WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Instagram, LLC v. Cheyenne Kamran

Case No. D2020-2458

1. The Parties

The Complainant is Instagram, LLC, United States of America (“United States”), represented by Hogan Lovells (Paris) LLP, France.

The Respondent is Cheyenne Kamran, United Arab Emirates.

2. The Domain Name and Registrar

The disputed domain name <instagramgame.com> is registered with GoDaddy.com, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 22, 2020. On September 22, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 23, 2020, 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 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 25, 2020. In accordance with the Rules, paragraph 5, the due date for the Response was October 15, 2020. The Respondent did not submit any response. Accordingly, the Center issued notification of the Respondent’s default on October 16, 2020.

The Center appointed Petra Pecar as the sole panelist in this matter on October 23, 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 operates an online photo and video sharing social networking application named “Instagram”, launched in 2010, and since then, Instagram has rapidly grown. Instagram 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. United Arab Emirates (where the Respondent is based) has the highest social media penetration rate in the world, where Instagram has already acquired 5.7 million users. As one of the fastest growing social media applications in the world, the Complainant’s website, available at “www.instagram.com,” is ranked as the 25th most visited website in the world and 19th in the United Arab Emirates, according to web information company Alexa. Currently available in over 31 languages, the Instagram application is the 6th most downloaded application in the world as per App Annie Top App rankings in 2020.

The Complainant owns multiple trademark registrations protecting the word “Instagram” in multiple jurisdictions, including in the United Arab Emirates, and numerous domain names comprising the term “Instagram”. Among the Complainant’s trademark registrations is United States registration No. 4146057 INSTAGRAM registered on May 22, 2012.

On July 30, 2020, the Complainant sent a cease and desist letter to the Respondent, asserting the Complainant’s trademark rights and requesting the transfer of the disputed domain name. The Respondent never replied to this cease and desist letter.

The Respondent is apparently an individual based in the United Arab Emirates.

The disputed domain name was registered on November 1, 2017. At the time the Complaint was filed, the disputed domain name did not resolve to an active website, however, it previously resolved to a page indicating “website coming soon”.

5. Parties’ Contentions

A. Complainant

The Complainant is the proprietor of the trademark INSTAGRAM in many jurisdictions throughout the world, including United Arab Emirates trademarks No. 239855 and No. 239860 registered on May 18, 2016, United States trademark No. 4146057 registered on May 22, 2012 and International trademark No. 1129314 registered on March 15, 2012.

The Complainant is also the owner of a number of domain names reflecting its INSTAGRAM trademark, such as <instagram.com>, <instagram.ae> (United Arab Emirates), <instagram.cn> and <instagram.org.cn> (China), <instagram.co.at> (Austria), <instagram.com.br> and <instagram.net.br> (Brazil), <instagram.dk> (Denmark), <instagram.ec> (Ecuador), <instagram.de> (Germany), <instagram.ht> (Haiti), <instagram.org.in> (India), <instagram.org.il> (Israel), <instagram.jo> (Jordan), <instagram.mk> (North Macedonia), <instagram.pk> (Pakistan), <instagram.net.ru> (Russian Federation), <instagram.lk> (Sri Lanka), <instagram.ch> (Switzerland) and <instagram.com.vn> (Viet Nam).

The Complainant contends that the disputed domain name is confusingly similar to its INSTAGRAM trademarks, because it directly incorporates the Complainant’s registered trademark INSTAGRAM, as is clearly recognizable within the disputed domain name coupled with the term “game” which would not prevent a finding of confusing similarity under the first element. The disputed domain name also consists of the generic Top-Level Domain (“gTLD”) “.com” which is generally accepted as irrelevant when assessing whether a domain name is identical or confusingly similar to a trademark as it is a functional element.

The Complainant further contends that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent is not a licensee of the Complainant, nor has she been otherwise allowed by the Complainant to make any use of its INSTAGRAM trademark, in a domain name or otherwise. The disputed domain name currently does not resolve to any active website, and there is no evidence that the Respondent has ever used the disputed domain name to host an active website; hence, it is being passively held. As an illustration, the Complainant indicates that the panel in the case Facebook, Inc. v. Mirza Azim, WIPO Case No. D2016-0950 found that such passive holding cannot be considered as a bona fide offering of goods or services. The Complainant further adds that to the best of its knowledge, the Respondent has not secured any trademark registrations for INSTAGRAM or INSTAGRAM GAME, as reflected in the disputed domain name. The disputed domain name does not resolve to any active website, and for that reason, the Complainant argues that it is not being used in the promotion of any business or any other online service that might give rise to the Respondent being commonly known by the disputed domain name. The Complainant also adds that neither can the Respondent assert that it has made or is currently making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers. The Complainant holds that the fact that the disputed domain name falsely suggests affiliation with the Complainant will generally exclude any possible fair use. In any event, the Complainant submits that the passive holding cannot confer any rights or legitimate interests in the disputed domain name. In support of that argument, the Complainant quotes the decision of the previous UDRP panel in the case Guinness World Records Limited v. Solution Studio, WIPO Case No. D2016-0186 in which the panel states that while passive holding by itself may be a legitimate activity, doing so does not as such confer any rights or legitimate interests in the domain name.

