WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Instagram, LLC v. Bart van Mourik

Case No. DNL2021-0035

1. The Parties

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

Respondent is Bart van Mourik, the Netherlands.

2. The Domain Name and Registrar

The disputed domain name <lnstagram.nl> (the “Domain Name”) is registered with SIDN through Hostnet B.V. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 21, 2021. On June 21, 2021, the Center transmitted by email to SIDN a request for registrar verification in connection with the Domain Name. On June 22, 2021, SIDN transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details. The Center verified that the Complaint satisfied the formal requirements of the Dispute Resolution Regulations for .nl Domain Names (the “Regulations”).

In accordance with the Regulations, articles 5.1 and 16.4, the Center formally notified Respondent of the Complaint, and the proceedings commenced on July 6, 2021. In accordance with the Regulations, article 7.1, the due date for Response was July 26, 2021. On July 21, 2021, the Center received an email communication from Respondent.

On July 26, 2021 SIDN commenced the mediation process. On August 16, 2021, SIDN confirmed to the parties and the Center that the dispute had not been solved in the mediation process.

The Center appointed Remco M.R. van Leeuwen as the panelist in this matter on October 1, 2021. The Panel finds that it was properly constituted. The Panelist has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required to ensure compliance with the Regulations, article 9.2.

4. Factual Background

Complainant is a worldwide well-known online photo and video sharing social networking application. Complainant’s application currently has 500 million daily active users, with more than 95 million photos and videos shared per day.

In addition to its online presence, Complainant is the proprietor of various INSTAGRAM trademark registrations:

- the European Union word mark INSTAGRAM, registered on December 24, 2015, with registration number 14493886, for goods and services in classes: 25, 35, 38, 41, and 45; and

- the International word mark INSTAGRAM, with validity in the European Union, registered on March 15, 2012, with registration number 1129314, for goods and services in classes: 9 and 42

(the “Trademarks”).

The Domain Name was registered on July 27, 2016.

Complainant has submitted evidence that at the time the Complaint was filed the Domain Name was not resolving to an active webpage. The Panel observed the same when it accessed the website.

5. Parties’ Contentions

A. Complainant

Complainant states that since its application was launched on October 6, 2010, its exponential growth and explosive popularity has been widely reported in blogs and specialized technology publications in both English and Dutch. Complainant submits that given the exclusive online nature of its business, Complainant’s domain names consisting of its Trademarks, such as <instagram.com> and the mark INSTAGRAM followed by a country code Top-Level Domain (“ccTLD”), are the heart of its business and the main way for its users to avail themselves of its services.

Complainant further submits that it has rights in the Trademarks and that the Domain Name, which consists of a typographical variation of its Trademarks, where the initial letter “I” has been replaced by the lowercase letter “L”, is a typosquatted version of and deceptively similar to the Trademarks. Complainant refers in this regard to prior UDRP panel decisions in which it is held that such obvious or common misspelling of a trademark is insufficient to distinguish a domain name from a complainant’s trademark (for example, Instagram, LLC v. Contact Privacy Inc. Customer 0154295130 / Carlos Alberto Bejarano, WIPO Case No. D2019-1089 (<lnstaglam.com>) and Instagram, LLC v. Masaki Shishino, WIPO Case No. D2019-2096 (<lnstagram.info>)). Therefore, Complainant states that the Domain Name is confusingly similar to the Trademarks.

Complainant submits that Respondent has no rights or legitimate interests in the Domain Name, as Respondent is not a licensee of Complainant, nor has he been otherwise authorized or allowed by Complainant to use its Trademarks in a domain name or otherwise. Complainant further submits that the Domain Name is passively held, as it does not resolve to an active webpage, and that there is no evidence that Respondent has ever used the Domain Name to host an active website. Complainant argues that such passive holding can neither be considered as a bona fide offering of goods or services nor as a legitimate noncommercial use of the Domain Name without intent for commercial gain to misleadingly divert consumers or otherwise damage the Trademarks. Complainant further submits that Respondent cannot credibly claim to be commonly known by the Domain Name.

Complainant alleges that Respondent registered the Domain Name in bad faith. Complainant states that its Trademarks are inherently distinctive and well known throughout the world in connection with its online photo-sharing social network. Furthermore, the Trademarks are continuously and extensively used since the launch of this network in 2010, and have rapidly acquired considerable reputation and goodwill worldwide. Complainant states that the fame of its Trademarks is also evidenced by the number of cybersquatters who have sought to unfairly and illegally exploit the very significant customer recognition and goodwill in the Trademarks. Complainant further alleges that prior UDRP panels have recognized the strength and renown of the Trademarks and ordered the transfer of the domain names at issue to Complainant. In addition, the fact that Respondent deliberately chose a domain name consisting of a typosquatted version of the Trademarks constitutes registration in bad faith per se, according to Complainant, making reference to Redbox Automated Retail, LLC d/b/a Redbox v. Milen Radumilo, WIPO Case No. D2019-1600 <eedbox.com>.

Complainant further alleges that Respondent uses the Domain Name in bad faith as the Trademarks have become exclusively associated with Complainant and Respondent failed to provide evidence of actual or contemplated good-faith use of the Domain Name.

Complainant requests the transfer of the Domain Name.

B. Respondent

On July 21, 2021, the Center received an informal email communication from Respondent, claiming that he has let the Domain Name expire and will no longer make use of it, assuming that this puts an end to the proceedings.

As noted in section 3 above, on July 26, 2021, SIDN commenced the mediation process.

