WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Instagram, LLC v. PrivacyGuardian.org/ Victor Zinchenko
Case No. D2020-2580
1. The Parties
The Complainant is Instagram, LLC, United States of America (“United States”), represented by Hogan Lovells (Paris) LLP, France.
The Respondent is PrivacyGuardian.org, United States/ Victor Zinchenko, Russian Federation.
2. The Domain Name and Registrar
The disputed domain name <instagramlikefollowers.com> is registered with NameSilo, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 5, 2020. On October 5, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 5, 2020, the Registrar transmitted by email to the Center its verification response:
(a) confirming it is the Registrar for the disputed domain name;
(b) disclosing registrant and contact information for the disputed domain name, which differed from the named Respondent, and contact information in the Complaint;
(d) indicating the language of the registration agreement is English;
(e) confirming the disputed domain name was registered subject to the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), and the UDRP applies to the disputed domain name.
The Center sent an email communication to the Complainant on October 6, 2020, 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 October 12, 2020.
The Center verified that the Complaint together with the amended Complaint satisfied the formal requirements of the Policy, 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 13, 2020. In accordance with the Rules, paragraph 5, the due date for Response was November 2, 2020. The Center sent the Notification of Respondent Default on November 3, 2020.
On November 3, the Center received two email communications: one from the Respondent and another from an Indian lawyer representing “Kashif Tanwar”.
The Center appointed Warwick A., Rothnie as the sole panelist in this matter on November 9, 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 is the well-known online photo and video sharing service and associated application. It launched in 2010. Within 1 week, it had 100,000 users; within two months it had one million registered users; within one year it had over 10 million registered users. By February 2013, it had over 100 million active users per month; by September 2015, there were 400 million active users each month and 800 million active users per month by September 2017. It passed one billion active users per month in June 2018.
The Complainant’s business is conducted online. Its primary website is at “www.instagram.com”. Its name and trademark, “Instagram”, is also the name of its Facebook, Twitter and Linkedin accounts.
The Complainant has numerous trademarks for INSTAGRAM including:
(a) United States Registered Trademark No. 4,146,057, which was registered on May 22, 2012 in respect of downloadable software for the modifying and enabling the transmission of photographs in International Class 9;
(b) European Union Trademark No. 014493886, which was registered on December 24, 2015 in respect of a range of goods and services in International Classes 25, 35, 38, 41 and 45; and
(c) International Registration No. 1129314, registered on March 15, 2012 in respect of goods and services in International Classes 9 and 42 and designating under the Madrid Protocol Australia, Switzerland, the European Union, Israel, Japan, the Republic of Korea, Norway, Singapore and Turkey.
The disputed domain name was registered on February 23, 2019.
Before the Complainant sent a cease and desist letter to the Respondent, the disputed domain name resolved to a website which featured a subscriber log-in box and a heading “Facebook Likes, Youtube Views, Twitter Followers, A Lot of Cheap Services”. Under the heading “Services”, the website stated:
“• Buy Facebook Likes/Views/Phot/Video/Share”
“• Buy Instagram Followers/Likes/Views/Comments”
“• Buy Twitter Followers/Retweets/Favorites”
“• Buy Soundcloud Followers/Likes/Downloads/Plays/Reposts”
“• Buy Web traffic/Social media services”
Clicking on links on that webpage took the browser to a Facebook page associated with “Tanwar Digital Marketing”.
That Facebook page includes a post dated December 24, 2018 promoting itself as the “Cheapest Website to Increase Followers” including a price: “Likes for 0.1$/1000”. This entry also featured a graphic displaying the Complainant’s “camera” pictograph and declared “How to get Real Instagram Followers”.
The Facebook page also led the Complainant to the domain name <socialmediamarketing.com>, which is registered in the name of Kashif Tanwar. This Mr Tanwar describes himself on what appears to be his LinkedIn page as a “Social Media Strategist at Social Media Influencers”. This Mr Tanwar states on his LinkedIn page that he is based in Mumbai, India.
The domain name <socialmediamarketing.com> resolves to a website which on the landing page describes the services being offered in the following terms:
“SocialMediaMarketing.com creates and leads powerful social media campaigns that will intelligently rocket your traffic, promote your brand and grow leads and sales with maximize ROI to give you a feeling of power and importance in the marketplace.”
It is not entirely clear from the website what these services actually involve.
(a) the similarity in names between the Mr Tanwar in the LinkedIn profile and the person represented by the Indian lawyer who sent the communication received by the Center on November 3, 2020;
(b) the location of both the Mr Tanwar on LinkedIn and the lawyer in Mumbai, India; and
(c) the similarity in services offered from the website to which the disputed domain name resolved, by Tanwar Digital Marketing from the Facebook page and the social media marketing services promoted on Mr Tanwar’s LinkedIn page,
the Panel is prepared to infer that the Mr Tanwar represented by the Indian lawyer is the same Mr Tanwar on the LinkedIn page and who appears to be, or have been, involved in Tanwar Digital Marketing.