The Complainant also argues that the disputed domain name was registered and is being used in bad faith. As the Complainant considers its INSTAGRAM trademarks to be well-known throughout the world in connection with an online photo-sharing social network, it would be inconceivable that the Respondent did not have knowledge of the Complainant’s trademarks at the time of registration of the disputed domain name. In support of the argument, the Complainant quotes the decision Instagram, LLC v. Zhou Murong, WIPO Case No. D2014-1550 (<instagram.co>, <instagram.net>, <instgram.com> et al.) in which the panel was satisfied that the Respondent must have been aware of the Complainant’s INSTAGRAM trademarks when it registered the domain names. The Complainant further quotes the decision Philip Morris USA Inc. v. Domain Administrator, See PrivacyGuardian.org / Rohit Patel, MAC, WIPO Case No. D2017-2396in which the panel concluded that actual and constructive knowledge of a complainant’s rights at the time of registration of a domain name constitutes strong evidence of bad faith. Furthermore, the Complainant points out that the search results obtained by typing the term “Instagram” into Google’s search engine available at “www.google.com” and “www.google.ae” exclusively refer to the Complainant. The Complainant further submits that the Respondent has previously targeted third party trademarks through registration of the domain names <bacardisalsaexperience.com>, <bacardisalsaexperience.net>, and <hardoxinside.com>, and indicates that the Respondent was already a party to UDRP proceedings in the case SSAB Technology AB v. Registration Private, Domains by Proxy, LLC / Cheyenne Kamran, WIPO Case No. D2017-1713. As the disputed domain name is not in active use, the Complainant submits that the factors found by the panel in Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003 on the doctrine of passive holding should apply to this case. In particular, the Complainant argues the application of the following factors: (i) The Complainant’s INSTAGRAM trademark is highly distinctive and well-known internationally, including in the United Arab Emirates where the Respondent is based. As a result of its widespread use since 2010, the INSTAGRAM trademark has become exclusively associated with the Complainant. The Complainant submits that when confronted with the combination of the Complainant’s trademark together with the term “game”, many Internet users would be confused and wrongly assume that the disputed domain name is somehow “affiliated” or otherwise endorsed by the Complainant; (ii) Further to the Complainant’s cease and desist letter, the Respondent failed to reply and to provide any evidence of actual or contemplated good faith use of the disputed domain name; (iii) In light of the nature of the disputed domain name itself, i.e., the combination of the Complainant’s INSTAGRAM trademark together with the term “game”, the disputed domain name carries with it a high risk of implied affiliation with the Complainant. As a conclusion, the Complainant cannot conceive of any bona fide use that the Respondent could make of the disputed domain name that would not result in creating a misleading impression of association with the Complainant.

B. Respondent

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

6. Discussion and Findings

Under paragraph 4(a) of the Policy, to succeed the Complainant must satisfy the Panel that:

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

ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and

iii) the disputed domain name was registered and is being used in bad faith.

A. Identical or Confusingly Similar

Paragraph 4(a)(i) of the Policy requires the Complainant to show that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights. A trademark registration provides a clear indication that the rights in the trademark belong to the Complainant (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, (“WIPO Overview 3.0”), section 1.2.1).

In the case at hand, the Complainant has provided detailed evidence of its rights in the trademark INSTAGRAM on the basis of its multiple trademark registrations in various jurisdictions around the world, including the United Arab Emirates, where the Respondent is based.

The disputed domain name reproduces the INSTAGRAM trademarks in their entirety. The adjunction of the dictionary term “game”, which to some extent can be attributed to the Complainant’s activities under the INSTAGRAM trademark (for example there are various INSTAGRAM story games). In any case, the addition of this dictionary term does not prevent confusing similarity. As noted in WIPO Overview 3.0, section 1.8: “Where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) does not prevent a finding of confusing similarity under the first element.” Therefore, the Panel holds that the combination of the Complainant’s INSTAGRAM trademark together with the term “game” does not prevent a finding of confusing similarity between the disputed domain name and the Complainant’s INSTAGRAM trademarks, which remain clearly recognizable in the disputed domain name.

Accordingly, the Panel finds that the disputed domain name is confusingly similar to the trademark in which the Complainant has rights, meaning that the Complainant has satisfied the requirement under paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

All relevant INSTAGRAM trademarks were duly registered or at least applied for before the Respondent registered the disputed domain name on November 1, 2017. Similarly, the Panel notes that the Complainant has also secured its rights in the INSTAGRAM trademark through the registration of a number of domain names containing its registered trademark INSTAGRAM.

The Panel also notes that, in the light of the evidence provided and facts known to the Panel, the Complainant’s INSTAGRAM trademark possesses a high level of notoriety on a global scale, as it is used as a name of a social network that has over 1 billion monthly active users at the moment. It should be taken into account that previous UDRP panels have also come to a similar conclusion (see in particular Instagram, LLC v. lu xixi, WIPO Case No. D2015-1168). Such reputation must be taken into account when assessing the merits of this case, especially in respect to the second and third UDRP elements.

