WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Instagram, LLC v. Whois Agent, Whois Privacy Protection Service, Inc. / Muhammet, Muhammet Back / Ahmet Aslan, Eyyy
Case No. D2019-1091
1. The Parties
The Complainant is Instagram, LLC, United States of America (“United States”), represented by Hogan Lovells (Paris) LLP, France.
The Respondents are Whois Agent, Whois Privacy Protection Service, Inc., United States / Muhammet, Muhammet Back, Turkey / Ahmet Aslan, Eyyy, Turkey.
2. The Domain Names and Registrar
The disputed domain name <help-copyrightlnstagram.com> is registered with eNom, Inc.; the disputed domain name <helpverifyinstagram.xyz> is registered with Hostinger, UAB (collectively the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 10, 2019. On May 10, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name <help-copyrightlnstagram.com>. On May 13, 2019, 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 May 20, 2019, 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 May 24, 2019, in which it added a new disputed domain name, <helpverifyinstagram.xyz>. On May 27, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name <helpverifyinstagram.xyz>. On May 27, 2019, 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 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 Respondents of the Complaint, and the proceedings commenced on June 7, 2019. In accordance with the Rules, paragraph 5, the due date for Response was June 27, 2019. The Respondents did not submit any response. Accordingly, the Center notified the Respondents’ default on June 29, 2019.
The Center appointed Philippe Gilliéron as the sole panelist in this matter on July 13, 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, that was launched on October 6, 2010, is the world-renowned online photo and video sharing social networking application. Acquired by Facebook in April 2012, it currently has over 1 billion monthly active users and 500 million daily active users, with more than 95 million photos and videos shared per day.
The Complainant’s website “www.instagram.com” is ranked the 15th most visited website in the world and 20th in Turkey (where the underlying Respondents are based), according to web information company Alexa. Instagram has also consistently ranked amongst the top apps available for mobile devices, including for iOS and Android operating systems, 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 2nd most downloaded application in Turkey and 5th in the world as per App Annie Top App rankings in 2019.
The Complainant owns numerous trademarks consisting of the term <INSTAGRAM>, such as:
- Turkish Trademark No. 2012 85440, for INSTAGRAM, registered on April 28, 2015;
- Turkish Trademark No. 2013 74099, for INSTAGRAM, registered on May 20, 2015;
- European Union Trademark No. 014493886, for INSTAGRAM, registered on December 24, 2015;
- United States Trademark No. 4146057, for INSTAGRAM, registered on May 22, 2012 (first use in commerce on October 6, 2010); and
- International Trademark No. 1129314, for INSTAGRAM, registered on March 15, 2012.
Furthermore, given the exclusive online nature of the Complainant’s business, the Complainant owns numerous domain names consisting of the trademark <INSTAGRAM>, such as: <instagram.com>, <instagram.co.at> (Austria), <instagram.com.br> and <instagram.net.br> (Brazil), <instagram.org.cn> (China), <instagram.dk> (Denmark), <instagram.ec> (Ecuador), <instagram.de> (Germany), <instagram.ht> (Haiti), <instagram.org.in> (India), <instagram.org.il> (Israel), <instagram.jo> (Jordan), <instagram.pk> (Pakistan), <instagram.net.ru> (Russian Federation), <instagram.lk> (Sri Lanka), <instagram.ch> (Switzerland), <instagram.ae> (United Arab Emirates) and <instagram.com.vn> (Viet Nam).
Prior UDRP panels have recognized the strength and renown of the Complainant’s INSTAGRAM trademark, and ordered the transfer of disputed domain names to the Complainant.
The Respondents respectively registered the domain name <helpverifyinstagram.xyz> on May 13, 2018, and <help-copyrightInstagram.com> on December 23, 2018. While the former has been passively held by the Respondents since its creation, it appears that the disputed domain name <help-copyrightInstagram.com> is currently pointing to a webpage indicating that the website is deceptive with the following message:
“Deceptive site ahead
Attackers on help-copyrightlnstagram.com may trick you into doing something
dangerous like installing software or revealing your personal information (for example, passwords, phone numbers, or credit cards).”
Based on the evidence collected by the Complainant, this disputed domain name was previously used by the Respondent to send emails impersonating the Complainant and containing the following message:
“Copyright Infringement
Hello
Your account received a copyright notice on 14.03.2019 to your most recent post.
If you think we made a mistake, you must object within 48 hours, otherwise your account will be deleted from our servers.”
