Maplebear Inc. DBA Instacart v. Jacques Viljoen / Little Eden Guest Lodge
Claim Number: FA2010001916682
Complainant is Maplebear Inc. DBA Instacart (“Complainant”), represented by Candice E. Kim of Greenberg Traurig LLP, United States. Respondent is Jacques Viljoen / Little Eden Guest Lodge (“Respondent”), South Africa.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <instashopper.co>, registered with Tucows Domains Inc..
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.
James Bridgeman SC as Panelist.
Complainant submitted a Complaint to the Forum electronically on October 12, 2020; the Forum received payment on October 12, 2020.
On October 13, 2020, Tucows Domains Inc. confirmed by e-mail to the Forum that the <instashopper.co> domain name is registered with Tucows Domains Inc. and that Respondent is the current registrant of the name. 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 October 19, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 9, 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@instashopper.co. Also on October 19, 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.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On November 13, 2020 pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed James Bridgeman SC 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 disputed domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant claims rights in the INSTACART trademark acquired through its ownership of the portfolio of trademark registrations described below and its use of the mark since it was founded in 2012, in its Internet-based same-day grocery delivery and pickup service in the U.S. and Canada. Complainant asserts that it maintains the largest online grocery catalog in the world and its customers shop for groceries from the company’s more than 300 national, regional, and local retail partners through the Instacart mobile app or from the <instacart.com> or <instacart.ca> websites.
Complainant serves more than 20,000 different grocery stores across North America and its <instacart.com> and <instacart.ca> websites regularly receive over ten million views per month. Complainant’s software application has been the top application in the Apple App Store’s Food and Drink category and has a 4.8 rating across more than 1,700,000 reviews.
Complainant submits that the disputed domain name is confusing similar to the INSTACART mark in which it has rights arguing that disputed domain name shares the first two out of three syllables with the INSTACART mark viz. the element “insta”, combines them with the descriptive term “shopper”, and merely adds the country code Top Level Domain (“ccTLD”) extension “co.” See Am. Online, Inc. v Oxford Univ., FA 114654 (Forum Aug 21, 2002) (“Neither the addition of an ordinary descriptive word nor a geographic qualifier transform Respondent’s domain name into separate and distinct marks for the purpose of a Policy 4(a)(i) analysis”),
Complainant adds that the use of the initial portion of a mark combined with a descriptive term is sufficient for a finding of likelihood of confusion. See Rocher v. Jung Choi, FA 104201 (Forum Mar. 22, 2002) (“even though the disputed domain name [yveskorea.com] is similar only in part (i.e., a similar prefix), there is a likelihood of confusion [with the YVES ROCHER mark].”).
Complainant submits the “shopper” element in the disputed domain name is descriptive of Complainant’s shopping and delivery services and adds that the probability of confusion is heightened in this instance given that Complainant refers to its client shoppers as “Instacart Shoppers” and also “Insta Shoppers”.
Complainant adds that Panels have consistently held that the mere addition of a ccTLD extension such as <.co> to a mark is insufficient to distinguish a disputed domain name from the mark. See Antsy Labs LLC v. Contact Privacy Inc. Customer 0146656011 / Jonathan Ng, Fidget Cube, DCO2018-0011 (WIPO Jun. 6, 2018) (“ In making this comparison, it is permissible to disregard the country code Top-Level Domain (“ccTLD”) included in the domain name as a functional requirement of the domain name system”; disregarding .co extension).
Complainant alleges that Respondent has no rights or legitimate interests in the disputed domain name arguing that the mere registration of a domain name does not establish rights or a legitimate interest in that name under the Policy,
Complainant submits that Respondent bears the burden of proving that it has rights or a legitimate interest in the domain name. Dr. Ing h.c. F. Porsche v. Simon Postles, Case No. D2001-1360 (WIPO Mar. 21, 2002) (holding, once complainant makes a showing, the onus shifts to the respondent).
Complainant submits that under Policy ¶ 4(c), Respondent can only establish legitimate rights or interests in the disputed domain name if: (1) before notice of the dispute, it was using the domain name in connection with a bona fide offering of goods or services; (2) it is commonly known by the domain name; or (3) it is making a legitimate noncommercial or fair use of the domain names, without intent for commercial gain; and alleges that Respondent cannot demonstrate any of these three requirements.
Referring to a screenshot of the website to which the disputed domain name resolves which it adduced in evidence in an annex to the Complaint, Complainant submits that Respondent uses the disputed domain name for an unauthorized delivery service that mislead consumers and constituted passing off as connected with or authorized by Instacart. See Enterprise Holdings, Inc. v. Tech Solutions c/o Golam Qauser, FA 1660685 (Forum Mar. 16, 2016) (concluding that the respondent lacked any rights or legitimate interest in the domain <enterpriserentacarbd.com> for use in connection with unauthorized rental car delivery service).
