WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Instagram, LLC v. Bernadette Zakhm Selim Abou

Case No. DEU2018-0021

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 Bernadette Zakhm Selim Abou of Paris, France.

2. The Domain Name, Registry and Registrar

The Registry of the disputed domain name <instagram.eu> is the European Registry for Internet Domains (“EURid” or the “Registry”). The Registrar of the disputed domain name is D-Cube Resource (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 28, 2018. On June 29, 2018, the Center transmitted by email to the Registry a request for registrar verification in connection with the disputed domain name. On June 29, 2018, the Registry 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 .eu Alternative Dispute Resolution Rules (the “ADR Rules”) and the World Intellectual Property Organization Supplemental Rules for .eu Alternative Dispute Resolution Rules (the “Supplemental Rules”).

In accordance with the ADR Rules, Paragraph B(2), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on August 2, 2018. In accordance with the ADR Rules, Paragraph B(3), the due date for Response was September 13, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 14, 2018.

The Center appointed Jonas Gulliksson as the sole panelist in this matter on September 28, 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 ADR Rules, Paragraph B(5).

On November 1, 2018 the Panel issued Procedural Order No. 1, seeking further information from the Complainant in relation to the eligibility requirements of Paragraph 4(2)(b) of Regulation (EC) No 733/2002, and asking for a clarification regarding the Complainant’s claims.

4. Factual Background

The Complainant is an American company and holder of, inter alia, the international trademark registration for INSTAGRAM (registration number 1129314), designating the European Union, registered on March 15, 2012.

The disputed domain name was registered on March 2, 2015 and does not resolve to any active website.

5. Parties’ Contentions

A. Complainant

The Complainant is a world-renowned online photo and video sharing social networking application. The Complainant’s website, available at “www.instagram.com”, is ranked the 14th most visited website in the world, according to web information company Alexa. Currently, Instagram has 500 million daily active users.

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 term “instagram”. Moreover, the Complainant has secured ownership of numerous trademark registrations for INSTAGRAM in many jurisdictions around the world, including in the European Union.

The term “instagram” is highly distinctive and exclusively associated with the Complainant.

The disputed domain name does not resolve to any active website. According to the Complainant’s research, it appears that the disputed domain name has been passively held by the Respondent since its creation.

In May 2018, the Complainant’s legal representatives sent a cease-and-desist letter to the Respondent, asserting its trademark rights and requesting the Respondent to transfer the disputed domain name to the Complainant. The Complainant did not receive any response to the said letter.

The Respondent has no rights or legitimate interests in the disputed domain name. The Respondent is not a licensee of the Complainant, nor has it been otherwise authorized or allowed by the Complainant to make any use of its INSTAGRAM trademark, in a domain name or otherwise. The Respondent cannot assert that it has been using the disputed domain name, prior to any notice of the present dispute, in connection with a bona fide offering of goods or services or that it has made demonstrable preparation to do so. The disputed domain name does not resolve to any active website and there is no evidence that the Respondent has made any preparations to use the disputed domain name in connection with a bona fide offering of goods or services.

The Respondent cannot conceivably claim that it is commonly known by the disputed domain name, particularly given the notoriety surrounding the Complainant’s trademark and its exclusive association with the Complainant. Furthermore, it is unlikely that the Respondent has secured or even sought to secure any valid trademark rights in the term “instagram”.

The Respondent has both registered and used the disputed domain name in bad faith. The Complainant’s trademark is inherently distinctive and well known throughout the world in connection with an online photo‑sharing social network. Furthermore, the Complainant’s trademark has been continuously and extensively used since its launch in 2010, and rapidly acquired considerable goodwill and renown worldwide. It would be inconceivable for the Respondent to argue that it did not have knowledge of the Complainant’s INSTAGRAM trademark at the time of registration of the disputed domain name. Furthermore, the Respondent has been found to have made abusive registrations in at least three other domain name disputes.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

A. Identical or Confusingly Similar to a name in respect of which a right or rights are recognized or established by national law of a Member State and/or Community law

Article 21(1) of Regulation (EC) No. 874/2004 (“the Regulation”) states that “[a] registered domain name shall be subject to revocation, using an appropriate extra-judicial or judicial procedure, where that [domain] name is identical or confusingly similar to a name in respect of which a right is recognized or established by national and/or Community law, such as the rights mentioned in Article 10(1)”.

Article 10(1) of the Regulation refers to, inter alia: “registered national and community trademarks, geographical indications or designations of origin, and, in as far as they are protected under national law in the Member-State where they are held: unregistered trademarks, trade names, business identifiers, company names (…)”.

