WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Instagram, LLC v. yusuf polat, schowix
Case No. D2021-2791
1. The Parties
Complainant is Instagram, LLC, United States of America (“United States”), represented by Tucker Ellis LLP, United States.
Respondent is yusuf polat, schowix, Turkey.
2. The Domain Name and Registrar
The disputed domain name <help-lnstagram-security.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 August 25, 2021. On August 25, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On August 25, 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 August 27, 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 September 1, 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 September 3, 2021. In accordance with the Rules, paragraph 5, the due date for Response was September 23, 2021. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on September 24, 2021.
The Center appointed Marina Perraki as the sole panelist in this matter on October 18, 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 operates the Instagram social networking service and mobile application. Instagram enables its users to create their own personal profiles, post photos and videos, and connect with each other on their mobile devices. Per Complaint, Instagram has more than five hundred million daily active accounts and more than one billion monthly active users from all over the world. Complainant’s website at “www.instagram.com” is currently ranked as the 23rd most visited website in the world according to information company Alexa. In recent years, the Instagram mobile application has consistently ranked among the top “apps”. The INSTAGRAM mark ranked 19th in Interbrand’s current Best Global Brands report.
Complainant also offers several security features as part of its products, such as login alerts and two-factor authentication. Per Complaint, Complainant recently launched its Security Checkup feature. The Security Checkup helps users whose accounts may have been hacked through the steps needed to secure them. This includes checking login activity, reviewing profile information, confirming the accounts that share login information, and updating account recovery contact information such as phone number or email.
Complainant is the owner of a number of trademark registrations for INSTAGRAM which include:
a) International trademark registration for INSTAGRAM, No. 1129314, registered on March 15, 2012, with protection also in Turkey, for goods and services in international classes 9 and 42;
b) United States trademark for INSTAGRAM, No. 4146057, filed on September 19, 2011, registered on May 22, 2012 (first use in commerce October 6, 2010) for goods in international class 9; and
c) European Union trademark registration for INSTAGRAM, No. 014493886, filed on August 20, 2015, registered on December 24, 2015 for goods and services in international classes 25, 35, 38, 41, and 45.
Complainant is also the owner of domain names for INSTAGRAM including <instagram.com>.
The Domain Name was registered on September 15, 2020, and leads to an inactive page.
5. Parties’ Contentions
Complainant asserts that it has established all three elements required under paragraph 4(a) of the Policy for a transfer of the Domain Name.
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy lists the three elements which Complainant must satisfy with respect to the Domain Name:
(i) the Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) the Domain Name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
Complainant has demonstrated rights through registration and use on the INSTAGRAM mark.
The Domain Name incorporates Complainant’s trademark INSTAGRAM in its entirety, merely replacing the letter “i” in the mark with the letter “l”, which closely resembles the capital letter “i”. Notwithstanding the typographical error, Complainant’s trademark remains recognizable and this is sufficient to establish confusing similarity (Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525; Instagram, LLC v. Sedat Das, Arda Arda, Domain Admin, whoisprotection biz, Domain Admin Domain Admin, whoisprotection biz, WIPO Case No. D2016-2382).
The words “help” and “security” and the hyphens between them which are added in the Domain Name do not prevent a finding of confusing similarity between Complainant’s mark and the Domain Name (Nintendo of America Inc. v. Fernando Sascha Gutierrez, WIPO Case No. D2009-0434; WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.8).
The generic Top-Level Domain (“gTLD”) “.com” is disregarded, as gTLDs typically do not form part of the comparison on the grounds that they are required for technical reasons (Rexel Developpements SAS v. Zhan Yequn, WIPO Case No. D2017-0275; Hay & Robertson International Licensing AG v. C. J. Lovik, WIPO Case No. D2002-0122).
The Panel finds that the Domain Name is confusingly similar to the INSTAGRAM mark of Complainant.
Complainant has established the Policy, paragraph 4(a)(i).
