WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Instagram, LLC v. Contact Privacy Inc. Customer 0159303914 / Yigit We Are Happy, Social Media

Case No. D2021-0135

1. The Parties

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

The Respondent is Contact Privacy Inc. Customer 0159303914 / Yigit We Are Happy, Social Media, Turkey.

2. The Domain Name and Registrar

The disputed domain name <instagram-page-login.com> is registered with Tucows Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 18, 2021. On January 18, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 18, 2021, 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 January 21, 2021 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 January 26, 2021.

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 January 27, 2021. In accordance with the Rules, paragraph 5, the due date for Response was February 16, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 17, 2021.

The Center appointed Jane Lambert as the sole panelist in this matter on March 19, 2021. 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 popular online photo and video sharing social networking application. It was launched in 2010 and has grown rapidly ever since. It has more than a billion monthly active users now. According to Alexa, its website is the 22nd most visited in the world, and its apps for mobile devices are among the most popular for iOS and Android operating systems.

It has registered the word INSTAGRAM as a trade mark in a number of registries including the European Union Intellectual Property Office where that mark is registered for various goods and services in classes 25, 35, 38, 41, and 45 with effect from August 20, 2015 under trade mark number EU14493886.

Nothing much is known of the Respondent. It has gone to unusual lengths to hide its identity first by using a privacy service, secondly, by stating that its surname is “we are happy” and, thirdly, by failing to supply a postal address.

The Respondent has used the disputed domain name as a universal resource locator for a web page that displays the following warning:

“Deceptive site ahead
Attackers on instagram-page-login.com may trick you into doing something dangerous like installing software or revealing your personal information (for example, passwords, phone numbers, or credit cards).
[…]
Google Safe Browsing recently detected phishing on instagram-page-login.com. Phishing sites pretend to be other websites to trick you.”

According to the Complainant a further warning appears when the link is clicked:

“This site is unsafe
The site http://instagram-page-login.com/ contains harmful content, including pages that:
Try to trick visitors into sharing personal info or downloading software.”

5. Parties’ Contentions

A. Complainant

The Complainant requests the transfer of the disputed domain name on the grounds that:

(i) The disputed domain name is confusingly similar to a trade mark in which the Complainant has rights;
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.

As to the first element the Complainant refers to WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.2.1:

“Where the complainant holds a nationally or regionally registered trademark or service mark, this prima facie satisfies the threshold requirement of having trademark rights for purposes of standing to file a UDRP case.”

The Complainant states that it owns numerous trade mark registrations for INSTAGRAM throughout the world, as stated above and has therefore established trade mark rights in INSTAGRAM for the purposes of paragraph 4(a)(i) of the Policy. The disputed domain name incorporates the INSTAGRAM trade mark in its entirety with the addition of the descriptive terms “page” and “login”. The Complainant's INSTAGRAM trade mark is clearly recognizable as the leading element of the Domain Name.

The Complainant refers to section 1.8 of the Overview

“Where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element. The nature of such additional term(s) may however bear on assessment of the second and third elements.”

The Complainant submits that the combination of the Complainant's INSTAGRAM trade mark together with the terms “page” and “login” does not prevent a finding of confusing similarity between the disputed domain name and the INSTAGRAM mark, which remains clearly recognizable in the disputed domain name. In support of its submission the Complainant relies on Facebook, Inc, Instagram, LLC, WhatsApp Inc. v. Linyanxiao,WIPO Case No. D2018-1089 <instagramlogin.com> et al.

With regard to the second element, the Complainant refers to section 2.1 of the Overview:

“While the overall burden of proof in UDRP proceedings is on the complainant, 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.”

Paragraph 4(c) of the Policy lists a number of circumstances by which a respondent can show that he or she has rights or legitimate interests in the disputed domain name but none of those circumstances applies to this case. The Respondent is clearly not using the disputed domain name in connection with a bona fide offering of goods or services. The disputed domain name does not resolve to an active webpage. The Respondent is not commonly known by the disputed domain name. The Respondent is not making a legitimate non-commercial or fair use of the disputed domain name.

The Respondent is not a licensee of the Complainant or affiliated with the Complainant in any way. The Complainant has not granted any authorization for the Respondent to make use of its INSTAGRAM trade mark, in a domain name or otherwise. Any attempt to use the disputed domain name anywhere in the world would infringe one of the Complainant’s trade mark registrations or constitute an act of passing off.

