WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Instagram, LLC v. Whois privacy protection service / Olga Sergeeva / Ivan Ivanov /Privacy Protect, LLC (Privacy Protect.org)
Case No. D2020-0521
1. The Parties
The Complainant is Instagram, LLC, United States of America (“United States”), represented by Hogan Lovells (Paris) LLP, France.
The Respondent is Whois privacy protection service, Ukraine / Olga Sergeeva, Russian Federation / Ivan Ivanov, Ukraine /Privacy Protect, LLC (Privacy Protect.org), United States of America.
2. The Domain Names and Registrars
The disputed domain name <instafollowfast.com> is registered with the Registrar Internet Invest, Ltd. dba Imena.ua.
The disputed domain names <instafamoushub.com>, <instagrambot.net> and <instagramhilecin.com> are registered with the Registrar PDR Ltd. d/b/a PublicDomainRegistry.com.
3. Procedural History
The Complaint in respect of the disputed domain name <instafollowfast.com> was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 3, 2020. On March 4, 2020, the Center transmitted by email to the Registrar Internet Invest, Ltd. dba Imena.ua a request for registrar verification in connection with the disputed domain name <instafollowfast.com>. On March 3, 2020, the Registrar Internet Invest, Ltd. dba Imena.ua transmitted by email to the Center its verification response disclosing registrant and contact information for this disputed domain name which differed from the named Respondent and contact information in the Complaint. On March 9, 2020, the Center transmitted this information to the Complainant and invited it to amend the Complaint. On the same date, the Center sent to the Parties an email regarding the language of the proceeding in English and Russian, as the Complaint has been submitted in English and the language of the registration agreement for the disputed domain name is Russian. On March 10, 2020, the Complainant requested the language of the proceeding to be English. On March 13, 2020, the Complainant requested an extension for the filing of the amended Complaint, and the Center granted an extension until March 18, 2020.
On March 18, 2020, the Complainant submitted an amended Complaint and a consolidation request to add the domain names <instafamoushub.com>, <instagrambot.net> and <instagramhilecin.com> to the present proceeding.
On March 10, and March 19, 2020, the Respondent sent email communications in English to the Center.
On March 19, 2020, the Center transmitted by email to the Registrar PDR Ltd. d/b/a PublicDomainRegistry.com a request for registrar verification in connection with these three disputed domain names. On March 20, 2020, the Registrar PDR Ltd. d/b/a PublicDomainRegistry.com transmitted by email to the Center its verification response disclosing registrants and contact information for these three disputed domain names. On March 24, 2020, the Center sent a prima facie consolidation email to the Parties.
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 March 24, 2020. In accordance with the Rules, paragraph 5, the due date for Response was April 13, 2020. The Response was filed with the Center on March 24, 2020.
The Center appointed Assen Alexiev as the sole panelist in this matter on April 8, 2020. 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 is a world-renowned online photo- and video-sharing social networking application, launched in 2010. In 2012, it was acquired by Facebook, Inc. The Complainant is now the world’s fastest growing photo/video sharing and editing software and online social network, with more than 1 billion monthly active accounts worldwide.
The Complainant is the owner of the following trademark registrations of the sign INSTAGRAM (the “INSTAGRAM trademark”):
- the United States trademark INSTAGRAM with registration No.4146057, registered on May 22, 2012 for goods in International Class 9;
- the European Union trademark INSTAGRAM with registration No.014493886, registered on December 24, 2015 for goods and services in International Classes 25, 35, 38, 41 and 45; and
- the International trademark INSTAGRAM with registration No.1129314, registered on March 15, 2012 for goods and services in International Classes 9 and 42.
The Complainant is the owner of the following trademark registrations of the signs INSTA (the “INSTA trademark”):
- the United States trademark INSTA with registration No.5061916, registered on October 18, 2016 for goods in International Class 9, with a first use in commerce of September 20, 2011; and
- the European Union trademark INSTA with registration No. 014810535, applied on November 19, 2015, and registered on May 23, 2018 for goods in International Class 9.
The Complainant’s official website is located at the domain name <instagram.com>, registered on June 6, 2004.
The disputed domain name <instafollowfast.com> was registered on May 11, 2016. It resolves to an English language website that offers the sale of Instagram “followers”, “likes”, “views” and “comments”.
The disputed domain name <instafamoushub.com> was registered on May 6, 2019. It also resolves to an English language website that offers the sale of Instagram “followers”, “likes”, “views” and “comments”.
