WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Instagram, LLC v. Aleksandr Abel
Case No. D2020-2627
1. The Parties
The Complainant is Instagram, LLC, United States of America, represented by Hogan Lovells (Paris) LLP, France.
The Respondent is Aleksandr Abel, Russian Federation.
2. The Domain Names and Registrar
The disputed domain names <instagram.ws> and <ru-instagram.com> are registered with GoDaddy.com, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 8, 2020. On October 9, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On October 9, 2020, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
The Center verified that the Complaint together with the amendment to the Complaint/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 October 22, 2020. In accordance with the Rules, paragraph 5, the due date for Response was November 11, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 12, 2020.
The Center appointed Taras Kyslyy as the sole panelist in this matter on November 18, 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 an online photo- and video-sharing social networking application. Since its launch in 2010 it became a fast growing photo/video sharing and editing software and online social network, with more than 1 billion monthly active accounts worldwide. The Complainant’s website, available at “www.instagram.com”, is ranked the 25th most visited website in the world and 81th in Russian Federation, according to web information company Alexa.
The Complainant owns numerous trademark registrations for INSTAGRAM in many jurisdictions around the world, including the following:
− Russian Federation trademark registration No. 511271, registered on April 16, 2014;
− United States of America trademark registration No. 4146057, registered on May 22, 2012.
The disputed domain name <instagram.ws> was registered on October 11, 2017 and used to point to a website in Russian that offered the sale of Instagram “followers”, “likes”, “views” and “comments”. In addition, the associated website displayed a logo having a similar “look and feel” as the Complainant’s logo. Currently the disputed domain name resolves to an inactive website.
The disputed domain name <ru-instagram.com> was registered on October 17, 2016 and resolves to an inactive website.
The Complainant sent a cease and desist letter to the Respondent, however the Respondent refused to transfer the disputed domain names.
5. Parties’ Contentions
The disputed domain names are identical or confusingly similar to the Complainant’s trademark. The disputed domain names both incorporate the INSTAGRAM trademark in its entirety. The addition of the letters “ru-” which commonly stands for Russian Federation does not serve to distinguish the disputed domain names from the Complainant’s mark. The applicable Top-Level Domains (the “TLDs”), in this case “.com” and “.ws”, may be disregarded for the purposes of assessment under the first element, as they are viewed as standard registration requirements.
The Respondent has no rights or legitimate interests in the disputed domain names. The Respondent has not been using or has made demonstrable preparations to use the disputed domain names in connection with any bona fide offering of goods or services. The Respondent is not a licensee of the Complainant, nor has the Respondent been otherwise authorized by the Complainant to make any use of its trademark, in a domain name or otherwise. On the website previously associated with the disputed domain name <instagram.ws>, Internet users were able to purchase for example 100 “likes” for the amount of 499 Russian rubles. Generating very high numbers of “followers”, “likes”, “views” and “comments” invariably involves fraudulent operations, such as the creation of fake accounts, or hacking into existing accounts. In addition, offering “likes” and/or “followers” for sale destroys the authenticity of the user experience sought by Instagram and damages the reputation of the Complainant. Therefore, such use of the disputed domain name cannot possibly be considered a bona fide offering of goods or services as the Respondent is trading off of the Complainant’s goodwill for his own financial gain. The disputed domain names do not currently resolve to active web pages. The Respondent is not commonly known by the disputed domain names. The Respondent is not making a legitimate noncommercial or fair use of the disputed domain names.
The disputed domain names were registered and are being used in bad faith. The Respondent could not credibly argue that he did not have knowledge of the Complainant and its trademark when registering the disputed domain names in 2016 and 2017, by which time the Complainant had amassed some 700 million active users. The Respondent registered several trademark abusive domain names for the purpose of preventing the Complainant from reflecting its trademarks in corresponding domain names. The Respondent, by using the disputed domain names, has intentionally attempted to attract, for commercial gain, Internet users to his website, by creating a likelihood of confusion with the Complainant’s identity as to the source, sponsorship, affiliation or endorsement of their websites or of a product or service on his website. The current non-use of the disputed domain names would not prevent a finding of bad faith under the doctrine of passive holding. The Complainant’s INSTAGRAM trademark is distinctive and well known throughout the world, and is exclusively associated with the Complainant. The Respondent made use of a privacy shield to frustrate the purposes of the Policy or make it difficult for the brand owner to protect its trademarks against infringement, dilution and cybersquatting. The Complainant cannot conceive of any bona fide use that the Respondent could make of the disputed domain names that would not result in creating a misleading impression of association with the Complainant. The Complainant cannot conceive of any good faith use to which the disputed domain names could be put by the Respondent that would not carry with it an inherent risk. As such, the Complainant submits that the presence of the disputed domain names in the hands of the Respondent represents an abusive threat hanging over the head of the Complainant (i.e., an abuse capable of being triggered by the Respondent at any time) and therefore a continuing abusive use.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
According to section 1.11.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (the “WIPO Overview 3.0”) the applicable TLD in a domain name (e.g., “.com”, “.club”, “.nyc”) is viewed as a standard registration requirement and as such is disregarded under the first element confusing similarity test. Thus, the Panel disregards TLDs “.com” and “.ws” for the purposes of the confusing similarity test.