The Complainant contends that it has not authorized the Respondent to use the disputed domain name and that there is no relationship between the parties.

The Panel notes that before filing the Complaint, the disputed domain name led to a website under construction, and it currently does not resolve to an active website. While the lack of content on the website to which the disputed domain name resolves does not necessarily represent illegitimate activity per se, the Panel agrees that such activity also does not confer any rights or legitimate interests in the disputed domain name (see in particular Guinness World Records Limited v. Solution Studio, WIPO Case No. D2016-0186). The Panel also agrees with the Complainant’s argument that given the reputation of the INSTAGRAM trademark, it would be difficult to imagine an actual use of the disputed domain name that would not be aimed to free ride on the reputation of the Complainant and its trademark. Consequently, any use of such domain name would misleadingly divert consumers into thinking that the Respondent is, in some way, connected to, sponsored by or affiliated with the Complainant and its business or that the Respondent’s activities are approved or endorsed by the Complainant.

Additionally, the Panel finds that the Respondent appears not to be commonly known by the disputed domain name or to have any particular rights in such domain name as the Respondent is a natural person without any clear connection with the Complainant. As the Respondent has failed to provide any response to the Complaint, there cannot be found any argument that would lead to a different conclusion of the Panel. For that reason, the Panel holds that the Complainant has satisfied the burden of establishing a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name, which has not been rebutted.

Therefore, the Panel finds that the Complainant has satisfied the requirement under paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

The Complainant has maintained registered rights in the INSTAGRAM trademark since the inception of its business in 2010 and has demonstrated that ever since, social media labeled with such mark has constantly grown, reaching over 1 billion monthly active users currently. The Complainant’s trademarks are particularly reputable in the United Arab Emirates where the Respondent resides and where the Instagram social media platform is one of the most widely used social networks. The disputed domain name differs from the Complainant’s INSTAGRAM trademark only to the extent that the disputed domain name contains the additional dictionary term “game”, indicating that the Respondent was likely aware of the potential for Internet user confusion. Given the reputation that the Complainant’s INSTAGRAM trademark enjoys, it seems very unlikely that the Respondent was unaware of the Complainant and its rights when registering the disputed domain name.

In that sense, the Respondent could have easily found the relevant information on the Internet about the Complainant and its INSTAGRAM trademarks through a simple web search (see section 3.2.2 of the WIPO Overview 3.0). Having in mind the Complainant’s extensive use of the INSTAGRAM trademark, widespread business and numerous trademark registrations worldwide, the Panel concludes that the Respondent must have been aware of the Complainant’s trademarks at the time of the registration of the disputed domain name and that the Respondent registered the disputed domain name having the Complainant and its trademarks in mind, which indicates that the registration of the disputed domain name was conducted in bad faith.

Regarding the use of the disputed domain name, the Panel has made an assessment whether the lack of actual use of the disputed domain name can lead to a finding of bad faith against the Respondent. The doctrine of so-called “passive holding” where a disputed domain name resolves to a blank, “coming soon” or similar page has been considered by previous panels from the very beginning of the UDRP. In accordance with section 3.3 of WIPO overview 3.0, the relevant factors that should be taken into account when assessing the existence of bad faith in passive holding of the domain name are the following: (i) the degree of distinctiveness or reputation of the complainant’s mark, (ii) the failure of the respondent to submit a response or to provide any evidence of actual or contemplated good-faith use, (iii) the respondent’s concealing its identity or use of false contact details (noted to be in breach of its registration agreement), and (iv) the implausibility of any good faith use to which the domain name may be put. It should also be noted that it is not required for all the above listed factors to be present in order to establish bad faith use of the disputed domain name.

The Panel holds that three factors from section 3.3 of WIPO overview 3.0 are present in the case at hand. First, the Complainant’s INSTAGRAM trademark should be observed as a trademark that enjoys significant reputation, especially in the Respondent’s country of origin. Further, the Respondent has failed to provide any response to both the Complaint and the Complainant’s cease and desist letter and therefore, has failed to provide any justification for its registration and use of the disputed domain name. Finally, given all the circumstances of the case, it seems rather unlikely that even if the disputed domain name was put to an actual use, such use would be in good faith. Based on the foregoing reasons, the Panel finds that the passive holding of the disputed domain name in the present case should be observed as use in bad faith.

The Panel has taken note of the Complainant’s allegation that the Respondent has targeted third party trademarks (through the registration of the domain names <bacardisalsaexperience.com>, <bacardisalsaexperience.net>, and <hardoxinside.com>, and by being the respondent in the domain name dispute SSAB Technology AB v. Registration Private, Domains by Proxy, LLC / Cheyenne Kamran, WIPO Case No. D2017-1713), but finds that apart from the corresponding personal name, other information (such as country of origin and email address) do not correspond with the Respondent. In that sense, the identity with the Respondent cannot be established on the balance of probabilities, and the Panel has consequently decided not to take into account these allegations as relevant factors in rendering its decision.

Accordingly, the Panel holds that the Complainant has satisfied the requirements of paragraph 4(a)(iii) 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 name <instagramgame.com> be transferred to the Complainant.

Petra Pecar
Sole Panelist
Date: November 6, 2020