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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Instagram, LLC v. Domain Administrator, Registrant of aloinstagram.com / Emily R Deal, MizbanMusic

Case No. D2021-2127

1. The Parties

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

The Respondent is Domain Administrator, Registrant of aloinstagram.com, United Kingdom / Emily R Deal, MizbanMusic, Canada.

2. The Domain Name and Registrar

The disputed domain name <aloinstagram.com> is registered with Atak Domain Hosting Internet ve Bilgi Teknolojileri Limited Sirketi d/b/a Atak Teknoloji (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 2, 2021. On July 5, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 5, 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 August 6, 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 August 11, 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 August 12, 2021. In accordance with the Rules, paragraph 5, the due date for Response was September 1, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 6, 2021.

The Center appointed Mihaela Maravela as the sole panelist in this matter on September 17, 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 operates an online photo- and video-sharing social-networking application. The Instagram application was launched in 2010, it was acquired by Facebook, Inc. in 2012, and today it is one of the world’s fastest growing photo- and video-sharing and editing software and online social network, with more than 1 billion monthly active accounts worldwide.

The Complainant is the exclusive owner of a number of registered trademarks consisting of or including the word INSTAGRAM or a figurative trademark including:

- the International trademark registration No. 1129314 for INSTAGRAM, registered on March 15, 2012 covering goods and services in classes 9 and 42;

- the European Union Trade Mark registration No. 14493886 for INSTAGRAM, registered on December 24, 2015 covering goods and services in classes 25, 35, 38, 41, and 45;

- the European Union Trade Mark registration No. 015442502 for figurative trademark , registered on September 21, 2016 covering goods and services in classes 9, 25, 35, 38, 41, 42, and 45.

The Complainant is the owner of numerous domain names consisting of or including its INSTAGRAM trademark, such as <instagram.com>.

The disputed domain name was registered on May 14, 2019. It resolves to a website which provides a tool to view profile pictures and download content on Instagram, such as videos, photos, and stories, without having an Instagram account. The main page of the Respondent’s website states:

“Download photo/video/ Story/ IGTV from instagram and monitor top Hashtags on it by using Aloinstagram’s downloader tools, online and free. Also access the latest, news, training and tips through the aloinstagram’s magazine pages. AloInstagram is all about great press pages and downloader tools for instagram.”

5. Parties’ Contentions

A. Complainant

The Complainant argues that the disputed domain name incorporates its trademark INSTAGRAM in its entirety, with the addition of the descriptive term “alo”, which means “hello” in Turkish. The Complainant argues that its INSTAGRAM trademark is immediately recognizable in the disputed domain name, and that the addition of the descriptive term “alo” to the Complainant’s INSTAGRAM trademark does not prevent a finding of confusing similarity. The Complainant concludes that the disputed domain name is confusingly similar to its trademark INSTAGRAM.

With respect to the second element, the Complainant argues that the Respondent is not a licensee of the Complainant, that the Respondent is not affiliated with the Complainant in any way and that the Complainant has not granted any authorization for the Respondent to make use of its INSTAGRAM trademark, in a domain name or otherwise. The website at the disputed domain name provides a tool for viewing content from Instagram without the need for an Instagram account, and the Complainant contends this is in breach of Instagram’s terms of use that require provision of accurate registration information to access content. Moreover, the Complainant argues that the website at the disputed domain name purports to provide a tool to download content from Instagram, in breach of Facebook’s Developer Policies. The Complainant further argues that the mentioned activity is also placing the privacy and security of Instagram users at risk, as content downloaded from the Instagram platform may be stored and later used for unauthorised purposes by third parties.

Further, the Complainant argues that the Respondent is not commonly known by the disputed domain name. Moreover, the Respondent is not making a legitimate noncommercial or fair use of the disputed domain name as the website at the disputed domain name contains commercial banners from which the Respondent presumably derives click-through revenue. The Complainant further 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. 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.

As regards the third element, the Complainant contends that its trademarks are inherently distinctive and well known throughout the world in connection with its online photo-sharing social network. The Complainant also argues that the term “instagram” is highly distinctive and is exclusively associated with the Complainant, therefore the Respondent could not credibly argue that it did not have knowledge of Instagram or its INSTAGRAM trademark when registering the disputed domain name. 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 resolves, which makes explicit reference to Instagram and prominent use of the Complainant’s trademark.

The Complainant further argues that the Respondent is using the disputed domain name in bad faith to point to a website which offers a tool for the unauthorized viewing and downloading of content on Instagram, circumventing the requirement of creating an account to access Instagram and the impossibility of downloading content from the platform, in violation of the Complainant’s Terms of Use and Facebook’s Developer Policies. Such a tool may place the privacy and security of Instagram’s users at risk, given that such content may be stored and later used for unauthorized purposes by third parties. Moreover, the disputed domain name is being used to point to a website displaying modified versions of the Complainant’s trademark and using the same distinctive gradient colour palette, thereby creating a misleading impression of association with the Complainant in bad faith.

B. Respondent

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

6. Discussion and Findings

No communication has been received from the Respondent in this case. However, given that the Complaint was sent to the relevant address disclosed by the Registrar, the Panel considers that this satisfies the requirement in paragraph 2(a) of the UDRP Rules to “employ reasonably available means calculated to achieve actual notice”. Accordingly, the Panel considers it can proceed to determine the Complaint based on the statements and documents submitted by the Complainant as per paragraph 15(a) of the Rules and to draw inferences from the Respondent’s failure to file any Response. While the Respondent’s failure to file a Response does not automatically result in a decision in favor of the Complainant, the Panel may draw appropriate inferences from the Respondent’s default.

