Instagram, LLC v. Douglas Tarry / Statigram
Claim Number: FA1403001550202
Complainant is Instagram, LLC (“Complainant”), represented by Aaron M. Fennimore of Cooley LLP, California, USA. Respondent is Douglas Tarry / Statigram (“Respondent”), Rhode Island, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <instagramz.com>, registered with ENOM, INC.
The undersigned certifies that they have acted independently and impartially and to the best of their knowledge has no known conflict in serving as Panelists in this proceeding.
Sandra J. Franklin, Bruce E. O’Connor and Petter Rindforth as Panelists.
Complainant submitted a Complaint to the National Arbitration Forum electronically on March 21, 2014; the National Arbitration Forum received payment on March 24, 2014.
On March 26, 2014, ENOM, INC. confirmed by e-mail to the National Arbitration Forum that the <instagramz.com> domain name is registered with ENOM, INC. and that Respondent is the current registrant of the name. ENOM, INC. has verified that Respondent is bound by the ENOM, 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 April 1, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 21, 2014 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@instagramz.com. Also on April 1, 2014, 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 National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On April 28, 2014, pursuant to Complainant's request to have the dispute decided by a three-member Panel, the National Arbitration Forum appointed Sandra J. Franklin, Bruce E. O’Connor and Petter Rindforth (presiding) as Panelists.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration 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 National Arbitration 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 makes the following contentions:
1. Complainant provides photo and video sharing and editing services through its social networking platform, which includes application software for both the iOS and Android operating systems, and a website available at <instagram.com>.
2. Complainant owns exclusive rights in the INSTAGRAM trademark including its registrations with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 4,170,675 registered July 10, 2012) and (Reg. No. 4,146,057 registered May 22, 2012).
3. Respondent’s <instagramz.com> domain name is confusingly similar to Complainant’s INSTAGRAM mark. The disputed domain name fully incorporates Complainant’s trademark in its entirety with the addition of the letter “z” either to indicate a pluralization or to take advantage of a common misspelling.
4. Respondent has no rights or legitimate interests in the <instagramz.com> domain name.
a. Respondent is not commonly known by the disputed domain name.
b. Respondent is not authorized or licensed to use Complainant’s
INSTAGRAM trademark in any way.
c. Respondent is not making a bona fide offering of goods or services
or a legitimate noncommercial or fair use of the disputed domain
name.
i. Respondent is attempting to pass itself off as Complainant.
Respondent uses a logo that is similar to Complainant’s
logo.
ii. Respondent’s disputed domain name redirects Internet
users seeking Complainant’s website, to another website
purporting to sell Instagram followers, which would be in
direct violation of Complainant’s Terms of Use.
Respondent’s resolving website further offers Complainant’s
users a free mobile phone in exchange for users’ contact
information.
iii. Respondent’s disputed domain name currently does not
resolve to an active website.
5. Respondent registered and is using the <instagramz.com> domain name
in bad faith.
a. Respondent’s operation to purportedly sell Instagram followers is a
violation of Instagram’s Terms of Use.
b. Respondent appears to be part of a phishing scheme in which
Respondent offers rewards such as Instagram followers or mobile
phones in order to collect personal information from users.
c. Respondent’s current failure to make an active use of the
<instagramz.com> domain name indicates bad faith use and
registration.
d. Complainant registered its mark far prior to Respondent’s creation
of the disputed domain name and thus suggests that Respondent
had knowledge of Complainant and Complainant’s INSTAGRAM
trademark when Respondent created the disputed domain name.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The Panel finds that the Complainant has established trademark rights in the INSTAGRAM trademark, represented by:
U.S. Reg. No. 4,170,675 INSTAGRAM, registered July 10, 2012, and
U.S. Reg.No. 4,146,057 INSTAGRAM, registered May 22, 2012.
The Respondent registered the disputed domain name <instagramz.com> on May 19, 2013, and used it to operate a phishing scheme. Currently, the domain name is not in active use.
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."
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(e), 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 (Nat. Arb. 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.”).
