WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Instagram, LLC v. InstagramBadge, LLC
Case No. D2018-1956
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 InstagramBadge, LLC of Menlo Park, California, United States.
2. The Domain Name and Registrar
The disputed domain name <instagrambadge.com> is registered with GoDaddy.com, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 28, 2018. On August 29, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 29, 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 and contact information for the disputed domain name.
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 September 17, 2018. In accordance with the Rules, paragraph 5, the due date for Response was October 7, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 11, 2018.
The Center appointed Joseph Simone as the sole panelist in this matter on October 18, 2018. 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.
In accordance with paragraph 11 of the Rules:
“…the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding.”
As the language of the registration agreement is English and there are no factors warranting proceeding in another language, the administrative proceeding will be in English.
4. Factual Background
The Complainant is the owner of an online photo and video sharing social networking application Instagram, launched on October 6, 2010 and acquired by Facebook in 2012. Since its launch, the application rapidly grew in popularity to its current status of over 700 million monthly active users. It is available in over 31 languages and according to “App Annie” Top App rankings in 2018, it is the 4th most downloaded application in the world and 2nd in the United States.
The Complainant owns several trademarks for INSTAGRAM in connection with online photo-sharing software, including but not limited to the following:
− United States Trademark Registration No. 4146057, registered on May 22, 2012;
− United States Trademark Registration No. 4170675, registered on July 10, 2012;
− European Union Trademark Registration No. 014493886, registered on December 24, 2015;
− International Trademark Registration No. 1129314, registered on March 15, 2012.
All of the above trademark registrations pre-date the registration date of the disputed domain name. The Complainant is also the owner of at least 19 domain names containing the term “instagram” in a generic Top-Level Domain and/or country code Top-Level Domain.
The disputed domain name was registered on December 4, 2017. It previously resolved to a website displaying a login page with the same look and feel as Facebook’s official login page at “https://en-gb.facebook.com/login”. This website was subsequently taken down at the Complainant’s request and the disputed domain name currently resolves to a page that states:
“Deceptive site ahead
Attackers on instagrambadge.com may trick you into doing something dangerous like installing software or revealing your personal information (for example, passwords, phone numbers, or credit cards).”
5. Parties’ Contentions
A. Complainant
Identical or confusingly similar
The Complainant contends that the disputed domain name is identical or confusingly similar to the mark INSTAGRAM in which it has rights. The Complainant submits evidence of various trademark registrations for INSTAGRAM. The Complainant also submits evidence of its rapid growth in the social media industry, including articles, active user charts, rankings and previous WIPO decisions attesting to its fame. The Complainant submits that the disputed domain name is confusingly similar to its trademark because it incorporates the entirety of the trademark with the addition of the generic term “badge”, which is insufficient to prevent a finding of confusing similarity.
Rights or legitimate interests
The Complainant submits that the Respondent has no rights or legitimate interests in respect of the disputed domain name as it is unable to invoke any of the circumstances set out in paragraph 4(c) of the Policy. The Respondent is not known by the dispute domain name, nor has it been licensed or otherwise allowed to make any use of the Complainant’s trademark. Prior to notice of this dispute, the Respondent cannot assert it was using the disputed domain name in connection with a bona fide offering of goods or services as it resolved to a fake Facebook login page, designed to deceive Internet users into providing their confidential account information. Nor can the Respondent assert it has made or is currently making a legitimate noncommercial or fair use of the disputed domain name without intent for commercial gain, giving it was previously associated with a phishing scam. Moreover, given the renowned popularity of the Complainant’s trademark, it is impossible to conceive of any use by the Respondent that would be legitimate.
Registered and used in bad faith
The Complainant submits that the Respondent acquired the disputed domain name in bad faith. Given that the Complainant’s trademark is inherently distinctive and well-known, the Complainant submits that it is inconceivable that the Respondent did not have knowledge of the trademark at the time of acquiring the disputed domain name. This conclusion is left in no doubt when considering the disputed domain name consists of the trademark with the addition of the term “badge”, which is the name of a service provided by Instagram since 2012. Furthermore, the Complainant submits that the Respondent’s bad faith is demonstrated by the provision of false company name and contact information in the WhoIs record, as the company InstagramBadge, LLC, does not appear to exist and the postal address is identical to the Complainant’s registered address. Finally, the Complainant asserts that the Respondent is using the domain name in bad faith, i.e., by intentionally misdirecting Internet users, who may have been seeking information on the “badge” service provided by Instagram, to an unrelated phishing website illegally collecting personal information for commercial gain. The fact that the disputed domain name is now inactive does not cure the Respondent’s bad faith.
B. Respondent
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
Under the first element of the Policy, a complainant must prove that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights (paragraph 4(a)(i) of the Policy).