Such emails also displayed a link for recipients to object entitled “This Is An Error” and a footer “© Instagram, 1601 Willow Road, Menlo Park, CA 94025”.
5. Parties’ Contentions
A. Complainant
The Complainant submits that the disputed domain names are confusingly similar to its INSTAGRAM trademarks as they entirely incorporate such trademark (with the mere replacement in <help-copyrightlnstagram.com> of the “I” by an “L”, which is hardly noticeable) and that the additional elements, namely “help-copyright” and “helpverify” do not prevent a finding of confusing similarity under the first element.
The Complainant is of the opinion that the Respondents have no rights or legitimate interests in the disputed domain names. The Respondents are not known under these names, are not licensees of the Complainant, nor have they been otherwise authorized or allowed by the Complainant to make any use of its INSTAGRAM trademark in any way.
Far from being used in connection with a bona fide offering of goods or services, the domain name
<help-copyrightlnstagram.com> was previously used by the Respondent to a website sending emails impersonating the Complainant and inviting them to disclose their personal information. It is therefore clear that this disputed domain name was being used in connection with a phishing scheme that sought to illegitimately collect the personal information of Instagram users, obviously for commercial gain. As to the domain name <helpverifyinstagram.xyz>, the Complainant further adds that its passive holding cannot be considered as a bona fide offering of goods or services either.
The Complainant finally affirms that, considering the fame of its INSTAGRAM trademark, the Respondents were obviously aware of the Complainant’s trademark when it registered the disputed domain names.
Furthermore, the Complainant considers that the use of the disputed domain names as described above amounts to a use in bad faith.
B. Respondents
The Respondents did not reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 15(a) of the Rules instructs this Panel to “[…] decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”.
Pursuant to paragraph 4(a) of the Policy, the Complainant must prove each of the following three elements to obtain an order that the disputed domain names should be cancelled or transferred:
(i) the disputed domain names registered by the Respondent are identical or confusingly similar to a trademark or a service mark in which the Complainant has rights;
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain names; and
(iii) the disputed domain names have been registered and are being used in bad faith.
A. Procedural Issues: Consolidation
The Complainant requests to consolidate its claims in a single case against multiple Respondents based on the following:
(i) it is clear that the two disputed domain names are under common control by the Respondents as shown by the fact that:
(a) the Respondents are associated with the same fax number, i.e., +90.5536937310 as confirmed by the Registrar;
(b) the Respondents are both based in Bursa (Turkey), as per the WhoIs database;
(c) The two disputed domain names have been registered in the same naming pattern, i.e., the Complainant’s INSTAGRAM trade mark or its approximation (i.e., “lnstagram”) plus dictionary terms such as “help”.
(ii) the consolidation would be fair and equitable to all parties for the following reasons:
(a) there is no apparent reason why it would not be equitable to allow the Complainant to file a single Complaint against the two Respondents;
(b) the Complainant’s substantive arguments against the Respondents are the same;
(c) the relevant filings, including annexes, are not unreasonably voluminous.
UDRP panels have articulated principles governing the question of whether a complaint may be filed against multiple respondent. These criteria encompass situations where (i) the domain names or corresponding websites are subject to common control, and (ii) the consolidation would be fair and equitable to all parties. Procedural efficiency would also underpin panel consideration of such a consolidation scenario. See section 4.11.2 of WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, (“WIPO Overview 3.0”).
In the present case, the Panel finds that two disputed domain names are subject to common control and the consolidation would be fair and equitable to the Parties. As a result, the Panel considers that, in line with section 4.11.2 of the WIPO Overview 3.0, it is equitable and procedurally efficient to permit the consolidation, which is hereby granted.
B. Identical or Confusingly Similar
According to the Policy, paragraph 4(a)(i), the Complainant has to prove that the disputed domain names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights.
The Complainant holds numerous word trademarks throughout the world consisting of the trademark INSTAGRAM.
UDRP panels widely agree that incorporating a trademark into a domain name can be sufficient to establish that the domain name is identical or confusingly similar to a registered trademark for purpose of the Policy (see, e.g., Uniroyal Engineered Products, Inc. v. Nauga Network Services,
WIPO Case No. D2000‑0503; Thaigem Global Marketing Limited v. Sanchai Aree,
WIPO Case No. D2002‑0358; and F. Hoffmann-La Roche AG v. Relish Entreprises,
WIPO Case No. D2007‑1629). Such happens to be the case here.