The disputed domain name <instagrambot.net> was registered on May 6, 2019. It is currently inactive.
The disputed domain name <instagramhilecin.com> was registered on April 26, 2019. It resolves to a Turkish language website that also offers the sale of Instagram “followers”, “likes”, “views” and “comments”.
5. Parties’ Contentions
A. Complainant
The Complainant submits that it has acquired and developed considerable goodwill and renown worldwide and its mobile phone application has consistently ranked amongst the top “apps” for mobile devices, including for iOS and Android operating systems. It has been the recipient of numerous awards, including “App of the Year” in 2011 from Apple Inc., and is currently the third most downloaded app for iOS phones worldwide, according to the applications information company App Annie. The Complainant points out that given the exclusive online nature of its business, its domain names consisting of the INSTAGRAM or the INSTA trademarks are the heart of its entire business and the main way for its millions of users to avail themselves of its services, and its website at “www.instagram.com” is ranked the 30th most visited website in the world, according to the web information company Alexa.
The Complainant submits that the disputed domain names are confusingly similar to the INSTA and INSTAGRAM trademarks in which the Complainant has rights, as the disputed domain names incorporate these trademarks in their entirety as their leading element, together with the dictionary terms “follow”, “fast”, “famous”, “hub”, “bot” and “hilecin” (meaning “tricks” in Turkish), whose addition does not prevent a finding of confusing similarity with the trademarks, which remain clearly recognizable in the disputed domain names.
According to the Complainant, the Respondent has no rights or legitimate interests in the disputed domain names, because the Respondent is not a licensee of the Complainant and has not been authorized by the Complainant to use the INSTA and INSTAGRAM trademarks in a domain name or otherwise, is not commonly known by the disputed domain names, and does not own any trademarks for INSTA or INSTAGRAM. The Complainant further submits that the Respondent is not using the disputed domain names in connection with a bona fide offering of goods or services, and is not making a legitimate noncommercial or fair use of the disputed domain names. Rather, the disputed domain names <instafollowfast.com> and <instafamoushub.com> refer to websites in English that offer the sale of Instagram “followers”, “likes”, “views” and “comments” and prominently display, at the top left-hand corner of the screen, logos having the same “look and feel” as the Complainant’s well-known and distinctive logo. The disputed domain name <instagramhilecin.com> resolves to a website in Turkish offering the same services, and was previously pointing to a very similar website in Turkish that offered users to download an application enabling them to purchase Instagram “likes”, “followers” and “comments”. In return for the “likes” that they obtained, the Instagram accounts of the users of this application were commandeered and used to “like” other content for the website operator’s commercial gain. According to the Complainant, the current Respondent was also connected to the operation of this previous website. The Complainant notes that the disputed domain name <instagrambot.net> is currently suspended, but previously pointed to a Persian language website that also offered the sale of Instagram “followers”, “likes”, “views” and “comments” and made reference to the website associated with the disputed domain name <instafollowfast.com>.
The Complainant states that the website associated with the disputed domain name <instafollowfast.com> offers Internet users to purchase up to 100,000 “followers”, “likes”, “views” and 10,000 “comments” against payment of certain amounts, and promises to deliver them in 30 to 60 minutes. According to the Complainant, the generation of very high numbers of “followers”, “likes”, “views” and “comments” in such a short time involves fraudulent operations, such as the creation of fake accounts or hacking into existing accounts, while the offering of “followers” and “likes” for sale destroys the authenticity of the user experience sought by Instagram and damages the reputation of the Complainant. Therefore, such use of the disputed domain names is not a bona fide offering of goods or services as the Respondent is trading off of the Complainant’s goodwill for its own financial gain. The “Terms and Privacy” section of the website associated with the disputed domain name <instafollowfast.com> contains a disclaimer that it is not affiliated with Instagram, Facebook or any Instagram third-party partners, but the presence of this disclaimer does not render the Respondent’s activities bona fide, as the Respondent is using the disputed domain name <instafollowfast.com> as part of a fraudulent scheme most likely involving the creation of fake accounts or hacking into existing accounts.
The Complainant contends that the disputed domain names were registered and are being used in bad faith. The content of the Respondent’s websites shows that the Respondent had the Complainant in mind when registering the disputed domain names and that the Respondent has sought to create a misleading impression of association with the Complainant. According to the Complainant, by using the disputed domain names the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the websites at the disputed domain names by creating a likelihood of confusion as to the source, sponsorship, affiliation or endorsement of these websites or of the services offered there. The use of the disputed domain names to resolve to websites containing logos having similar or the same “look and feel” as the Complainant’s well-known and distinctive logo and offering “likes” and “followers” for sale is in bad faith as the Respondent is using the Complainant’s INSTA and INSTAGRAM trademarks to increase traffic to its websites in order to obtain commercial gain derived from the goodwill and reputation attached to the Complainant’s trademarks.
