WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Instagram, LLC v. Domain Administrator, See PrivacyGuardian.org / shuchang sun
Case No. D2021-1990
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 / shuchang sun, China.
2. The Domain Name and Registrar
The disputed domain name <igdig.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 24, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 24, 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 25, 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 July 2, 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 Respondent’s default on July 26, 2021.
The Center appointed Reyes Campello Estebaranz as the sole panelist in this matter on August 3, 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 a United States company, founded in 2010 and acquired by Facebook, Inc. in 2012. It operates globally under the trademark INSTAGRAM, providing an online mobile photo and video sharing social networking application (or “app”) that allows users across the globe to edit and share photos/videos and exchange messages in an online social network. Per the Complaint, the Complainant’s social media platform has over one billon monthly active accounts worldwide. The nature of the Complainant’s business is exclusively online, being its main website “www.instagram.com”, which is ranked the 22nd most visited website in the world, according to the web information company Alexa. Prior decisions under the Policy have recognized the worldwide renown of the trademark INSTAGRAM.1
The Complainant holds registered trademark rights in the mark INSTAGRAM as well as in the mark IG (the abbreviation of INSTAGRAM), and its popular camera logo, being the owner of a substantial trademark portfolio, of which the following are sufficient representative for the present proceeding:
- European Union Trademark No. 017946393, IG, registered on January 31, 2019, Classes 9, 42, and 45;
- United States Trademark No. 5299116, logo, registered on October 3, 2017, in Class 9; and
- European Union Trademark No. 015442502, logo, registered on September 21, 2016, in Classes 9, 25, 35, 38, 41, 42, and 45.
The 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, including <instagram.com>, <instagram.net>, <instagram.dk>, <instagram.us>, <instagram.ae>, and <instagram.org.in>.
The disputed domain name was registered on July 7, 2019, and it is currently apparently inactive resolving to a browser error message at the domain name <inspirationhistorical [dot] com>. According to the evidence provided by the Complainant, the disputed domain name was linked to a website in English language, providing anonymous access to other people’s Instagram content such as profile information, photos, and user stories. Through this website, the user could also view photos and videos categorized by popular users, locations, and hashtags. At the time of filing the Complaint, the search function of this website was not working and while this website included what appeared to be links to Instagram posts, the images themselves were no longer displayed. The Complainant provided evidence of the previous content of this website and its reduced functionality at the time of filing the Complaint. This website used a modified version of the Complainant’s popular camera logo as a favicon, and it did not contain any contact information, indicating at its footer “Copyright © 2021 igDig, All Rights Reserved.”
5. Parties’ Contentions
A. Complainant
Key contentions of the Complaint may be summarized as follows:
The disputed domain name comprises the IG trademark in its entirety followed by the element “dig” as a suffix, which does not prevent a finding of confusing similarity. The Complainant’s mark is recognizable in the disputed domain name, and the applicable gTLD, in this case ".com", may be disregarded for the purposes of assessment under the first element (as it is a standard registration requirement). The content of the website linked to the disputed domain name, makes it clear that the Respondent has sought to target the Complainant's trademarks.
The Respondent has no rights or legitimate interests in the disputed domain name, being unable to invoke any of the circumstances set out in paragraph 4(c) of the Policy. The Respondent is not commonly known by the disputed domain name, it is not making a legitimate noncommercial or fair use of the disputed domain name and it is not using the disputed domain name in connection with any bona fide offering of goods or services. The Respondent’s name bears no resemblance with the disputed domain name, and there is no evidence of having acquired any trademark rights over the terms “ig” or “igdig”. The Respondent is not authorized to use the IG mark or any variation thereof, and the disputed domain name is used in connection to a website displaying content scraped from the Complainant’s platform using the Complainant’s camera logo as a favicon, with no authorization and without including any disclaimer-like statement regarding its lack of relationship with the Complainant. The services provided under the disputed domain name violate Instagram's Terms of Use, placing the security and privacy of its users at risk (as content scraped from Instagram's platform may be stored and later used for unauthorized purposes by third parties), and breach Facebook's Developer Policies. Prior UDRP decisions have held that such use does not amount to a bona fide offering of goods or services.2
The disputed domain name was registered in bad faith. Due to the well-known character of the INSTAGRAM mark, being the IG mark recognized as its common abbreviation, the Respondent could not credibly argue that it did not have knowledge of these trademarks when registering the disputed domain name. The Respondent’s intent to target the Complainant and its trademarks is inferred from the content of the website linked to the disputed domain name. Additional evidences of bad faith are the use of a privacy service to mask the Respondent’s identity providing as well apparently false or incomplete details, and the fact that the Respondent has registered a substantial number of infringing domain names targeting the Complainant’s trademarks, which evidences an abusive pattern of bad faith.3
The disputed domain name is being used in bad faith. The Respondent's website purports to provide a tool for anonymous navigation and viewing of Instagram content, circumventing the requirement of creating an account to access to this social media platform, in violation of the Complainant’s Terms of Use and Facebook’s Developer Policies. Prior UDRP panels have held that unauthorized automated accessing and downloading of content from social networks amounts to bad faith. The website linked to the disputed domain name uses a source code with a meta description that indicates an intention to attract Internet users seeking the Complainant (<meta name=”description” content=”The front page of Instagram”>). The Respondent is attempting to attract Internet users to its website, resulting from a misleading impression that this website is endorsed or otherwise approved by the Complainant, and it is engaged in data scraping of the Complainant’s platform content, violating the Complainant's Terms of Use and Facebook’s Developer Policies.