That is, the complainant must first demonstrate substantive rights in the trademark on which the complaint is based. The Panel is satisfied that the Complainant has adequately demonstrated its rights in the mark INSTRAGRAM by virtue of its trademark registrations, extensive reputation and previous UDRP panel decisions which have found the same.
A complainant must then demonstrate that the disputed domain name is identical or confusingly similar to the trademark. Per section 1.7 of WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), the test for whether the domain name is identical or confusingly similar to the trademark is a relatively straightforward comparison. A domain name incorporating the entirety or dominant feature of the relevant mark will normally satisfy the threshold (Britannia Building Society v. Britannia Fraud Prevention, WIPO Case No. D2001-0505; V&S Vin & Sprit AB v. Ooar Supplies, WIPO Case No. D2004-0962).
When comparing the domain name with the trademark, the Top-Level Domain “.com” may be disregarded (section 1.11 of WIPO Overview 3.0; F. Hoffmann-La Roche AG v. Domain Admin/xcite, WIPO Case No. DCC2007-0003).
In this case, the disputed domain name <instagrambadge.com> entirely incorporates the trademark INSTAGRAM with the addition of the descriptive term “badge” and it is well established that the addition of a merely descriptive term to a trademark does not prevent a finding of confusing similarity under the first element (section 1.8 of WIPO Overview 3.0; VKR Holding A/S v. Li Pinglong, WIPO Case No. D2016-2269; Pfizer inc. v. Blue Viagra, WIPO Case No. D2004-0732).
Therefore, the Panel is satisfied the disputed domain name is confusingly similar to the Complainant’s mark and the first requirement of the UDRP is satisfied.
B. Rights or Legitimate Interests
A complainant must then demonstrate that the respondent should be considered as having no rights or legitimate interests in respect of the disputed domain name that is the subject of the complaint (paragraph 4(a)(ii) of the Policy).
Paragraph 4(c) of the Policy sets out a non-exhaustive list of circumstances which, if found by the panel, will demonstrate a respondent’s rights or legitimate interests in the disputed domain name. The Panel accepts that there is no relationship between the Complainant and the Respondent that would give rise to authorization to use the trademark in the disputed domain name nor is there anything to suggest the Respondent is commonly known by the disputed domain name. There is also no evidence of a bona fide offering of goods or services, or legitimate use without intent for commercial gain, within the meaning of paragraph 4(c) of the Policy. Rather, the use of the disputed domain name to mimic a Facebook login page is clearly a scam designed to mislead Internet users into providing their personal account information which could be used to their detriment.
As the Complainant has made out a prima facie case that the Respondent has no rights or legitimate interests, the burden of production shifts to the Respondent (section 2.1 of WIPO Overview 3.0). As the Respondent did not submit a response, it has failed to present any evidence to establish rights or legitimate interests, and given the above analysis, the Panel believes it has none.
The second requirement of the UDRP is therefore satisfied.
C. Registered and Used in Bad Faith
A complainant must prove that the disputed domain name was registered and is being used in bad faith (paragraph 4(a)(iii) of the Policy).
In assessing bad faith, one relevant factor is whether the Respondent “knew or should have known” of the Complainant’s trademark rights. If the answer is affirmative, this creates a strong inference of bad faith (Volkswagen AG v. Jan-Iver Levsen, WIPO Case No. D2015-0069; Yahoo! Inc. v. Yahoo-Asian Company Limited, WIPO Case No. D2001-0051). Given the worldwide reputation and extensive use of the trademark INSTAGRAM, and the fact that used the term “badge” refers to a service provided by the Complainant, the Panel believes the Respondent was well aware of the Complainant’s rights when it registered the disputed domain name.
Furthermore, paragraph 4(b) of the Policy sets out circumstances which, without limitation, if found by a panel to be present, shall be evidence of the registration and use of a domain name in bad faith. The Panel draws attention in particular to subparagraph (iv):
“by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your 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 your website or location or of a product or service on your website or location.”
The Panel is satisfied that the Respondent, by creating a likelihood of confusion with the Complainant and its trademark INSTAGRAM, deliberately registered and used the disputed domain name to attract Internet users to its website with a view to commercial gain, namely obtaining users’ personal Facebook account information. Since Instagram is owned by Facebook, it is not inconceivable that Internet users would be tricked into entering their login details, believing that access to the Instagram badge service required them to login in to their Facebook account, which is a common method of registering for and logging in to different services. In any case, the use of the disputed domain name as part of a phishing scam obviously constitutes use in bad faith and the fact that the disputed domain name is now inactive does not alter this conclusion, since passive holding of a domain name containing a famous trademark, especially in conjunction with the provision of false WhoIs information, can still constitute bad faith (Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003).
Therefore, the Panel concludes that the disputed domain name was registered and used in bad faith.
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 <instagrambadge.com> be transferred to the Complainant.
Date: October 23, 2018