This is all the more true when the inserted trademark, a well-known one, consists of the dominant part of the disputed domain name, and that the added elements are merely descriptive.
Such happens to be the case. The applicable generic Top-Level Domain (“gTLD”), in the present case “.com” and “xyz”, are usually disregarded under the confusing similarity test and the addition of a dictionary term such as “help-copyright” or “helpverify” does not prevent a finding of confusing similarity (see, among others: Playboy Entreprises International, Inc. v. Zeynel Demirtas,
WIPO Case No. D2007-0768; Inter-IKEA Systems B.V. v. Evezon Co. Ltd,
WIPO Case No. D2000-0437; Dell Computer Corporation v. MTO C.A. and Diabetes Education Long Life,
WIPO Case No. D2002-0363). To the contrary; users are likely to believe that these are the official pages of the Complainant related to notifications.
As a result, the Panel considers paragraph 4(a)(i) of the Policy to be satisfied.
C. Rights or Legitimate Interests
According to the Policy, paragraph 4(a)(ii), the Complainant has to demonstrate that the Respondents have no rights or legitimate interests in the disputed domain name.
As the panel stated in Do The Hustle, LLC v. Tropic Web,WIPO Case No. D2000-0624, demonstrating that the Respondents have no rights or legitimate interests in the domain name “would require complainant to prove a negative, a difficult, if not impossible, task”. Thus, in that decision, the panel opined that “[w]here a complainant has asserted that the respondent has no rights or legitimate interests in respect of the domain name, it is incumbent upon the respondent to come forward with concrete evidence rebutting this assertion”. Following that decision, subsequent UDRP panels developed a consensual view that it is deemed sufficient for a complainant to make a prima facie case that the respondent lacks rights or legitimate interests in a domain name. Once a prima facie case has been made, it is the respondent’s burden to demonstrate its rights or legitimate interests. If it fails to do so, the complainant is deemed to have satisfied to paragraph 4(a)(ii) of the Policy (see, e.g., section 2.1 of WIPO Overview 3.0).
In the present case, the Complainant is the owner of numerous INSTAGRAM trademarks. The Complainant has no business or other relationship with the Respondents. The Complainant thus has made a prima facie case showing that the Respondents have no rights or legitimate interests in the disputed domain names.
Absent any Response, there is no doubt in the Panel’s opinion that the Respondents are neither commonly known by the disputed domain names, nor have made a legitimate noncommercial or fair use of the disputed domain names.
Consequently, in light of the above, the Panel considers paragraph 4(a)(ii) of the Policy to be fulfilled.
D. Registered and Used in Bad Faith
For a complaint to succeed, a panel must be satisfied that a domain name has been registered and is being used in bad faith (Policy, paragraph 4(a)(iii)).
Bad faith typically requires the Respondents to be aware of the Complainant’s trademarks. In the present case, the Complainant is the owner of numerous INSTAGRAM trademarks, which enjoy a worldwide reputation. Considering the reputation of the Complainant’s trademarks, the Respondents were aware of the Complainant’s trademarks at the time they registered the disputed domain names. As a result, the Panel holds that the disputed domain names were registered in bad faith.
Furthermore, the Respondents’ registration of disputed domain names which include well-known trademark such as INSTAGRAM may, in itself, be sufficient in certain circumstances to consider that the disputed domain names are being used in bad faith (Comerica Inc. v. Horoshiy, Inc, WIPO Case No. D2004-0615).
Based upon the overall circumstances of the case, the Panel has no doubt that the disputed domain names were registered by the Respondents to exploit the Complainant’s goodwill with a phishing scheme that sought to illegitimately collect the personal information of Instagram users, potentially for commercial gain. Previous UDRP panels deciding under similar circumstances have held that the respondent’s deceptive intent to solicit personal information from Internet users by conveying the false impression that the request for information originated from the Complainant is sufficient to establish bad faith, whether or not for commercial gain (see Instagram, LLC v. Instagram ??????,WIPO Case No. D2017-1736).
Furthermore, considering the fame of the Complainant’s trademark, the Panel cannot imagine any plausible reason that would amount to a use of the disputed domain names in good faith.
The Panel finds, for the reasons discussed, that the Complainant has successfully established the third element under paragraph 4(a) of the Policy.
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 names <help-copyrightlnstagram.com> and <helpverifyinstagram.xyz> be transferred to the Complainant.
Philippe Gilliéron
Sole Panelist
Date: July 18, 2019
