Maplebear Inc. d/b/a Instacart v. Dale Inverarity / DIIT
Claim Number: FA2203001987020
Complainant is Maplebear Inc. d/b/a Instacart (“Complainant”), represented by Lisa Greenwald-Swire of Fish & Richardson, P.C., Minnesota, USA. Respondent is Dale Inverarity / DIIT (“Respondent”), Canada.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <instacart.engineer> and <instacart.engineering>, registered with Tucows Domains Inc..
PANEL
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.
Alan L. Limbury, as Panelist.
Complainant submitted a Complaint to the Forum electronically on March 4, 2022. The Forum received payment on March 4, 2022.
On March 7, 2022, Tucows Domains Inc. confirmed by e-mail to the Forum that the <instacart.engineer> and <instacart.engineering> domain names are registered with Tucows Domains Inc. and that Respondent is the current registrant of the names. Tucows Domains Inc. has verified that Respondent is bound by the Tucows Domains Inc. 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 March 9, 2022, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 29, 2022 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.engineer, postmaster@instacart.engineering. Also on March 9, 2022, 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.
In March 14, 2022 Complainant submitted an Additional Submission to the Forum, which the Panel finds to be in compliance with the Forum’s Supplemental Rule 7.
On April 3, 2022, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Alan L. Limbury 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. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN 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 names be transferred from Respondent to Complainant.
A. Complainant
Founded in 2012, Complainant operates a multi-sided technology and communications platform via the websites “www.instacart.com” and “www.instacart.ca” and via its smartphone application that facilitates fast on-demand grocery and consumer goods delivery and pick-up services in the United States and Canada.
Complainant has rights in the INSTACART mark both at common law and based upon registration with the United States Patent and Trademark Office (“USPTO”). Respondent’s <instacart.engineer> and <instacart.engineering> domain names are confusingly similar to Complainant’s mark, which is very well-known, particularly in the United States and Canada.
Respondent does not have rights or legitimate interest in the <instacart.engineer> and <instacart.engineering> domain names. Respondent is not licensed or authorized to use Complainant’s INSTACART mark and is not commonly known by the domain name. Additionally, Respondent does not use the domain names for any bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, Respondent uses the domain names to redirect Complainant’s potential customers to a competitor’s website.
Respondent registered the <instacart.engineer> and <instacart.engineering> domain names in bad faith with actual knowledge of Complainant’s mark and uses them in bad faith to redirect potential customers of Complainant to a competitor’s website.
B. Respondent
Respondent failed to submit a Response in this proceeding.
C. Complainant’s Additional Submission
Following service of the Complaint upon Respondent by the Forum, Respondent redirected users of the domain names to a completely different, unrelated webpage, namely a YouTube video entitled “Very Cute and Hilarious Duck Videos Compilation | CuteVN.” This is further evidence of a lack of a bona fide offering of goods or services or a legitimate non-commercial or fair use of the domain names.
Respondent cannot establish legitimacy or good faith through “remedial measures” subsequent to the filing of this Complaint. Even if such “remedial measures” could be taken into account, Respondent cannot obviate findings of bad faith or lack of legitimacy through now redirecting users to a video about ducks.
Complainant has established all the elements entitling it to relief.
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.
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 set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).
Complainant has shown that it has common law rights in the INSTACART mark based upon use since 2012 and based upon numerous registrations, including with the USPTO (e.g., Reg. No. 4,903,628, registered Feb. 23, 2016). The Panel finds Respondent’s <instacart.engineer> and <instacart.engineering> domain names to be identical to Complainant’s mark because they contain the INSTACART mark in its entirety and because the inconsequential generic top-level domains (“gTLDs”) “.engineer” and “.engineering” may be ignored.
Complainant has established the element.
(i) before any notice to Respondent of the dispute, the use by Respondent of, or demonstrable preparations to use, the domain names or names corresponding to the domain names in connection with a bona fide offering of goods or services; or
(ii) Respondent (as an individual, business or other organization) has been commonly known by the domain names, even if Respondent has acquired no trademark or service mark rights; or
(iii) Respondent is making a legitimate noncommercial or fair use of the domain names, without intent for commercial gain to misleadingly divert customers or to tarnish the trademark or service mark at issue.
The <instacart.engineer> and <instacart.engineering> domain names were registered on August 16, 2019, many years after Complainant has shown that its INSTACART mark had become very well-known in Canada and the United States. As of December 2021, both domain names resolved to the employment page for Cornershop by Uber, a competing grocery delivery service.
In its Additional Submission, Complainant has shown that, following the filing of the Complaint in this proceeding, the domain names resolve to a YouTube video entitled “Very Cute and Hilarious Duck Videos Compilation | CuteVN.”
These circumstances, together with Complainant’s assertions, are sufficient to constitute a prima facie showing of absence of rights or legitimate interests in respect of the domain names on the part of Respondent. The evidentiary burden therefore shifts to Respondent to show that it does have rights or legitimate interests in the <instacart.engineer> and <instacart.engineering> domain names. See Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014). Respondent has made no attempt to do so.
The Panel finds that Respondent has no rights or legitimate interests in respect of the domain names.
Complainant has established this element.
Registration and Use in Bad Faith
Paragraph 4(b) of the Policy sets out four illustrative circumstances, which, though not exclusive, shall be evidence of the registration and use of the domain names in bad faith for purposes of paragraph 4(a)(iii) of the Policy, including:
(iii) Respondent has registered the domain names primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain names, Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other on-line location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product or service on its website or location.
The circumstances set out above in relation to the second element satisfy the Panel that Respondent was fully aware of Complainant’s very well-known INSTACART mark when Respondent registered the <instacart.engineer> and <instacart.engineering> domain names and did so primarily for the purpose of disrupting the business of a competitor. This demonstrates registration and use in bad faith under Policy ¶ 4(b)(iii), a conclusion that is reinforced by the change of use which has taken place following service of the Complaint upon Respondent.
Further, the Panel is satisfied that Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website, by creating a likelihood of confusion with Complainant’s mark as to the source of Respondent’s website and of the goods promoted on that website. This demonstrates registration and use in bad faith under Policy ¶ 4(b) (iv).
Complainant has established this element.
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.engineer> and <instacart.engineering> domain names be TRANSFERRED from Respondent to Complainant.
Alan L. Limbury, Panelist
Dated: April 4, 2022
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page