WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Instagram, LLC v. Domain Administrator, See PrivacyGuardian.org / Anhar Alam, Finishers Ltd

Case No. D2021-1979

1. The Parties

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

The Respondent is Domain Administrator, See PrivacyGuardian.org, United States/ Anhar Alam, Finishers Ltd, Pakistan.

2. The Domain Name and Registrar

The disputed domain name <thepicgram.com> is registered with NameSilo, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 23, 2021. On June 23, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 23, 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 24, 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 28, 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 July 5, 2021. In accordance with the Rules, paragraph 5, the due date for Response was July 25, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Parties with the Commencement of Panel Appointment Process on August 2, 2021.

The Center appointed Alistair Payne as the sole panelist in this matter on August 9, 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 the very well known global online photo and video sharing social networking application and currently has over 1 billion monthly active users and 500 million daily active users, and is ranked the 22nd most visited site in the world according to web information company, Alexa. It owns numerous trade mark registrations worldwide for the word mark INSTAGRAM including United States Trademark Registration No. 4,146,057, INSTAGRAM, registered on May 22, 2012 and European Union Trade Mark No. 015868797 for GRAM, registered on January 12, 2017.The Complainant also owns various domain names incorporating its INSTAGRAM trade mark, including <instagram.com>.

The disputed domain name was registered on August 23, 2019 and resolves to a website which provides a tool for viewing content on the Complainant’s Instagram website, such as videos, photos, posts, stories and biographies and all anonymously and without having an Instagram account.

5. Parties’ Contentions

A. Complainant

The Complainant submits that it owns registered trade mark rights for the INSTAGRAM mark and for the GRAM mark as set out above. It says that the disputed domain name wholly incorporates its GRAM mark in its entirety with the addition of the definite article “the” and the descriptive term “pic” before the generic Top-Level Domain (“gTLD”) “.com”.

The Complainant submits that its GRAM trade mark is immediately recognizable in the disputed domain name and that neither the addition of the definite article “the” and the descriptive term “pic” to the Complainant’s GRAM trade mark prevent a finding of confusing similarity. On the contrary, it says that the addition of the descriptive term “pic”, which appears to be an abbreviation of the word “picture”, further increases the confusing similarity between the disputed domain name and the Complainant’s trade mark as the Complainant is a photo-sharing online social network.

It further submits that the disputed domain name is confusingly similar to its INSTAGRAM trade mark, in that the disputed domain name includes the word “gram” which it says is a distinctive and dominant feature of the Complainant’s INSTAGRAM trade mark. It submits in this regard that prior UDRP panels have found disputed domain names containing distinctive elements of complainants’ trade marks to be confusingly similar to the trade marks at issue, for example, VF Corporation v. Vogt Debra, WIPO Case No. D2016-2650.

The Complainant also notes that while the content of the website associated with a disputed domain name is usually disregarded by UDRP panels when assessing confusing similarity under the first element, in some instances, panels have taken note of the content of the website associated with a domain name to confirm confusing similarity whereby it appears prima facie that the respondent has sought to target a trade mark through the disputed domain name (see for example WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.15.). The Complainant submits that the contents of the Respondent’s website make it clear in this case that the Respondent has sought to target the Complainant’s trade marks through the disputed domain name.

The Complainant submits that the Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services. It says that the Respondent is not a licensee of the Complainant and is not affiliated with the Complainant in any way. The Complainant submits that it has not authorised the Respondent to make use of its INSTAGRAM and GRAM trade marks, in a domain name or otherwise.

Neither, says the Complainant, is there is any evidence to suggest that the Respondent is commonly known by the disputed domain name. According to the Whois records 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 the Respondent being commonly known by the disputed domain name. It submits that there is no evidence of the Respondent having acquired or applied for any trade mark registrations for “thepicgram”, as reflected in the disputed domain name. Nor, says the Complainant is the Respondent currently making a legitimate, noncommercial, or fair use of the disputed domain name without intent for commercial gain to misleadingly divert consumers as the Respondent’s website contains commercial banners from which the Respondent presumably derives click-through revenue and is therefore commercially motivated.

Further, it notes that the website at the disputed domain name provides a tool for viewing content from Instagram, without the need for an Instagram account and that the tools offered on the Respondent’s website are in breach of Facebook’s, as the group parent of the Complainant’s, developer policies because the creation of a tool that facilitates the unrestricted viewing of content from the Instagram platform without first logging into an account goes beyond the limits that Instagram has placed on the functionality of its own product. The Complainant also submits that the provision of a tool that allows Internet users to view content from Instagram without using an Instagram account does not amount to legitimate noncommercial or fair use in the form of a fan site or otherwise and that the provision of services that violate Instagram’s Terms of Use and Facebook’s Developer Policies cannot give rise to rights or legitimate interests in the disputed domain name.

Finally, as far as rights or legitimate interests are concerned, the Complainant asserts that the presence of a disclaimer on the website associated with the disputed domain name does not cure the Respondent’s bad faith, as the Complainant would never consent to its trade mark being used in order to offer services that violate its Terms of Use and Facebook’s Developer Policies, particularly those that facilitate the viewing without an account and the downloading of Instagram content from the Instagram website.

