Instagram, LLC v WhoisGuard Protected / WhoisGuard, Inc.
Claim Number: FA1804001780141
Complainant is Instagram, LLC (“Complainant”), represented by David Taylor of Hogan Lovells (Paris) LLP, France. Respondent is WhoisGuard Protected / WhoisGuard, Inc. (“Respondent”), Panama.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <instagram.eu.com>, registered with NameCheap, Inc.
The undersigned certifies that he acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
The Honourable Neil Anthony Brown QC as Panelist.
Complainant certifies that it participated in the mandatory CentralNic Mediation, and the mediation process was terminated due to Respondent’s failure to respond.
Complainant submitted a Complaint to the Forum electronically on April 3, 2018; the Forum received payment on April 4, 2018.
On April 3, 2018, NameCheap, Inc. confirmed by e-mail to the Forum that the <instagram.eu.com> domain name is registered with NameCheap, Inc. and that Respondent is the current registrant of the name. NameCheap, Inc. has verified that Respondent is bound by the NameCheap, Inc. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with the CentralNic Dispute Resolution Policy (the “CDRP Policy”).
On April 13, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 3, 2018 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@instagram.eu.com. Also on April 13, 2018, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On May 8, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed The Honourable Neil Anthony Brown QC as Panelist.
Having reviewed the communications records, the Administrative Panel (the “Panel”) finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules to the CDRP Dispute Resolution Policy (“Rules”). Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the Policy, the Rules, the Forum’s Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any Response from Respondent. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the CDRP Policy, CDRP Rules, the Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant made the following contentions.
Complainant owns and operates the world-renowned online photo and video sharing social media application INSTAGRAM. Complainant has rights in the INSTAGRAM mark through its trademark registrations with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 4,146,057, registered May 22, 2012). See Amend. Compl. Annex 2. Respondent’s <instagram.eu.com> domain name is identical to Complainant’s INSTAGRAM mark because Respondent merely adds a “.eu” country-code top level domain (“ccTLD”) followed by a “.com” generic top level domain (“gTLD”) to the INSTAGRAM mark.
Respondent has no rights or legitimate interests in the <instagram.eu.com> domain name. Respondent is not licensed or authorized to use Complainant’s INSTAGRAM mark and is not commonly known by the disputed domain name. Additionally, Respondent is not making a bona fide offering of goods or services or a legitimate noncommercial or fair use as Respondent is not making active use of the disputed domain name.
Respondent registered or is using the <instagram.eu.com> domain name in bad faith. Respondent’s disputed domain name does not resolve to an active website. Additionally, Respondent provided false WHOIS information when Respondent registered the disputed domain name and failed to adequately respond to cease and desist letters. Furthermore, Respondent used a privacy service to shield its identity. Finally, Respondent had actual and constructive knowledge of Complainant’s rights in the INSTAGRAM mark at the time it registered the disputed domain name.
B. Respondent
Respondent failed to submit a Response in this proceeding.
2. Complainant has rights in the INSTAGRAM mark through its trademark registrations with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 4,146,057, registered May 22, 2012).
3. Respondent registered the <instagram.eu.com> domain name on November 11, 2017.
4. Respondent is not making active use of the disputed domain name.
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
Paragraph 4(a) of the CDRP Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered or is being used in bad faith.
The CDRP Policy also requires that Complainant have participated in a CentralNic Mediation, and that said mediation must have been terminated prior to the consideration of the Complaint.
Given the similarity between the Uniform Domain Name Dispute Resolution Policy (“UDRP”) and the CDRP Policy, the Panel will draw upon prior UDRP decisions as applicable in rendering its decision.
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
The first issue that arises is whether Complainant has a trademark or service mark on which it can rely. Complainant submits that it has rights in the INSTAGRAM mark through its trademark registrations of the mark with the USPTO. Registering a mark with the USPTO is sufficient to find rights in a mark under CDRP Policy ¶ 4(a)(i). See Haas Automation, Inc. v. Jim Fraser, FA 1627211 (Forum Aug. 4, 2015) (finding that Complainant’s USPTO registrations for the HAAS mark sufficiently demonstrate its rights in the mark under Policy ¶ 4(a)(i)). Complainant provides a copy of the USPTO registrations for the INSTAGRAM mark (e.g., Reg. No. 4,146,057, registered May 22, 2012). See Amend. Compl. Annex 2. Therefore, the Panel finds that Complainant has sufficiently demonstrated its rights in the INSTAGRAM mark per CDRP Policy ¶ 4(a)(i).
