Instagram, LLC v Denis Robster

WIPO Case No. D2024-2534

ARBITRATION

AND

MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION
Instagram, LLC v. Denis Robster

Case No. D2024-2534

1. The Parties

The Complainant is Instagram, LLC, United States of America (“United States”), represented by Hogan

Lovells (Paris) LLP, France.

The Respondent is Denis Robster, United States.

2. The Domain Names and Registrar

The disputed domain names <ig-web.net> and <webig.org> are registered with Internet Domain Service BS

Corp (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 21, 2024. connection with the disputed domain name <ig-web.net>. On June 24, 2024, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent (Domain Admin, Whois Privacy Corp.) and contact information in the Complaint. The Center sent an email communication to the Complainant on June 28, 2024, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint.

The Complainant filed an amended Complaint on July 8, 2024, amending the newly identified registrant as the Respondent, and also requested to add the disputed domain name <webig.org> into the proceeding. On the same day, the Center transmitted by email to the Registrar a request for registrar verification in connection with the newly added disputed domain name. On July 9, 2024, the Registrar transmitted by email to the Center its verification response confirming that the Registrant of the disputed domain name <webig.org> is Denis Robster, the same one as the underlying registrant of the other disputed domain name.

The Center verified that the Complaint together with the amended Complaint satisfied the formal
requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for
Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for
Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).

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In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on July 11, 2024. In accordance with the Rules, paragraph 5, the due date for Response was July 31, 2024. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 2, 2024

The Center appointed Evan D. Brown as the sole panelist in this matter on August 14, 2024. The Panel finds
that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of

Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.

4. Factual Background

The Complainant operates the social media platform Instagram, and owns the trademark INSTAGRAM, which it has registered in a number of jurisdictions, including the United States (Reg. No. 4146057, registered on May 22, 2012) and the trademark IG, which it has also registered in a number of jurisdictions, including the European Union (Reg No. 017946393, registered on January 31, 2019).

The disputed domain name <ig-web.net> was registered on May 25, 2020, and the disputed domain name <webig.org> was registered on January 31, 2019. The Respondent has used both of the disputed domain names to display identical websites, purporting to offer a software application that enables users to interact with Instagram content.

5. Parties’ Contentions

A. Complainant

The Complainant contends that the disputed domain names are identical or confusingly similar to the Complainant’s IG trademark; that the Respondent has no rights or legitimate interests in respect of the disputed domain names; and that the disputed domain names were registered and are being used in bad faith.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

To succeed, the Complainant must demonstrate that all of the elements listed in paragraph 4(a) of the Policy have been satisfied: (i) the disputed domain names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights, (ii) the Respondent has no rights or legitimate interests in respect of the disputed domain names, and (iii) the disputed domain names have been registered and are being used in bad faith. The Panel finds that all three of these elements have been met in this case.

A. Identical or Confusingly Similar

This element requires the Panel to consider two issues: first, whether the Complainant has rights in a relevant mark; and second, whether the disputed domain names are identical or confusingly similar to that mark. This element under the Policy functions primarily as a standing requirement. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.7.

A registered trademark provides a clear indication that the rights in the mark shown on the trademark certificate belong to its respective owner. See Advance Magazine Publishers Inc., Les Publications Conde

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Nast S.A. v. VoguechenD2014-0657

, WIPO Case No. . The Complainant has demonstrated its rights in the section 1.2.1.

The disputed domain names incorporate the Complainant’s IG mark in its entirety. (The record provides ample evidence that the IG mark is an abbreviation for the longer-form mark INSTAGRAM.) This is sufficient for a finding of confusing similarity under the Policy.

The content of the website associated with a domain name is usually disregarded by panels when assessing confusing similarity under the first element. WIPO Overview 3.0, section 1.15. In some instances, however, panels have taken note of the content of the website associated with a domain name to confirm confusing

similarity whereby it appears prima facie that the respondent seeks to target a trademark through the
disputed domain name. Guided by these principles, the Panel takes note of the content of the Respondent's
websites - which purport to provide services ancillary to the Complainant - to confirm the confusing similarity

between the disputed domain names and the Complainant’s mark.

The Panel finds that the Complainant has established this first element under the Policy.

B. Rights or Legitimate Interests

The Panel evaluates this element of the Policy by first looking to see whether the Complainant has made a prima facie showing that the Respondent lacks rights or legitimate interests in respect of the disputed domain names. If the Complainant makes that showing, the burden of production of demonstrating rights or legitimate interests shifts to the Respondent (with the burden of proof always remaining with the Complainant).

On this point, the Complainant asserts, among other things, that (1) the Respondent is not a licensee of the Complainant, is not affiliated with the Complainant in any way, and the Complainant has not granted any authorization for the Respondent to make use of its trademarks, in a domain name or otherwise, (2) the Respondent is not commonly known by the disputed domain names, and (3) the Respondent is not using the disputed domains in connection with any bona fide offering of goods or services. Instead, the Respondent is using the disputed domain names to offer its own services that are ancillary to those of the Complainant.

The Panel finds that the Complainant has shown, prima facie, that the Respondent lacks rights or legitimate interests in the disputed domain names. Nothing in the record tips the balance in favor of the Respondent. Accordingly, the Panel finds that the Complainant has established this second element under the Policy.

C. Registered and Used in Bad Faith

The Policy requires a complainant to establish that the disputed domain names were registered and are being used in bad faith. The Policy describes several non-exhaustive circumstances demonstrating a respondent’s bad faith registration and use. Under paragraph 4(b)(iv) of the Policy, a panel may find bad faith when a respondent “[uses] the domain name to intentionally attempt to attract, for commercial gain, Internet users to [respondent’s] website or other online 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 a product or service on [the respondent’s] website or location”.

Because the Complainant’s marks are well known, it is implausible to believe that the Respondent was not
aware of those marks when it registered the disputed domain names. In the circumstances of this case,
such a showing is sufficient to establish bad faith registration of the disputed domain names. Bad faith use is
clear from the Respondent’s activities of using the disputed domain names to set up websites offering

ancillary services – certainly seeking to trade off the goodwill of the Complainant’s well-known marks.

For these reasons, the Panel finds that the Complainant has successfully met this third UDRP element.

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7. Decision

For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain names <ig-web.net> and <webig.org> be transferred to the Complainant.

/Evan D. Brown/
Evan D. Brown
Sole Panelist
Date: August 28, 2024