B. Rights or Legitimate Interests
Pursuant to paragraph 4(c) of the Policy, Respondent may establish its rights or legitimate interests in the Domain Name, among other circumstances, by showing any of the following elements:
(i) before any notice to you [Respondent] of the dispute, your use of, or demonstrable preparations to use, the Domain Name or a name corresponding to the Domain Name in connection with a bona fide offering of goods or services; or
(ii) you [Respondent] (as an individual, business, or other organization) have been commonly known by the Domain Name, even if you have acquired no trademark or service mark rights; or
(iii) you [Respondent] are making a legitimate noncommercial or fair use of the Domain Name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The Panel concludes that Respondent lacks rights or legitimate interests in respect of the Domain Name.
Respondent has not submitted any response and has not claimed any such rights or legitimate interests with respect to the Domain Name. As per Complainant, Respondent was not authorized to register the Domain Name.
Prior to the notice of the dispute, Respondent did not demonstrate any use of the Domain Name or a trademark corresponding to the Domain Name in connection with a bona fide offering of goods or services.
On the contrary, as Complainant demonstrated, the Domain Name resolves to an inactive page.
In addition, the Domain Name consists of a typographical variation of Complainant’s mark combined with terms descriptive of its Security Checkup feature, and thus carries a risk of implied affiliation (WIPO Overview 3.0, section 2.5.1).
The Panel finds that these circumstances do not confer upon Respondent any rights or legitimate interests in respect of the Domain Name.
Complainant has established the Policy, paragraph 4(a)(ii).
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides that the following circumstances, “in particular but without limitation”, are evidence of the registration and use of the Domain Name in bad faith:
(i) circumstances indicating that Respondent has registered or has acquired the Domain Name primarily for the purpose of selling, renting, or otherwise transferring the Domain Name registration to Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of its documented out of pocket costs directly related to the Domain Name; or
(ii) that Respondent has registered the Domain Name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that Respondent has engaged in a pattern of such conduct; or
(iii) that Respondent has registered the Domain Name primarily for the purpose of disrupting the business of a competitor; or
(iv) that by using the Domain Name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website or other online location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product or service on Respondent’s website or location.
The Panel concludes that Respondent has registered and used the Domain Name in bad faith.
Complainant’s INSTAGRAM trademark is well known, as repeatedly recognised (Instagram, LLC v. Ellie Walker, WIPO Case No. D2018-0669; Instagram, LLC v. Saddam Hussain, WIPO Case No. D2018-0078; Instagram, LLC v. Perfect Privacy, LLC and Lo Tim Fu, WIPO Case No. D2017-1951; Instagram, LLC v. WhoisGuard Protected, WhoisGuard, Inc. / Candace Neeley, Pay Day Global Limited, WIPO Case No. D2017-1752).
Furthermore, “instagram” is an invented word without meaning (Instagram, LLC v. Saddam Hussain, WIPO Case No. D2018-0078).
Because the INSTAGRAM mark had been widely used and registered at the time of the Domain Name registration by Respondent, the Panel finds likely that Respondent had Complainant’s mark in mind when registering the Domain Name (Parfums Christian Dior v. Javier Garcia Quintas and Christiandior.net, WIPO Case No. D2000-0226). This finding if reinforced when considering the addition of the terms “help” and “security” in the Domain Name and Complainant’s launch of its Security Checkup feature.
Taking into account the nature of the Domain Name, the Panel finds that the Domain Name was probably created for commercial gain by intentionally creating a likelihood of confusion with Complainant’s trademarks and business as to the source, sponsorship, affiliation or endorsement, within the sense of paragraph 4(b)(iv) of the Policy. This can be used in support of bad faith registration and use (WIPO Overview 3.0, section 3.1.3).
The Domain Name currently leads to an inactive website. The non-use of a domain name does not prevent a finding of bad faith in certain circumstances, which the Panel finds here (see Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003; WIPO Overview 3.0, section 3.3).
Lastly, as Complainant demonstrated, the Domain Name is listed on one or more blacklists indicating that it had previously been used in connection with spam, malware, or other domain name abuse activities.
Under these circumstances and on this record, the Panel finds that Respondent has registered and is using the Domain Name in bad faith.
Complainant has established Policy, paragraph 4(a)(iii).
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, <help-lnstagram-security.com> be transferred to Complainant.
Date: November 1, 2021