WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Instagram, LLC v. Terminator Adam

Case No. DCO2020-0071

1. The Parties

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

The Respondent is Terminator Adam, Turkey.

2. The Domain Names and Registrar

The disputed domain names <instagramcopyrightcenter.co> and <instagramverifiedbadges.co> are registered with Sav.com, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 21, 2020. On October 21, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On October 21, 2020, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names, which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on October 22, 2020, 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 October 27, 2020.

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 October 29, 2020. In accordance with the Rules, paragraph 5, the due date for Response was November 18, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 19, 2020.

The Center appointed Knud Wallberg as the sole panelist in this matter on November 25, 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, Instagram, LLC, is the world’s leading provider of online social networking services. Instagram, LLC, 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. According to the web information company Alexa the Complainant´s website available at “www.instagram.com” is ranked as the 25th most visited website in the world, 17th in Colombia and 16th in Turkey, where the Respondent is based.

The Complainant is the owner of the trademark INSTAGRAM, which is registered in a large number of jurisdictions including in Turkey under Turkish Trademark Registration No. 2013 74099, registered on May 20, 2015, for various goods and services, in particular International Classes 9, 38, 41 and 42.

The Complainant is the owner of numerous domain names consisting of the term INSTAGRAM under generic and country code extensions, such as <instagram.com> and <instagram.co>.

The disputed domain name <instagramcopyrightcenter.co> was registered on July 15, 2020, and currently points to a Google warning page indicating “Deceptive site ahead”.

The disputed domain Name <instagramverifiedbadges.co> was also registered on July 15, 2020, and currently resolves to an error page but previously redirected to Instagram’s Help Centre.

5. Parties’ Contentions

A. Complainant

The Complainant submits that the disputed domain names are confusingly similar to the trademarks in which it has rights. Both domain names incorporate the INSTAGRAM trademark in its entirety, with the addition of the dictionary terms “copyright center” and “verified badges” under the country code Top-Level Domain (“ccTLD”) .co.

The Complainant further submits that the Respondent has no rights or legitimate interests in the disputed domain names. 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 trademarks. The Complainant further asserts that the Respondent is unable to invoke any of the circumstances set out in paragraph 4(c) of the Policy, to demonstrate rights or legitimate interests in the disputed domain names. On the contrary: the disputed domain name <instagramcopyrightcenter.co> has thus been used by the Respondent in connection with a phishing scheme, in which the Respondent was attempting to redirect Instagram users to his website mimicking Instagram’s official website, where unsuspecting users may have been deceived into providing their account credentials or other personal information.. The disputed domain name <instagramverifiedbadges.co> previously redirected to Instagram’s Help Centre at “https://help.instagram.com” and the Complainant asserts that it is very likely that this domain name may have been used for similar fraudulent purposes (e.g. harvesting Instagram users’ account credentials by purportedly allowing them to obtain “Instagram verified badges”).

Finally, the Complainant submits that the disputed domain names were registered and are being used in bad faith. Given the Complainant’s renown and goodwill worldwide, it would thus be inconceivable for the Respondent to argue that it did not have knowledge of the Complainant’s trademark when it registered the disputed domain names in 2020, just as the fact that the two domain names were subsequently used or likely used in connection with a phishing scheme targeting Instagram users leaves no doubt as to the Respondent’s prior knowledge of the Complainant at the time of registration. The Complainant further submits that the fact that the Respondent provided incomplete and/or false contact details at the time of registration of the disputed domain names also indicates bad faith. As to the bad faith use of the two domain names the Complainant repeats that the disputed domain name <instagramcopyrightcenter.co> has thus been used by the Respondent in connection with a phishing scheme, in which the Respondent was attempting to redirect Instagram users to his website mimicking Instagram’s official website, where unsuspecting users may have been deceived into providing their account credentials or other personal information.. The disputed domain name <instagramverifiedbadges.co> previously redirected to Instagram’s Help Centre at “https://help.instagram.com” and the Complainant asserts that it is very likely that this domain name may have been used for similar fraudulent purposes (e.g. harvesting Instagram users’ account credentials by purportedly allowing them to obtain “Instagram verified badges”).

