WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Instagram, LLC v. WhoisGuard Protected, WhoisGuard, Inc. / Candace Neeley, Pay Day Global Limited

Case No. D2017-1752

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 WhoisGuard Protected, WhoisGuard, Inc. of Panama City, Panama / Candace Neeley, Pay Day Global Limited of Brooklyn, New York, United States.

2. The Domain Name and Registrar

The disputed domain name <instagramverifier.com> is registered with NameCheap, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 8, 2017. On September 12, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 12, 2017, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on September 15, 2017, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on September 20, 2017.

The Center verified that the Complaint together with the amended 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 21, 2017. In accordance with the Rules, paragraph 5, the due date for Response was October 11, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 12, 2017.

The Center appointed Angela Fox as the sole panelist in this matter on October 20, 2017. 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 operates the online photo and video sharing social networking application, Instagram. Since it was launched on October 6, 2010, Instagram rapidly developed considerable goodwill and renown worldwide, and currently has over 700 million monthly active users and 400 million daily active users, with more than 250 million photos and videos shared per day. It is one of the fastest-growing social media sites in the world, with its website at “www.instragram.com” being ranked the 18th most visited website in the world by the web information company Alexa. It has received widespread media coverage and numerous award, evidence of which was annexed to the Complaint.

The Complainant offers certain public figures, celebrities and brands the possibility of obtaining a “verified badge” for their Instagram accounts. A verified badge is a blue check that appears next to the name of an Instagram account which means that Instagram has verified that the account in question 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. Thus the Instagram verified badge is part of the Complainant’s efforts to ensure that the members of its community can easily identify the people and brands they want to follow.

The Complainant owns numerous trademark registrations in jurisdictions around the world for the word mark INSTAGRAM. Details of the following registrations were annexed to the Complaint:

− United States Trademark No. 4146057, for INSTAGRAM, registered on May 22, 2012 (with a first use in commerce date of October 6, 2010) (covering Class 9);

− United States Trademark No. 4170675, for INSTAGRAM, registered on July 10, 2012 (with a first use in commerce date of October 6, 2010) (covering Class 42); and

− International Trademark No. 1129314, for INSTAGRAM, registered on March 15, 2012 (covering classes 9 and 42).

The disputed domain name was registered on June 28, 2017, using a privacy protection service. The underlying registrant has been disclosed to be an individual and entity whose existence cannot be verified, at what appear to be incomplete, inaccurate or false contact details.

The disputed domain name currently does not resolve to any active website but it was used to link to a website that deceptively mirrored the Complainant’s website at “www.instagram.com”, with links leading to the Complainant’s genuine website. The website linked to the disputed domain name also displayed the message “Congratulations! You have been selected to get an instagram verification badge on your profile” and invited Internet users to verify their accounts by entering their Facebook or Instagram details. A screen capture of the website at the disputed domain name was filed with the Complaint.

5. Parties’ Contentions

A. Complainant

The Complainant submits that the disputed domain is confusingly similar to the INSTAGRAM trademark, in which it has rights. It differs from the Complainant’s trademark only by the addition of the word “verifier”, which in the context of the Complainant’s verification service is descriptive and likely to reinforce the confusing similarity between the disputed domain name and trademark.

The Complainant further submits that 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 allowed by the Complainant to make any use of the Complainant’s trademark. The Respondent has not been using the disputed domain name in connection with a bona fide offering of goods or services, and moreover appears to have deliberately designed its website so as to misrepresent itself as the Complainant. The Complainant contends that the Respondent’s website appears to have been used in connection with a phishing scam for the Respondent’s financial gain, and refers in this regard to a reference to the Respondent’s website in a press article. Moreover, given the fame of the Complainant’s INSTAGRAM trademark worldwide, and the nature of the disputed domain name, the Complainant considers it implausible that there could be any actual or contemplated legitimate use of the disputed domain name by the Respondent.

Finally, the Complainant submits that the disputed domain name was registered and has been used in bad faith. The Complainant considers it inconceivable that the Respondent did not know about the Complainant’s trademark at the time the disputed domain name was registered, as was, it submits, evidenced by the website at the disputed domain name which deceptively mirrored that of the Complainant and provided links to the Complainant’s genuine site. The Complainant submits that the Respondent chose the disputed domain name in order to deliberately cause confusion among Internet users as to the source of the email and/or website in order to take unfair advantage of the Complainant’s goodwill and reputation. The Complainant also points to the Respondent’s deceptive use of the disputed domain name and its probable use of it in connection with a phishing scam as further evidence of the Respondent’s use in bad faith. Finally, the Complainant notes that the registrant details provided by the privacy service appear to be false, as there is no evidence that a company called “Pay Day Global Limited” exists in New York and neither is there a “Payday global Ct” Street in New York. The Complainant submits that this is further evidence of bad faith on the Respondent’s part.

