WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Instagram, LLC v. Adem Simsek
Case No. D2021-2487
1. The Parties
The Complainant is Instagram, LLC, United States of America, represented by Tucker Ellis, LLP, United States of America (“United States”).
The Respondent is Adem Simsek, Turkey.
2. The Domain Name and Registrar
The disputed domain name <appinstagram.com> is registered with Wild West Domains, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 31, 2021. On August 2, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 3, 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 4, 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 10, 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 2, 2021.
The Center appointed Benjamin Fontaine as the sole panelist in this matter on September 13, 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 the famous Instagram social networking service and mobile application. It is used since 2010 by millions of users worldwide: Instagram has over a billion monthly active users worldwide, including over 500 million daily users. The main purpose of Instagram is to allow users to share pictures and videos, in particular with pre-established communities.
The Complainant offers its services through a dedicated app and also through its website hosted at <instagram.com>. The evidence on record indicates that this website is ranked among the most visited worldwide (ranked 23rd by <alexa.com>, without any indication of date but presumably very recent). As a result of its extremely rapid growth and popularity, Instagram is ranked 19 in Interbrand’s Best Global Brands 2020.
As a basis for this Complaint, the Complainant relies on both common law rights over INSTAGRAM since October 2010, and on registered trademarks in many jurisdictions. In particular, the Complainant relies on the following United States trademarks:
- INSTAGRAM (word) No. 4,146,057, registered on May 22, 2012;
- INSTAGRAM (word) No. 4,170,675, registered on July 10, 2012.
The disputed domain name was registered on March 24, 2021. In the course of this proceeding the Registrar disclosed the identity of the Respondent, who appears to be an individual domiciled in Turkey. At the time of filing of the Complaint, it was not used actively.
5. Parties’ Contentions
The arguments of the Complainant can be summarized as follows:
On the first element of the Policy, the Complainant claims that the disputed domain name <appinstagram.com>, which adds the generic term “app” to its trademark Instagram, is confusingly similar to its trademark INSTAGRAM. It states in particular that “the subject domain name plainly misappropriates all of the textual components from the Complainant’s INSTAGRAM Mark, such that an ordinary Internet user who is familiar with the INSTAGRAM Mark would, upon seeing the disputed domain name, think an affiliation exists between that domain name and the Complainant and/or its INSTAGRAM Mark”.
On the second element of the Policy, the Complainant asserts that the Respondent has no rights or legitimate interest in the disputed domain name. First, the Respondent has not been authorized to use the trademarks INSTAGRAM of the Complainant, be it through licensing or in any other manner. Second, the Respondent is not known under the Complainant’s trademarks. Third, the Complainant indicates that the Respondent is not making a bona fide offering of goods and services, failing any evidence that could support the relevant use or preparation to use the disputed domain name.
On the third element of the Policy, the Complainant claims that the Respondent has registered, and is using, the disputed domain name in bad faith. The Complainant states in particular that because the INSTAGRAM Mark is so obviously connected with the Complainant and its well-publicized mobile application, and the subject domain name clearly references this mark, the registration and passive holding of the subject domain name by Respondent, who has no connection with the Complainant, supports a finding of bad faith.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy sets forth the following three requirements, which have to be met for this Panel to order the transfer of the disputed domain name to the Complainant:
i. the disputed domain name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
ii. the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
iii. the disputed domain name has been registered and is being used in bad faith.
The Complainant must prove in this administrative proceeding that each of the aforesaid three elements is present so as to have the disputed domain name transferred to it, according to paragraph 4(i) of the Policy.
A. Identical or Confusingly Similar
The Complainant has established rights over the trademark INSTAGRAM.
This trademark is reproduced identically and clearly recognizable in the disputed domain name.
The addition of the word “app” does not influence this finding. Indeed, as stated in WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.7, “in cases where a domain name incorporates the entirety of a trademark, or where at least a dominant feature of the relevant mark is recognizable in the domain name, the domain name will normally be considered confusingly similar to that mark for purposes of UDRP standing”.
