Instagram, LLC v Muhammad Tahir, Muhammad ASIF, pinoy tvshows
WIPO Case No. D2024-4981
•26-02-2025
ARBITRATION
AND
| MEDIATION CENTER |
ADMINISTRATIVE PANEL DECISION
Instagram, LLC v. Muhammad Tahir, Muhammad ASIF, pinoy tvshows
Case No. D2024-4981
1. The Parties
The Complainant is Instagram, LLC, United States of America (“United States”), represented by Hogan
Lovells (Paris) LLP, France.
The Respondents are Muhammad Tahir, Pakistan, Muhammad ASIF, Pakistan, pinoy tvshows, Pakistan.
2. The Domain Names and Registrars
The disputed domain names <iinstapro.net>, <instapro.com.co>, <myinstapro.org> and <instapro.live> are registered with Name.com, Inc.
The disputed domain names <instagrampro.cam> and <instaproapkdownloads.net> are registered with
NETIM SARL (Name.com, Inc. and NETIM SARL, collectively referred to as the “Registrars”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 2, Complaint. On December 3, 2024, the Center transmitted by email to the Registrar NETIM SARL, a request for registrar verification in connection with the disputed domain name <instagrampro.cam>. On December 4, 2024, the Registrar NETIM SARL transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name <instagrampro.cam> which differed from the named Respondent (REDACTED FOR PRIVACY) and contact information in the Complaint.
2024. On December 3 and December 9, 2024, the Center transmitted by email to the Registrar Name.com,
Inc. a request for registrar verification in connection with the disputed domain names <myinstapro.org>,
<instapro.com.co> and <iinstapro.net>. On December 3 and 9, 2024, the Registrar Name.com transmitted
by email to the Center its verification response disclosing registrant and contact information for the disputed
domain names <myinstapro.org>, <instapro.com.co> and <iinstapro.net> which differed from the named
The Center sent an email communication regarding Notice of Change - Multiple Underlying Registrants to the Complainant on December 10, 2024, with the registrant and contact information of nominally multiple underlying registrants revealed by the Registrars, requesting the Complainant to either file separate
complaint(s) for the disputed domain names <myinstapro.org>, <instagrampro.cam>, <instapro.com.co> and
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<iinstapro.net> associated with different underlying registrants or alternatively, demonstrate that the
underlying registrants are in fact the same entity and/or that all domain names are under common control.
The Complainant filed a first amended Complaint on December 20, 2024, requested to add the disputed registrant and contact information for the disputed domain names <instapro.live> and <instaproapkdownloads.net> which differed from the named Respondents and contact information in the first amended Complaint.
domain names <instapro.live> and <instaproapkdownloads.net> into the proceeding and requested
consolidation of the dispute. On December 23, 2024, the Center transmitted by email to the Registrars a
request for registrar verification in connection with the newly added disputed domain names. On
The Center sent an email communication to the Complainant on December 26, 2024, with the registrant and contact information of nominally multiple underlying registrants revealed by the Registrars, requesting the Complainant to either file separate complaint(s) for the disputed domain names <instaproapkdownloads.net> and <instapro.live> associated with different underlying registrants or alternatively, demonstrate that the underlying registrants are in fact the same entity and/or that all domain names are under common control. The Complainant filed a second amended Complaint on December 28, 2024, and requested consolidation of the dispute.
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 Respondents of the
Complaint, and the proceedings commenced on January 6, 2025. In accordance with the Rules, paragraph
5, the due date for Response was January 26, 2025. The Respondents did not submit any response.
Accordingly, the Center notified the Respondents’ default on January 31, 2025.
The Center appointed Andrea Mondini as the sole panelist in this matter on February 6, 2025. 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.
On February 10, 2025, the Panel issued a Procedural Order requesting the Complainant to resubmit the third amended Complaint. The Respondents did not submit any comments thereon.
amended Complaint to reflect the correct Registrar for the disputed domain names <instapro.com.co> and
<iinstapro.net> by February 13, 2025, and providing the Respondents with three days from receipt of the
4. Factual Background
The Complainant, Instagram, LLC (also commonly known as “Insta”), is a world-wide online photo and video sharing social-networking application. The Complainant was launched in 2010 and was acquired by Facebook, Inc. (now Meta Platforms, Inc.) in 2012. Today Instagram is one of the leading video sharing and editing software and online social network, with more than 2.4 billion monthly active accounts worldwide.
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The Complainant owns numerous trademark registrations in several jurisdictions, including:
| TRADEMARK | JURISDICTION | REGISTRATION | REGISTRATION | INTERNATIONAL |
| NUMBER | DATE | CLASS | ||
| United States | 4,146,057 | May 22, 2012 | 9 | |
| INSTA | United States | 5,061,916 | October 18, 2016 | 9 |
| European Union | 014493886 | December 24, 2015 | 25, 35, 38, 41, 45 | |
| INSTA | European Union | 014810535 | May 23, 2018 | 9 |
| United States | 5,299,116 | October 3, 2017 | 9 |
The Complainant holds several domain names, among them <instagram.com> which hosts its main website.