In terms of registration in bad faith, the Complainant submits that the term “instagram” is highly distinctive and is exclusively associated with the Complainant. It says that its trade marks are inherently distinctive and well known throughout the world in connection with its online photo-sharing social network and that the INSTAGRAM trade mark has been continuously and extensively used since its launch in 2010, and has rapidly acquired considerable reputation and goodwill worldwide. The Complainant submits that the Respondent could not credibly argue that it did not have knowledge of Instagram or its INSTAGRAM and GRAM trade marks when registering the disputed domain name in August 2019, by which time Instagram had amassed over 1 billion monthly active users.

In any event, says the Complainant, the Respondent’s intent to target the Complainant when registering the disputed domain name may be inferred from the contents of the website to which the disputed domain name re-directs, which make explicit reference to Instagram and makes prominent use of the Complainant’s trade marks. The Complainant further notes that from the time since the Respondent registered the disputed domain name it has not displayed any bona fide intent in relation to the disputed domain name but has rather taken steps to set up a website providing a tool for viewing content from Instagram without the need for an Instagram account and in violation of Instagram’s Terms of Use and Facebook’s Developer Policies.

In terms of use in bad faith, the Complainant submits that the Respondent is using the disputed domain name to intentionally attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s trade marks as to the source, sponsorship, affiliation or endorsement of the website, in accordance with paragraph 4(b)(iv) of the Policy.

The Complainant says that the disputed domain name is being used by the Respondent to point to a website which offers a tool for the unauthorized viewing of content on Instagram, circumventing the requirement of creating an account to access the Instagram which is in violation of the Complainant’s Terms of Use and Facebook’s Developer Policies. It notes that prior UDRP panels have held that the unauthorized automated accessing of content from social networks amounts to bad faith. See Facebook, Inc. v. Registration Private, Domains By Proxy, LLC / Giap Nguyen Van and Giao Tran Ngoc, WIPO Case No. D2018-2762.

The Complainant further submits that the Respondent’s use of the disputed domain name is intended for financial gain, in accordance with paragraph 4(b)(iv) of the Policy. As described above, the fact that the Respondent’s website displays commercial banners, from which the Respondent is likely obtaining financial gain, shows that the Respondent’s use of the disputed domain name is clearly intended for commercial gain and therefore constitutes additional strong evidence of bad faith use. Finally, it says that the presence of a disclaimer at the bottom of the Respondent’s website does not serve to render the Respondent’s activities bona fide, as the Respondent’s website clearly creates a misleading impression of endorsement by the Complainant and that in the surrounding circumstances, the 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 on the part of the Respondent.

B. Respondent

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

6. Discussion and Findings

A. Identical or Confusingly Similar

The Complainant has demonstrated that it owns United States Trademark Registration No. 4,146,057, for INSTAGRAM, registered on May 22, 2012 and also European Union Trade Mark No. 015868797 for GRAM, registered on January 12, 2017.

Although the disputed domain name wholly contains the Complainant’s registered GRAM mark, the Complaint is overall based upon the alleged abuse of the coined and highly distinctive INSTAGRAM trade mark registration. In these circumstances and despite the fact that the disputed domain name differs from the INSTAGRAM mark in that it prefixes the words “the pic” before the suffix “gram” as opposed to the term “insta” that is prefixed before the word “gram” in the Complainant’s INSTAGRAM mark, the Panel prefers and is able to determine this case based upon the Complainant’s registration for INSTAGRAM.

The Panel accepts the Complainant’s evidence that with more than one billion active accounts, its INSTAGRAM platform and mark has now become one of the most well-known brands in the world and it seems likely to this Panel that relatively few people who are connected to the Internet would be unaware of its existence. In this event and considering the factual background to this case as outlined above, the Panel finds that there are special circumstances at play here for the purposes of the determination of confusing similarity between the disputed domain name and the Complainant’s INSTAGRAM mark.

While the content of the website associated with a disputed domain name is usually disregarded by UDRP panels when assessing confusing similarity under the first element, in some instances, panels have taken note of the content of the website associated with a domain name to confirm confusing similarity whereby it appears prima facie that the respondent has sought to target a trade mark through the disputed domain name. See WIPO Overview 3.0, section 1.15. In this case it is apparent, as further described under Parts B and C below, that the Respondent’s activity in using the disputed domain name is based upon and directly targets the Complainant’s exceptionally well- known INSTAGRAM trade mark and the website associated with it. In these very particular circumstances, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s INSTAGRAM trade mark registration.

As a result, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s trade mark registration for INSTAGRAM and that the Complaint succeeds under this element of the Policy.

B. Rights or Legitimate Interests

The Complainant has submitted that the Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services, that the Respondent is not a licensee of, or affiliated with, the Complainant in any way and that the Complainant has not authorised the Respondent to make use of its INSTAGRAM and GRAM trade marks, whether in a domain name or otherwise.

