] domain name, even if [the Respondent] has acquired no trademark or service mark rights; or
(iii) [the Respondent] is making a legitimate noncommercial or fair use of the [disputed] domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
These are illustrative only and are not an exhaustive listing of the situations in which a respondent can show rights or legitimate interests in a domain name.
The onus of proving this requirement, like each element, falls on the Complainant. UDRP panels have recognized the difficulties inherent in proving a negative, however, especially in circumstances where much of the relevant information is in, or likely to be in, the possession of the respondent. Accordingly, it is usually sufficient for a complainant to raise a prima facie case against the respondent under this head and an evidential burden will shift to the respondent to rebut that prima facie case. See e.g., WIPO Overview 3.0, section 2.1.
The Complainant states that it has not authorised the Respondent to use any of the disputed domain names. Nor is the Respondent affiliated with it.
All of the disputed domain names were registered well after the Complainant adopted its trademark and had established a very substantial user base and recognition.
None of the disputed domain names can be said to be derived from the names given by the Second or Third Respondent when registering the disputed domain names.
The three disputed domain names that resolve to active websites do refer to the entity operating them as apparently called “uptagram”.
Uptagram, however, cannot support a claim to derivation permitting registration of either <instagramshop.com> or <oustagram.com>.
Moreover, the Respondent has not exposed when the name “uptagram” was adopted or the circumstances in which it came to be adopted. Given the name is used for services intended to boost or promote clients’ standing or reputation on the Complainant’s service, it seems highly likely that the name was adopted with knowledge of the Complainant’s service and trademark and to reference it.
The services offered from the websites to which <uptagram.com> and <outstagram.com> resolve offer paid services such as “purchasing” up to 1,000 followers for USD 269 and monthly subscriptions such as USD 199.99 per month to deliver 500 to 800 “likes” per post.
While it may not be per se illegitimate to offer services to assist others with the Complainant’s product, according to the Complainant – and standing unrebutted by the Respondent, services of the kind being offered from these two websites invariably involve fraudulent operations such as the creation of fake accounts or hacking into existing accounts. The Complainant complains that offering “likes” or “followers” for sale destroys the authenticity of the user experience. Moreover, the Complainant contends, the use of such services are a breach of the Instagram terms of service.
This has led the UDRP panel in Instagram, LLC v. Whois privacy protection service / Olga Sergeeva / Ivan Ivanov /Privacy Protect, LLC (Privacy Protect.org), WIPO Case No. D2020-0521, to rule that where such services involve potential fraudulent conduct, they do not constitute the offering of goods or services in good faith for the purposes of paragraph 4(c)(i) of the Policy. In that case, the Respondent denied that its services of this kind involved fake Instagram accounts or hacking existing accounts. The panel rejected the Respondent’s denial however, stating:
“The Panel is not convinced by the arguments of the Respondent, which are not supported by any evidence or explanation how its users would receive large numbers of genuine ‘followers’, ‘likes’, ‘views’ and ‘comments’ in such short periods of time legitimately and without breaching the rules of conduct established by the Complainant for the users of its Instagram service. The Panel is not aware how this could possibly happen without some type of fraud or other illegitimate conduct. The elements of all of the disputed domain names and the content and appearance of the associated websites shows that they are all focused on the Complainant and its Instagram service, which makes the statement of the Respondent that it was not targeting the Complainant simply not credible.”
In the present case, the Respondent has not even attempted to rebut the Complainant’s allegations that the Respondent’s services do involve breaches of the terms of conditions by creating fake accounts or hacking into existing accounts.
Just as many UDRP panels have rejected conduct which involves breaches of law or infringement of intellectual property rights as supporting a claim to an offering of goods or services being in good faith, this Panel agrees with the learned panel in Instagram, LLC v. Whois privacy protection service / Olga Sergeeva / Ivan Ivanov /Privacy Protect, LLC (Privacy Protect.org), supra, in rejecting the services offered through <uptagram.com> and <outstagram.com> which appear to involve breaches of the terms and conditions of use or unauthorised hacking into users’ accounts as offerings in good faith under the Policy.