Because the Respondents did not file a Response, not much is known about the Respondents.
The disputed domain names were registered on the following dates:
| <instagrampro.cam> | January 19, 2024 |
| <instapro.com.co> | March 17, 2023 |
| <iinstapro.net> | January 18, 2024 |
| <myinstapro.org> | January 21, 2024 |
| <instapro.live> | April 30, 2024 |
| <instaproapkdownloads.net> | November 25, 2024 |
According to the evidence submitted with the Complaint, each of the disputed domain names redirects to a website titled “Insta Pro APK” that purports to offer for download a modified APK version of the Instagram application, with the following wording: “InstaPro is a customized version of the official Version of Instagram that allows user to enjoy the additional features […]”. The acronym “APK” stands for “Android Application Package Kit”.
The Respondents’ websites feature a pink/purple color scheme that is similar to the gradient color scheme of the Complainant’s Instagram platform. The Respondents’ websites also make prominent reference to the Complainant’s INSTAGRAM trademark and feature similar versions of the Complainant’s “Instagram” logo and figurative trademark on the websites themselves and as a favicon.
5. Parties’ Contentions
A. Complainant
The Complainant contends that it has satisfied each of the elements required under the Policy for a transfer of the disputed domain names.
Notably, the Complainant contends as follows:
The disputed domain names are confusingly similar to the INSTAGRAM and INSTA trademarks in which the Complainant has rights, because <instagrampro.cam> incorporates the INSTAGRAM trademark in its entirety and the other five disputed domain names incorporate the INSTA trademark in its entirety. The addition of the terms “my”, “pro”, “i” and/or “apkdownloads” to the respective disputed domain names is not sufficient to prevent a finding of confusing similarity.
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The Respondents have no rights or legitimate interests in respect of the disputed domain names. The
Respondents have not been authorized by the Complainant to use its trademarks, are not commonly known
by the disputed domain names, and there is no evidence of the Respondents’ use, or demonstrable
preparation to use, the disputed domain names in connection with a bona fide offering of goods and
services. To the contrary, the Respondents’ websites purport to offer an unauthorized modified APK version
of the Complainant’s Instagram application, with additional features that are not offered on the Complainant’s
application, including the ability to download Instagram content, which does not amount to a bona fide
offering of goods or services. The Respondents’ use of the disputed domain names does not comply with
the Instagram Terms of Use that prohibit to “modify, translate, create derivative works of or reverse-engineer
our products or their components”.
The disputed domain names were registered in bad faith because it is obvious that the Respondents had knowledge of both the Complainant and its well-known trademarks INSTAGRAM and INSTA at the time it registered the disputed domain names. The Respondents’ intent to target the Complainant when registering
the disputed domain names may be inferred from the contents of the Respondents’ websites, which makes
explicit reference to the Complainant’s INSTAGRAM and INSTA trademarks.
Respondents are using the disputed domain names in bad faith, by intentionally attempting to attract for financial gain Internet users to its website, by creating a likelihood of confusion with the Complainant’s trademarks as to the source, sponsorship, affiliation, or endorsement of the Respondents’ websites. The lack of a prominent or accurate disclaimer on the homepage of the Respondents’ websites to clarify the Respondents’ relationship (or lack thereof) with the Complainant further adds to the confusion caused by the disputed domain names and constitutes additional evidence of the Respondents’ bad faith.
Furthermore, the Respondents failed to respond to the Complainant’s lawyers contact form notice in relation to the disputed domain names <myinstapro.org>, <iinstapro.net> and <instapro.com.co>.
B. Respondent
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
According to paragraph 4(a) of the Policy, in order to succeed, a complainant must establish each of the following elements:
(i) the disputed domain name is identical or confusingly similar to the 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 name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
6.1. Consolidation: Multiple Respondents
The third amended Complaint was filed in relation to nominally different domain name registrants. The Complainant alleges that the domain name registrants are the same entity or mere alter egos of each other, or under common control. The Complainant requests the consolidation of the Complaint against the multiple disputed domain name registrants pursuant to paragraph 10(e) of the Rules.
The disputed domain name registrants did not comment on the Complainant’s request.
Paragraph 3(c) of the Rules states that a complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name holder.
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In addressing the Complainant’s request, the Panel will consider whether (i) the disputed domain names or
corresponding websites are subject to common control; and (ii) the consolidation would be fair and equitable
to all Parties. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition
(“WIPO Overview 3.0”), section 4.11.2.
As regards common control, the Panel notes that the fact that almost all of the disputed domain names are redirected to the same website clearly indicates that the disputed domain names are subject to common control. Moreover, the disputed domain names follow a similar naming pattern whereby each of the disputed domain names includes the Complainant’s INSTA or INSTAGRAM trademark together with the term “pro”.
As regards fairness and equity, the Panel sees no reason why consolidation of the disputes would be unfair or inequitable to any Party.
Accordingly, the Panel decides to consolidate the disputes regarding the nominally different disputed domain name registrants (referred to hereinafter as “the Respondent”) in a single proceeding.