The second issue that arises is whether the disputed domain name is identical or confusingly similar to Complainant’s INSTAGRAM mark. Next, Complainant argues Respondent’s <instagram.eu.com> domain name is identical to Complainant’s INSTAGRAM mark as Respondent merely adds a ccTLD followed by a gTLD to the mark. Such changes do not distinguish an identical disputed domain name from the mark under CDRP Policy ¶ 4(a)(i). See CloudFlare, Inc. v. [Registrant], FA 1624251 (Forum Aug. 1, 2015) (holding, “The inclusion of a ccTLD does not alleviate the similarity between a mark and a disputed domain name as per Policy ¶ 4(a)(i).”); see also David Duchovny v. Alberta Hot Rods c/o Jeff Burgar, FA 1734414 (Forum July 4, 2017) (“Respondent arrives at the disputed domain name by simply taking Complainant’s mark in its entirety and adding the g TLD “.com”. This is insufficient to distinguish the disputed domain name from Complainant’s common law trademark.”). Complainant argues that Respondent merely adds a “.eu” ccTLD followed by a “.com” gTLD to Complainant’s INSTAGRAM mark. Therefore, the Panel finds that the disputed domain name is identical to Complainant’s INSTAGRAM mark per CDRP Policy ¶ 4(a)(i).
Complainant has thus made out the first of the three elements that it must establish.
It is now well established that Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under CDRP Policy ¶ 4(a)(ii), then the burden shifts to Respondent to show it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests”).
The Panel finds that Complainant has made out a prima facie case that arises from the following considerations:
(a) Respondent has chosen to take Complainant’s INSTAGRAM mark and to use it in its domain name;
(b) Respondent registered the disputed domain name on November 11, 2017.
(c) Respondent is not making active use of the disputed domain name;
(d) Respondent engaged in the aforementioned activities without the permission or authority of Complainant;
(e) Complainant submits that Respondent has no rights or legitimate interests in the <instagram.eu.com> domain name because Respondent is not authorized or licensed to use Complainant’s INSTAGRAM mark and is not commonly known by the disputed domain name. In cases where a respondent fails to submit a response, relevant WHOIS information may be used to determine whether respondent is commonly known by the disputed domain name under CDRP Policy ¶ 4(c)(ii). See Guardair Corporation v. Pablo Palermo, FA1407001571060 (Forum Aug. 28, 2014) (holding that the respondent was not commonly known by the <guardair.com> domain name according to Policy ¶ 4(c)(ii), as the WHOIS information lists “Pablo Palermo” as registrant of the disputed domain name). Complainant provides relevant WHOIS information for the disputed domain name which identifies Respondent as “WhoisGuard Protected.” See Amend. Compl. Ex. A. The Panel notes that Respondent employed a privacy service to shield its identity prior to these proceedings and Complainant sent Respondent three cease and desist letters. See Amend. Compl. Annex 8. Therefore, the Panel finds Respondent is not commonly known by the disputed domain name per CDRP Policy ¶ 4(c)(ii);
(f) Complainant submits Respondent is not using the <instagram.eu.com> domain name in connection to a bona fide offering of goods or services or a legitimate noncommercial or fair use because Respondent is inactively holding the disputed domain name. Failure to make active use of a disputed domain name is not a bona fide offering of goods or services or a legitimate noncommercial or fair use under CDRP Policy ¶¶ 4(c)(i) and (iii). See Nutri/System IPHC, Inc. v. Usama Ayub, FA1725806 (Forum June 5, 2017) (holding that “Respondent does not use the <nutrisystemturbo.us> domain for a bona fide offering of goods or services because the domain name resolves to a website that currently is designated as ‘under construction.’”). Complainant submits that it carried out an internet archive search for the disputed domain name, but does not provide screenshots from its search of the disputed domain name and its website. However, on the evidence as a whole, the Panel finds Respondent’s failure to make active use of the disputed domain name is not a bona fide offering of goods or services or a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) and (iii).
All of these matters go to make out the prima facie case against Respondent. As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant has thus made out the second of the three elements that it must establish.
