Instagram, LLC v. Osbil Technology / Osbil Technology Ltd.
Claim Number: FA190300183265
Complainant is Instagram, LLC (“Complainant”), represented by David Taylor of Hogan Lovells (Paris) LLP, France. Respondent is Osbil Technology / Osbil Technology Ltd. (“Respondent”), Cyprus.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <instaqram.us>, registered with Realtime Register B.V.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Charles A. Kuechenmeister
Complainant submitted a Complaint to the Forum electronically on March 6, 2019; the Forum received payment on March 6, 2019.
On March 7, 2019, Realtime Register B.V. confirmed by e-mail to the Forum that the <instaqram.us> domain name is registered with Realtime Register B.V. and that Respondent is the current registrant of the name. Realtime Register B.V. has verified that Respondent is bound by the Realtime Register B.V. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with the U.S. Department of Commerce’s usTLD Dispute Resolution Policy (the “Policy”).
On March 11, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint setting a deadline of April 1, 2019 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@instaqram.us. Also on March 11, 2019, 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 April 2, 2019, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Charles A. Kuechenmeister 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 for usTLD Dispute Resolution Policy ("Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the usTLD Policy, usTLD 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 is a world-renowned online photo and video sharing social networking application. It has rights in the INSTAGRAM mark through its trademark registrations around the world, including with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 4,146,057, registered May 22, 2012). Respondent’s Domain Name is confusingly similar to Complainant’s INSTAGRAM mark as it incorporates the mark in its entirety except for a misspelling which replaces the letter “g” with a “q,” and the addition of a “.us” country code top-level domain (“ccTLD”).
Respondent has no rights or legitimate interests in the Domain Name. It is not authorized or licensed to use Complainant’s INSTAGRAM mark and is not commonly known by the Domain Name. Further, Respondent is not using the Domain Name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. Instead, the Domain Name resolves to a web site which appears to offer referrals to medical service providers but in reality contains nonsensical placeholder text.
Respondent registered and uses the Domain Name in bad faith. Respondent had actual knowledge of Complainant and its rights in the INSTAGRAM mark prior to registering the Domain Name. Also, it has engaged in a pattern of bad faith registration of many domain names that infringed third party trade names, and registered the Domain Name for the purpose of preventing Complainant from reflecting its trademark in corresponding domain names as described in Policy ¶ 4(b)(ii). Respondent is using the Domain Name to redirect Internet users to a web site template containing placeholder text and inoperable links, which disrupts Complainant’s business.
B. Respondent
Respondent did not submit a Response in this proceeding.
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 Policy provides that in order to obtain an order cancelling or transferring a domain name, Complainant must prove each of the following three elements:
(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.
Given the similarity between the Uniform Domain Name Dispute Resolution Policy (“UDRP”) and the usTLD Policy, the Panel will draw upon UDRP precedent as applicable in rendering its decision, except where differences in the two policies require a different analysis.
In view of Respondent's failure to submit a response, pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules the Panel will decide this administrative proceeding on the basis of Complainant's undisputed representations 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 Panel finds as follows with respect to the matters at issue in this proceeding.
Complainant’s INSTAGRAM mark was registered to Complainant with the USPTO (Reg. No. 4,146,057) on May 22, 2012. See, Complaint Annex 2. Registration of a mark with the USPTO is sufficient to establish a complainant’s rights in that mark for the purposes of Policy ¶ 4(a)(i). Home Depot Product Authority, LLC v. Samy Yosef / Express Transporting, FA 1738124 (Forum July 28, 2017) (finding that registration with the USPTO was sufficient to establish the complainant’s rights in the HOME DEPOT mark).
Respondent’s Domain Name is confusingly similar to the INSTAGRAM mark. It incorporates the mark in its entirety, except for a misspelling which replaces the letter “g” with a “q,” and the addition of a “.us” ccTLD. These changes are not sufficient to distinguish the Domain Name from Complainant’s mark for the purposes of Policy ¶ 4(a)(i). Microsoft Corp. v. Domain Registration Philippines, FA 877979 (Forum Feb. 20, 2007) (finding the respondent’s <microssoft.com> domain name to be confusingly similar to the complainant’s MICROSOFT mark because they differ by only one letter, and “such a small alteration is insufficient to avoid a finding of confusing similarity under Policy ¶ 4(a)(i)”), CloudFlare, Inc. v. [Registrant], FA 1624251 (Forum Aug. 1, 2015) (“The inclusion of a ccTLD does not alleviate the similarity between a mark and a disputed domain name as per Policy ¶ 4(a)(i).”).