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

(i) that the disputed domain name 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 disputed domain name; and

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

A. Identical or Confusingly Similar

The Complainant has provided evidence of its rights over the INSTAGRAM trademark. The trademark is reproduced in its entirety in the disputed domain name. The addition of the word “alo” and does not prevent a finding of confusing similarity with the Complainant’s trademark, which is recognizable in the disputed domain name. The fact that a domain name wholly incorporates a complainant’s trademark is sufficient to establish identity or confusing similarity for the purpose of the Policy, despite the addition of other words to such marks. The addition of an additional term (whether descriptive, geographical, pejorative, meaningless, or otherwise) 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”).

It is well accepted by UDRP panels that a generic Top-Level Domain (“gTLD”), such as “.com”, is typically ignored when assessing whether a domain name is identical or confusing similar to a trademark. See section 1.11 of the WIPO Overview 3.0.

This Panel concludes that the disputed domain name is confusingly similar to the Complainant’s trademark and therefore finds that the requirement of paragraph 4(a)(i) of the Policy is satisfied.

B. Rights or Legitimate Interests

Under paragraph 4(c) of the Policy, any of the following circumstances, if found by the Panel, may demonstrate the respondent’s rights or legitimate interests in the disputed domain name:

(i) before any notice to it of the dispute, the respondent’s use of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; or

(ii) the respondent has been commonly known by the disputed domain name, even if it has acquired no trademark or service mark rights; or

(iii) the respondent is making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

The consensus view of UDRP panels on the burden of proof under paragraph 4(a)(ii) of the Policy is summarized in section 2.1 of the WIPO Overview 3.0, which states: “[…] where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element.”

In the present case the Complainant claims that the Respondent has no rights or legitimate interest in the disputed domain name and argues that the Respondent is not a licensee of the Complainant, that the Respondent is not affiliated with the Complainant in any way, that the Complainant has not granted any authorization for the Respondent to make use of its INSTAGRAM trademark, that the Respondent is not known by the disputed domain name and is not carrying out a bona fide use of the disputed domain name. According to the Complainant, the Respondent has used the disputed domain name for a website offering Internet users a tool for the unauthorized viewing and downloading of content on Instagram, circumventing the Complainant’s requirement of creating an account to access Instagram and the impossibility of downloading content from the Instagram platform. The Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name.

By not replying to the Complainant’s contentions, the Respondent has failed to invoke any circumstances which could demonstrate any rights or legitimate interests in the disputed domain name. In view of the evidence put forward by the Complainant 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 INSTAGRAM trademark and has used it in an attempt to attract Internet users to its website offering illegitimate services. In the Panel’s view, such use cannot give rise to rights or legitimate interests of the Respondent in the disputed domain name.

Furthermore, the nature of the disputed domain name carries a risk of implied affiliation and cannot constitute a fair use as it effectively impersonates or suggests sponsorship or endorsement by the Complainant. See section 2.5.1 of the WIPO Overview 3.0.

With the evidence on file, the Panel finds that the requirement of paragraph 4(a)(ii) of the Policy is satisfied.

C. Registered and Used in Bad Faith

To fulfil the third requirement of the Policy, the Complainant must prove that the disputed domain name was registered and is being used in bad faith.

The disputed domain name was registered many years after the Complainant has obtained registration of its INSTAGRAM trademark. The disputed domain name incorporates the Complainant’s trademark INSTAGRAM in its entirety in combination with a dictionary term. The Complainant’s trademark INSTAGRAM is a coined term with no other meaning. Moreover, the website at the disputed domain name provides a tool to view profile pictures and download content on Instagram. Under these circumstances, and in the absence of any explanation from the Respondent, it is most likely that the Respondent was aware of the Complainant’s trademark at the registration of the disputed domain name. The Panel finds that the Respondent registered the disputed domain name in bad faith.

As regards the use of the disputed domain names, the Panel accepts the Complainant’s evidence, which the Respondent has not disputed, that the Respondent used the disputed domain name for a website offering Internet users a tool for the unauthorized viewing and downloading of content on Instagram, circumventing the Complainant’s requirement of creating an account to access Instagram and the impossibility of downloading content from the Instagram platform. Such use is likely to mislead Internet users looking for the Complainant’s services. Also, according to the unrebutted evidence in the case file, the disputed domain name resolves to a website displaying the INSTAGRAM trademark of the Complainant, as well as a modified version of the Complainant’s figurative trademark, using the same gradient colour palette, without a disclaimer or indication that the Respondent’s website is not operated by or affiliated with the Complainant. The Panel finds that it is more likely than not that the Respondent has registered the disputed domain name targeting the INSTAGRAM trademark of the Complainant in an attempt to attract traffic to the disputed domain name and to offer illegitimate services to Internet users and creating a misleading impression of association with the Complainant.

In these circumstances, the Panel considers that the Respondent has registered and is using the disputed domain name in bad faith and that the Complainant has also established the third element of 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 disputed domain name <aloinstagram.com> be transferred to the Complainant.

Mihaela Maravela
Sole Panelist
Date: October 1, 2021

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