The Complainant adds that the Respondent’s use of the disputed domain names is in bad faith also because the sale of “likes” and “followers” is destroying the authenticity of the user experience provided by the Complainant's social network and is damaging the Complainant’s reputation and goodwill, and is likely to involve some type of fraudulent operation, such as the creation of fake accounts, or hacking into existing accounts. The Complainant notes that the disputed domain name <instagrambot.net> is currently suspended, but its control by the Respondent is an abusive threat hanging over the head of the Complainant, and given the renown and popularity of the Complainant’s INSTA and INSTAGRAM trademarks worldwide, there cannot be any actual or contemplated good faith use of this disputed domain name that would not result in misleading diversion and taking unfair advantage of the Complainant’s rights.
The Complainant states that on December 4, 2019, its counsel sent a cease and desist letter to the Respondent concerning the disputed domain name <instafollowfast.com>, to which the Respondent did not reply.
B. Respondent
The Respondent submits that Complaint should be denied. It maintains that the disputed domain name <instafollowfast.com> consists of abbreviated words, where “insta” means “instant”, “follow” means “followers”, and “fast” means “faster”, and that if the full words were used, the domain name should be <instantfollowersfaster.com>, which is very long and unreadable. The Respondent denies that the word “insta” was used to stand for “Instagram” and that it has violated any intellectual property of the Complainant.
The Respondent confirms that it was inspired by the real Instagram logo when it created its logo and recognizes that the two logos are similar, but states that its goal was not to copy the Complainant’s logo and that it will change its logo immediately.
The Respondent maintains that it has never used or created fake Instagram accounts or hacked any existing Instagram accounts, and asserts that it uses “only white methods” of promotion and that the accounts of its users get only real traffic as a result of which they get followers, likes and views. According to the Respondent, it advertises the accounts of its users through its promotion system in fully legitimate methods, and does not violate any laws or rules of the Complainant.
The Respondent states that it has purchased the disputed domain names in good faith after checking their availability.
6. Discussion and Findings
6.1. Procedural issue - Consolidation of the proceedings
In this proceeding, the Complainant is bringing its Complaint against multiple respondents, and submits that a consolidation of the proceedings is appropriate. It points out that the disputed domain names are under common control, because the email address of Ivan Ivanov, registrant of the disputed domain name <instagrambot.net> is the same as the email address of the registrant of the disputed domain name <instafollowfast.com>, and the disputed domain names <instafamoushub.com> and <instagramhilecin.com> are currently registered in the name of a privacy service, but the historical WhoIs records of these two disputed domain names list as registrant Ivan Ivanov with the same email address as indicated for the first two disputed domain names. According to the Complainant, the same registrant is still controlling these two disputed domain names because they are still registered with the same Registrar, and the disputed domain names <instagramhilecin.com> remained on the same servers after the registrant data was hidden. All disputed domain names, apart from <instagrambot.net>, are currently resolving to websites offering the sale of Instagram “followers”, “likes”, “views” and “comments”, and the disputed domain name <instagrambot.net> previously also pointed to a website offering the same. The Complainant adds that the consolidation would be fair and equitable to all Parties, as the disputed domain names are under common control, the Complainant’s substantive arguments in respect of each of the disputed domain names are the same, and to require the Complainant to file a separate complaint for each of the disputed domain names would only result in increased time and costs incurred by the Complainant, while there is no apparent reason why a consolidation would not be fair and equitable to all Parties involved.
As discussed in section 4.11.2 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), where a complaint is filed against multiple respondents, panels look at whether the domain names or corresponding websites are subject to common control, and whether the consolidation would be fair and equitable to all parties. Procedural efficiency would also underpin panel consideration of such a consolidation scenario. UDRP panels have considered a range of factors, typically present in some combination, as useful to determining whether such consolidation is appropriate, such as, inter alia, similarities in or relevant aspects of the registrants’ identities, the registrants’ contact information including email addresses, and the content or layout of websites corresponding to the disputed domain names, etc.
The Panel is satisfied that these requirements are met in the present case. The arguments brought forward by the Complainant for the existence of common control over the four disputed domain names are supported by the evidence in the case file and have not been denied by their registrants, and the latter have not objected to the consolidation either. The Panel is not aware of any reason why the consolidation would not be fair and equitable to all Parties and would not lead to procedural efficiency.