The services offered through the website at <instagramshop.com> appear to be different in nature. They include development of advertisements and advertising campaigns to be used on the Instagram service, data analytics, content creation, and the like.
Aside from those potentially legitimate services however, the disputed domain name itself, however, carries a high risk of implied affiliation with the Complainant’s trademark and service. The landing page for this disputed domain name does not clearly disclose the nature of the Respondent’s relationship to the Complainant. The terms and conditions page does, as already mentioned, portray the operator of the website as “uptagram”. Nonetheless, that is accessible only via a bland link in the footer. The term “uptagram” itself, while different to “Instagram” is highly suggestive of a link with the Complainant’s service. The Panel considers, therefore, that the circumstances of use of this disputed domain name fall well short of what would be required to make out a successful claim of nominative or fair use under principles such as the “Oki Data” rules. See e.g., WIPO Overview 3.0, sections 2.5 and 2.8.
The disputed domain names which resolve to parking pages which offer PPC advertising targeting the Complainant do not qualify as offerings of goods or services in good faith under the Policy. They are seeking to take advantage of the significance of “Instagram” as the Complainant’s trademark. See e.g., WIPO Overview 3.0, section 2.9.
The remaining disputed domain names which purport to be “under construction”, or resolve just to an Index page or do not resolve to any page at all also do not qualify as names in which the Respondent has rights or legitimate interests.
First, simply posting a page which states the website is “under construction” or “coming soon” falls well short of what is required to support a claim to demonstrable preparations to use the disputed domain name in question in good faith. See e.g., WIPO Overview 3.0, section 2.2. That is all the more so in the case of the disputed domain name where the countdown to launch appears to be on an endless “loop”.
Secondly, the lapse of time since the disputed domain names were registered is a period of years. That length of time does not, on its face, indicate that there has not been sufficient time for the Respondent to commence legitimate operations by reference to the disputed domain names. These are not cases where the Complaint has been brought only days or weeks or even a few months after registration and, more importantly, the Respondent has made no attempt to explain what, if anything, it has been doing by way of preparations or of any obstacles holding up the start of use.
These matters, taken together, are sufficient to establish a prima facie case under the Policy that the Respondent has no rights or legitimate interests in the disputed domain names. The basis on which the Respondent has adopted the disputed domain names, therefore, calls for explanation or justification. The Respondent, however, has not sought to rebut that prima facie case or advance any claimed entitlement. Accordingly, the Panel finds the Complainant has established the second requirement under the Policy in respect of each of the disputed domain names also.
D. Registered and Used in Bad Faith
Under the third requirement of the Policy, the Complainant must establish that the disputed domain name has been both registered and used in bad faith by the Respondent. These are conjunctive requirements; both must be satisfied for a successful complaint: see e.g. Burn World-Wide, Ltd. d/b/a BGT Partners v. Banta Global Turnkey Ltd, WIPO Case No. D2010-0470.
Generally speaking, a finding that a domain name has been registered and is being used in bad faith requires an inference to be drawn that the respondent in question has registered and is using the disputed domain name to take advantage of its significance as a trademark owned by (usually) the complainant.
That inference can be readily drawn in this case. First, there is the fame of the Complainant’s trademark which was well and truly established by the time the Respondent started registering the disputed domain names. Secondly, as the Complainant points out, the trademark is an invented or coined term and not descriptive. It has significance only as the trademark of the Complainant’s service. Thirdly, the disputed domain names which do resolve to active websites are predicated upon familiarity with, and use of, the Complainant’s service.
It appears clear, therefore, that the disputed domain names which resolve to active websites and those which simply generate PPC links were registered and are being used in bad faith. As set out in section C above, the way these disputed domain names have been used is not in good faith.
Having regard to the fame of the Complainant’s trademark, the same conclusions follow for the “inactive” or “under construction” websites. This is a case to which the principles in Telstra Corporation Limited v Nuclear Marshmallows, WIPO Case No. D2000-0003 are readily applicable.
The Panel finds the Respondent has registered and used each disputed domain name in bad faith.
Accordingly, the Complainants have established all three requirements under 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:
be transferred to the Complainant.
Warwick A. Rothnie
Date: July 10, 2020