B. Respondent

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

6. Discussion and Findings

According to paragraph 15(a) of the Rules the Panel shall decide the Complaint in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.

Paragraph 4(a) of the Policy directs that a complainant must prove each of the following:

(i) that the disputed domain names registered by the respondent are identical or confusingly similar to a trademark or service mark in which the complainant has rights;

(ii) that the respondent has no rights or legitimate interests in respect of the disputed domain names; and

(iii) that the disputed domain names have been registered and are being used in bad faith.

Paragraph 4(a) of the Policy states that the burden of proving that all these elements are present lies with the Complainant. At the same time, in accordance with paragraph 14(b) of the Rules, if a party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under, the Rules, or any request from the Panel, the Panel shall draw such inferences therefrom as it considers appropriate.

A. Identical or Confusingly Similar

The Panel finds that the disputed domain names <instagramcopyrightcenter.co> and <instagramverifiedbadges.co> are confusingly similar (in the sense of the Policy) to the Complainant’s registered trademark INSTAGRAM. The disputed domain names incorporate this mark in its entirety with the addition of the generic terms “copyright center” and “verified badges” respectively as suffixes. The ccTLD “.co” does not dispel a finding of confusing similarity in the present case. See ArcelorMittal SA v. Tina Campbell, WIPO Case No. DCO2018-0005.

The Panel finds that the conditions in paragraph 4(a)(i) of the Policy are therefore fulfilled in relation to the disputed domain names.

B. Rights or Legitimate Interests

It is clear from the facts of the case that the Complainant has not licensed or otherwise permitted the Respondent to use its trademark and given the circumstances of this case, the Panel finds that the Complainant has established a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain names.

The Respondent has not produced, and there is no evidence of the types of circumstances set out in paragraph 4(c) of the Policy that might give rise to rights or legitimate interests in the disputed domain names on the part of the Respondent in these proceedings.

Consequently, the Panel finds that the condition in paragraph 4(a)(ii) of the Policy is also fulfilled.

C. Registered and Used in Bad Faith

Paragraph 4(a)(iii) of the Policy requires the Complainant to prove both registration and use of the disputed domain names in bad faith. Paragraph 4(b) of the Policy provides examples of circumstances, which shall be evidence of registration and use in bad faith:

(i) circumstances indicating that the respondent has registered or has acquired the domain names primarily for the purpose of selling, renting, or otherwise transferring the domain name registrations 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 the respondent’s documented out-of-pocket costs directly related to the domain names; or

(ii) the respondent has registered the domain names in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or

(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain names, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its 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 the respondent’s website or location or of a product or service on the respondent’s website or location.

Accordingly, for the Complainant to succeed, the Panel must be satisfied that the disputed domain names have been registered and are being used in bad faith.

Given the circumstances of the case, in particular the way the disputed domain names have been used, it is obvious to the Panel in the current circumstances that the Respondent registered the disputed domain names in bad faith.

It is equally obvious to the Panel that the Respondent has been using the disputed domain name <instagramcopyrightcenter.co> as part of a phishing scheme in an attempt to deceive customers of the Complainant by creating a likelihood of confusion with the Complainant as to the source of the Respondent’s activities and website. This constitutes bad faith use under the Policy, see section 3.4 of WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).

The disputed domain name <instagramverifiedbadges.co> has been used to redirect to the Complainant´s official website, which in itself may be characterized as bad faith use, see section 3.1.4 of WIPO Overview 3.0, but is currently not used in this way. The domain name is however, still active and it may thus very well - as highlighted by the Complainant - be used for a phishing scam similar to the above mentioned to deceive customers of the Complainant to divulge sensitive information about themselves by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent´s activities.

The Panel therefore finds that the requirements of paragraph 4(a)(iii) of the Policy are fulfilled for both disputed domain names in this case.

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, <instagramcopyrightcenter.co> and <instagramverifiedbadges.co> be transferred to the Complainant.

Knud Wallberg
Sole Panelist
Date: December 9, 2020