For the reasons set forth above, the Panel finds that the Domain Name is identical or confusingly similar to the INSTAGRAM mark, in which Complainant has substantial and demonstrated rights.
Rights or Legitimate Interests
If a complainant makes a prima facie case that the respondent lacks rights or legitimate interests in the domain name under Policy ¶ 4(a)(ii), the burden of production shifts to respondent to come forward with evidence that it has rights or legitimate interests in it. 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”). If a respondent fails to come forward with such evidence, the complainant’s prima facie evidence will be sufficient to establish that respondent lacks such rights or legitimate interests. If the respondent does come forward with such evidence, the Panel must assess the evidence in its entirety. At all times, the burden of proof remains on the complainant. WIPO Overview 3.0, at ¶ 2.1.
Policy ¶ 4(c) lists the following three nonexclusive circumstances, any one of which if proven can demonstrate a respondent’s rights or legitimate interests in a domain name for the purposes of Policy ¶ 4(a)(ii):
(i) Respondent is the owner or beneficiary of a trade or service mark that is identical to the domain name;
(ii) Before any notice to respondent of the dispute, respondent’s use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services;
(iii) Respondent (as an individual, business or other organization) have been commonly known by the domain name, even if respondent has acquired no trademark or service mark rights; or
(iv) Respondent is making a legitimate noncommercial or fair use of the domain name, without intent or commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
Complainant asserts that Respondent has no rights or legitimate interests in the Domain Name because (i) Respondent does not own or have a beneficial interest in a trademark or service mark that is identical to the Domain Name, (ii) Complainant has not authorized or licensed Respondent to use its INSTAGRAM mark, (iii) Respondent is not using the Domain Name in connection with a bona fide offering of goods and services or for a legitimate noncommercial or other fair use because the web site resolving from it is filled with placeholder text which purports at first glance to offer referrals to medical service providers, which is completely unrelated to Complainant’s business, and (iv) Respondent is not commonly known by the Domain Name. These allegations are addressed as follows:
It is difficult without conducting a worldwide trademark search to determine whether a third party is or is not the owner or beneficiary of a trademark that is identical to the Domain Name. Complainant alleges that it did conduct a search and to the best of its knowledge Respondent is not such owner or beneficiary. Respondent having defaulted, there is nothing in the record to suggest that it is. The Panel finds that Respondent is not the owner or beneficiary of a trade or service mark that is identical to the Domain Name.
Complainant states that it has never licensed or authorized Respondent to use its mark in any way. Complainant has specific competence to make this statement, and it is unchallenged by any evidence before the Panel. In the absence of evidence that a respondent is authorized to use a complainant’s mark in a domain name or that a respondent is commonly known by the disputed domain name, the respondent may be presumed to lack rights or legitimate interests in the domain name. IndyMac Bank F.S.B. v. Eshback, FA 830934 (Forum Dec. 7, 2006) (finding that the respondent failed to establish rights and legitimate interests in the <emitmortgage.com> domain name as the respondent was not authorized to register domain names featuring the complainant’s mark and failed to submit evidence that it is commonly known by the domain name), Indeed, Inc. v. Ankit Bhardwaj / Recruiter, FA 1739470 (Forum Aug. 3, 2017) (”Respondent lacks both rights and legitimate interests in respect of the at-issue domain name. Respondent is not authorized to use Complainant’s trademark in any capacity and, as discussed below, there are no Policy ¶ 4(c) circumstances from which the Panel might find that Respondent has rights or interests in respect of the at-issue domain name.”).