According to section 1.7 of the WIPO Overview 3.0 in cases where a domain name incorporates the entirety of a trademark the domain name will normally be considered identical or confusingly similar to that mark for purposes of UDRP standing. In the present case, the disputed domain names incorporate the entirety of the Complainant’s trademark.
According to section 1.8 of the WIPO Overview 3.0 where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element. The Panel finds that the Complainant’s trademark is recognizable within the disputed domain name <ru-instagram.com> and the addition of the term “ru” usually standing for Russian Federation does not preclude establishing the confusing similarity.
Considering the above the Panel finds the disputed domain names are identical or confusingly similar to the Complainant’s trademark, therefore, the Complainant has established its case under paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
The Panel finds that the Complainant has rights in its registered trademark.
The Complainant has established prima facie that the Respondent has no rights or legitimate interests in the disputed domain names.
Furthermore, the Respondent provided no evidence that it holds rights or legitimate interests in the disputed domain names.
The Respondent is not commonly known by the disputed domain names, which could demonstrate its rights or legitimate interests (see, e.g., World Natural Bodybuilding Federation, Inc. v. Daniel Jones TheDotCafe, WIPO Case No. D2008-0642).
The Complainant did not license or otherwise agree for use of its prior registered trademark by the Respondent, thus no actual or contemplated bona fide or legitimate use of the disputed domain names could be reasonably claimed (see, e.g., Sportswear Company S.P.A. v. Tang Hong, WIPOCase No. D2014-1875).
The Respondent was using the disputed domain name <instagram.ws> apparently as part of a fraudulent or misleading scheme most likely involving the creation of fake accounts or hacking into existing accounts. The Panel notes the Complainant’s claim that such use would contravene the terms and conditions of the Complainant’s application. According to section 2.13.1 of the WIPO Overview 3.0, panels have categorically held that the use of a domain name for illegal activity (e.g., the sale of counterfeit goods or illegal pharmaceuticals, phishing, distributing malware, unauthorized account access/hacking, impersonation/passing off, or other types of fraud) can never confer rights or legitimate interests on a respondent. The Panel finds that, even if the disputed domain name <instagram.ws> was not the direct means for the creation of fake accounts or hacking into existing accounts, the use of the disputed domain name <instagram.ws> as described in this decision cannot give rights or legitimate interests under the Policy.
Moreover, the Panel finds that the composition itself of the disputed domain names carries a high risk of implied affiliation with the Complainant’s trademarks. Also, the Panel finds that the Respondent has no right or legitimate interests in the disputed domain names currently resolving to inactive websites (see, e.g., Philip Morris USA Inc. v. Daniele Tornatore, WIPO Case No. D2016-1302).
Considering the above, the Panel finds the Respondent does not have rights or legitimate interests in the disputed domain names. Therefore, the Complainant has established its case under paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
According to section 3.1.4 of the WIPO Overview 3.0 the mere registration of a domain name that is identical or confusingly similar to a famous or widely-known trademark by an unaffiliated entity can by itself create a presumption of bad faith. The Panel is convinced that the Complainant’s trademark is well established through long and widespread use and the Complainant has acquired a significant reputation and level of goodwill in its trademark near worldwide. Thus, the Panel finds that the disputed domain names identical or confusingly similar to the Complainant’s trademark were registered in bad faith.
The Panel notes the Complainant’s contention and evidence that the Respondent registered two other domain names (that are not part of this proceeding) that affirms a pattern of abusive registrations.
According to section 3.1 of the WIPO Overview 3.0 , bad faith under the UDRP is broadly understood to occur where a respondent takes unfair advantage of or otherwise abuses a complainant’s mark. To facilitate assessment of whether this has occurred, and bearing in mind that the burden of proof rests with the complainant, paragraph 4(b) of the Policy provides that any one of the following non-exclusive scenarios constitutes evidence of a respondent’s bad faith:
(i) circumstances indicating that the respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) the respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on the respondent’s website or location.
In this regard, the Panel finds that at least the second and the fourth of the above scenarios apply to the present case confirming the Respondent’s bad faith.
According to section 3.3 of the WIPO Overview 3.0 from the inception of the UDRP, UDRP panels have found that the non-use of a domain name (including a blank or “coming soon” page) would not prevent a finding of bad faith under the doctrine of passive holding. In this regard, the Panel takes into account (i) the high degree of distinctiveness and reputation of the Complainant’s trademark, (ii) the failure of the Respondent to submit a response or to provide any evidence of actual or contemplated good-faith use, and (iii) the implausibility of any good faith use to which the disputed domain names may be put.
Moreover, the Respondent used a privacy service to register the disputed domain names. According to section 3.6 of the WIPO Overview 3.0 , the use of a privacy or proxy service merely to avoid being notified of a UDRP proceeding, may support an inference of bad faith; a respondent filing a response may refute such inference. However, no such response was provided by the Respondent. The Panel finds that such use of the privacy service here confirms registration of the disputed domain names in bad faith.
Considering the above, the Panel finds that both disputed domain names were registered and are being used in bad faith. Therefore, the Complainant has established its case under 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.ws> and <ru-instagram.com>, be transferred to the Complainant.
Date: November 30, 2020