After the cease and desist letter was sent, the disputed domain name resolved to a website which stated that the website was closed. However, it still displayed the subscriber log-in box previously displayed on the website. The Panel also notes that the Facebook page which previously featured Tanwar Digital Marketing is now the page of “Digital Marketing Agency” although, apart from the name change, the content does not appear otherwise to have changed.
The domain name used in the Respondent’s email address recorded by the Registrar for the disputed domain name is <perfectpanel.com>. This domain name resolves to a website offering for sale platforms for social media marketing. The services these platforms apparently offer include:
- A powerful add-on to create auto likes, auto views, auto retweets etc.
- A “refill feature” to perform an order refill even if a provider does not offer it;
- A “drip-feed” feature to help customers build social media engagement at the desired speed.
According to the communication received from Mr Tanwar’s legal representative, he (or Tanwar Digital Marketing) obtained rights to use the disputed domain name from the Respondent or was duped into providing funds to the Respondent which the Respondent used to register the disputed domain name and use it in the manner described. Mr Tanwar claims he was lured into using the disputed domain name by the Respondent.
5. Discussion and Findings
The Panel notes that an email was received from the account identified by the Registrar as the correct email address for the registrant of the disputed domain name.
The email merely stated “please explain more clearly what exactly do you want from us?”
The Panel notes that the Notification of Complaint clearly identifies the Complainant, the subject matter of the Complaint, the procedures for dealing with it, including links to the Policy, the Rules and the Supplemental Rules. The need for a response and what will happen if a response is not submitted. The communication also included copies of the Complaint, Amended Complaint and annexures.
The Respondent’s email was received after the date for submission of the Response. No explanation was offered for this late submission. Nor was any explanation offered for any difficulties the Respondent faced in addressing the Response. The Panel notes that the email received from the Respondent and the website to which <perfectpanel.com> resolves are in English.
As already noted, a communication has also been received from a lawyer representing Mr. Tanwar, who appears to have been the person (under the name Tanwar Digital Agency) in whose name the disputed domain name was being used before the Complainant’s cease and desist letter.
Like the email from the Respondent, this communication is in English. In the communication, Mr. Tanwar’s representative denies the allegations in the Complaint “absolutely and in their entirety.” The communication then sets out what it says are the “material facts”. The thrust of these appears to be that Mr. Tanwar or Tanwar Digital Marketing was lured into the use of the disputed domain name by the Respondent and is being made the “scapegoat” for the Respondent’s conduct.
The communications received from the Respondent and Mr. Tanwar were in English. The Respondent’s website at “www.perfectpanel.com” and Tanwar Digital Marketing’s website are also in English. In these circumstances, the Panel finds no reason to change the language of the proceeding from the default under the Rules.
In these circumstances, therefore, the Panel finds that the Respondent has been given a fair opportunity to present his or its case.
In cases where 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, in the circumstances outlined above, 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 the Respondent of the 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. 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.
The second stage of this inquiry simply requires a visual and aural comparison of the disputed domain name to the proven trademarks. 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. e.g. WIPO Overview 3.0, section 1.7.
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. WIPO Overview 3.0, section 1.11.
Disregarding the “.com” gTLD, the disputed domain name consists of the Complainant’s registered trademark and plain English words “like” and “followers”. As this requirement under the Policy is essentially a standing requirement, the addition of terms does not preclude a finding of confusing similarity. See e.g. WIPO Overview 3.0, section 1.8. The Complainant’s trademark remains visually and aurally distinct and recognisable within the disputed domain name.
Accordingly, the Panel finds that the Complainant has established that the disputed domain name is confusingly similar to the Complainant’s trademarks and the requirement under the first limb of the Policy is satisfied.
B. Rights or Legitimate Interests
Under the second requirement, the Complainant must prove that the Respondent has no rights or legitimate interests in the disputed domain name.
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. Previous 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 the disputed domain name. Nor is the Respondent affiliated with it. The Panel infers from the thrust of the Complaint that these denials extend to Tanwar Digital Marketing and Mr. Tanwar.
The disputed domain name is plainly not derived from the Respondent’s name or that of Mr. Tanwar or Tanwar Digital Marketing. There is no suggestion by the Respondent, Mr. Tanwar or Tanwar Digital Marketing that there is some other name by which he or it is commonly known from which the disputed domain name could be derived.
There can be little doubt that the disputed domain name was adopted with knowledge of the Complainant and its trademark. By the time the disputed domain name was registered, the Complainant’s service had a massive user base. Moreover, the advertisement or post on Tanwar Digital Marketing’s Facebook page dated December 24, 2018 shows it was well aware of the Complainant and its service by then. Further, the nature of the services being offered at the website to which the disputed domain name resolved before the Complainant’s cease and desist letter are predicated on and directed in part to users of the Complainant’s service.
The Complainant further contends that services of the kind being offered from the website before the cease and desist letter was sent typically involve the creation of fake accounts or hacking into existing accounts. The Complainant points out such conduct erodes the authenticity of the user experience and damages the Complainant’s reputation. In connection with these matters, the Complainant points out that the terms of service on the website before the cease and desist letter was sent included warnings that:
- “instagramlikefollowers.com SMM does not guarantee an Instant start for every order on our instant marked services!”
