WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Instagram, LLC v. asdaas Service, qwghqwh
Case No. D2021-0195
1. The Parties
Complainant is Instagram, LLC, United States of America (“United States”), represented by Hogan Lovells (Paris) LLP, France.
Respondent is asdaas Service, qwghqwh, United States.
2. The Domain Name and Registrar
The disputed domain name (the “Domain Name”) <instagramforbusiness.net> is registered with Tucows Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 22, 2021. On January 25, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. That same day the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on February 1, 2021 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on February 5, 2021.
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 Respondent of the Complaint, and the proceedings commenced on February 8, 2021. In accordance with the Rules, paragraph 5, the due date for Response was February 28, 2021. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on March 3, 2021. On March 8, 2021, due to an administrative oversight, the Center granted Respondent a five day period, throughout March 13, 2021 in which to indicate whether it wishes to participate in this proceeding. The Center did not receive any communication from Respondent.
The Center appointed Harrie R. Samaras as the sole panelist in this matter on March 24, 2021. 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
Complainant is a global online photo and video sharing social networking application that allows users to edit and share photos and videos and exchange messages in an online social network. It was launched in 2010 and it now has more than 1 billion monthly active users. Instagram's website available at “www.instagram.com” is ranked the 22nd most visited website in the world. It has consistently been ranked amongst the top “apps” for mobile devices. Currently it is available in over 31 languages and it is the 5th most downloaded application in the world. In May 2016, Complainant launched Instagram for Business, which is a set of tools for business users that allow users to obtain greater insights about their stories, posts and followers via real-time metrics and add information about their companies, such as business hours, location and phone numbers.
Complainant holds trademark registrations for the INSTAGRAM Mark (or “the Mark”) in many jurisdictions, including: United States Trademark Reg. No. 4,146,057 (registered May 22, 2012); and International Trademark Reg. No. 1129314 (registered March 15, 2012).
Complainant further owns numerous domain names comprising its INSTAGRAM Mark, under various generic Top-Level Domains (“gTLDs”) and country code Top-Level Domains (“ccTLDs”), which are linked to its corporate websites in connection with its services, for example, <instagram.com> (registered on June 4, 2004), <instagram.dk> (registered on January 14, 2011) and <instagram.org.in> (registered on November 13, 2012).
The Domain Name was registered on September 9, 2020 and it resolves to a website providing adult content.
5. Parties’ Contentions
Complainant owns numerous trademark registrations for the INSTAGRAM Mark in jurisdictions throughout the world and, thus, has established rights in INSTAGRAM Mark for the purposes of the Policy. The Domain Name incorporates the INSTAGRAM Mark in its entirety with the addition of the descriptive terms “for” and “business”. Complainant's INSTAGRAM trademark is clearly recognizable as the leading element of the Domain Name. Complainant submits that the combination of Complainant's INSTAGRAM Mark with the terms “for” and “business” does not prevent a finding of confusing similarity between the Domain Name and the Mark, which remains clearly recognizable in the Domain Name. The applicable gTLD, in this case “.net”, may be disregarded for the purposes of assessment under the Policy as it is viewed as a standard name registration requirement.
Respondent is not a licensee of Complainant or affiliated with it in any way. Complainant has not granted any authorization for Respondent to use the INSTAGRAM Mark in a domain name or otherwise. At the time of filing, the Domain Name is being used to point to an adult website. Such use of the Domain Name, which incorporates Complainant's distinctive INSTAGRAM Mark, to provide adult content is not considered by prior panels as a bona fide offering of goods and services. Respondent cannot legitimately claim to be commonly known by the Domain Name, or a name corresponding to the Domain Name, within the meaning of the Policy. Respondent’s identity in the WhoIs record is masked and the Domain Name is not being used to promote any business or any other online service that might give rise to Respondent being commonly known by the Domain Name.
Complainant's INSTAGRAM Mark is inherently distinctive and well known throughout the world. It has been continuously and extensively used since its launch in 2010 in connection with its online photo-sharing social network, and has rapidly acquired considerable reputation and goodwill worldwide. Respondent could not credibly argue that it did not have prior knowledge of Complainant's trademarks at the time that it registered the Domain Name on September 9, 2020 when Complainant had over one billion users worldwide, especially given Complainant’s launch of Instagram for Business over four years previously. Furthermore, as a result of the well-known character of the INSTAGRAM Mark, when confronted with a combination of the Mark together with the terms “for business”, many Internet users would be confused and assume that the Domain Name is in some way connected with Complainant, especially given the launch of Instagram for Business over four years before. By integrating Complainant's well-known INSTAGRAM Mark in its entirety, the Domain Name carries a high risk of implied affiliation with Complainant.