The WHOIS report submitted as Complaint Annex 1 lists the registrant of the Domain Name as “Osbil Technology” and the registrant organization as Osbil Technology Ltd.” Neither of these names bears any resemblance to the Domain Name. UDRP panels have consistently held that, in the absence of evidence to the contrary, a registrant name that is materially different from the domain name at issue is competent evidence that the respondent is not commonly known by the domain name. 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). The Panel is satisfied that Respondent has not been commonly known by the Domain Name within the meaning of Policy ¶ 4(c)(ii).
Complaint Annex 7 is a screen capture of the web site resolving from the Domain Name and of the template web site that apparently derives from it, available for free download. The web site as a whole appears at first glance to offer referrals to medical service providers, but in fact consists of dummy, placeholder text, some of which is in English and some in Latin, and the links are inoperative. Respondent is thus using the Domain Name to divert Internet traffic away from Complainant to a web site whose content is completely unrelated to Complainant’s business. This has been held not to qualify as a bona fide offering of goods and services for the purposes of Policy ¶ 4(c)(ii) or a legitimate noncommercial or fair use for the purposes of Policy ¶ 4(c)(iv). Spike's Holding, LLC v. Nexperian Holding Limited, FA 1736008 (Forum July 21, 2017) (“Using a confusingly similar domain to display unrelated content can evince a lack of a bona fide offering of goods or services or legitimate noncommercial or fair use… The Panel therefore finds that Respondent’s unrelated use of the <finishnline.com> domain name evinces a lack of rights and legitimate interests under Policy ¶ 4(c)(i) & (iii).”), Haru Holding Corporation v. AI Matusita, FA 1679867 (Forum Aug. 11, 2016) (holding that “unrelated use [of a disputed domain name] by a respondent consists of neither a bona fide offering of goods or services, nor a legitimate noncommercial or fair use”).
Complainant has made its prima facie case. On the evidence presented, and in the absence of any evidence from Respondent, the Panel finds that Respondent has no rights or legitimate interests in the Domain Name.
Policy ¶ 4(b) sets forth a nonexclusive list of four circumstances, any one of which if proven would be evidence of bad faith use and registration of a domain name. They are as follows:
(i) Respondent has registered or has 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 respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) Respondent has 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; or
(iii) Respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) By using the domain name, respondent has intentionally attempted to attract, for commercial gain, Internet users to respondent’s 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 respondent’s web site or location or of a product of service on respondent’s web site or location.
The evidence of Respondent’s use of the Domain Name set forth above in the rights or legitimate interests analysis also supports a finding of bad faith use and registration of that domain, based upon the foregoing grounds articulated in the Policy and upon additional grounds adopted by UDRP panels over the years. First, as described above, Respondent has exhibited a pattern of registering domain names infringing upon the marks not only of Complainant but of other entities as well. Complaint Annex 8 is a copy of the decision issued in WIPO Case No. D2018-2906 in which Complainant, Facebook, Inc. and WhatsApp, Inc. brought a UDRP proceeding against Respondent for registering some 37 infringing domain names. The panel in that case ordered all of the domains transferred. On the basis of this decision alone it is clear that Respondent has engaged in such a pattern and it is also clear that its having registered the Domain Name has prevented Complainant from reflecting its mark in a corresponding domain name. This fits within the circumstances articulated by Policy ¶ 4(b)(ii). Webster Financial Corporation and Webster Bank, National Association v. Above.com Domain Privacy, FA1209001464477 (Forum Nov. 30, 2012) (finding where the record reflected that the respondent had been a respondent in other UDRP proceedings in which it was ordered to transfer disputed domain names to various complainants established a pattern of bad faith registration and use of domain names and stood as evidence of bad faith in the registration and use of domain names under Policy ¶ 4(b)(ii)).