6. Discussion and Findings

As Respondent has not filed a formal response, the Panel shall rule on the basis of the Complaint. In accordance with article 10.3 of the Regulations, the Complaint shall in that event be granted, unless the Panel considers it to be without basis in law or fact.

Pursuant to article 2.1 of the Regulations, Complainant’s request to transfer the Domain Name must meet three cumulative conditions:

a. the Domain Name is identical or confusingly similar to:

I. a trademark, or trade name, protected under Dutch law in which Complainant has rights; or

II. a personal name registered in the General Municipal Register (“gemeentelijke basisadministratie”) of a municipality in the Netherlands, or the name of a Dutch public legal entity or the name of an association or foundation registered in the Netherlands under which complainant undertakes public activities on a permanent basis; and

b. Respondent has no rights to or legitimate interests in the Domain Name; and

c. the Domain Name has been registered or is being used in bad faith.

Considering these conditions, the Panel rules as follows.

A. Identical or Confusingly Similar

Complainant has submitted a copy of the registration of the Trademarks demonstrating that Complainant is the holder of the Trademarks. The Trademarks consist of the word mark INSTAGRAM. The Trademarks are protected under Dutch law. The unrebutted evidence provided in the Complaint regarding the Trademarks constitutes prima facie evidence that Complainant has trademark rights for purposes of the Regulations, and accordingly the Panel will review the Complaint on this basis.

Turning to whether the Domain Name is identical or confusingly similar to the Trademarks, the Panel observes that the Domain Name consists of a typographical variation of the Trademarks, where only the initial letter “I” of the Trademarks has been replaced by the visually similar lowercase letter “L”, followed by the ccTLD “.nl”. This typographical variation does not prevent the Trademarks from being recognizable in the Domain Name; indeed it is likely designed to achieve such recognition.

The Panel notes that it is established “.nl” case law that the ccTLD “.nl” may be disregarded in assessing confusing similarity between the relevant trademark on the one hand, and the disputed domain name on the other hand (see, e.g., Caterpillar Inc. v. H. van Zuylen Materieel, WIPO Case No. DNL2011-0073; Roompot Recreatie Beheer B.V. v. Edoco LTD, WIPO Case No. DNL2008-0008).

Consequently, the Panel finds that the Domain Name is confusingly similar to the Trademarks for purposes of the Regulations. Therefore, the first requirement of article 2.1(a) of the Regulations is met.

B. Rights or Legitimate Interests

Article 2.1(b) of the Regulations requires Complainant to demonstrate that Respondent has no rights to or legitimate interests in the Domain Name. This condition is met if Complainant makes out a prima facie case that Respondent has no such rights or legitimate interests and if Respondent fails to rebut this with appropriate allegations or evidence demonstrating rights to or legitimate interests in the Domain Name (see, e.g., Technische Unie B.V. and Otra Information Services v. Technology Services Ltd., WIPO Case No. DNL2008-0002).

Complainant alleges that Respondent lacks rights to or legitimate interests in the Domain Name for the reasons set out in section 5.A above.

The Panel finds that Complainant has fulfilled the obligation to establish prima facie that Respondent has no rights to or legitimate interests in the Domain Name. Respondent has not refuted the arguments of Complainant to show rights to or legitimate interests in the Domain Name.

The Panel could not establish any indication that any of the circumstances as described in article 3.1 of the Regulations apply, or that Respondent in any plausible other way has rights to or legitimate interests in the Domain Name. That Respondent has no rights to or legitimate interests in the Domain Name appears to be confirmed by the aforementioned informal email communication from Respondent to the Center, in which Respondent claims to have let the Domain Name expire and no longer to use it.

The Panel concludes that Complainant has met the second requirement of article 2.1(b) of the Regulations.

C. Registered or Used in Bad Faith

Article 2.1(c) of the Regulations requires Complainant to demonstrate that the Domain Name has been registered or is being used in bad faith. Article 3.2 of the Regulations sets out certain non-exhaustive circumstances to be construed as evidence of both of these requirements. The Panel finds that the evidence in the case shows Respondent has registered the Domain Name in bad faith.

When Respondent registered the Domain Name, the Trademarks had already been registered and were being used by Complainant for its products and services.

Considering the distinctiveness and reputation of the Trademarks and Complainant’s prior rights, the Panel finds that Respondent knew or should have known of Complainant’s rights at the time of registration of the Domain Name. This is also suggested by the fact that Respondent registered a domain name which includes Complainant’s Trademarks virtually in its entirety (only the initial letter “I” of the Trademarks has been replaced by the visually similar lowercase letter “L”).

According to Complainant, at the time the Complaint was filed, the Domain Name did not resolve to an active website. This was also the case at the time of the decision. It is well established that non-use of a domain name does not prevent a finding of bad faith use under the doctrine of passive holding (see section 3.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”). ¹ Here, the circumstances of the case, including the apparent aim of typosquatting, the Trademarks’ wide renown, and Respondent’s failure to submit a formal response, support a finding of bad faith use as well.

The Panel finds that the bad faith requirement of article 2.1(c) of the Regulations has been met.

7. Decision

For all the foregoing reasons, in accordance with articles 1 and 14 of the Regulations, the Panel orders that the Domain Name <lnstagram.nl> be transferred to Complainant.

Remco M.R. van Leeuwen
Panelist
Date: October 14, 2021

¹ In view of the fact that the Regulations are to an extent based on the Uniform Domain Name Dispute Resolution Policy (“UDRP”), it is well established that both cases decided under the Regulations and cases decided under the UDRP, and therefore WIPO Overview 3.0, are relevant to this proceeding (see, e.g., Aktiebolaget Electrolux v. Beuk Horeca B.V., WIPO Case No. DNL2008‑0050).