Complainant submits that the services offered by Respondent using the disputed domain name and the resolving website are directly related to Complainant’s grocery shopping and delivery services and by using the disputed domain name for this purpose Respondent is intentionally deceiving customers into believing its website is authorized by, affiliated with, or sponsored by Instacart, which it is not.
Complainant argues that Respondent’s use of a domain name that is confusingly similar to the INSTACART mark demonstrates Respondent’s attempt to pass itself off as Instacart and disrupts Instacart’s business. See Thomas Reuters Global Resources v. Alexandre A. Montagu, FA 1208001460584 (Forum Oct. 4, 2012) (finding that respondent’s use of the complainant’s trademark on the infringing website before the website automatically directs to complainant’s website a few seconds later to be bad faith pursuant to Policy ¶ 4(a)(iii) because such use trespasses use of complainant’s intellectual property and disrupts complainant’s business).
Complainant adds that Respondent is not commonly known by the disputed domain name. There is no evidence within the WHOIS information, or the information provided by the Registrar concerning the true identity of the Respondent, that Respondent is commonly known as “Instacart” or by the disputed domain name. On the contrary, the information for Respondent is listed as “Data Protected” in the WHOIS record. Therefore, Respondent does not possess any legitimate rights or interests in the disputed domain name. based on this name. See Reese v. Morgan, FA 917029 (Forum Apr. 5, 2007) (concluding that the respondent was not commonly known by the <lilpunk.com> domain name as there was no evidence in the record showing that the respondent was commonly known by that domain name, including the WHOIS information as well as the complainant’s assertion that it did not authorize or license the respondent’s use of its mark).
Complainant asserts that by selecting the disputed domain name for registration Respondent sought to benefit from the goodwill associated with Complainant’s well-known INSTACART mark and its established business, with shoppers known as “Instacart Shoppers” and, at times, referred to as “Insta Shoppers”.
Complainant adds that Respondent registered the disputed domain name without Complainant’s consent or authority years after Complainant registered the well-known INSTACART trademark and launched its service in 2012. Complainant argues that Respondent’s passing off cannot be a legitimate noncommercial or fair use of the disputed domain name. See Am. Int’l Group, Inc. v. Busby, FA 156251 (Forum May 30, 2003) (finding that the respondent attempts to pass itself off as the complainant online, which is blatant unauthorized use of the complainant’s mark and is evidence that the respondent has no rights or legitimate interests in the disputed domain name).
Complainant submits that the foregoing facts lead to a presumption that respondent has no legitimate interest in and to the infringing domain name and thereby shifts the burden to the Respondent. C.R. Bard Inc. v. Belize Domain WHOIS Service, FA 979990 (Forum June 18, 2007) (finding that once the complainant makes an initial showing of the exclusive right to use a mark, the burden shifts to the respondent to show that it has rights and legitimate interests in the domain name).
Complainant alleges that the disputed domain name was registered and is being used in bad faith, arguing that Respondent is intentionally attracting Internet users to his website by creating a likelihood of confusion with the INSTACART mark.
Complainant asserts that it is not aware of any legitimate use of its INSTACART trademark or the term “Instacart Shoppers” anywhere in the world other than in connection with Complainant; and that the disputed domain name is so obviously connected with Complainant and its goods and services provided by Complainant that its very use by someone with no connection to Complainant suggests opportunistic bad faith. See The Elizabeth Taylor Cosmetics Company v. NOLDC, Inc., D2006-0800 (WIPO Aug. 18, 2006) (finding that <elizabethtaylorperfume.com> domain name so obviously connected with Complainant, who sold perfume under the ELIZABETH TAYLOR trademark, that its use suggested opportunistic bad faith).
Complainant adds that Respondent’s actual knowledge of Complainant and the INSTACART mark is evident from the reputation of the INSTACART mark and Respondent’s attempt to lure customers and direct them to a competing grocery delivery service. See Maplebear Inc. DBA Instacart v. Zhichao Yang, FA 1872103 (Forum Dec. 22, 2019) (concluding Respondent was “taking predatory advantage of the reputation of Complainant [Instacart]’s name, mark and website, to confuse and lure internet users to Respondent’s website in bad faith.”; noting Instacart has a “very popular website”).
Complainant concludes that Respondent’s registration and use of the disputed domain name that is confusingly similar to the INSTACART mark with knowledge of Complainant’s rights in and to the INSTACART mark shows Respondent’s bad faith pursuant to Policy ¶ 4(a)(iii). See Minicards Vennootschap Onder Firma Amsterdam v. Moscow Studios, FA 1031703 (Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent had actual knowledge of Complainant's mark when registering the disputed domain name).