It is clear that to establish bad faith for the purposes of the CDRP Policy, Complainant must show that the disputed domain name was registered in bad faith or has been used in bad faith. It is also clear that the criteria set out in CDRP Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP and CDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.
Having regard to those principles, the Panel finds that the disputed domain name was both registered and used in bad faith. That is so for the following reasons.
First, the Panel notes that Complainant is not required to make any specific CDRP Policy ¶ 4(b) arguments, but these arguments are merely illustrative rather than exclusive for a finding of bad faith. See Home Interiors & Gifts, Inc. v. Home Interiors, D2000-0010 (WIPO Mar. 7, 2000) (“[J]ust because Respondent’s conduct does not fall within the ‘particular’ circumstances set out in [¶ 4(b)], does not mean that the domain names at issue were not registered in and are not being used in bad faith.”). Thus, in the light of the evidence as a whole the Panel is still able to find bad faith and it makes that finding.
Complainant contends Respondent registered or is using the <instagram.eu.com> domain name in bad faith because Respondent registered the disputed domain name with false WHOIS information. Registering a disputed domain name with false contact information may be sufficient for a finding of bad faith registration or use under CDRP Policy ¶ 4(a)(iii). See CNU ONLINE Holdings, LLC v. Domain Admin / Whois Privacy Corp., FA1504001614972 (Forum May 29, 2015) (“As the Panel sees that Respondent has provided false or misleading WHOIS information, the Panel finds bad faith in Respondent’s registration of the disputed domain name per Policy ¶ 4(a)(iii).”). Complainant provides its email correspondence with Respondent and returned mail from a cease and desist letter sent to Respondent’s listed address. See Amend. Compl. Annex 8. Therefore, the Panel finds Respondent both registered and used the disputed domain name in bad faith per CDRP Policy ¶ 4(a)(iii).
Secondly, Complainant argues Respondent is not actively using the disputed domain name, which indicates bad faith. Failure to make active use of a disputed domain name may evince a finding of bad faith under CDRP Policy ¶ 4(a)(iii). See Dermtek Pharmaceuticals Ltd. v. Sang Im / Private Registration, FA1310001522801 (Forum Nov. 19, 2013) (holding that because the respondent’s website contained no content related to the domain name and instead generated the error message “Error 400- Bad Request,” the respondent had registered and used the disputed domain name in bad faith pursuant to Policy ¶ 4(a)(iii)). Complainant does not provide any screenshots of the disputed domain name, but does provide email correspondence with Respondent, which indicates the disputed domain name is “banned.” See Amend. Compl. Annex 8. Thus, the Panel finds that Respondent is inactively using the disputed domain name which evinces both bad faith registration and use per CDRP Policy ¶ 4(a)(iii).
Thirdly, Complainant provides that, in light of the fame and notoriety of its INSTAGRAM mark, Respondent had actual and constructive knowledge of Complainant’s rights in the mark at the time of registration. The Panel notes that while constructive notice is insufficient for a finding of bad faith, actual knowledge of a complainant’s rights in a mark at the time of registration is sufficient under CDRP Policy ¶ 4(a)(iii). See Custom Modular Direct LLC v. Custom Modular Homes Inc., FA 1140580 (Forum Apr. 8, 2008) (“There is no place for constructive notice under the Policy.”); see also Yahoo! Inc. v. Butler, FA 744444 (Forum Aug. 17, 2006) (finding bad faith where the respondent was “well-aware” of the complainant’s YAHOO! mark at the time of registration). Complainant argues that due to the renown and goodwill worldwide associated with the INSTAGRAM mark, it is inconceivable Respondent registered the disputed domain name without actual knowledge of Complainant’s rights in the mark. Therefore, the Panel finds that Respondent had actual knowledge and this constitutes both bad faith registration and use per CDRP Policy ¶ 4(a)(iii).
Finally, in addition and having regard to the totality of the evidence, the Panel finds that, in view of Respondent’s registration of the disputed domain name using the INSTAGRAM mark and in view of Respondent ‘s inactive holding of the domain name, Respondent both registered and used it in bad faith within the generally accepted meaning of that expression.
Complainant has thus made out the third of the three elements that it must establish.
Having established all three elements required under the CDRP Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <instagram.eu.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC
Panelist
Dated: May 9, 2018
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