Instagram, LLC v Jiri Capcuch

WIPO Case No. D2023-1257

ARBITRATION
AND
MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Instagram, LLC v. Jiri Capcuch

Case No. D2023-1257

1. The Parties

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

LLP, United States.

The Respondent is Jiri Capcuch, Czech Republic.

2. The Domain Name and Registrar

The disputed domain name <instagramstorydownload.com> (the “Domain Name”) is registered with

Dynadot, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 23, 2023. On March 23, 2023, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On March 23, 2023, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent (Redacted for Privacy, Dynadot Privacy Service) and contact information in the Complaint. The Center sent an email communication to the Complainant on March 24, 2023, 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 March 28, 2023.

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”).

In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the
Complaint, and the proceedings commenced on March 29, 2023. In accordance with the Rules, paragraph
5, the due date for Response was April 18, 2023. The Respondent did not submit any response.

Accordingly, the Center notified the Respondent’s default on April 19, 2023.

The Center appointed Karen Fong as the sole panelist in this matter on April 26, 2023. 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.

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4. Factual Background

The Complainant operates the Instagram social networking service and mobile application. Instagram enables its users to create their own personal profiles, post photos and videos, and connect with each other on their mobile devices. Instagram has more than 500 million daily active accounts and more than one billion monthly active users from all of the world. The Instagram app is currently ranked as the second most downloaded app globally.

The Complainant has used the Instagram trade mark for over 12 years. It is ranked 16th in Interbrand’s
current Best Global Brands report. The Complainant also owns trade mark registrations for INSTAGRAM all
over the world. The earliest trade mark registration submitted in evidence is United States Trade Mark
Registration No. 4,146,057 with a registration date of May 22, 2012 (individually and collectively, the “Trade
Mark”).

The Complainant has a portfolio of domain names comprising the Trade Mark including <instagram.com> and <instagramstories.com>.

The Respondent registered the Domain Name on September 21, 2022. The Domain Name resolves to a
pay-per-click (“PPC”) webpage with links which resolve to advertisements for third party websites (the

“Website”). The Website also indicated that the Domain Name may be available for sale.

5. Parties’ Contentions

A. Complainant

The Complainant contends that the Domain Name is confusingly similar to the Trade Mark, that the
Respondent has no rights or legitimate interests with respect to the Domain Name, and that the Domain
Name was registered and is being used in bad faith. The Complainant requests transfer of the Domain

Name.

B. Respondent

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

6. Discussion and Findings

A. General

According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the Domain Name, the
Complainant must prove each of the following, namely that:

(i)        The Domain Name is identical or confusingly similar to the trade marks or service marks in which the Complainant has rights; and

(ii)       The Respondent has no rights or legitimate interests in respect of the Domain Name; and

(iii)      The Domain Name was registered and is being used in bad faith.

B. Identical or Confusingly Similar

The Panel is satisfied that the Complainant has established that it has registered and unregistered rights to the Trade Mark.

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The standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between the trade mark and the domain name to determine whether the domain name is confusingly similar to the trade mark. The test involves a side-by-side comparison of the domain name and the textual components of the relevant trade mark to assess whether the mark is recognizable within the domain name.

In this case, the Domain Name contains the Complainant’s Trade Mark in its entirety with the addition of two ordinary words, “story” and “download” after the Trade Mark. The addition of these words does not prevent a finding of confusing similarity. For the purposes of assessing identity or confusing similarity under paragraph 4(a)(i) of the Policy, it is permissible for the Panel to ignore the generic Top-Level Domain (“gTLD”), which in this case is “.com”, since it is viewed as a standard registration requirement (section 1.11.1 of the WIPO

Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”)).

The Panel finds that the Domain Name is confusingly similar to a trade mark in which the Complainant has rights, and that the requirements of paragraph 4(a)(i) of the Policy therefore are fulfilled.

C. Rights or Legitimate Interests

Pursuant to paragraph 4(c) of the Policy, a respondent may establish rights or legitimate interests in the disputed domain name by demonstrating any of the following:

(i)        before any notice to it of the dispute, the respondent’s use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

(ii)       the respondent has been commonly known by the domain name, even if it has acquired no trade mark or service mark rights; or

(iii)      the respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain, to misleadingly divert consumers, or to tarnish the trade mark or service mark at issue.