The Complainant has also submitted that there is no evidence to suggest that the Respondent is commonly known by the disputed domain name and that based on the Respondent’s use of a privacy service to mask its identity that it is not being used in the promotion of any business or any other online service that might give rise to the Respondent being commonly known by the disputed domain name. It has submitted that there is no evidence of the Respondent having acquired or applied for any trade mark registrations for “thepicgram”, as reflected in the disputed domain name.

It has also submitted that the Respondent is not making a legitimate, noncommercial, or fair use of the disputed domain name without intent for commercial gain to misleadingly divert consumers. It notes that the Respondent’s website contains commercial banners from which the Respondent presumably derives click-through revenue and therefore says that its use of the disputed domain name is commercially motivated.

The website at the disputed domain name provides a tool for viewing content from Instagram, without the need for an Instagram account. The Complainant notes that the tools offered on the Respondent’s website are in breach of Facebook’s developer policies (the group parent of the Complainant) because the creation of a tool that facilitates the unrestricted viewing of content from the Instagram platform without first logging into an account goes beyond the limits that Instagram has placed on the functionality of its own product and raises various security and other issues. The Complainant has also submitted that the provision of a tool that allows Internet users to view content from Instagram without using an Instagram account does not amount to a legitimate non-commercial or fair use in the form of a fan site or otherwise and that the provision of services that violate Instagram’s Terms of Use and Facebook’s Developer Policies cannot give rise to rights or legitimate interests in the disputed domain name.

Finally, the Complainant has asserted that the presence of a disclaimer on the website associated with the disputed domain name does not cure the Respondent’s bad faith, as the Complainant would never consent to its trade mark being used in order to offer services that violate its Terms of Use and Facebook’s Developer Policies, particularly those that facilitate the viewing without an account and the downloading of Instagram content from the Instagram website.

There is no evidence before the Panel that the Respondent is using the disputed domain name for any purpose other than to divert Internet users to the website to which it resolves in order to facilitate their unrestricted viewing of content from the Instagram platform without first logging into an account. In diverting Internet users in this manner to the website at the disputed domain name, it appears that the Respondent derives click-through revenue from commercial banners on the website. Its use of the disputed domain name to facilitate access to the Instagram website by circumventing the Complainant’s registration processes is clearly for its own commercial purposes. There is no evidence of any separate bona fide business purpose associated with the Respondent’s use of the disputed domain name, or that it has developed any other business or rights in connection with the disputed domain name.

Accordingly, the Panel finds that the Complainant has made out a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name which has not been rebutted by the Respondent and that the Complaint also succeeds under this element of the Policy.

C. Registered and Used in Bad Faith

The disputed domain name was registered in August 2019 some seven years after the registration of the Complainant’s original United States registration for its INSTAGRAM mark. The INSTAGRAM mark is highly distinctive and has been continuously and extensively used since its launch in 2010 such that by the date of registration of the disputed domain name the Complainant’s Instagram website had amassed over 1 billion monthly active users. It has rapidly acquired considerable reputation and goodwill worldwide and is of that special category of marks that is truly well known in most places in the world. It is very hard to conceive of the Respondent, based in Pakistan, not having been aware of the Complainant’s INSTAGRAM mark and business at the date of registration of the disputed domain name. In any event the fact that the disputed domain name is being used by the Complainant specifically to facilitate access by Internet users to the Complainant’s Instagram website and that the INSTAGRAM mark is used and referred to on the Respondent’s website, demonstrates that the Respondent was very much aware of the Complainant and of its INSTAGRAM mark when it registered the disputed domain name.

Under paragraph 4(b)(iv) of the Policy there is evidence of registration and use of the disputed domain name in bad faith where a Respondent has used the disputed domain name to intentionally attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s trade marks as to the source, sponsorship, affiliation or endorsement of the website.

As described under Part B above, the Respondent is intentionally using the disputed domain name to confuse and divert Internet users to its own website in order to facilitate uncontrolled and unauthorised viewing of content on Instagram by circumventing the requirement that users create an account to access that site or to agree to Instagram’s various site use and security policies. The Respondent has used the Complainant’s INSTAGRAM mark on the website, including in headings such as “Instagram Online Viewer” and “Top Rated Instagram Accounts” and has used or referred to the mark extensively in the website content to the extent that Internet users could easily be confused into thinking that the site was authorised by or had some connection with the Complainant. It appears that the Respondent gains financially from providing this facility and driving Internet traffic through it by displaying various sponsored commercial banners on its website. This amounts to evidence of registration and use of the disputed domain name in bad faith under paragraph 4(b)(iv) of the Policy.

The Panel agrees with the Complainant that, in this case, the presence of a disclaimer at the bottom of the Respondent’s website does not serve to render the Respondent’s activities bona fide. In the circumstances that the Respondent’s website arguably creates a misleading impression of endorsement by the Complainant Internet users are likely to be confused before they ever read as far as the disclaimer. The use of a privacy service to conceal the Respondent’s identity further supports an inference of bad faith on the part of the Respondent.

Accordingly, the Panel finds that the disputed domain name has been both registered and used in bad faith and that the Complaint also succeeds under this element 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 disputed domain name <thepicgram.com> be transferred to the Complainant.

Alistair Payne
Sole Panelist
Date: August 23, 2021