Maplebear Inc. DBA Instacart v. Jamal Nasir
Claim Number: FA2006001901848
Complainant is Maplebear Inc. DBA Instacart (“Complainant”), represented by Candice E. Kim of Greenberg Traurig, LLP, California, USA. Respondent is Jamal Nasir (“Respondent”), represented by Rafae Bhatti, California, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <instacart.org>, registered with GoDaddy.com, LLC.
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.
Hon. Karl v. Fink (Ret.) as Panelist.
Complainant submitted a Complaint to the Forum electronically on June 25, 2020; the Forum received payment on June 25, 2020.
On June 29, 2020, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <instacart.org> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On June 30, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 24, 2020 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@instacart.org. Also on June 30, 2020, 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.
On July 24, 202, a timely Response was received and determined to be complete.
On July 26, 2020, Complainant’s Additional Submission was received.
On July 28, 2020, Respondent’s Additional Submission was received.
On July 28, 2020, Complainant’s Objection to Respondent’s Additional Submission was received.
On July 29, 2020, Respondent’s Objection to Complainant’s Objection was received.
As allowed by Rule 7 of the Forum’s Supplemental Rules, all submissions were considered by the Panel.
On July 28, 2020, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Hon. Karl V. Fink (Ret.) 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 Uniform Domain Name Dispute Resolution Policy (the "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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant is an online and mobile application grocery shopping and delivery company founded in 2012. Complainant has rights in the INSTACART mark through its registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 4,903,628, registered Feb. 23, 2016). Respondent’s <instacart.org> domain name is confusingly similar to Complainant’s mark as Respondent entirely incorporates the mark and merely adds the “.org” generic top-level domain (“gTLD”).
Respondent has no rights or legitimate interests in the <instacart.org> domain name as Respondent is not commonly known by the disputed domain name nor has Respondent been licensed, authorized, or otherwise permitted by Complainant to use Complainant’s mark. Furthermore, Respondent’s use is not a bona fide offering of goods or services, nor a legitimate noncommercial or fair use, as Respondent is attempting to pass off as Complainant to provide competitive hyperlinks.
The <instacart.org> domain name was registered by Respondent on April 16, 2019. Respondent registered and used the <instacart.org> domain name in bad faith. Specifically, Respondent is using the disputed domain name to lure Internet users to competing websites. Additionally, Respondent had actual knowledge of Complainant’s rights in the INSTACART mark at the time of registration.
B. Respondent
Respondent, a resident of Silicon Valley, is a professional working and experienced in the computer science industry who is interested in event-based system and online shopping.
Respondent’s <instacart.org> domain name does not compete with Complainant, as the resolving website features a heading stating the website is for online recommendations and reviews. Additionally, the links provided do not include keywords related to Complainant’s business. Complainant has failed to show Respondent does not have rights and legitimate interest in the <instacart.org> domain name
Respondent did not register or use the <instacart.org> domain name in bad faith. Complainant has only made unsubstantiated allegations as to Respondent’s conduct and has not given specific examples.
Respondent did not have knowledge of Complainant’s mark at the time of domain name registration.
C. Complainant’s Additional Submission
Respondent concedes that Respondent’s <instacart.org> domain name is identical to Complainant’s INSTACART mark.
Respondent lacks rights and legitimate interest in the <instacart.org> domain name, as Respondent admits that Amazon is a competitor of Complainant and admits its website includes links to Amazon.
Respondent registered and used the <instacart.org> domain name in bad faith. Respondent claims to be a coder in Silicon Valley. It is not plausible Respondent did not know of Complainant at the time of registration, as Complainant was founded nearby in San Francisco. Respondent is feigning ignorance of Respondent’s disruptive impact of Complainant.
C. Respondent’s Additional Submission
Respondent’s concession that the disputed domain name is confusingly similar to the mark and Complainant’s registration of the INSTACART mark do not necessarily establish its distinctiveness.
Respondent’s site does not compete with Complainant and does not disrupt Complainant’s business or attract users for commercial gain. Additionally, Respondent’s expertise and experience in the computer science industry does not establish knowledge of Complainant’s mark.
D. Complainant’s Objection to Respondent’s Additional Submission and Additional Evidentiary Statement
Respondent‘s additional submission did not contain any new pertinent arguments or evidence.
Instacart submits copies of publications evidencing the recognition and fame of the INSTACART Mark, well before Respondent’s registration date of April 16, 2019.
The INSTACART Mark achieved brand recognition and “popularity” before Respondent registered the infringing domain name, as evidenced by articles from leading publications.
Panels have deemed the INSTACART Mark was famous prior to the April 16, 2019 date as evidenced by previous decisions.
E. Respondent’s Objection to Complainant’s Objection and Evidentiary Submission
Complainant is attempting to essentially amend the Complainant by submitting additional evidence which it did not properly submit when it had the opportunity.
The additional evidence is insufficient to disprove the fact that Instacart was at least three-times less popular before the pandemic than it is after.
The articles provided by Complainant capture the opportunity ahead of Instacart at that time but are not dispositive of its popularity or market share.
Reliance on past decisions that were based on uncontested facts is misplaced and unfair to the Respondent.
