WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Instagram, LLC v. Domain Administrator, Fundacion Privacy Services LTD
Case No. D2021-0551
1. The Parties
Complainant is Instagram, LLC, United States of America (“United States”), represented by Hogan Lovells (Paris) LLP, France.
Respondent is Domain Administrator, Fundacion Privacy Services LTD, Panama.
2. The Domain Name and Registrar
The disputed domain name is <sinstagram.com> which is registered with Media Elite Holdings Limited (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 22, 2021. On February 23, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 25, 2021, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details.
The Center verified that the 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 26, 2021. In accordance with the Rules, paragraph 5, the due date for Response was March 18, 2021. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on March 19, 2021.
The Center appointed Gerardo Saavedra as the sole panelist in this matter on April 1, 2021. This Panel finds that it was properly constituted. This 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, a company from the United States, is the provider of the Instagram application or app (the “Instagram App” or “App”), officially released in 2010, which is an online photo and video sharing social networking application.
Complainant has rights over the INSTAGRAM mark for which it holds European Union Trade Mark registration No. 014493886 in classes 25, 35, 38, 41 and 45, registered on December 24, 2015, with the European Union Intellectual Property Office, United States registration No. 4146057 in class 9, registered on May 22, 2012, with the United States Patent and Trademark Office; and International registration No. 1129314 in classes 9 and 42, registered on March 15, 2012.
Complainant is the registrant of the domain names <instagram.com> registered on June 4, 2004, <instagram.dk> registered on January 14, 2011, and <instagram.org.in> registered on November 13, 2012, among others.
The disputed domain name was registered on July 30, 2015. At the time the Complaint was filed the website associated with the disputed domain name showed, among others: “Sinstagram.com”, “Related Searches:”, “Social Networking Apps”, “Instagram App”, “Online Photo Sharing”, “Chat Online”, “Make Friends Online”.
5. Parties’ Contentions
A. Complainant
Complainant’s assertions may be summarized as follows.
Since it was launched in 2010, the Instagram App rapidly developed considerable goodwill and renown worldwide, with 100,000 users in only one week, 1 million registered users in only two months (by December 21, 2010) and over 10 million registered users by September 2011, less than a year after it was launched. Acquired by Facebook in April 2012, the Instagram App reached over 100 million monthly active users by February 2013, 400 million monthly active users by September 2015, 800 million monthly active users by September 2017, and currently it has more than 1 billion monthly active users.
Complainant has secured ownership of numerous trademark registrations for INSTAGRAM in many jurisdictions around the world. Given the exclusive online nature of Complainant’s business, Complainant’s domain names consisting of its mark are not only the heart of its entire business but also the main way for its millions of users to avail themselves of its services. Complainant is the registrant of numerous domain names consisting of or including its INSTAGRAM mark under a wide range of generic Top-Level Domains (gTLDs) as well as under numerous country code Top-Level Domains (ccTLDs).
Complainant’s website available at “www.instagram.com” is ranked the 30th most visited website in the world, according to web information company Alexa. Instagram has consistently ranked amongst the top “apps” for mobile devices, and has been the recipient of numerous awards, including “App of the Year” in 2011 from Apple Inc. Currently available in over 31 languages, the Instagram App is the 4th most downloaded application in the world, as per App Annie Top App rankings in 2021.
The disputed domain name incorporates the INSTAGRAM mark in its entirety, together with the letter “s”. The INSTAGRAM mark is readily recognizable in the disputed domain name, rendering the disputed domain name confusingly similar to Complainant’s mark.
Respondent has no rights or legitimate interests in the disputed domain name. Respondent is unable to invoke any of the circumstances set out in paragraph 4(c) of the Policy, in order to demonstrate rights or legitimate interests in the disputed domain name.
Respondent is not affiliated with Complainant in any way. Complainant has not granted any authorization for Respondent to make use of its INSTAGRAM mark, in a domain name or otherwise.
Respondent is not commonly known by the disputed domain name. The disputed domain name has been registered using a privacy service and it is not being used in the promotion of any business or any other online service that might give rise to Respondent being commonly known by the disputed domain name.
Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services, and is not making a legitimate noncommercial or fair use of the disputed domain name. Respondent is seeking to generate click-through revenue from pay-per-click (“PPC”) links placed on the parking page to which the disputed domain name resolves. Such use cannot constitute a bona fide offering of goods or services as Respondent is seeking to profit from Complainant’s goodwill and renown to attract Internet users to its website for financial gain. Such conduct cannot confer rights or legitimate interests on Respondent where Respondent is seeking to unfairly capitalize on the goodwill associated with Complainant’s mark.
The disputed domain name was registered and is being used in bad faith.
Complainant’s INSTAGRAM mark is inherently distinctive and well known throughout the world. It has been continuously and extensively used since 2010, and rapidly acquired considerable reputation and goodwill worldwide. Respondent could not credibly argue that it did not have prior knowledge of said Complainant’s mark at the time it registered the disputed domain name in 2015, as Complainant had reached over 300 million users worldwide.
Respondent registered the disputed domain name having no authorization to make use of the INSTAGRAM mark in a domain name or otherwise, thereby creating a misleading impression of association with Complainant, in bad faith.
The use of the disputed domain name to redirect Internet users to a parking page displaying sponsored links constitutes bad faith. Respondent’s use of the disputed domain name is clearly intended for commercial gain, as it is pointing to an advertising website displaying PPC links. Such use of the disputed domain name, from which Respondent is seeking to obtain financial gain derived from the goodwill and reputation attached to Complainant’s mark, constitutes strong evidence of bad faith. It is not necessary for Respondent itself to have profited directly from those commercial links in order to establish bad faith use.