For the foregoing reasons, the Complainant submits that it has established a prima facie case showing that the Respondent lacks rights or legitimate interests in the disputed domain name. If the Respondent cannot adduce evidence to rebut the case against it, the Complainant shall be deemed to have satisfied the requirements of paragraph 4(a)(ii) of the Policy.

In respect of the third element, the Complainant submits that the Respondent cannot credibly argue that it did not have prior knowledge of the Complainant's trade marks at the time it registered the disputed domain name as the Complainant had reached over one billion users around the world. Referring to Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003, the Complainant contends that it is not necessary to prove that a respondent has actually used a disputed domain name for a finding of registration and use in bad faith.

The Complainant relies on the following facts and matters:

(i) The strength and reputation of the Complainant’s trade mark.

(ii) The improbability of the Respondent producing any evidence of a right or legitimate interest in the disputed domain name.

(iii) The extra steps taken by the Respondent to hide its identity.

(iv) The combination of the word INSTAGRAM with the words “page” and “login” which are calculated to trick INSTAGAM subscribers and perhaps others into disclosing their INSTAGRAM passwords, user names and other sensitive personal data.

The Complainant submits that those facts and matters are overwhelming evidence of registration and use of the disputed domain name in bad faith.

B. Respondent

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

6. Discussion and Findings

The agreement for the registration of the disputed domain name incorporated by reference paragraph 4 (a) of the Policy which provides as follows:

“a. Applicable Disputes. You are required to submit to a mandatory administrative proceeding in the event that a third party (a ‘complainant’) asserts to the applicable Provider, in compliance with the Rules of Procedure, that

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

(ii) you have no rights or legitimate interests in respect of the domain name; and

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

In the administrative proceeding, the complainant must prove that each of these three elements are present.”

A. Identical or Confusingly Similar

The Panel is satisfied that the first element is present.

European Union trade mark number 014493886 is a trade mark in which the Complainant has rights within the meaning of paragraph 4(a)(i) of the Policy.

The disputed domain name is not identical to the above above-mentioned mark because INSTAGRAM is combined with the words “page” and “login” but it is self-evidently similar. Anyone landing on a page headed with the domain name <instagram-page-login.com> might conclude that he or she had stumbled on the Complainant’s login page. It follows that the disputed domain name is confusing as well as similar.

Accordingly, the disputed domain name is confusingly similar to a trade mark in which the Complainant has rights.

B. Rights or Legitimate Interests

The Panel is satisfied that the second element is present.

The Panel agrees with the Complainant that it is required only to establish a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name. Thereafter, the burden of production shifts to the Respondent for the reasons set out in section 2.1 of the WIPO Overview 3.0. There is no evidence that any of the circumstances in paragraph 4(c) of the Policy applies. The Panel notes that the Complainant has neither licensed nor authorized the Respondent to register the disputed domain name and that without such license or authorization the domain name registration is likely to infringe one of the Complainant’s trade marks or amount to passing off. She finds that the Complainant has established a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name. It therefore falls to the Respondent to persuade her otherwise.

Even though the Respondent has had ample opportunity to lodge evidence or make representations, it has failed to do so. It follows that the Respondent has no rights or legitimate interests in the disputed domain name.

C. Registered and Used in Bad Faith

The Panel is satisfied that the third element is present.

Paragraph 4(b) of the Policy lists a number of circumstances which if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith. One of those circumstances is sub-paragraph (iv):

“by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.”

The Panel has already found the disputed domain name to be confusingly similar to the Complainant’s trade mark. It follows that the Respondent has established a likelihood of confusion with the Complainant’s mark by the mere parking of the disputed domain name. It could reasonably expect commercial gain in the form of a ransom from the Complainant or its holding company, the sale of the user names and passwords of the Complainant’s subscribers on the dark web, hacking their Instagram accounts or some other wrongdoing.

The precise nature of such wrongdoing is not yet known but wrongdoing for commercial gain may be inferred from the Respondent’s efforts to hide its identity or whereabouts, the incorporation of the words “page” and “login” into the disputed domain name and the frank warning of phishing activity at the landing page.

The Panel finds not only that the disputed domain name has been used in bad faith but such use was the reason for the registration. It follows that paragraph 4(b)(iv) applies and that the disputed domain name has been registered and is being 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 name <instagram-page-login.com> be transferred to the Complainant.

Jane Lambert
Sole Panelist
Date: March 21, 2021