6.2. Substantive issues
A. Identical or Confusingly Similar
It is well accepted that the first element functions primarily as a standing requirement. The standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between the Complainant’s trademark and the disputed domain name. WIPO Overview 3.0, section 1.7.
The Complainant has shown rights in respect of a trademark or service mark for the purposes of the Policy.
WIPO Overview 3.0, section 1.2.1.
The Panel finds the entirety of the INSTAGRAM mark is reproduced within the disputed domain name
<instagrampro.cam>. Likewise, the entirety of the INSTA trademark is reproduced in its entirety within the
other five disputed domain names.
Although the addition of other terms such as here “my”, “pro”, “i” and/or “apkdownloads” may bear on assessment of the second and third elements, the Panel finds that in the present case the addition of such terms does not prevent a finding of confusing similarity between the disputed domain names and the Complainant’s marks for the purposes of the Policy. WIPO Overview 3.0, section 1.8.
The addition of the generic Top-Level Domain (“gTLD”) in the respective disputed domain names is a standard registration requirement and as such may be disregarded under the confusing similarity test under the Policy, paragraph 4(a)(i). WIPO Overview 3.0, section 1.11.1.
The Panel finds the first element of the Policy has been established for all of the disputed domain names.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides a list of circumstances in which the Respondent may demonstrate rights or legitimate interests in a disputed domain name.
Although the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that for a complainant to prove that a respondent lacks rights or legitimate interests in a domain name may result in the difficult task of “proving a negative”, requiring information that is often primarily within the
knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that
the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the
respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain
name (although the burden of proof always remains on the complainant). If the respondent fails to come
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forward with such relevant evidence, the complainant is deemed to have satisfied the second element.
WIPO Overview 3.0, section 2.1.
The Respondent has not rebutted the Complainant’s prima facie showing and has not come forward with any relevant evidence demonstrating rights or legitimate interests in the disputed domain names such as those enumerated in the Policy or otherwise.
Prior UDRP panels have recognized that service providers using a domain name that contains a third-party trademark may be making a bona fide offering of goods or services and thus have a legitimate interest in such domain name. Whether or not this is the case is typically assessed based on the factors listed in Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903:
(i) the respondent must actually be offering the goods or services at issue;
(ii) the respondent must use the site to sell only the trademarked goods or services;
(iii) the site must accurately and prominently disclose the registrant’s relationship with the trademark
holder; and
(iv) the respondent must not try to “corner the market” in domain names that reflect the trademark.
The Panel notes that the Respondent’s website purports to offer for download an unauthorized modified APK version of the Complainant’s Instagram application. As such, the Respondent cannot be said to be using the Respondent’s website to actually offer the goods or services at issue, namely the original Instagram
application.
The Respondent’s website features a disclaimer containing the following sentence: “We are not connected to Instagram or any other social media platform.” In the Panel’s view, this disclaimer appears to be far from prominent and unlikely to be seen by most users of the site. Considering the prominent use of the
Complainant’s trademarks and similar logos and color schemes on the Respondent’s site, the Panel finds the
Respondent’s disclaimer to be ineffective in dispelling the confusion caused by the disputed domain names
and the website content, and notes that Internet users will in any event have been enticed to the
Respondent’s website before seeing that disclaimer.
Furthermore, the disputed domain names themselves suggest a connection or affiliation between the
Complainant and the Respondent which in fact does not exist.
Based on the available record, the Panel thus finds the second element of the Policy has been established.
C. Registered and Used in Bad Faith
The Panel notes that, for the purposes of paragraph 4(a)(iii) of the Policy, paragraph 4(b) of the Policy establishes circumstances, in particular, but without limitation, that, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith.
Paragraph 4(b) of the Policy sets out a list of non-exhaustive circumstances that may indicate that a domain name was registered and used in bad faith, but other circumstances may be relevant in assessing whether a respondent’s registration and use of a domain name is in bad faith. WIPO Overview 3.0, section 3.2.1.
In the view of the Panel, noting that that the Complainant’s trademark predates the registration of the disputed domain names and considering that the Complainant’s trademark is well-known and that the disputed domain names redirect to a website featuring the Complainant’s trademarks and references to its
services, it is obvious that the Respondent targeted the Complainant when it registered the disputed domain
names. In the circumstances of this case, this is evidence of registration in bad faith.
The impression given by this redirected website would cause Internet users to believe that the Respondent is
somehow associated with the Complainant when, in fact, it is not. The Panel holds that by using the
disputed domain names, the Respondent has intentionally attempted to attract, for commercial gain, Internet
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users to its websites, by creating a likelihood of confusion with the Complainant’s mark as to the source,
sponsorship, affiliation, or endorsement of its websites in the sense of Policy, paragraph 4(b)(iv).
Based on the available record, the Panel finds that the Complainant has established the third element of the
Policy with regard to the disputed domain names.
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 <iinstapro.net>, <instagrampro.cam>, <instaproapkdownloads.net>,
<instapro.com.co>, <instapro.live> and <myinstapro.org> be transferred to the Complainant.
/Andrea Mondini/
Andrea Mondini
Sole Panelist
Date: February 26, 2025
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