By using the disputed domain name in such a manner, Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website, by creating a likelihood of confusion with Complainant’s INSTAGRAM mark as to the source, sponsorship, affiliation, or endorsement of the links displayed on the website to which the disputed domain name resolves, in bad faith.
Respondent’s use of a privacy service to conceal its identity with regard to the disputed domain name further supports an inference of bad faith.
Complainant requests that the disputed domain name be transferred to Complainant.
B. Respondent
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
Paragraph 15(a) of the Rules instructs the Panel to “decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”.
The lack of Response from Respondent does not automatically result in a favorable decision for Complainant (see Berlitz Investment Corp. v. Stefan Tinculescu, WIPO Case No. D2003-0465, and section 4.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”)). The burden for Complainant, under paragraph 4(a) of the Policy, is to show: (i) that the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; (ii) that 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
It is undisputed that Complainant has rights over the INSTAGRAM mark.
Since the addition of a gTLD after a domain name is technically required, it is well established that such element may be disregarded where assessing whether a domain name is identical or confusingly similar to a mark. The disputed domain name identically reflects the INSTAGRAM mark, albeit preceded by the letter “s”. It is clear to this Panel that the INSTAGRAM mark is recognizable in the disputed domain name and that the addition of such letter in the disputed domain name does not avoid its confusing similarity with said mark (see sections 1.7, 1.8, and 1.9 of the WIPO Overview 3.0).
Thus, this Panel finds that Complainant has satisfied paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
Complainant has alleged and Respondent has failed to deny that Respondent has no rights or legitimate interests in respect of the disputed domain name.
The evidence in the file shows that Complainant’s INSTAGRAM mark has become well-known. Complainant contends that it has no relationship with Respondent, that it has not authorized Respondent to use such mark, that Respondent is not commonly known by the disputed domain name, and that Respondent is not using the disputed domain name in connection with any legitimate noncommercial or fair use without intent for commercial gain. The evidence also shows that Complainant is the registrant of, among others, the domain name <instagram.com> and that the latter resolves to an active website which features Complainant’s Instagram App. Further, the evidence in the file shows that the website linked to the disputed domain name shows apparent links to other websites. In any event, it seems to this Panel that the nature of the disputed domain name carries a risk of implied affiliation (see sections 2.5.1 and 2.9 of the WIPO Overview 3.0).
This Panel considers that Complainant has established a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name (see Intocast AG v. Lee Daeyoon, WIPO Case No. D2000-1467, and section 2.1 of the WIPO Overview 3.0). In the file there is no evidence of circumstances of the type specified in paragraph 4(c) of the Policy or of any other circumstances giving rise to a possible right to or legitimate interest in the disputed domain name by Respondent.
Based on the aforesaid, this Panel concludes that paragraph 4(a)(ii) of the Policy is satisfied.
C. Registered and Used in Bad Faith
Complainant contends that Respondent’s registration and use of the disputed domain name is in bad faith, which Respondent chose not to rebut.
Taking into consideration that Complainant’s registration and use of the INSTAGRAM mark preceded the creation of the disputed domain name, and the rapidly-growing widespread use and recognition of said mark and the App identified thereunder, this Panel is of the view that Respondent must have been aware of their existence at the time it obtained the registration of the disputed domain name.
The use of a domain name for a parking website with links that may generate PPC revenue is not, per se, evidence of bad faith. However, in the case at hand, Respondent’s bad faith may be deduced from the following facts: (i) Complainant is a well-established company; (ii) Respondent is using Complainant’s mark in the disputed domain name (albeit with just a single letter addition) without Complainant’s authorization; (iii) the risk of implied affiliation of the disputed domain name with Complainant, its mark, and its App; (iv) the nature of the links’ headings appearing on the website associated with the disputed domain name, as noted above; (v) Respondent’s use of a privacy service to hide its name and contact details; and (vi) Respondent’s failure to appear at this proceeding.
In sum, the overall evidence indicates that Respondent’s choice of the disputed domain name was deliberate for its substantial similarity with, and with the likely intention to benefit from the reputation and goodwill of, Complainant’s name and INSTAGRAM mark, which denotes bad faith.2
In light of the above, this Panel finds that Complainant has satisfied paragraph 4(a)(iii) of the Policy.
7. Decision
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, this Panel orders that the disputed domain name <sinstagram.com> be transferred to Complainant.
Gerardo Saavedra
Sole Panelist
Date: April 15, 2021
1 Although not argued by Complainant, it seems to this Panel that some of those links’ headings are suggestive of products competing with the Instagram App of Complainant. See Merck Sharp & Dohme Corp. v. Domain Administrator, PrivacyGuardian.org / George Ring, DN Capital Inc., WIPO Case No. D2017-0302: “using a domain name incorporating the Complainant’s mark to host sponsored links associated with the Complainant’s area of business cannot be a bona fide offering of goods or services”.
2 See Jafra Cosmetics, S.A. de C.V. and Jafra Cosmetics International, S.A. de C.V. v. ActiveVector, WIPO Case No. D2005-0250: “due to the intrinsically distinctive character of Complainants’ trademarks, it is inconceivable that the contested domain name would have been registered and used if it were not for exploiting the fame and goodwill of Complainants’ marks by diverting Internet traffic intended for Complainant”.