WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Instagram, LLC v. Ducky Layne
Case No. D2018-2838
1. The Parties
Complainant is Instagram, LLC of Menlo Park, California, United States of America (“United States”), represented by Hogan Lovells (Paris) LLP, France.
Respondent is Ducky Layne of Diyarbakir, Turkey.
2. The Domain Names and Registrar
The disputed domain names <checkpoint-lnstagram.com> and <safety-lnstagram.com> (the “Domain Name/s”) are registered with Atak Domain Hosting Internet ve Bilgi Teknolojileri Limited Sirketi d/b/a Atak Teknoloji (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 12, 2018. On December 12, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Names. On December 20, 2018, the Registrar 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 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 December 26, 2018. In accordance with the Rules, paragraph 5, the due date for the Response was January 15, 2019. Due to a problem with courier services, the Response due date was extended to January 16, 2019. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on January 18, 2019.
The Center appointed Clive L. Elliott QC as the sole panelist in this matter on February 1, 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
According to the publicly available WhoIs information, the Domain Names were registered as follows:
a. <checkpoint-Instagram.com> June 13, 2018; and
b. <safety-Instagram.com> August 4, 2018.
Both Domain Names are currently inactive, however, <checkpoint-lnstagram.com> previously resolved to a website that mirrored the Complainant’s website.
Complainant is a well-known online photo and video sharing social networking application. It launched on October 6, 2010 and by 2011 it had over 10 million registered users. Complainant company was acquired by Facebook in April 2012.
Complainant owns numerous trademark registrations in the term INSTAGRAM around the world, including in Turkey. Such trademark registrations include the following:
- Turkey (No. 2013 74099), registered on May 20, 2015;
- Turkey (No. 2015 77628), registered on October 11, 2016;
- United States of America, (No. 4146057), registered on May 22, 2012 (first use in commerce on October 6, 2010);
- European Union (No. 014493886), registered on December 24, 2015; and
- International (No. 1129314), registered on March 15, 2012 (designating Turkey)
5. Parties’ Contentions
Complainant states that it currently has 1 billion monthly active users and 500 million daily active users, with more than 95 million photos and videos shared daily.
Complainant asserts that it is one of the fastest growing social media entities in the world, with its website “www.instagram.com” being ranked by the web information company Alexa as the 16th most visited website in the world, and the 15th in Turkey, where Respondent is based. Complainant further asserts that it has also been consistently ranked amongst the top apps available for mobile devices and has been the recipient of numerous awards, including “App of the Year” in 2011 from Apple Inc. Currently available in over 31 languages, the Instagram app is the 6th most downloaded application in the world, and the 4th in Turkey, according to App Annie Top App rankings in 2018.
Complainant contends that its growth and explosive popularity has been widely reported by specialized technology publications.
Complainant also adds that it offers certain public figures, celebrities and brands the possibility of obtaining a “verified badge” for their personal Instagram accounts. A verified badge is a blue check that appears next to the name of an Instagram account and it means that Complainant has verified that the account belongs to the public figure, celebrity or global brand it represents. It is currently not possible for members of the general public to obtain a verified badge. Only the accounts of certain public figures, celebrities and brands are verified because they have a high likelihood of being impersonated by unconnected third parties. The verified badge is part of Complainant’s efforts to ensure that the members of the Instagram community can easily identify the authentic people and brands they want to follow.
Complainant states that it is the owner of numerous domain names consisting of Complainant’s Mark. Complainant asserts that Complainant’s Domain Names consisting of Complainant’s Mark, are the heart of Complainant’s business and also the main way for its millions of users to avail themselves of its services.
Complainant further asserts that it has made substantial investments to develop a strong presence online by being active on the different social media forums available, including Facebook, Twitter, LinkedIn, and Google +.
In addition to its strong online presence, Complainant claims that it has secured ownership of numerous trademark registrations in the term “Instagram” in many jurisdictions around the world. It points out that the term “Instagram” is a highly distinctive term that is exclusively associated with Complainant, and all search results obtained by typing the term “Instagram” into Google’s search engine available at “www.google.com” refer to Complainant.
Complainant further points out that its valuable reputation, both offline and online, is not only crucial to maintain the value and distinctiveness of the INSTAGRAM brand, but is also vital to the success, integrity and protection of its business and consumers.
Complainant submits that Respondent is engaging in typosquatting as the Domain Names are confusingly similar to Complainant’s Mark. The Domain Names consist of an obvious misspelling of Complainant's Mark with a lower case letter “l” as opposed to an “i”, in conjunction with the generic terms “checkpoint” and “safety” and a hyphen, under the “.com” generic Top-Level Domain (“gTLD”). Further, at the date of filing the complaint the Domain Names were not resolving.