The Complainant has cited previous decisions under the Policy that it considers supportive of its position, and requests the transfer of the disputed domain name.
B. Respondent
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
The Complainant has made the relevant assertions as required by the Policy and the dispute is properly within the scope of the Policy. The Panel has authority to decide the dispute examining the three elements in paragraph 4(a) of the Policy, taking into consideration all of the relevant evidence, annexed material and allegations, and performing some limited independent research under the general powers of the Panel articulated, inter alia, in paragraph 10 of the Rules.
A. Identical or Confusingly Similar
The Complainant has rights in the registered trademark IG, abbreviation of its reputed trademark INSTAGRAM, by virtue of its trademark registrations and as a result of its global goodwill and reputation. The disputed domain name incorporates the IG mark in its entirety followed by the term “dig”, which does not prevent a finding of confusing similarity. The Complainant’s trademark is recognizable in the disputed domain name, and the gTLD “.com” is a technical requirement, generally disregarded for the purpose of the analysis of the confusing similarity. See sections 1.7, 1.8 and 1.11 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”). The use to which the disputed domain name has been put (notably displaying content scraped from the Complainant’s platform using the Complainant’s camera logo as a favicon) further affirms an intent to target the rights of the Complainant in its IG and INSTAGRAM marks. See section 1.15 of the WIPO Overview 3.0.
Accordingly, this Panel finds that the disputed domain name is confusingly similar to the Complainant’s marks, and the first element of the Policy under paragraph 4(a)(i) has been satisfied.
B. Rights or Legitimate Interests
Although the Complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, UDRP panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the often impossible task of proving a negative, requiring information that is primarily if not exclusively within the respondent’s knowledge. Thus, the consensus view is that paragraph 4(c) of the Policy shifts to the respondent the burden of production to come forward with relevant evidence of rights or legitimate interests in the disputed domain name, once the complainant has made a prima facie case that the respondent lacks rights or legitimate interests.
The Complainant’s above-noted assertions and evidence in this case effectively shift the burden to the Respondent of producing evidence of rights or legitimate interests in the disputed domain name, providing the circumstances of paragraph 4(c) of the Policy, without limitation, that may establish rights or legitimate interests in the disputed domain name in order to rebut the Complainant’s prima facie case.
The Respondent has not replied to the Complainant’s contentions, not providing any explanation or evidence of rights or legitimate interests in the disputed domain name.
The Panel, under its general powers included, inter alia, paragraph 10 of the Rules, has consulted the Internet archive WayBackMachine in relation to the disputed domain name, finding that, at least since August 6, 2019 until March 8, 2021, it has apparently been used to resolve to a website providing unauthorized anonymous access to the Complainant’s social media platform (without accessing to the Instagram platform and without an Instagram account). As pointed out by the Complainant, the operation of such service may put the privacy and security of Instagram users at risk. This website used in its tab the Complainant’s logo and provided access to Instagram profiles under the various categories, like “America Football Players”, “Reality TV Star”, “Too Hot to Handle”, “Instagram Model”, etc., containing no disclaimer for the lack of affiliation to the Complainant and no contact details for the provider of the website. The Panel considers that such use cannot be considered a bona fide offering of goods or services, nor can it be considered a legitimate noncommercial or fair use of the disputed domain name under the Policy.
In view of the above and in the lack of any plausible explanation to the contrary, it appears more likely to the Panel that the Respondent has registered the disputed domain name targeting the Complainant’s trademark and has used it in an attempt to attract Internet users to its website offering illegitimate services. In the Panel’s view, such conduct cannot give rise to rights or legitimate interests of the Respondent in the disputed domain name. The use of the disputed domain name for illegal activity (providing unauthorized anonymous access to the Complainant’s social media platform) can never confer rights or legitimate interests on the Respondent. See section 2.13, WIPO Overview 3.0.