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 states that it is a company that provides photo and video sharing and editing services through its social networking platform and a website available at <instagram.com>. Complainant has further presented the Panel with provided evidence of its trademark registrations for the INSTAGRAM word mark (e.g., Reg. No. 4,146,057 registered May 22, 2012), as well as evidence showing that the mark is well used and known on the market.
The Panel finds that Complainant’s registrations with the USPTO establish Complainant’s rights in the mark under Policy ¶ 4(a)(i). See Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding that the complainant had established rights in the PENTIUM, CENTRINO and INTEL INSIDE marks by registering the marks with the USPTO), see also Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (finding that a trademark registration adequately demonstrates a complainant’s rights in a mark under Policy ¶ 4(a)(i)).
Complainant claims that the <instagramz.com > domain name is confusingly similar to its INSTAGRAM trademark.
The Panel notes that the disputed domain name fully incorporates Complainant’s INSTAGRAM mark with the addition of the letter “z” at the end. This minor alteration is insufficient to differentiate the resulting domain name from the incorporated mark pursuant to Policy ¶ 4(a)(i). In this case, the extra “z” may be read as a phonetic plural version and/or is added to take advantage of a possible common misspelling. See T.R. World Gym-IP, LLC v. D’Addio, FA 956501 (Nat. Arb. Forum May 22, 2007), where the panel determined that the addition of the letter “s” to a registered trademark in a contested domain name was not enough to avoid a finding of confusing similarity under Policy ¶ 4(a)(i)).
Finally, the addition of the generic top-level domain (“gTLD”) “.com” does not distinguish a disputed domain name from a given mark. See AOL Inc. v. Morgan, FA 1349260 (Nat. Arb. Forum Nov. 4, 2010) (concluding that the addition of the generic top-level domain (“gTLD”) “.com” does not distinguish the disputed domain name from the mark); see also Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007).
The Panel concludes that <instagramz.com> domain name is confusingly similar to Complainant’s INSTAGRAM mark.
Once the Complainant makes a prima facie case in support of its allegations in respect of the second element of the Policy, the burden shifts to the Respondent to show that it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
Complainant asserts that Respondent has no rights or legitimate interests in the <instagramz.com> domain name, that Respondent is not commonly known by the disputed domain name, and is not authorized or licensed to use Complainant’s INSTAGRAM trademark in any way. The Panel notes that the WHOIS Information for <instagramz.com> lists “Douglas Tarry” as registrant and further states that the domain name was created on May 19, 2013. Prior panels have concluded that a respondent is not commonly known by a domain name where there is no evidence on the record indicating that respondent has ever been commonly known by the disputed domain name in business or by the public. See Am. W. Airlines, Inc. v. Paik, FA 206396 (Nat. Arb. Forum Dec. 22, 2003) (“Respondent has registered the domain name under the name ‘Ilyoup Paik a/k/a David Sanders.’ Given the WHOIS domain name registration information, Respondent is not commonly known by the [<awvacations.com>] domain name.”). The Panel conclude that Respondent has no rights or legitimate interests in <instagramz.com> as Respondent is not commonly known by the domain name under Policy ¶ 4(c)(ii).
Complainant additionally asserts that Respondent is not making a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name, as Respondent is attempting to pass itself off as Complainant. Complainant points out that Respondent used a logo that is similar to Complainant’s logo. The Panel notes that paragraph 24 of the Complaint shows a side-by-side comparison between Complainant’s official logo and Respondent’s very similar and almost identical logo.
Complainant also argues that Respondent’s disputed domain name previously redirected Internet users seeking Complainant’s website, to another website purporting to sell Instagram followers, which is in direct violation of Complainant’s Terms of Use. Respondent’s resolving website also previously offered Complainant’s users a free mobile phone in exchange for users’ contact information. The Panel notes that the earlier resolving websites promote purchasing followers by stating, “Enter your username below, and after offer/download completion, you will receive your followers within 24 hrs.” The Panel further notes that another screen shot shows the resolving website with the heading “instagramz” with the instructions to “1. Select your network, 2. Enter your Username, 3. Download sponsor’s app, 4. Receive your followers.” Additionally, another resolving website featured the promotion, “Sell Instagram Followers for cash, with a Top Domain Name!” Panels have previously found that using a confusingly similar domain name to resolve to a website that attempts to pass itself off as being that of complainant’s, is not a bona fide offering of goods or services or a legitimate noncommercial or fair use of the domain name. See Mortgage Research Center LLC v. Miranda, FA 993017 (Nat. Arb. Forum July 9, 2007) (“Because [the] respondent in this case is also attempting to pass itself off as [the] complainant, presumably for financial gain, the Panel finds the respondent is not using the <mortgageresearchcenter.org> domain name for a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).”). The Panel therefore concludes that Respondent has no rights or legitimate interests in the <instagramz.com> domain name.