Complainant notes that the URL “www.checkpoint-lnstagram.com/blue-badge/en/” using the Domain Name <checkpoint-lnstagram.com> was until recently resolving to a website that deceptively mirrored Complainant’s official website available at “help.instagram.com”. This website also displayed the words “Verified Badge/Verified Account Form” and invited Internet users to verify their accounts by entering their Instagram details, such as the account password.
Furthermore, Complainant contends that the addition of the generic terms “checkpoint” and “safety” is insufficient to diminish the confusing similarity between the Domain Name and Complainant’s Mark.
Complainant submits that Respondent has no rights or legitimate interests in the Domain Names, and that Respondent is unable to demonstrate rights or legitimate interests in the Domain Names. Respondent is not a licensee of Complainant, nor has he been otherwise allowed by Complainant to make any use of Complainant's Mark.
Complainant notes that the Domain Name <safety-lnstagram.com> is not resolving and therefore, is being passively held.
Complainant submits that Respondent has no rights or legitimate interests in respect of the Domain Names and submits that Respondent registered the Domain Names in full knowledge of Complainant's rights.
In addition, Complainant submits that Respondent’s bad faith at the time of registration of the Domain Names is demonstrated by the provision of false contact information in the WhoIs record. To the best of Complainant’s knowledge, Respondent’s address displayed in the WhoIs record is inaccurate, “Diyarbakr” being the name of the city and not a street name, and the name “ducky layne” probably being false.
Complainant submits that Respondent has chosen these Domain Names to deliberately cause confusion amongst Instagram users as to the source of the website in order to facilitate the phishing scam for commercial gain, constituting bad faith registration and use.
Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
Complainant has established to the satisfaction of the Panel that it has rights in Complainant’s Marks. First, Complainant owns numerous trademark registrations in the term INSTAGRAM around the world, including in the United States of America, where Complainant is located and Turkey, where Respondent resides.
Complainant has shown that it has extensive reputation and goodwill in the INSTAGRAM trademark.
The Domain Names reproduce a typographical variant of Complainant’s Mark INSTAGRAM, albeit with the addition of one or more descriptive words. This does nothing to prevent a finding of confusing similarity.
In the absence of any attempt to refute Complainant’s assertions and arguments it is found that:
a) Complainant has rights in respect of Complainant’s Mark.
b) The Domain Names are each confusingly similar to Complainant’s Mark.
Accordingly, the Panel is satisfied that the first element of the Policy has been met.
B. Rights or Legitimate Interests
Respondent has no apparent rights or legitimate interests in the Domain Names; nor has it shown that Complainant has permitted or authorised Respondent to use Complainant’s Mark.
In addition, there is no evidence that Respondent is known by the Domain Names, nor that it is making a legitimate offering of goods or services under or by reference to the Domain Names, or either of them.
Complainant asserts that the URL “www.checkpoint-Instagram.com/blue-badge/en/” using the Domain Name <checkpoint-lnstagram.com> resolved, until recently, to a website that deceptively mirrored Complainant’s official website. Further, Complainant alleges that the website displayed the words “Verified Badge/Verified Account Form”, as referred to above, and that by doing so the website invited Internet users to verify their accounts by entering their Instagram details and password.
In the absence of any attempt to refute this allegation, the Panel finds that Respondent is engaged in the use of replica websites and that members of the public are likely to be led into accessing these websites believing that they are operated or authorised, directly or indirectly, by Complainant, contrary to the fact.
The Panel is satisfied that Respondent has no rights or legitimate interests in the Domain Names and accordingly that the second element of the Policy has been met.
C. Registered or Used in Bad Faith
Complainant submits that Respondent registered the Domain Names in full knowledge of Complainant’s rights. Further, it is submitted that Respondent has provided false contact information in the WhoIs record, namely that Respondent’s address displayed in the WHOIS record is inaccurate, “Diyarbakr” being the name of the city and not a street name. Complainant then argues that the name “ducky layne” is probably false. Again, in the absence of any response from Respondent these assertions seem plausible.
Finally, there is merit in Complainant’s submission, and it is accepted, that Respondent has chosen the Domain Names to cause confusion amongst Instagram users as to the source of the website in order to facilitate a phishing scam and that this amounts to bad faith registration and use.
In all the circumstances, the Panel finds Respondent’s passive holding of the Domain Name
<safety-lnstagram.com> to constitute registration and use of the Domain Name for purposes of the Policy.
The third element of the Policy has been met.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Names <checkpoint-lnstagram.com> and <safety-lnstagram.com> be transferred to the Complainant.
Clive L. Elliott QC
Date: February 15, 2019