Therefore, in exercise of its powers under paragraph 10(e) of the Rules, the Panel allows the consolidation of the disputes in respect of the four disputed domain names. The registrants of the four disputed domain names will be jointly referred to in this decision as the “Respondent”.
6.2. Procedural issue – Language of the proceeding
According to the information provided by the two Registrars, the language of the Registration Agreement for the disputed domain name <instafollowfast.com> is Russian, while the language of the Registration Agreements for the other three disputed domain names is English. Under paragraph 11 of the Rules, unless otherwise agreed by the Parties, or specified otherwise in the registration agreement, 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.
The Complainant requests that the language of the proceedings be English, pointing out that the Respondent has submitted communications to the Center in English, and the disputed domain name <instafollowfast.com> resolves to an elaborate website in English, which supports the inference that the Respondent is capable of understanding the English language, while the Complainant is a United States corporation with English as its principal operational language, and to require the Complaint and the evidence attached to it to be translated into Russian would lead to delay and increased costs, running contrary to the aim of the Policy of providing time- and cost-effective means of resolving domain name disputes.
The Center has sent all its messages to the Respondent in both English and Russian, and has invited the Respondent to express its views on the language of the proceeding. The Respondent has submitted its Response in English and has not objected to the Complainant’s request that the proceedings be held in English. As noted by the Complainant, the whole content of the website at the disputed domain name <instafollowfast.com> is in English. The Panel further notes that the Registrar PDR LTD. D/B/A PUBLICDOMAINREGISTRY.COM has confirmed English as the language of the registration agreement for the disputed domain names <instafamoushub.com>, <instagrambot.net> and <instagramhilecin.com>.
The above satisfies the Panel that the Respondent can communicate in English, and that the Respondent would not be disadvantaged if the language of the proceeding is English, and is satisfied that using the English language in this proceeding would be fair and efficient. Therefore, in exercise of its powers under paragraph 11 of the Rules, the Panel decides that the language of this administrative proceeding will be English.
6.3. Substantive issues
Pursuant to the Policy, paragraph 4(a), the Complainant must prove each of the following to justify the transfer of the disputed domain names:
(i) the disputed domain names are 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 respect of the disputed domain names; and
(iii) the Respondent has registered and is using the disputed domain names in bad faith.
A. Identical or Confusingly Similar
The Complainant has provided evidence and has thus established its rights in the INSTAGRAM and INSTA trademarks.
The Panel notes that a common practice has emerged under the Policy to disregard in appropriate circumstances the generic Top-Level Domain (“gTLD”) section of domain names for the purposes of the comparison under the Policy, paragraph 4(a)(i). See section 1.11.1 of the WIPO Overview 3.0. The Panel sees no reason not to follow the same approach here, so it will disregard the “.com” and the “.net” gTLDs of the disputed domain names.
The relevant part of the disputed domain name <instafollowfast.com> is therefore the sequence “instafollowfast”, which incorporates the INSTA trademark in combination with the dictionary words “follow” and “fast”, where the INSTA trademark is clearly recognizable in the disputed domain name. Similarly, the relevant part of disputed domain name <instafamoushub.com> is the sequence “instafamoushub”, which incorporates the INSTA trademark in combination with the dictionary words “famous” and “hub”, and the INSTA trademark is again clearly recognizable in it. The relevant part of the disputed domain name <instagrambot.net> is the sequence “instagrambot”, which incorporates the INSTAGRAM trademark in combination with the word “bot”, which is an abbreviation for “robot” or a software application that runs automated tasks, and the INSTAGRAM trademark is clearly recognizable in this disputed domain name. As to the disputed domain name <instagramhilecin.com>, its relevant part is the sequence “instagramhilecin”, which incorporates the INSTAGRAM trademark in combination with the Turkish dictionary word “hilecin”, which means “tricks”, and the INSTAGRAM trademark is clearly recognizable in this disputed domain name as well. Where the relevant trademark is recognizable within the disputed domain name, the addition of other terms would not prevent a finding of confusing similarity under the first element. See section 1.8 of WIPO Overview 3.0.
In view of the above, the Panel finds that the disputed domain names <instafamoushub.com> and <instafollowfast.com> are confusingly similar to the INSTA trademark in which the Complainant has rights, and that the disputed domain names <instagrambot.net> and <instagramhilecin.com> are confusingly similar to the INSTAGRAM trademark in which the Complainant has rights.
