WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Instagram, LLC v. Ihor Salo

Case No. D2021-1100

1. The Parties

The Complainant is Instagram, LLC, United States of America, represented by Hogan Lovells (Paris) LLP, France.

The Respondent is Ihor Salo, Ukraine.

2. The Domain Name and Registrar

The disputed domain name <instagram-porno.com> (the “Domain Name”) is registered with GoDaddy.com, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 12, 2021. On April 12, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On April 13, 2021, 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 the Complainant on April 14, 2021 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 April 15, 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 the Respondent of the Complaint, and the proceedings commenced on April 21, 2021. In accordance with the Rules, paragraph 5, the due date for Response was May 11, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 17, 2021.

The Center appointed Piotr Nowaczyk as the sole panelist in this matter on May 31, 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

Instagram, LLC, the Complainant in the present proceedings, is an American company which operates photo and video sharing social networking application. The Complainant’s application was launched on October 6, 2010. Currently, it has over 1 billion monthly active users and 500 million daily active users.

The Complainant’s official domain names include <instagram.com>. According to web information company Alexa, it is ranked as the 25th most visited website in the world and 50th in Ukraine where the Respondent is based.

The Complainant owns numerous INSTAGRAM trademark registrations, including:

− Ukrainian Trademark No. 228659 for INSTAGRAM, registered on July 10, 2017;
− United States Trademark No. 4146057 for INSTAGRAM, registered on May 22, 2012;
− International Trademark No. 1129314, for INSTAGRAM, registered on March 15, 2012;
− United States Figurative Trademark No. 4795634, for , registered on August 18, 2015;
− United States Figurative Trademark No. 5351388, for , registered on December 5, 2017.

The Domain Name was registered on January 25, 2021.

The Complainant attached to the Complaint screenshots showing that the Domain Name resolved to a website in Russian providing various adult content. As of the date of this decision, the Domain Name remains locked in connection to the present UDRP proceeding.

On March 28, 2021, in the absence of the Respondent’s contact details, the Complainant filled in the Registrar’s online form inviting the Respondent to contact the Complainant with respect to the Domain Name. The Respondent never contacted the Complainant.

5. Parties’ Contentions

A. Complainant

The Complainant requests that the Domain Name be transferred to the Complainant.

First, the Complainant submits that the Domain Name is confusingly similar to the INSTAGRAM mark in which the Complainant has rights.

Second, the Complainant argues that the Respondent has no rights or legitimate interests in respect of the Domain Name.

Third, the Complainant contends that the Domain Name was registered and is being used in bad faith.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

Paragraph 4(a) of the Policy places a burden on the Complainant to prove the presence of three separate elements, which can be summarized as follows:

(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 the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.

The requested remedy may only be granted if the above criteria are met.

At the outset, the Panel notes that the applicable standard of proof in UDRP cases is the “balance of probabilities” or “preponderance of the evidence”. See section 4.2. of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).

A. Identical or Confusingly Similar

The first element that the Complainant must establish is that the Domain Name is identical or confusingly similar to the Complainant’s trademark rights.

The Complainant holds valid INSTAGRAM trademark registrations, which predate the registration of the Domain Name.

The Domain Name incorporates the Complainant’s INSTAGRAM trademark in its entirety. As numerous UDRP panels have held, incorporating a trademark in its entirety is sufficient to establish that a domain name is identical or confusingly similar to a registered trademark (see PepsiCo, Inc. v. PEPSI, SRL (a/k/a P.E.P.S.I.) and EMS Computer Industry (a/k/a EMS), WIPO Case No. D2003-0696).

This Panel accepts that the addition of the term “porno” and a hyphen “-” does not prevent the Complainant’s trademark from being recognizable in the Domain Name. UDRP panels have consistently held that 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. See WIPO Overview 3.0, section 1.8.

The generic Top Level Domain (“TLD”) in the Domain Name “.com” is viewed as a standard registration requirement and as such is disregarded under the first element confusing similarity test. See WIPO Overview 3.0, section 1.11.1.

Given the above, the Panel finds that the Domain Name is confusingly similar to the Complainant’s trademark. Thus, the Complainant has proved the requirements under paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

The second requirement the Complainant must prove is that the Respondent has no rights or legitimate interests in the Domain Name.

The Respondent may establish a right or legitimate interest in the Domain Name by demonstrating in accordance with paragraph 4(c) of the Policy any of the following:

(a) that it has made preparations to use the Domain Name or a name corresponding to the Domain Name in connection with a bona fide offering of goods or services prior to the dispute; or

(b) that it is commonly known by the Domain Name, even if it has not acquired any trademark rights; or

(c) that it intends to make a legitimate, noncommercial or fair use of the Domain Name without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark.

