WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Instagram, LLC v. Vitelli Chris
Case No. DSO2018-0002
1. The Parties
The Complainant is Instagram, LLC of Menlo Park, California, United States of America (“United States”), represented by Hogan Lovells (Paris) LLP, France.
The Respondent is Vitelli Chris of Brooklyn, New York, United States.
2. The Domain Name and Registrar
The disputed domain name <instagram.com.so> (“Domain Name”) is registered with EuroDNS S.A. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 18, 2018. On December 18, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On December 19, 2018, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
The Center verified that the 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 January 3, 2019. In accordance with the Rules, paragraph 5, the due date for Response was January 23, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 24, 2019.
The Center appointed Ellen B Shankman as the sole panelist in this matter on January 30, 2019. 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 is an online photo- and video-sharing social networking application. The Complainant owns numerous trademark registrations for INSTAGRAM in multiple jurisdictions including:
United States Trademark Registration No. 4146057, INSTAGRAM, registered on May 22, 2012 (first use in commerce June 10, 2010); and
International Registration No. 1129314, INSTAGRAM, registered on March 15, 2012, designating Australia, the European Union, Israel, Japan, Norway, the Republic of Korea, Singapore, Switzerland, and Turkey.
The date of the Domain Name registration was confirmed by the Registrar to be December 20, 2017.
The Panel also conducted an independent search to determine that the Domain Name is currently active, and appears to be a parking page.
5. Parties’ Contentions
The Complaint alleges the following:
The Complainant, Instagram LLC is the world-renowned online photo- and video-sharing social networking application. Since it was launched on October 6, 2010, Instagram LLC rapidly developed considerable goodwill and renown worldwide, with 100,000 users in only one week, 500,000 users in less than a month, 1 million registered users in only two months (by December 21, 2010) and over 10 million registered users by September 2011, all less than a year after it was launched. Acquired by Facebook in April 2012, Instagram LLC reached over 100 million monthly active users by February 2013, 150 million active users by September 2013, 400 million active users by September 2015 and 600 million users by December 2016. Currently, Instagram LLC has 1 billion monthly active users and 500 million daily active users, with more than 95 million photos and videos shared per day. In addition, the number of active Instagram users in the United States, where the Respondent is located, has surpassed 100 million in 2018.
Instagram LLC is one of the fastest growing social media networks in the world. The Complainant website available at “www.instagram.com” is ranked the 13th most visited website in the world, according to web information company Alexa. Further, Instagram LLC has consistently ranked amongst the top “apps” for mobile devices, including for iOS and Android operating systems. The Complainant has been the recipient of numerous awards, including “App of the Year” in 2011 from Apple Inc. The Complainant is currently the 8th most downloaded app for iOS phones in the United States, according to applications information company App Annie.
The launch of the Instagram app in October 2010 was highly anticipated and obtained media coverage in specialized online technology publications. Instagram’s exponential growth and explosive popularity has been widely reported by specialized technology publications including Tech Crunch and Mashable.com as well as mainstream media, including major international publications, such as the New York Times, The Washington Post (United States), The Telegraph, and The Guardian (United Kingdom).
Given the exclusive online nature of the Complainant’s business, the Complainant’s domain names consisting of its trademark are not only the heart of its entire business but also the main way for its millions of users to avail themselves of its services. The Complainant is the registrant of numerous domain names consisting of or including the INSTAGRAM trademark under a wide range of generic Top-Level Domains (“gTLDs”) as well as under numerous country code Top-Level Domains (“ccTLDs”). In addition to its strong online presence, the Complainant has secured ownership of numerous trademark registrations for INSTAGRAM in many jurisdictions around the world.
The fame of the Complainant’s INSTAGRAM trademark is also evidenced by the number of cybersquatters who have sought to unfairly and illegally exploit the very significant consumer recognition and goodwill attached to its trademark. In this case, the Domain Name incorporates the Complainant’s INSTAGRAM trademark in its entirety, without alteration or addition.
At the time of filing, the Domain Name does not resolve to an active website; however, screen captures from the website “www.domaintools.com” show that on December 20, 2017, the Domain Name resolved to a website imitating the Complainant’s official login page, inviting Internet users to enter their user name and password (the Respondent’s website). This is a malicious attempt on the part of the Respondent to obtain confidential user credentials by using the website at the Domain Name to impersonate the Complainant.
The Complainant’s lawyers sent a cease and desist letter to the Respondent on November 28, 2018 by registered post and email asking the Respondent to cease use of the Domain Name and to transfer the Domain Name to the Complainant (a copy of which was included in the evidence submitted with the Complaint).