B. Respondent

The Respondent did not reply to the Complainant’s contentions and is in default. No exceptional circumstances explaining the default have been put forward. Therefore, in accordance with paragraphs 14(a) and (b) of the Rules, the Panel will decide the Complaint and shall draw such inferences as it considers appropriate from the Respondent’s default.

6. Discussion and Findings

Under paragraph 4(a) of the Policy, a complainant can only succeed in an administrative proceeding under the Policy if the panel finds that:

(i) the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights;

(ii) the respondent has no rights or legitimate interests in the domain name; and

(iii) the domain name has been registered and is being used in bad faith.

All three elements must be present before a complainant can succeed in an administrative proceeding under the Policy.

A. Identical or Confusingly Similar

The Complainant has proved that it has rights in the trademark INSTAGRAM. The disputed domain name contains that element in its entirety. It differs only in the addition of the word “verifier” and the non-distinctive domain name suffix “.com”. These elements do not avoid a finding of confusing similarity with the Complainant’s trademark, which is clearly recognizable in the disputed domain name.

The Panel finds that the disputed domain name is confusingly similar to a trademark in which the Complainant has rights.

B. Rights or Legitimate Interests

As noted by numerous prior UDRP panels, once a complainant has made a prima facie showing that a respondent lacks rights or legitimate interests in a domain name, the burden of production shifts to the respondent to rebut that (see among others The Vanguard Group, Inc. v. Lorna Kang, WIPO Case No. D2002-1064 and section 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).

In this case, the Respondent is not a licensee of the Complainant, nor has the Complainant authorized the Respondent to use the INSTAGRAM trademark. The use that the Respondent has made of the disputed domain name appears to have been deliberately intended so as to misrepresent the Respondent’s website as that of the Complainant. The Complainant has provided evidence to support its assertion that the Respondent’s use of the disputed domain name was in connection with a phishing scam, and the Respondent has made no effort to refute that. These activities are not use in connection with an offering of goods or services, let alone a bona fide one, nor a legitimate noncommercial use. See in this regard Apple Computer, Inc. v. PrivacyProtect.org / Private Registrations Aktien Gesellschaft, WIPO Case No. D2012-0879, in which the panel found that the “website connected with <applestor.com> is an example of a phishing website and cannot constitute a bona fide use of the disputed domain name pursuant to paragraph 4(c)(i) of the Policy”). See also National Westminster Bank plc v. John Brendan, WIPO Case No. D2014-2045, in which the panel found that “the Respondent is not making a legitimate noncommercial or fair use of the disputed domain name” where “the only purpose for which the disputed domain name has been used is for that of a fraudulent ‘phishing’ website.”

The Panel concludes that the Respondent has no rights or legitimate interests in the disputed domain name.

C. Registered and Used in Bad Faith

The facts of this case make it inconceivable that the Respondent did not know about the Complainant’s trademark at the time the disputed domain name was registered. When the disputed domain name was registered, the Complainant’s trademark was already internationally famous, and the use the Respondent made of it makes it abundantly clear that it knew about the Complainant’s trademark and activities, and intended to take advantage of them through registration of the disputed domain name. In the context of the Complainant’s provision of verifications to specific types of users, the presence of the word “verifier” in the disputed domain name is directly descriptive of activities the Complainant carries out under the INSTAGRAM trademark. It therefore reinforces the appearance of a connection between the disputed domain name and the Complainant’s trademark.

The Complainant has persuasively argued that the Respondent chose the disputed domain name in order to deliberately cause confusion among Internet users and to take unfair advantage of the Complainant’s goodwill and reputation by inviting users to provide their confidential Instagram account details, in the mistaken belief that they were dealing with the Complainant. It appears highly likely on the evidence that the Respondent’s activities in this regard were part of a phishing scam. The Respondent has done nothing to refute this assertion on the Complainant’s part. In Westminster Bank plc v. John Brendan, supra, “the Panel accept[ed] the Complainant’s uncontradicted submissions and evidence that the disputed domain name ha[d] been used for the purposes of a ‘phishing’ website which was designed to impersonate an official website of the Complainant with a view to deceptively obtaining the Complainant’s customers’ account details. Since it is to be inferred that the disputed domain name was registered for this specific purpose, the Panel finds that the disputed domain name was registered and is being used in bad faith.”

The registrant’s provision of incomplete, inaccurate or false contact details in breach of its registration agreement is further evidence that the Respondent’s registration and use of the disputed domain name was in bad faith.

The Panel so finds.

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 <instagramverifier.com> be transferred to the Complainant.

Angela Fox
Sole Panelist
Date: November 21, 2017