Complainant further contends that Respondent’s prior use of the <instagramz.com> domain name indicates a phishing scheme. Complainant alleges that Respondent redirected Internet users to a website that offered Instagram followers and free mobile phones in exchange for users’ contact information and for them to download an application. Previously panels have found that phishing is a method of tricking Internet users into revealing secure and personal information and using it for commercial gain, or other fraudulent purposes. See Juno Online Servs., Inc. v. Iza, FA 245960 (Nat. Arb. Forum May 3, 2004) (defining “phishing” as “the use of e-mails, pop-ups or other methods to trick Internet users into revealing credit card numbers, passwords, social security numbers and other personal information that may be used for fraudulent purposes”). Panels have also concluded that using a disputed domain name to engage in a phishing scheme does not indicate rights or legitimate interests in a domain name. See Capital One Fin. Corp. v. Howel, FA 289304 (Nat. Arb. Forum Aug. 11, 2004) (concluding that using a domain name to redirect Internet users to a website that imitated the complainant’s credit application website and attempted to fraudulently acquire personal information from the complainant’s clients was not a bona fide offering of goods or services or a legitimate noncommercial or fair use). The Panel concludes that Respondent’s prior use of the <instagramz.com> domain name was not a bona fide offering of goods or services or a legitimate noncommercial or fair use of the domain name.
Complainant asserts that <instagramz.com> currently does not resolve to an active website. Failing to actively use a disputed domain name does not indicate rights or legitimate interests in a domain name. See Thermo Electron Corp. v. Xu, FA 713851 (Nat. Arb. Forum July 12, 2006) (finding that the respondent’s non-use of the disputed domain names demonstrates that the respondent is not using the disputed domain names for a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)). The Panel concludes that Respondent is not now, and has never made a bona fide offering of goods or services or a legitimate noncommercial or fair use of the domain name.
Finally, Complainant states that Respondent’s <instagramz.com> domain name is a typosquatted version of Complainant’s INSTAGRAM mark. The Panel note that previous panels have traditionally found typosquatting where there is a disputed domain name representing a typographical error with respect to a complainant’s mark or correlation between an incorrect letter found in the disputed domain name and its placement on a computer keyboard near the correct letter as found in the complainant’s mark. See IndyMac Bank F.S.B. v. Ebeyer, FA 175292 (Nat. Arb. Forum Sept. 19, 2003) (finding that the respondent lacked rights and legitimate interests in the disputed domain names because it “engaged in the practice of typosquatting by taking advantage of Internet users who attempt to access Complainant's <indymac.com> website but mistakenly misspell Complainant's mark by typing the letter ‘x’ instead of the letter ‘c’”). The Panel notes that Respondent’s addition of the letter “z” indicates typosquatting, and thus does not convey rights or legitimate interests to Respondent.
Complainant contends that Respondent registered and is using the <instagramz.com> domain name in bad faith. Complainant states that Respondent’s prior operation to purportedly sell Instagram followers is a violation of Instagram’s Terms of Use, which states that one may “not sell, transfer, license or assign… followers.” Complainant also contends that Respondent was attempting to confuse Internet users as to Complainant’s association with Respondent’s disputed domain name by attempting to pass itself off as Complainant. Prior panels have found bad faith when a respondent uses a confusingly similar domain name to resolve to a website attempting to appear as complainant’s legitimate business and thus commercially profits. See Qatalyst Partners LP v. Devimore, FA 1393436 (Nat. Arb. Forum July 13, 2011) (finding that using the disputed domain name as an e-mail address to pass itself off as the complainant in a phishing scheme is evidence of bad faith registration and use); see also Philip Morris Inc. v. r9.net, D2003-0004 (WIPO Feb. 28, 2003) (finding that the respondent’s registration of an infringing domain name to redirect Internet users to banner advertisements constituted bad faith use of the domain name). The Panel concludes that Respondent’s efforts to pass itself off as Complainant indicates bad faith use and registration under Policy ¶ 4(b)(iv).