To summarize the Complaint, the Complainant states that the Domain Name is confusingly similar to the trademark owned by the Complainant. The addition of the <.com.so> does not prevent a finding of confusing similarity. Therefore, the Domain Name could be considered virtually identical and/or confusingly similar to the Complainant’s trademark. The Complainant contends that the Respondent has no rights or legitimate interests in respect of the Domain Name. The Domain Name was registered and is being used in bad faith. That continued use of the Domain Name would lead to a likelihood of confusion as to the source, sponsorship, affiliation or endorsement of the Respondent by the Complainant. Thus, the Respondent’s registration and use of the Domain Name constitutes bad faith registration and use under the Policy, and the Complainant requests the transfer of the Domain Name.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
The burden for the Complainant under paragraph 4(a) of the Policy is to prove:
(i) That the Domain Name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) That the Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) That the Domain Name has been registered and used in bad faith.
A. Identical or Confusingly Similar
The Panel finds that the Complainant has satisfactorily proven that it has registered trademark rights for INSTAGRAM.
The Panel finds that the Domain Name is confusingly similar to the Complainant’s trademark. Further, the Panel finds that the addition of <.com.so> to the Domain Name does not change the overall impression of the designation as being connected to the trademark of the Complainant. It does not prevent a finding of confusing similarity between the Domain Name and the Complainant’s trademark. See Pfizer Inc. v. Asia Ventures, Inc., WIPO Case No. D2005-0256; see also Ansell Healthcare Products Inc. v. Australian Therapeutics Supplies Pty, Ltd., WIPO Case No. D2001-0110, stating “The incorporation of a Complainant’s well-known trademark in the registered Domain Name is considered sufficient to find the Domain Name confusingly similar to the Complainant’s trademark.”
This holding is also consistent with prior UDRP panels that have recognized the strength and renown of the Complainant’s INSTAGRAM trademark, and ordered the transfer of disputed domain names to the Complainant. See, e.g., Instagram, LLC v. Saddam Hussain, WIPO Case No. D2018-0078: “The INSTAGRAM trademark […] has been registered and used for several years all over the world, it enjoys a widespread reputation and high degree of recognition as a result of its fame and renown […]”. See also Instagram, LLC v. Zhou Murong, WIPO Case No. DTV2017-0002, concerning the disputed domain name <isntagram.tv> “The disputed domain name comprises the [INSTAGRAM] Trade Mark in its entirety and is, excluding the ccTLD for Tuvalu (in accordance with previous UDRP decisions), identical to the Trade Mark.”
Accordingly, the Panel finds that the Complainant has satisfied the first requirement that the Domain Name is identical or confusingly similar to the Complainant’s registered trademark, under paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy in turn identifies three means through which a respondent may establish rights or legitimate interests in a domain name. Although the complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, panels have recognized that this could result in the often-impossible task of proving a negative, requiring information that is primarily, if not exclusively, within the knowledge of the respondent. Thus, the consensus view is that paragraph 4(c) shifts the burden of production to the respondent to come forward with evidence of a right or legitimate interest in the disputed domain name, once the complainant has made a prima facie showing. See, e.g., Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270.
The Complainant asserts that the Respondent has no rights or legitimate interests in respect of the Domain Name and that it is not related to or affiliated in any way with the Complainant, nor has the Complainant authorized the Respondent to use its trademarks.
Based on the available record, the Panel finds that the Complainant has established a prima facie case, which was not refuted, and that the Respondent lacks rights or legitimate interests in the Domain Name.
Therefore, the Complainant has satisfied the second requirement that the Respondent has no rights or legitimate interests in the Domain Name, under paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
Given the distinctiveness of the Complainant’s trademark and reputation, the Panel agrees with the Complainant’s claims that the Respondent has registered the Domain Name with full knowledge of the Complainant’s trademark INSTAGRAM with abusive intent and uses it for the purpose of misleading and diverting Internet traffic. The Panel is persuaded that the Respondent likely registered the Domain Name for the purpose of illicitly obtaining the Complainant users’ confidential personal information by impersonating the Complainant, and at the very least sought to appear affiliated with the Complainant.
Furthermore, even if the Respondent’s website has now been changed to no longer imitate the Complainant’s website, and the Domain Name now resolves to a parking page, the Panel holds that this does not prevent a finding of bad faith registration and use. As noted in WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 3.3, UDRP panels have consistently found that the non-use of a domain name would not prevent a finding of bad faith under the doctrine of passive holding. “While panellists will look at the totality of the circumstances in each case, factors that have been considered relevant in applying the passive holding doctrine include: (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.”). See also Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003.
Given the evidence of the Complainant’s prior rights in the trademark and well-known reputation of the Complainant, the timing of the registration of the Domain Name with apparent full knowledge of the Complainant, the previous and current use of the Domain Name, and the lack of response to the Complainant’s request for voluntary transfer of the Domain Name, the Panel finds that the Complainant has satisfied the third requirement that the Respondent has registered and is using the Domain Name in bad faith, under paragraph 4(a)(iii) of the Policy.
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, <instagram.com.so>, be transferred to the Complainant.
Ellen B Shankman
Date: February 11, 2019