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant provides an Internet based grocery deliver and pick-up service for which it uses the INSTACART mark.
Complainant is the owner of large international portfolio of trademark registrations for the INSTACARD mark including United States registered trademark and service mark, INSTACART, registration number 4,903,628, registered on the Principal Register on February 23, 2016 for goods and services in international classes 9, 35, 39, 42 and 45 for which it has provided a copy of the certificate of registration.
Complainant has an established Internet present and maintains its principal websites at <instacart.com> and <instacart.ca> with related apps.
The disputed domain name was registered on September 25, 2019 and resolves to a website that purports to offer online grocery delivery services.
There is no information available about the Respondent except for that provided in the Complaint, the Registrar’s WhoIs and the information provided by the Registrar in response to the Forum's request for verification of the registration details of the disputed domain name. Respondent availed of a privacy service to conceal his identity on the published WhoIs, which was disclosed by the Registrar when responding the Forum’s verification request.
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 adduced clear, convincing and uncontested evidence of its rights in the INSTACART mark established through its ownership of the above-described portfolio of trademark registrations and its extensive use of the mark in its grocery shopping and delivery services.
The disputed domain name consists of term “insta” with the descriptive term “shopper”, and the country code Top Level Domain (“ccTLD”) extension “co.”
The term “insta” which the disputed domain name shares as its initial two syllables with the INSTACART mark, is the is the dominant element of both the disputed domain name and Complainant’s trademark.
The term “shopper” is descriptive and in itself would add no distinguishing character to the disputed domain name, however both “cart” and “shopper” bear similar connotations.
This Panel finds therefore that the disputed domain name is confusingly similar to the INSTACART mark in which Complainant has rights.
Complainant has therefore succeeded in the first element of the test in Policy ¶ 4(a)(i).
Complainant has made out a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name arguing
· that Respondent uses the disputed domain name for an unauthorized delivery service that mislead consumers and constituted passing off as connected with or authorized by Complainant;
· that the services offered by Respondent using the disputed domain name and the resolving website are directly related to Complainant’s grocery shopping and delivery services and by using the disputed domain name for this purpose Respondent is intentionally deceiving customers into believing its website is authorized by, affiliated with, or sponsored by Complainant, which it is not;
· that Respondent is not commonly known by the disputed domain name as there is no evidence within the WHOIS information or the information provided by the Registrar concerning the true identity of the Respondent, that Respondent is commonly known as “Instacart” or by the disputed domain name;
· that the information for Respondent is listed as “Data Protected” in the WHOIS record;
· that by selecting the disputed domain name for registration Respondent sought to benefit from the goodwill associated with Complainant’s well-known INSTACART mark and its established business; and
· that Respondent registered the disputed domain name without Complainant’s consent or authority years after Instacart registered the well-known INSTACART trademark and launched its service in 2012.
It is well established that if Complainant makes out a prima facie case, the burden of production shifts to Respondent to prove his rights or legitimate interests in the disputed domain name.
Respondent has failed to file any Response to the Complaint or provide any defense to Complainant’s allegations and so has not discharged the burden.
In these circumstances this Panel must find that on the balance of probabilities Respondent has no rights or legitimate interests in the disputed domain name. Complainant has therefore succeeded in the second element of the test in Policy ¶ 4(a)(ii).
In an annex to the Complaint, Complainant has adduced as evidence, a screenshot of the website to which the disputed domain name resolves on which Respondent purports to offer grocery delivery services. The evidence shows that Respondent is using the disputed domain name to divert Internet traffic intended for Complainant.
Respondent’s website and Complainant’s website present very similar services in a very similar manner.
Having considered the evidence and in particular that the disputed domain name was registered long after Complainant established a significant and valuable goodwill and reputation in its INSTACART domain name and website, the similarity of the disputed domain name and Complainant’s mark, the probability that the disputed domain name was registered with Complainant’s mark in mind and the use to which the disputed domain name is being put, this Panel finds that on the balance of probabilities, Respondent is using the disputed domain name in bad faith, in an intentional attempted to attract, for commercial gain, Internet users to his web site by creating a likelihood of confusion with Complainant's mark as to the source, sponsorship ,affiliation, or endorsement of his web site and is therefore using the disputed domain name in bad faith.
As this Panel has found that the disputed domain name was registered and is being used in bad faith as Complainant has therefore succeeded in the third and final element of the test in Policy ¶ 4(a)(iii) and is entitled to succeed in its application for transfer of the disputed domain name.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <instashopper.co> domain name be TRANSFERRED from Respondent to Complainant.
_________________________________
James Bridgeman SC
Panelist
Dated: November 13, 2020
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