WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Instagram, LLC v. Contact Privacy Inc. Customer 1248450796 / Ming Guang Yong

Case No. D2021-1873

1. The Parties

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

The Respondent is Contact Privacy Inc. Customer 1248450796, Canada / Ming Guang Yong, Singapore.

2. The Domain Name and Registrar

The disputed domain name <shopsinstagram.com> is registered with Google LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 15, 2021. On June 15, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 16, 2021, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on June 15, 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 June 17, 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 June 23, 2021. In accordance with the Rules, paragraph 5, the due date for Response was July 13, 2021. The Respondent sent several informal email communications on June 17, 23, and 25, 2021; and on July 16 and 21, 2021.

The Center appointed Knud Wallberg as the sole panelist in this matter on July 27, 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

The Complainant is an online social networking platform. The Complainant currently has over 1 billion monthly active users. According to the web information company Alexa the Complainant’s website available at “www.instagram.com” is ranked as the 25th most visited website in the world.

The Complainant is the owner of several trademark registrations for INSTAGRAM, including International Trademark No. 1129314, registered on March 15 2012, for goods and services in classes 9 and 42.

The Complainant is also the owner of numerous domain names consisting of the trademark INSTAGRAM under generic and country code Top-Level Domain (“gTLD” and “ccTLD”, respectively) extensions.

The disputed domain name <shopsinstagram.com> was registered on October 15, 2020. It does not resolve to an active website.

5. Parties’ Contentions

A. Complainant

The Complainant submits that the disputed domain name <shopsinstagram.com> is confusingly similar to the trademarks in which it has rights. The disputed domain name comprises the Complainant's INSTAGRAM trademark as its leading element, together with the descriptive term "shops" under the gTLD “.com".

The Complainant further submits that the Respondent has no rights or legitimate interests in the disputed domain name. The Respondent is not a licensee of the Complainant, nor has it been otherwise allowed by the Complainant to make any use of the Complainant's trademarks. The Complainant further asserts that the Respondent is unable to invoke any of the circumstances set out in paragraph 4(c) of the Policy, to demonstrate rights or legitimate interests in the disputed domain name just as the there is no evidence to suggest that the Respondent is commonly known by the disputed domain name or that the Respondent is making a legitimate noncommercial or fair use of the disputed domain name.

Finally, the Complainant submits that the disputed domain name was registered and is being used in bad faith. Given the Complainant's renown and goodwill worldwide, it would thus be inconceivable for the Respondent to argue that it did not have knowledge of the Complainant's trademark when it registered the disputed domain name. Furthermore, non-use of a domain name does not prevent a finding of bad faith use under the UDRP in a case like the one at hand.

B. Respondent

The Respondent did not reply to the Complainant’s contentions. However, the Respondent has sent several emails to the Center between June 17, 2021, and July 21, 2021, with the following contents:

June 17, 2021:
“Hi,
It is not clear what is the option here. Instagram LLC wants to buy the domain?
Thanks.”

June 23, 2021:
“I replied to the previous email asking to suspend the present dispute and if Instagram LLC is buying over the domain. I have not received any reply from the complaint.”

June 23, 2021:
“I have replied on 17 Jun that I am asking if Instagram LLC wants to buy the domain so that it can be transferred
Can you kindly note that I have responded to the complaint? Thanks”

June 25, 2021:
“I don't understand what does "settlement options" here mean?
What is the Standard settlement form? I don't have such document
Does instagram LLC agree to purchase the disputed domain at cost?”

July 16, 2021:
“I have contacted wipp but about a settlement but did not receive a reply about what to do. Please note that I do not agree with bearing any cost for panel appointment.”

July 16, 2021:
“Please note that I sent on 25 Jun below asking about the process of settlement. I did not receive a reply from Domain.Disputes@wipo.int or domaindisputes@hoganlovells.com.
Please also note that I do not agree in any way to pay for any fees related to settlement.
Thanks”

July 21, 2021
“Again I like to emphasize that I do not agree to compensate the complainant or pay any fees associated with the settlement. I have previously reached out and proposed a settlement [complainant buys the domain at cost]. I have not heard back.
I do not understand how the appointment of panelist would help in this case.”