For the reasons above, the Panel finds that the disputed domain name is confusingly similar to the trademark of the Complainant.
The Complainant has therefore satisfied the first requirement of the Policy, under paragraph 4(a)(i).
B. Rights or Legitimate Interests
Under the Policy, a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests in the disputed domain name. Once such a prima facie case is made, the respondent carries the burden of demonstrating rights or legitimate interests in the disputed domain name. If the respondent fails to do so, the complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy.
In that sense, the Panel finds that the Complainant has made a prima facie case against the Respondent, who has not been commonly known by the disputed domain name and is not affiliated with the Complainant nor has it been licensed or otherwise permitted to use any of the Complainant’s trademarks or to register domain names incorporating the Complainant’s trademark INSTAGRAM.
Furthermore, the nature of the disputed domain name, comprising the Complainant’s well-known trademark and a descriptive term, carries a risk of implied affiliation and suggests sponsorship or endorsement by the Complainant. Accordingly, fair use is no foreseeable. See WIPO Overview 3.0, section 2.5.1.
Accordingly, and absent specific allegations by the Respondent, the Panel finds that the Complainant has satisfied paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
In order to prevail under the third element of paragraph 4(a)(iii) of the Policy, a complainant must demonstrate that the disputed domain name has been registered and is being used in bad faith.
Paragraph 4(b) of the Policy lists a number of circumstances which, without limitation, are deemed to be evidence of the registration and use of a domain name in bad faith. These are:
(i) circumstances indicating that [a respondent has] registered or acquired a disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the disputed domain name to the complainant or to a competitor of the complainant, for valuable consideration in excess of [the respondent’s] documented out-of-pocket costs directly related to the disputed domain name; or
(ii) [the respondent has] registered the disputed domain name in order to prevent the complainant from reflecting the complainant’s trade mark or service mark in a corresponding domain name, provided that [the respondent has] engaged in a pattern of such conduct; or
(iii) the respondent has registered the disputed domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the disputed domain name, [the respondent has] intentionally attempted to attract, for commercial gain, Internet users to [the respondent’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 respondent’s] website or location or of a product or service on [the respondent’s] website or location.
Indisputably, the disputed domain name was specifically registered to target the Complainant. Indeed, it combines the trademark INSTAGRAM, which enjoys an outstanding worldwide reputation, with a word that evokes the Complainant’s activities. Indeed, as a whole the combination “appinstagram” is very likely to be perceived by the public as allowing Internet users to access the services offered by the Complainant, through its dedicated app.
Therefore, the Panel finds that the disputed domain names was registered in bad faith.
The factors which are normally taken into account for a finding of bad faith passive holding are listed in section 3.3 of the WIPO Overview 3.0, as follows: (i) the degree of distinctiveness or reputation of the complainant’s mark, (ii) the failure of the respondent to submit a response or to provide any evidence of actual or contemplated good-faith use, (iii) the respondent’s concealing its identity or use of false contact details (noted to be in breach of its registration agreement), and (iv) the implausibility of any good faith use to which the domain name may be put.
These factors are met in this case:
First, it goes beyond any doubt that the trademark INSTAGRAM of the Complainant enjoys worldwide reputation. As mentioned above, the Respondent expressly targeted the Complainant when associating “app” and “Instagram”.
Second, the Respondent has failed to file a response to the Complaint.
Third, the Respondent concealed his identity through a privacy shield when registering the disputed domain name.
Fourth, the Panel does not conceive any possible use in good faith of the disputed domain name. As explained above, the combination of the elements “app” and “Instagram” suggests to Internet users that they will access a website through which the Instagram application can be downloaded, for example.
Accordingly, a finding of registration and use in bad faith is in order, and the third criteria set out in paragraph 4(a) of the Policy is also satisfied.
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, <appinstagram.com> be transferred to the Complainant.
Date: September 27, 2021