As noted previously, Complainant asserts that Respondent was using the disputed domain name as part of a phishing scheme in which Respondent offered rewards such as Instagram followers or mobile phones in order to collect personal information from users. Prior panels have found bad faith use and registration where a respondent uses a confusingly similar domain name to redirect Internet users to a website purporting to be complainant and fraudulently requesting personal information of the Internet user. See Hess Corp. v. GR, FA 770909 (Nat. Arb. Forum Sept. 19, 2006) (determining that the respondent demonstrated bad faith registration and use because it was attempting to acquire the personal and financial information of Internet users through a confusingly similar domain name). The Panel therefore concludes that Respondent’s prior phishing scheme indicates bad faith use and registration.
Complainant additionally asserts that Respondent’s current failure to make an active use of the <instagramz.com> domain name indicates bad faith use and registration. Prior UDRP panels have agreed, finding that failing to make an active use of a disputed domain name qualifies as bad faith. See DCI S.A. v. Link Commercial Corp., D2000-1232 (WIPO Dec. 7, 2000) (concluding that the respondent’s [failure to make an active use] of the domain name satisfies the requirement of ¶ 4(a)(iii) of the Policy). The Panel conclude that Respondent’s current inactive use of the <instagramz.com> domain name indicates bad faith use and registration under Policy ¶ 4(a)(iii).
As discussed previously, Complainant claims that Respondent’s <instagramz.com> domain name is a typosquatted version of Complainant’s INSTAGRAM mark. Prior panels have conclusively found that typosquatting indicates bad faith under Policy ¶ 4(a)(iii). Dermalogica, Inc. v. Domains to Develop, FA 175201 (Nat. Arb. Forum Sept. 22, 2003) (finding that the <dermatalogica.com> domain name was a “simple misspelling” of the complainant's DERMALOGICA mark which indicated typosquatting and bad faith pursuant to Policy ¶ 4(a)(iii)). In this case, the Panel notes that the disputed domain name may well be considered as a typosquatted version of Complainant’s trademark, but also that on the Respondent’s website the “Instagramz” word is written with an extra fat version of the letter “z”, thereby making the word easily readable as INSTAGRAM and the letter “z” separately. The Panel concludes that Respondent’s typosquatting behavior indicates bad faith pursuant to Policy ¶ 4(a)(iii).
Complainant contends that it registered its trademark prior to Respondent’s creation of the disputed domain name and thus Respondent had knowledge of Complainant and Complainant’s INSTAGRAM mark when Respondent created <instagramz.com>. Additionally, Complainant contends that it is impossible to conceive that Respondent had no knowledge of Complainant’s trademark when Respondent registered an almost identical domain name featuring the INSTAGRAM mark, which is not even an English word, or known word in any other language. While panels have concluded that constructive notice is not sufficient to support a bad faith finding, the Panel finds that, due to the widespread use of Complainant's mark, Respondent knew or should have known of the mark and Complainant's rights. Thus, the Panel holds that Respondent registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii). See The Way Int'l, Inc. v. Diamond Peters, D2003-0264 (WIPO May 29, 2003) ("As to constructive knowledge, the Panel takes the view that there is no place for such a concept under the Policy."); see also Yahoo! Inc. v. Butler, FA 744444 (Nat. Arb. Forum Aug. 17, 2006) (finding bad faith where the respondent was "well-aware of the complainant's YAHOO! mark at the time of registration).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <instagramz.com> domain name be TRANSFERRED from Respondent to Complainant.
Petter Rindforth, Presiding Panelist
Sandra J. Franklin, Panelist
Bruce E. O’Connor, Panelist
Dated: May 7, 2014
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