6. Discussion and Findings

According to paragraph 15(a) of the Rules the Panel shall decide the Complaint in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.

Paragraph 4(a) of the Policy directs that a complainant must prove each of the following:

(i) that the domain name registered by the respondent is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and

(ii) that the respondent has no rights or legitimate interests in respect of the domain name; and

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

Paragraph 4(a) of the Policy states that the burden of proving that all these elements are present lies with the Complainant. At the same time, in accordance with paragraph 14(b) of the Rules, if a party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under, the Rules, or any request from the Panel, the Panel shall draw such inferences therefrom as it considers appropriate.

A. Identical or Confusingly Similar

The Panel finds that the disputed domain name is confusingly similar (in the sense of the Policy) to the Complainant’s registered trademark INSTAGRAM.

The disputed domain name <shopsinstagram.com> comprises the Complainant's INSTAGRAM trademark in its entirety together with the dictionary term "shops". The addition of such term does not prevent a finding of confusing similarity. See section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”). Furthermore, the gTLD “.com” is a standard registration requirement and as such generally disregarded under the first element confusing similarity test. See section 1.11.1 of the WIPO Overview 3.0.

The Panel finds that the conditions in paragraph 4(a)(i) of the Policy are therefore fulfilled in relation to all the disputed domain names.

B. Rights or Legitimate Interests

It is clear from the facts of the case that the Complainant has not licensed or otherwise permitted the Respondent to use its trademark and given the circumstances of this case, the Panel finds that the Complainant has established a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name.

The Respondent has not produced, and there is no evidence of the types of circumstances set out in paragraph 4(c) of the Policy that might give rise to rights or legitimate interests in the disputed domain name on the part of the Respondent in these proceedings. Rather on the contrary, since the Respondent in his emails to the Center indicated that he was willing to transfer the disputed domain name to the Complainant if the Complainant agreed to purchase the disputed domain name “at cost”.

Consequently, the Panel finds that the condition in paragraph 4(a)(ii) of the Policy is also fulfilled.

C. Registered and Used in Bad Faith

Paragraph 4(a)(iii) of the Policy requires the Complainant to prove both registration and use of the disputed domain name in bad faith. Paragraph 4(b) of the Policy provides examples of circumstances which shall be evidence of registration and use in bad faith:

(i) circumstances indicating that the holder has registered or has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration 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 holder’s documented out-of-pocket costs directly related to the domain name; or

(ii) the holder 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 holder has engaged in a pattern of such conduct; or

(iii) the holder has registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, the holder has intentionally attempted to attract, for commercial gain, Internet users to the holder’s website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the holder’s website or location or of a product or service on the holder’s website or location.

Accordingly, for the Complainant to succeed, the Panel must be satisfied that the disputed domain name has been registered and is being used in bad faith.

Given the circumstances of the case, in particular the extent of use and reputation of the Complainant’s trademark INSTAGRAM, it is inconceivable to the Panel in the current circumstances that the Respondent registered the disputed domain name without prior knowledge of the Complainant and the Complainant’s marks. Further, the Panel finds that the Respondent could not have been unaware of the fact that the disputed domain name he chose could attract Internet users in a manner that is likely to create confusion for such users.

The Panel therefore finds that the disputed domain name was registered in bad faith.

The fact that the disputed domain name appears not to have been used actively does not prevent a finding of bad faith use. As it is stated in section 3.3 of the WIPO Overview 3.0: “From the inception of the UDRP, panelists 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.”

Furthermore, in this case, the fact that the Respondent in his emails to the Center indicated that he was willing to transfer the disputed domain name to the Complainant if the Complainant agreed to purchase the disputed domain name “at cost” is a further indication of bad faith use. See section 3.1.1. of the WIPO Overview 3.0.

Noting that the disputed domain name incorporates a well-known trademark, that no formal response has been filed, that there appears to be no conceivable good faith use that could be made by the Respondent of the disputed domain name and considering all the facts and evidence, the Panel finds that the requirements of paragraph 4(a)(iii) of the Policy are also fulfilled in this case.

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 disputed domain name <shopsinstagram.com> be transferred to the Complainant.

Knud Wallberg
Sole Panelist
Date: August 12, 2021