- “We DO NOT guarantee 100% of our accounts will have a profile picture, full bio and uploaded pictures, although we strive to make this the reality for all accounts”
- and the “Instagram Followers” services offered by the Respondent were marked as “[Not Guaranteed]”.
Moreover, the Complainant contends that such services and conduct are in breach of its terms of service.
For these reasons, the Complainant contends there can be no question of the use being made of the disputed domain name before the cease and desist letter was sent being in good faith under the Policy.
The communications from the Respondent and Mr. Tanwar’s representative do not directly address these allegations – other than the blanket denial offered by Mr. Tanwar.
There is no attempt to explain how claims to generate the volume of “likes” or “follows” in the timeframes, indicated are generated legitimately. The “buying” of endorsements in this fashion, rather than their organic generation through individual users’ direct appreciation, does undermine the credibility and purpose of such ratings, such as it is. Furthermore, the failure to disclose the purchase of the endorsements could well be in violation of rules against misleading or deceptive conduct in a number of jurisdictions.
In Instagram, LLC v. Whois privacy protection service / Olga Sergeeva / Ivan Ivanov /Privacy Protect, LLC (Privacy Protect.org), WIPO Case No. D2020-0521, the UDRP panel ruled that services involving potentially fraudulent conduct of the kind alleged by the Complainant here do not constitute the offering of goods or services in good faith for the purposes of paragraph 4(c)(i) of the Policy. The UDRP panel rejected the Respondent’s denial that the services involved fake Instagram accounts or hacking existing accounts 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.”
The Panel agrees. The provision of services which appear to involve the creation of fake Instagram accounts or hacking into existing accounts is not use in good faith under the Policy.
The Panel also considers that using a domain name to provide a service using paid endorsements to misrepresent the popularity or approval of a website or page or post, without clearly disclosing that the endorsements are paid and not spontaneously given, does not qualify as use in good faith under the Policy.
Indeed, Mr Tanwar’s lawyer appears to accept that improper, if not unlawful, conduct is involved as he asserts that the Complainant is at fault for not adequately policing “fraud websites which are deluding and cheating many innocent people like my client in their name.”
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 name. Neither the Respondent nor Tanwar Digital Marketing nor Mr. Tanwar has rebutted that prima facie case or advance any claimed entitlement.
Insofar as Mr. Tanwar contends that the responsibility for the way the disputed domain name has been used lies with the Respondent and not with Tanwar Digital Marketing nor with Mr. Tanwar, that does not confer rights or legitimate interests over the disputed domain name.
Accordingly, the Panel finds the Complainant has established the second requirement under the Policy also.
C. 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.
In this case, that inference can be drawn readily. In addition to the fame of the Complainant, the services which were being offered from the website at the disputed domain name before the cease and desist letter was sent are predicated, at least insofar as they were directed to Instagram users, on the existence of the Complainant and its service. As already noted, Tanwar Digital Marketing was also advertising the provision of services related to the Complainant as long ago as December 2018.
It appears therefore that the disputed domain name was registered with the intention of taking advantage of the association with the Complainant’s trademark and reputation for the commercial benefit of the Respondent or Tanwar Digital Marketing. Having regard to the nature of the services as described above, that constitutes registration and use in bad faith under the Policy. As the learned panel in Instagram, LLC v. Whois privacy protection service / Olga Sergeeva / Ivan Ivanov /Privacy Protect, LLC (Privacy Protect.org), supra, stated:
“Taking the above into account, the Panel accepts that it is more likely than not that the Respondent has registered the disputed domain names with knowledge of the Complainant and targeting the INSTA and INSTAGRAM trademarks (or its abbreviated form INSTA) in an attempt to attract traffic to the disputed domain names and to offer Internet users illegitimate services that destroy the authenticity of the user experience sought by Instagram and damage the reputation of the Complainant.”
The fact that the offering of the services from the website at the disputed domain name appears to have ceased after the cease and desist letter does not cure the bad faith. See e.g. Breitling SA v. Chidozie George, WIPO Case No. D2018-0926.
Finally, it is unnecessary for the Panel to resolve what appears to be a dispute between the Respondent and Tanwar Digital Marketing over who it is that has in fact registered and used the disputed domain name in the manner described above. If, as Tanwar Digital Marketing contends, it is all attributed to the Respondent and Tanwar Digital Marketing is just a dupe or scapegoat, the Respondent, as the registrant, is responsible. Even if the Respondent registered the disputed domain name at Tanwar Digital Marketing’s behest, the Respondent as registrant has control over the disputed domain name and nonetheless remains responsible. If, Tanwar Digital Marketing contends, it is merely the Respondent’s dupe or scapegoat, that does not mean that the disputed domain name was not registered in bad faith and has not been used in bad faith. If Tanwar Digital Marketing has a legitimate grievance, it would appear to be with the Respondent.
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 name, <instagramlikefollowers.com>, be transferred to the Complainant.
Warwick A., Rothnie
Date: November 23, 2020