B. Rights or Legitimate Interests
While the overall burden of proof in UDRP proceedings is on the complainant, UDRP panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the often impossible task of “proving a negative”, requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element. See section 2.1 of the WIPO Overview 3.0.
The Complainant contends that the Respondent has no rights or legitimate interests in the disputed domain names, stating that the Respondent has not been authorized by the Complainant to use the INSTAGRAM and INSTA trademarks, is not known by the disputed domain names and is not carrying out a bona fide use of the disputed domain names. According to the Complainant, the Respondent uses the disputed domain names for websites that currently offer or have at certain points in time offered Internet users to purchase large numbers of Instagram “followers”, “likes”, “views” and “comments” against payment. According to the Complainant, this activity involves the creation of fake accounts or hacking into existing accounts and destroys the authenticity of the user experience sought by Instagram and damages the reputation of the Complainant. Thus, the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain names.
In its defense, the Respondent explains and maintains that the disputed domain name <instafollowfast.com> stands for “instant”, “followers”, and “faster”, and denies that the word “insta” was used to stand for “Instagram”. The Respondent has not given explanations about the choice and meaning of the other disputed domain names, and admits that it was inspired by the real Instagram logo when it created its logo. The Respondent denies that it has used or created fake Instagram accounts or hacked any existing Instagram accounts, and asserts that it uses “only white methods” of promotion and that the accounts of its users get only real traffic as a result of which they get followers, likes and views. According to the Respondent, it advertises the accounts of its users through its promotion system in fully legitimate methods, and does not violate any laws or rules of the Complainant.
The Panel is not convinced by the arguments of the Respondent, which are not supported by any evidence or explanation how its users would receive large numbers of genuine “followers”, “likes”, “views” and “comments” in such short periods of time legitimately and without breaching the rules of conduct established by the Complainant for the users of its Instagram service. The Panel is not aware how this could possibly happen without some type of fraud or other illegitimate conduct. The elements of all of the disputed domain names and the content and appearance of the associated websites shows that they are all focused on the Complainant and its Instagram service, which makes the statement of the Respondent that it was not targeting the Complainant simply not credible.
The Panel notes the Complainant’s allegation that the “Terms and Privacy” section of the website associated with the disputed domain name <instafollowfast.com> contains a disclaimer that it is not affiliated with Instagram, Facebook or any Instagram third-party partners, but the Panel agrees that the presence of this disclaimer does not render the Respondent’s activities bona fide.
Therefore, the Panel accepts that it is more likely than not that the Respondent, being aware of the goodwill of the Complainant’s INSTAGRAM and INSTA trademarks, has registered and used the disputed domain names in an attempt to exploit the trademarks’ goodwill to attract Internet users to the Respondent’s websites and to offer them illegitimate services that damage the reputation of the Complainant and the confidence of its users in its Instagram service. To the Panel, such conduct does not give rise to rights or legitimate interests of the Respondent in the disputed domain names.
Therefore, the Panel finds that the Respondent does not have rights or legitimate interests in the disputed domain names.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy lists four illustrative alternative circumstances that shall be evidence of the registration and use of a domain name in bad faith by a respondent, namely:
“(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(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.”
As discussed above, the disputed domain names fully incorporate the INSTA or INSTAGRAM trademarks in combination with dictionary words. The Respondent does not deny that it has linked them to websites that currently offer and have at some points in time offered Internet users to purchase large numbers of Instagram “followers”, “likes”, “views” and “comments” against payment. As contended by the Complainant, this activity likely involves the creation of fake Instagram accounts or hacking into existing ones. The Respondent has not given any credible explanation why this should not be so and why its activities should be regarded as legitimate.
The fact that the disputed domain name <instagrambot.net> is currently inactive does not prevent a finding of bad faith.
Taking the above into account, the Panel accepts that it is more likely than not that the Respondent has registered the disputed domain names with knowledge of the Complainant and targeting the INSTA and INSTAGRAM trademarks (or its abbreviated form INSTA) in an attempt to attract traffic to the disputed domain names and to offer Internet users illegitimate services that destroy the authenticity of the user experience sought by Instagram and damage the reputation of the Complainant.
Therefore, the Panel finds that the disputed domain names have been 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 names <instafamoushub.com>, <instafollowfast.com>, <instagrambot.net> and <instagramhilecin.com> be transferred to the Complainant.
Assen Alexiev
Sole Panelist
Date: April 22, 2020