Using the Domain Name to resolve to an adult website, obviously for commercial gain, by creating confusion with Complainant constitutes bad faith under the Policy. Furthermore, prior panels have held under the Policy that the use of domain names incorporating third party trademarks to point to adult websites is very likely to tarnish the distinctiveness, image and reputation of trademark owners.
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
The Panel concludes that Complainant has rights in the INSTAGRAM Mark based on the above-mentioned registrations for the Mark and long-standing use.
The Domain Name incorporates in its entirety Complainant's INSTAGRAM Mark. Where a domain name incorporates a complainant's mark, this is sufficient to establish that the domain name is identical or confusingly similar for purposes of the Policy. See Kabushiki Kaisha Hitachi Seisakusho (d/b/a Hitachi Ltd) v. Arthur Wrangle, WIPO Case No. D2005-1105. Furthermore, combining the INSTAGRAM Mark with additional terms does not prevent a finding of confusingly similarity. In this case, using the particular terms “for business” with the INSTAGRAM Mark considering that in May 2016, Complainant launched Instagram for Business supports the Panel’s findings under the third element as it increases the likelihood of confusion. See section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).
Furthermore, adding the gTLD such as “.net” does not distinguish the Domain Name from the Mark because the use of a gTLD is required of domain name registrations. See SBC Communications Inc. v. Fred Bell aka Bell Internet, WIPO Case No. D2001-0602.
For the foregoing reasons, the Panel finds that paragraph 4(a)(i) of the Policy has been satisfied.
B. Rights or Legitimate Interests
Complainant maintains that: (1) Respondent is not a licensee or otherwise affiliated with it in any way; (2) it has not granted any authorization to Respondent to use the INSTAGRAM Mark in a domain name or otherwise; (3) using the Domain Name, which incorporates the INSTAGRAM Mark, to provide adult content is not a bona fide offering of goods and services; and (4) Respondent’s identity in the WhoIs record is masked and the Domain Name is not being used to promote any business or any other online service that might give rise to Respondent being commonly known by the Domain Name.
Insofar as Complainant has made a prima facie showing that Respondent lacks rights or legitimate interests to the Domain Name (Spencer Douglass, MGA v. Bail Yes Bonding, WIPO Case No. D2004-0261), this shifts the burden to Respondent to show evidence that it has rights or legitimate interests in the Domain Name. See, e.g., Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270. Respondent has failed to adduce any evidence to shoulder its burden. Thus, Complainant’s facts, without contrary evidence from Respondent, are sufficient to permit a finding in Complainant’s favor on this issue. Alcoholics Anonymous World Services, Inc. v. Lauren Raymond, WIPO Case No. D2000-0007.
The Panel therefore holds that Complainant has satisfied paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
Complainant's INSTAGRAM Mark is well known throughout the world and long before Respondent registered the Domain Name in 2020, when Complainant had over one billion users worldwide. Given Complainant’s widespread and long-standing use of the Mark worldwide since 2010, the Panel finds it is highly unlikely Respondent was unaware of the Mark when it registered the Domain Name. Respondent’s bad faith registration is also evidenced by the fact that the Domain Name: (1) was formed by adding the words “for business” to Complainant’s well-known Mark. As indicated above, in May 2016, Complainant launched Instagram for Business; and (2) is confusingly similar to Complainant’s Mark. On the uncontroverted evidence, the Panel finds that Respondent registered the Domain Name in bad faith.
Respondent’s use of a confusingly similar Domain Name in conjunction with an adult website, for commercial gain, constitutes bad faith. See Tata Sons Limited v. Jonni Starre / Charles Power, WIPO Case No. D2015-1375.
In view of the above, the Panel finds that the Domain Name was registered and is being used in bad faith, in accordance with 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 Domain Name <instagramforbusiness.net> be transferred to Complainant.
Harrie R. Samaras
Date: April 1, 2021