Although given the opportunity, the Respondent has not submitted any evidence indicating that any of the circumstances foreseen in paragraph 4(c) of the Policy are present in this case.

As mentioned above, it results from the evidence in the record that the Complainant’s INSTAGRAM trademark registrations predate the Respondent’s registration of the Domain Name. The Complainant has not authorized the Respondent to make use of the INSTAGRAM trademark or to register the Domain Name incorporating this trademark.

Moreover, there is nothing in the record which would prove that the Respondent has made a legitimate noncommercial or fair use of the Domain Name or has an intention to use the Domain Name in connection with a bona fide offering of goods or services.

On the contrary, the evidence provided by the Complainant demonstrate that the Respondent used the Domain Name to attract customers, who were looking for the products or services associated with the Complainant, to adult content. Such use of the Domain Name cannot be considered a bona fide offering of goods or services or a legitimate noncommercial or fair use.

Furthermore, the website to which the Domain Name resolves displays the Complainant’s distinctive camera logo and its INSTAGRAM mark. At the same time, it does not contain any visible disclaimer stating that it is not affiliated with the Complainant, nor does it display any functional contact information to identify the Respondent. This Panel accepts that Internet users are likely to believe that they are visiting a website affiliated with or endorsed by the Complainant. This further shows that the Respondent’s use of the Domain Name cannot be considered a bona fide offering of goods or services or a legitimate noncommercial or fair use.

There is also nothing in the record which would prove that the Respondent is commonly known by the Domain Name. Thus, he cannot be regarded as having acquired rights or legitimate interests in the Domain Name.

Given the above, the Respondent has failed to invoke any circumstances, which could demonstrate, pursuant to paragraph 4(c) of the Policy, any rights or legitimate interests in respect of the Domain Name. Thus, there is no evidence in the case file that refutes the Complainant’s submissions. The Panel concludes that the Complainant has also proved the requirement under paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

The third requirement the Complainant must prove is that the Domain Name has been registered and is being used in bad faith.

Bad faith under the UDRP is broadly understood to occur where a respondent takes unfair advantage of or otherwise abuses a complainant’s mark. See WIPO Overview 3.0, section 3.1.

Under paragraph 4(b) of the Policy, evidence of bad faith registration and use include without limitation:

(i) circumstances indicating the domain name was registered or acquired primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the owner of a trademark or to a competitor of the trademark owner, for valuable consideration in excess of the documented out-of-pocket costs directly related to the domain name; or

(ii) circumstances indicating that the domain name was registered in order to prevent the owner of a trademark from reflecting the mark in a corresponding domain name, provided it is a pattern of such conduct; or

(iii) circumstances indicating that the domain name was registered primarily for the purpose of disrupting the business of a competitor; or

(iv) circumstances indicating that the domain name has intentionally been used in an attempt to attract, for commercial gain, Internet users to a website or other online location, by creating a likelihood of confusion with a trademark as to the source, sponsorship, affiliation, or endorsement of the website or location or of a product or service on a website or location.

As previously mentioned, the Complainant’s rights in the INSTAGRAM trademark predate the registration of the Domain Name. This Panel finds that the Respondent was or should have been aware of the Complainant’s trademark at the time of registration of the Domain Name. It has been proven to the Panel’s satisfaction that the Complainant’s trademark is well-known and unique to the Complainant. Thus, the Respondent could likely not reasonably have ignored the reputation of the products and services the trademark identifies. Also, the Respondent’s use of the Domain Name to point to a website featuring the Complainant’s distinctive camera logo and figurative trademark constitutes further evidence of the Respondent’s knowledge of the Complainant’s trademark at the time of registration of the Domain Name.

Moreover, the Panel finds that by reproducing the Complainant’s registered trademark in the Domain Name with addition of the term “porno”, the Respondent has intentionally attempted to attract, for commercial gain, Internet users, by creating a likelihood of confusion with the Complainant’s mark.

The Respondent has used the Domain Name to attract consumers to visit its website containing adult material, which is unrelated to the Complainant's goods and services. It constitutes a clear attempt to generate a commercial gain, particularly by misleading online users with the Domain Name, and subsequently redirecting these online users to adult content in order to capitalize on the reputation of the Complainant’s trademark.

In addition, the Respondent did not reply to the Complainant's notification submitted through the Registrar’s online communication form, which constituted an attempt to settle with the Respondent amicably prior to the filing of the Complaint. This circumstance constitutes further evidence of bad faith.

Given the above, the Panel finds that the Complainant has established the third element under paragraph 4(a) of the Policy.

7. Decision

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 <instagram-porno.com> be transferred to the Complainant.

Piotr Nowaczyk
Sole Panelist
Date: June 11, 2021