Furthermore, a core factor in assessing fair use of the disputed domain name is that it does not falsely suggest affiliation with the Complainant’s trademark. The disputed domain name incorporates the IG mark followed by the term “dig”, which may refer to a way to access (or to dig into) to the Complainant’s social media platform. The Panel has found many websites over the Internet offering options to access the Complainant’s site and other social media platforms from China (where the Respondent is apparently located according to the Registrar verification and where these social media platforms are not currently legally accessible). Therefore, the Panel considers that there is a risk of implied affiliation. See section 2.5.1, WIPO Overview 3.0.
The Panel further considers remarkable the Respondent’s attitude of deliberately choosing not to reply to the Complaint, and apparently taking down the website that was linked to the disputed domain name.
All these circumstances lead the Panel to conclude that the Complainant has established a strong prima facie case, not rebutted by the Respondent, and all cumulative facts and circumstances of this case point to consider that the Respondent lacks any rights or legitimate interests in the disputed domain name. Therefore, the second element of the Policy under paragraph 4(a)(ii) has been established.
C. Registered and Used in Bad Faith
The Policy, paragraph 4(a)(iii), requires that the Complainant establishes that the disputed domain name has been registered and is being used in bad faith.
The applicable standard of proof in UDRP cases is the “balance of probabilities” or “preponderance of the evidence”, being the Panel prepared to draw certain inferences in light of the particular facts and circumstances of the case. See section 4.2, WIPO Overview 3.0.
The Panel notes that both the INSTAGRAM mark and its popular abbreviation the IG mark have extensive presence over the Internet, being unlikely that the Respondent did not have knowledge of these trademarks at the time of registration of the disputed domain name. Furthermore, all cumulative circumstances of this case point to bad faith registration and use of the disputed domain name:
(i) the disputed domain name incorporates the trademark IG in its entirety, followed by a term (“dig”) that may refer to a way to access (or to dig into) the Complainant’s platform content, which enhances the intrinsic risk of affiliation;
(ii) the Complainant’s trademark INSTAGRAM is inherently distinctive and well known worldwide, being the trademark IG its popular abbreviation;
(iii) the Respondent used a privacy registration service, and, according to the evidence provided by the Complainant, is apparently engaged in a bad faith pattern of abusive domain name registration targeting the Complainant and its trademarks, having registered at least 10 other domain names comprising the Complainant’s trademarks;4
(iv) the disputed domain name has been used for illegal activity, linked to a website that provided unauthorized anonymous access to the Complainant’s social media platform (without accessing to the Instagram platform and without an Instagram account), putting the privacy and security of Instagram users at risk; and
(v) the Respondent has not offered any explanation of any rights or legitimate interests in the disputed domain name and has not come forward to deny the Complainant’s assertions of bad faith, choosing not to reply to the Complaint, and apparently taking down the website that was linked to the disputed domain name.
In light of the above, taking into consideration all cumulative circumstances of this case, on the balance of probabilities, the Panel considers that the disputed domain name was registered and is being used in bad faith, with the intention of obtaining a free ride on the established reputation of the Complainant by intentionally creating a likelihood of confusion as to the affiliation or association with the Complainant and its reputed trademark, trying to misleadingly attract Internet users to the Respondent’s site.
Accordingly, the Panel concludes that the Complainant has met its burden of establishing that the disputed domain name has been registered and is being used in bad faith.
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 <igdig.com> be transferred to the Complainant.
Reyes Campello Estebaranz
Sole Panelist
Date: August 17, 2021
1 See Instagram, LLC v. lu xixi, WIPO Case No. D2015-1168; Instagram, LLC v. Sedat Das, Arda, Domain Admin, whoisprotection biz, Domain Admin Domain Admin, whoisprotection biz, WIPO Case No. D2016-2382; Instagram, LLC v. Ozgur Kalyoncu, Seo Master and Huseyin Erdem, WIPO Case No. D2016-1710; Instagram, LLC v. Omer Ulku, WIPO Case No. D2018-1700; Instagram, LLC v. Ellie Walker, WIPO Case No. D2018-0669; Instagram, LLC v. Orhan Uzdu, WIPO Case No. D2019-2806; and Instagram, LLC v. Super Privacy Service LTD c/o Dynadot / Zayed, WIPO Case No. D2019-2897.
2 The Complainant cites Instagram, LLC v. Private WhoIs, Global Domain Privacy Services Inc / Aleksandr Lyahevich, Private Person, WIPO Case No. D2021-0463; and Instagram, LLC v. WhoisGuard, Inc. / Name Redacted, Senol Sahin, thepicdeer.com, Ekrem Gueltekin and Ekrem Gultekin, WIPO Case No. D2020-2826.
3 The Complainant cites the following domain names that have apparently been registered by the Respondent: <Instagram-web-online.com>, <instagram-wp.com>, <insta-pictrues.com>, <insta-segu.com>, <facebook-instagram-following.com>, <facebook-instagram-gratis.com>, <facebook-instagram-segu.com>, <instagram-following.com>, <instagram-gratis.com>, and <instagram-hot.com>.
4 See footnote 3 supra.