Even if true, the INSTACART mark being famous by itself does not establish bad faith.
For the reasons set forth below, the Panel finds that Complainant is entitled to the requested relief of transfer of the <instacart.org> 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 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 and is being used in bad faith.
Complainant claims rights in the INSTACART mark through its registration of the mark with the USPTO (e.g., Reg. No. 4,903,628, registered Feb. 23, 2016). Registration with the USPTO is sufficient to demonstrate rights in a mark under Policy ¶ 4(a)(i). See DIRECTV, LLC v. The Pearline Group, FA 1818749 (Forum Dec. 30, 2018) (“Complainant’s ownership of a USPTO registration for DIRECTV demonstrate its rights in such mark for the purposes of Policy ¶ 4(a)(i).”). The Panel finds that Complainant has rights in the INSTACART mark under Policy ¶ 4(a)(i).
Complainant argues Respondent’s <instacart.org> domain name is identical to Complainant’s mark as Respondent entirely incorporates the mark and merely adds the “.org” gTLD. Addition of a gTLD to a fully incorporated mark may not sufficiently distinguish a disputed domain name from the mark under Policy ¶ 4(a)(i). See Marquette Golf Club v. Al Perkins, FA 1738263 (Forum July 27, 2017) (“When a respondent’s domain name incorporates a mark in its entirety and merely adds a generic top-level domain (gTLD), “.com,” then the Panel may find that the disputed domain name is identical to Complainant’s mark.). The Panel finds that Respondent’s <instacart.org> domain name is identical to Complainant’s mark under Policy ¶ 4(a)(i).
Complainant has proved this element.
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under 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 a prima facie case
Complainant argues that Respondent has no rights or legitimate interests in the <instacart.org> domain name as Respondent is not commonly known by the disputed domain name nor has Respondent been licensed or authorized by the Complainant to use Complainant’s mark. Relevant WHOIS information can be used as evidence to show a respondent is or is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Chevron Intellectual Property LLC v. Fred Wallace, FA1506001626022 (Forum July 27, 2015) (finding that the respondent was not commonly known by the <chevron-europe.com> domain name under Policy ¶ 4(c)(ii), as the WHOIS information named “Fred Wallace” as registrant of the disputed domain name). Additionally, lack of authorization to use a complainant’s mark may indicate that the respondent lacks rights or legitimate interest in a disputed domain name. See Emerson Electric Co. v. golden humble / golden globals, FA 1787128 (Forum June 11, 2018) (“lack of evidence in the record to indicate a respondent is authorized to use [the] complainant’s mark may support a finding that [the] respondent does not have rights or legitimate interests in the disputed domain name per Policy ¶ 4(c)(ii)”). The WHOIS information of record identifies the Respondent as “Jamal Nasir” and no information in the record indicates that Respondent was authorized to use Complainant’s mark or was commonly known by the disputed domain name. The Panel finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii).
Complainant argues that Respondent fails to use the <instacart.org> domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. Rather, Respondent is attempting to pass off as Complainant in order to provide competitive hyperlinks. Using a disputed domain name to suggest affiliation between a respondent and complainant in order to act in competition with the complainant may is not a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii). See Walgreen Co. v. Privacy protection service - whoisproxy.ru, FA 1785188 (Forum June 10, 2018) (“Respondent uses the <walgreensviagra.net> domain name to pass itself off as Complainant and display links to a website offering products similar to those offered by Complainant. Using the domain name in this manner is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor a non-commercial or fair use under Policy ¶ 4(c)(iii).”). Complainant provides screenshots of the <instacart.org> domain name’s resolving webpage, which displays product reviews and links to online shopping services that compete with Complainant. The Panel finds that Respondent fails to use the <instacart.org> domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii) and Respondent has no rights or legitimate interests in respect of the domain name.
Complainant has proved this element.
Complainant argues that Respondent had knowledge of Complainant’s rights in the INSTACART mark at the time of registering the <instacart.org> domain name. See Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum Feb. 6, 2014) (“The Panel notes that although the UDRP does not recognize ‘constructive notice’ as sufficient grounds for finding Policy ¶ 4(a)(iii) bad faith, the Panel here finds actual knowledge through the name used for the domain and the use made of it. Actual knowledge can adequately demonstrate bad faith under Policy ¶ 4(a)(iii). See iFinex Inc. v. xu shuaiwei, FA 1760249 (Forum Jan. 1, 2018) (“Respondent’s prior knowledge is evident from the notoriety of Complainant’s BITFINEX trademark as well as from Respondent’s use of its trademark laden domain name to direct internet traffic to a website which is a direct competitor of Complainant”). To support this assertion, Complainant points to its trademark registrations along with the fact that Respondent attempts to lure customers and direct them to other grocery delivery services. The Panel finds that Respondent did have actual knowledge of Complainant’s right in its mark, evidence of bad faith under Policy ¶ 4(a)(iii).
The Panel finds from the evidence, including Respondent’s expertise in the computer science industry, the fame of the mark, and the use made of the domain name, that the name was registered and used in bad faith.
Complainant has proved this element.
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<instacart.org> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Karl V. Fink (Ret.) Panelist
August 7, 2020
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