WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Instagram, LLC v. Nerijus Abrutis, Nerijus Abrutis

Case No. D2021-2047

1. The Parties

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

Respondent is Nerijus Abrutis, Nerijus Abrutis, Lithuania.

2. The Domain Name and Registrar

The disputed domain name <instavideosdownloader.com> (the “Domain Name”) is registered with Tucows Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 28, 2021. On June 29, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 29, 2021, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on July 2, 2021 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on July 5, 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 Respondent of the Complaint, and the proceedings commenced on July 6, 2021. In accordance with the Rules, paragraph 5, the due date for Response was July 26, 2021. Respondent sent an informal communication on July 2, 2021. On August 5, 2021, the Center informed the Parties that it would proceed with the Panel Appointment.

The Center appointed Clive L. Elliott Q.C., as the sole panelist in this matter on August 16, 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

Complainant is a world-renowned online photo and video sharing social networking application. Since its launch in 2010 Complainant has rapidly acquired and developed considerable goodwill and renown worldwide. It was acquired by Facebook, Inc in 2012.

Complainant has consistently ranked among the top “apps” for mobile devices, including for iOS and Android operating systems. It has been the recipient of numerous awards and is currently the 3rd most downloaded app for iOS phones worldwide.

Complainant is the owner of the registered trade marks INSTA and INSTAGRAM (“Complainant’s Marks”) in numerous countries throughout the world, including:

Complainant is also the registered owner of domain names containing Complainant’s Marks including, but not limited to:

<instagram.com> created on June 4, 2004,
<instagram.net>, created on November 6, 2010;
<instagram.dk> created on January 14, 2011; and
<instagram.ca> created on January 7, 2014.

Complainant operates its business under the website “www.instagram.com” and is ranked the 22nd most visited website in the world according to web information company Alexa.

According to the publicly available WhoIs the Domain Name was registered on October 23, 2018.

5. Parties’ Contentions

A. Complainant

Complainant states that the Domain Name is identical to Complainant’s Mark in that it incorporates Complainant’s INSTA Mark in its entirety with the addition of the descriptive terms “videos” and “downloader” under the gTLD “.com”.

Complainant asserts that the Domain Name resolves to a website which purports to provide a tool to download content from Instagram, such as photos and videos. It allows users to download Instagram stories, whereas this type of content in Instagram is meant to be deleted within 24 hours. Complainant goes on to assert that the website associated with the Domain Name, as well as displaying numerous commercial banners, also displays a logo which is a modified version of Complainant’s Mark, i.e.

Complainant submits that Complainant’s INSTA Mark is immediately recognizable in the Domain Name as the leading element, and that the addition of the terms “videos” and “downloader” do not prevent a finding of confusing similarity. It further submits that the Domain Name is confusingly similar to Complainants INSTAGRAM Mark as it comprises “insta” a distinctive abbreviation of Complainant’s INSTAGRAM Mark.

Complainant asserts that Respondent is not using the Domain Name in connection with a bona fide offering of goods or services, nor is it a licensee of Complainant. Respondent is not affiliated with Complainant and Complainant has not granted any authorization for Respondent to make use of Complainant’s Marks in any way.

Complainant states that the website at the Domain Name purports to provide a tool to download content from Instagram. The tools offered are in breach of Complainant’s Facebook’s Developer Policies as the creation of a tool that facilitates the downloading of content from the Instagram platform goes beyond the limits that Instagram has placed on the functionality of its own product.

Complainant points out that not only does the provision of such a tool violate Complainant’s Facebook’s Developer Policies, it also places the privacy and security of Instagram users at risk, as content scraped from Complainant’s platform may be stored and later used for unauthorized purposes by third parties.

Complainant goes on to submit that Respondent is not making a legitimate noncommercial or fair use of the Domain Name without intent for commercial gain to misleadingly divert consumers, in that the website contains commercial banners from which Respondent is able to derive click-through revenue.

Complainant states that Complainant’s Marks are inherently distinctive and well known throughout the world in connection with its online photo-sharing social network, and that its INSTAGRAM Mark has been continuously and extensively used since its launch in 2010. Thereby Complainant claims Respondent could not credibly argue that it did not have knowledge of Complainant or Complainant’s Marks when registering the Domain Name and has therefore registered the Domain Name in bad faith. Further evidence of bad faith registration, Complainant contends, is that the Domain Name is being used to point to a website displaying a modified version of Complainant’s Marks.

B. Respondent

There was no formal response received from Respondent.

6. Discussion and Findings

A. Identical or Confusingly Similar

Complainant has established it has rights in Complainant’s Marks. Complainant started its operations in 2010. It provides a world-leading online photo and video sharing social networking application. Today, its app has become the world’s 3rd most downloaded app for iOS phones.

Complainant also shows it has secured trade mark rights in a number of jurisdictions around the world.

Complainant submits that the Domain Name is identical or confusingly similar to Complainant’s Mark in that it incorporates Complainant’s INSTA Mark in its entirety, with the addition of the terms “videos” and “downloader”. It further submits that the Domain Name is confusingly similar to Complainant’s INSTAGRAM Mark. That is, on the basis that it comprises “insta”, which it says, is a distinctive abbreviation of Complainant’s INSTAGRAM Mark. The Domain Name cannot be regarded as identical to Complainant’s INSTA Mark, because it also contains the terms “videos” and “downloader”.

The Domain Name is however confusingly similar to Complainant’s Marks, insofar as it contains, in addition to a leading feature of Complainant’s Marks namely “insta”, the terms “videos” and “downloader”. Both of these terms are associated with activities to do with Complainant and its highly popular application.

The addition of the terms “videos” and “downloader”, does not prevent a finding of confusing similarity. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.8.

The Domain Name is confusingly similar to Complainant’s Marks, thereby making out the first ground under the Policy.

B. Rights or Legitimate Interests

Complainant contends that the Domain Name resolves to a website which allegedly provides a tool to download content from Instagram. Complainant claims this is contrary to Complainant’s policies and the functional features of its application, which only allow this type of content in Instagram to remain accessible for 24 hours. In addition, Complainant alleges that Respondent is using a logo on its website, which is a modified version of Complainant’s logo mark as set out above.

In the absence of any attempt to refute these allegations, it is apparent that Respondent is not only providing a tool to allow the download of content from Instagram in a manner not sanctioned by Complainant, but it is using Complainant’s logo mark to do so. This is likely to give the false impression that members of the public are accessing a genuine site, associated with Complainant, when that is not the case. The Panel concludes Respondent is benefiting from wrongly associating itself with Complainant and its products and services.

Respondent appears to have no rights or legitimate interests in the Domain Name, given that Complainant has not authorized or permitted Respondent to register or use the Domain Name. Under the circumstances, the Panel concludes that the Domain Name was not registered and has not been used for any legitimate or fair purpose.

Accordingly, the second ground under the Policy is made out.

C. Registered and Used in Bad Faith

Complainant raises two points in support of its argument that the Domain Name was registered and used in bad faith. First, that Respondent cannot credibly argue that it lacked knowledge of Complainant or Complainant’s Marks when registering the Domain Name. Secondly, that the Domain Name is being used to point to a website displaying a modified version of Complainant’s Marks.

Both points have merit under the circumstances.

The Panel finds that the Domain Name was registered and used for the purpose of taking advantage of Complainant’s reputation and Complainant’s Marks to misleadingly attract Internet users to Respondent’s website webpages. This amounts to bad faith conduct under the Policy.

Complainant has therefore clearly established the third ground under 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 <instavideosdownloader.com> be transferred to Complainant.

Clive L. Elliott
Sole Panelist
Date: September 10, 2021