Paragraph B(11)(d)(1)(i) of the ADR Rules requires that the disputed domain name be “identical or confusingly similar to a name in respect of which a right is recognized or established by national law of a member State and/or Community law”.

The Complainant is the holder of trademark registrations for INSTAGRAM in the European Union. The disputed domain name incorporates the Complainant’s trademarks in their entirety, with the addition of the generic Top‑Level Domain (“gTLD”) “.eu”. The gTLD is typically not considered for the purposes of establishing identity or confusing similarity.

The Panel finds that the disputed domain name is confusingly similar to the Complainant’s trademarks, and the first element of Article 21(1) of the Regulation and Paragraph B(11)(d)(1)(i) of the ADR Rules is thus fulfilled.

B. Rights or Legitimate Interests

The Complainant has stated that the Respondent has no rights of its own or legitimate interests in the disputed domain name, which incorporates the Complainant’s trademark.

Having considered the submissions of the Complainant, and the absence of a Response from the Respondent, the Panel finds that the Respondent is not connected with the Complainant nor authorized to use the Complainant’s trademarks in the disputed domain name. Neither does the Panel find any other indications that the Respondent is making a legitimate noncommercial or fair use of the disputed domain name.

In the light of what is stated above, the Panel finds that the Complainant has made a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. The Respondent has not rebutted this case with appropriate allegations or evidence demonstrating rights or legitimate interests in the disputed domain name. Therefore, the Panel finds that the second element of Article 21(1) of the Regulation and Paragraph B(11)(d)(1)(ii) of the ADR Rules is fulfilled.

C. Registered or Used in Bad Faith

The disputed domain name was registered on March 2, 2015. This is, for example, almost 3 years after the Complainant’s international trademark registration for INSTAGRAM. The Complainant has furthermore submitted evidence showing its worldwide activities and wide range of trademark and domain name registrations. In the light thereof, and considering that the disputed domain name is identical with the Complainant’s trademark, it is in the Panel’s view apparent that the disputed domain name was registered with knowledge of the Complainant’s trademark rights and business.

The Complainant has also submitted evidence showing that the disputed domain name resolves to an inactive page. The Panel cannot foresee any plausible circumstances in which the Respondent could make active use of the disputed domain name that would not interfere with the trademark rights of the Complainant. This is in the Panel’s view a further indication of bad faith under the circumstances.

All in all, the Panel finds that the disputed domain name was registered and is being used in bad faith.

D. Remedies available

According to Paragraph B(11)(b) of the ADR Rules, the remedy available shall be limited to the revocation of the disputed domain name, unless the Complainant satisfies the general eligibility criteria for registration (of domain names) set out in Article 4(2)(b) of Regulation (EC) No 733/2002, in which case a transfer of the disputed domain name to the Complainant may be ordered.

The eligibility requirements of Article 4(2)(b) of Regulation (EC) No 733/2002 provide that

“The Registry shall:

(b) register domain names in the .eu TLD through any accredited .eu Registrar requested by any:

(i) undertaking having its registered office, central administration or principal place of business within the Community, or

(ii) organization established within the Community without prejudice to the application of national law, or

(iii) natural person resident within the Community;”

The Complainant has, in its supplemental filing, requested that the disputed domain name be transferred to the Complainant. The Complainant has in this part stated that its parent company has a subsidiary which satisfies the general eligibility criteria for registration of .eu domain names under Article 4(2)(b) of Regulation (EC) Number 733/2002. Furthermore, the Complainant has referred to Airbnb, Inc. v. Domain Admin, Claim.Club, WIPO Case No. DEU2018-0009, stating that it would allow the Panel to interpret the “Complainant” in Paragraph 11(b) of the ADR Rules as meaning not just the Complainant or its direct subsidiary, but also another company within the Complainant's close group structure.

The Panel is of the opinion that there is a sufficient connection to the European Union by the fact that the Complainant is a wholly owned subsidiary of Facebook, Inc., and an affiliate company to Facebook Ireland Limited and therefore belongs to a group of companies where one of the group companies is an Irish entity. Consequently, the Panel is of the opinion that the Complainant, alongside its European affiliate, meets the relevant eligibility requirements and should have the right to obtain transfer of the disputed domain name.

7. Decision

For the foregoing reasons, in accordance with Paragraph B(11) of the ADR Rules, the Panel orders that the disputed domain name, <instagram.eu>, be transferred to Facebook Ireland Limited for the Complainant.

Jonas Gulliksson
Sole Panelist
Date: November 13, 2018