Although the Policy addresses ways in which a respondent may demonstrate rights or legitimate interests in a disputed domain name, it is well established that, as it is put in section 2.1 of the WIPO Overview 3.0, that a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate

interests. Once such a prima facie case is made, the burden of production shifts to the respondent to come
forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the domain
name. If the respondent does come forward with some allegations of evidence of relevant rights or
legitimate interests, the panel weighs all the evidence, with the burden of proof always remaining on the
complainant.

The Complainant contends that the Respondent is not commonly known by the Domain Name. It has not authorised, licensed or otherwise permitted the Respondent to use the Trade Mark in the Domain Name or for any other purpose. Further, the display of PPC links on the Website and offer for sale of the Domain Name does not constitute a bona fide offering of goods or services or legitimate noncommercial or fair use of the Domain Name given the revenue the Respondent derives from Internet users misled by the confusingly similar Domain Name.

The Panel finds that the Complainant has made out a prima facie case, a case calling for a reply from the Respondent. The Respondent has not responded and the Panel is unable to conceive of any basis upon which the Respondent could sensibly be said to have any rights or legitimate interests in respect of the

Domain Name.

The Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name.

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D. Registered and Used in Bad Faith

To succeed under the Policy, the Complainant must show that the Domain Name has been both registered and used in bad faith. It is a double requirement.

The Panel is satisfied that the Respondent must have been aware of the Trade Mark when he registered the
Domain Name given the reputation of the Trade Mark which has no other meaning other than being the
Complainant’s well known company name and Trade Mark, both of which have been used and registered
long before the Domain Name. It is therefore implausible that the Respondent was unaware of the

Complainant when it registered the Domain Name.

In the WIPO Overview 3.0, section 3.2.2 states as follows:

“Noting the near instantaneous and global reach of the Internet and search engines, and particularly in
circumstances where the complainant’s mark is widely known (including in its sector) or highly specific and a
respondent cannot credibly claim to have been unaware of the mark (particularly in the case of domainers),
panels have been prepared to infer that the respondent knew, or have found that the respondent should
have known, that its registration would be identical or confusingly similar to a complainant’s mark. Further
factors including the nature of the domain name, the chosen top-level domain, any use of the domain name,
or any respondent pattern, may obviate a respondent’s claim not to have been aware of the complainant’s
mark.”

There is a clear absence of rights or legitimate interests coupled with no explanation for the Respondent’s choice of the Domain Name are also significant factors to consider (as stated in section 3.2.1 of the WIPO Overview 3.0). In light of the above, the Panel finds that the Respondent deliberately registered the Domain

Name in bad faith.

The Panel also finds that the actual use of the Domain Name is in bad faith. The Website is a PPC site which has been set up for the commercial benefit of the Respondent. It is highly likely that Internet users when typing the Domain Name into their browser, or finding them through a search engine would have been looking for a site operated by the Complainant rather than the Respondent. The Domain Name is likely to confuse Internet users trying to find the Complainant’s website. Such confusion will inevitably result due to the fact that the Domain Name contains a misspelled version of the Complainant’s distinctive Trade Mark.

The Respondent employs the reputation of the Trade Mark to mislead users into visiting the Domain Name
instead of the Complainant’s. From the above, the Panel concludes that the Respondent intentionally
attempted to attract for commercial gain, by misleading Internet users into believing that the Respondent’s
Website is that of or authorized or endorsed by the Complainant. The Panel therefore concludes that the
Domain Name was registered and is being used in bad faith under paragraph 4(b)(iv) of the Policy.

The Panel has also noted that a number of UDRP cases concerning other third party brand owners where the Respondent has been the named respondent and those domain names have been ordered to be transferred. These include, Pixabay GmbH v. Super Privacy Service LTD c/o Dynadot / Jiri Capcuch, WIPO Case No. D2022-1752; Mav Media, LLC v. Jiri Capcuch and Wu Yu, WIPO Case No. D2022-3803. This is an indication that the Respondent is a serial cybersquatter and is engaged in a pattern of bad faith conduct (section 3.1.2 of the WIPO Overview 3.0).

The Panel finds that the Respondent has registered and used the Domain Name in bad faith.

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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 Domain Name, <instagramstorydownload.com>, be transferred to the Complainant.

/Karen Fong/ Karen Fong Sole Panelist Date: May 12, 2023