Second, by using a confusingly similar domain name to divert Internet traffic to a web site that purports to offer medical services, Respondent has created a serious disruption of Complainant’s business. Respondent’s registration and use of the Domain Name, described above in the rights or legitimate interests analysis, disrupts Complainant’s business by creating initial interest confusion. Diversion of users by creating initial interest confusion has been held to constitute disruption for the purposes of a Policy ¶ 4(b)(iii) analysis, even though, as here, the content of Respondent’s web site being unrelated to Complainant’s business, there is no evidence of actual competition. See PopSockets LLC v. san mao, FA 1740903 (Forum Aug. 27, 2017) (finding disruption of a complainant’s business which was not directly commercial competitive behavior was nonetheless sufficient to establish bad faith registration and use per Policy ¶ 4(b)(iii)), Love City Brewing Company v. Anker Fog / Love City Brewing Company, FA 1753144 (Forum Nov. 27, 2017) (Finding that Respondent disrupts Complainant’s business by pointing Internet users to an expired webpage. This may create the perception that Complainant is closed, never existed, or is not a legitimate business. Therefore, the Panel finds that Respondent registered and uses the disputed domain names in bad faith per Policy ¶ 4(b)(iii).).
The cited decisions found that this conduct fell within the circumstances articulated in Policy ¶ 4(b)(iii), even though that paragraph seems to require that the respondent’s intent must be to disrupt “the business of a competitor.” Nevertheless, the examples of bad faith listed in Policy ¶ 4(b) are nonexclusive. Paragraph 4(b) recognizes that mischief can assume many different forms and takes an open-ended approach to bad faith, listing some examples without attempting to enumerate all its varieties. Worldcom Exchange, Inc. v. Wei.com, Inc., WIPO Case No. D-2004-0955 (January 5, 2005). The non-exclusive nature of Policy ¶ 4(b) allows for consideration of additional factors in an analysis for bad faith, and causing initial interest confusion by using a domain name so nearly identical to a complainant’s mark as this one is strongly indicative of bad faith in and of itself. An Internet user reaching it thinking it would be Complainant’s site would naturally question whether Complainant, who is known to depend heavily upon its Internet presence to do business, is still a viable, ongoing concern, or whether its internet connection was somehow impaired. This would be a substantial disruption of Complainant’s business and qualifies as bad faith registration and use, even in the absence of evidence of competition.
Although Complainant did not advance the argument in connection with its bad faith claims, it did note that by simply substituting a “q” for the “g” in Complainant’s mark in the Domain Name, Respondent is guilty of typosquatting, which is the intentional misspelling of a protected trademark to take advantage of typing errors made by Internet users seeking the web site of the owner of the mark. In light of the non-exclusive nature of Policy ¶ 4(b), typosquatting has, in and of itself, been held to be evidence of bad faith registration and use. Adorama, Inc. v. Moniker Privacy Services, FA1503001610020 (Forum May 1, 2015) (“Respondent has also engaged in typosquatting, which is additional evidence of bad faith registration and use under Policy ¶ 4(a)(iii)”), Vanguard Trademark Holdings USA LLC v. Shuai Wei Xu / Xu Shuai Wei, FA 1784238 (Forum June 1, 2018) (finding the respondent engaged in typosquatting—and thus registered and used the at-issue domain names in bad faith—where the names consisted of the complainant’s mark with small typographical errors introduced therein).
Typosquatting necessarily implicates another factor that has also, by itself, often been held by UDRP panels to constitute bad faith. It is evident from the extent to which Complainant’s mark is known and recognized throughout the world, and from the close similarity between Complainant’s mark and its many domain names on the one hand and Respondent’s Domain Name on the other that Respondent had actual knowledge of Complainant’s mark on June 11, 2018, when it registered the Domain Name. See, WHOIS report submitted as Complaint Annex 1 for registration date. Given the nonexclusive, open-ended nature of Policy ¶ 4(b) the Panel may consider additional factors in an analysis for bad faith, and actual knowledge of a complainant’s rights in a mark prior to registering an identical or confusingly similar domain name has often been held to be evidence of bad faith registration and use for the purposes of Policy ¶ 4(a)(iii). Univision Comm'cns Inc. v. Norte, FA 1000079 (Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering the disputed domain name).
For the reasons set forth above, the Panel finds that Respondent registered and is using the Domain Name in bad faith within the meaning of Policy ¶ 4(a)(iii).
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <instaqram.us> Domain Name be TRANSFERRED from Respondent to Complainant.
Charles A. Kuechenmeister, Panelist
April 4, 2019
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