Instagram, LLC. v Teasomo, Anya, Instagram geoups

WIPO Case No. D2022-0488

ARBITRATION
AND
MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Instagram, LLC. v. Teasomo, Anya, Instagram geoups

Case No. D2022-0488

1. The Parties

Complainant is Instagram, LLC., United States of America (“U.S.”), represented by Tucker Ellis LLP, U.S.

Respondent is Teasomo, Anya, Instagram geoups, U.S.

2. The Domain Name and Registrar

The disputed domain name <instagramverifygroup.com> is registered with Register.com (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 11, 2022. On February 14, 2022, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 15, 2022, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details.

The Center verified that the 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 Respondent of Complaint, and the proceedings commenced on February 18, 2022. In accordance with the Rules, paragraph 5, the due date for Response was March 10, 2022. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on March 14, 2022.

The Center appointed Clark W. Lackert as the sole panelist in this matter on March 16, 2022. 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

Complainant, Instagram, LLC, operates the Instagram social networking service and mobile application. Complainant owns the exclusive rights to the INSTAGRAM trademarks and service marks, which it has used since 2010. 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 five hundred million (500,000,000) daily active accounts and more than one billion monthly active users from all over the world. Complainant offers account verification on Instagram, a feature that allows users to more easily find the real accounts of public figures, celebrities, and brands on the Instagram platform. For example, Complainant’s Verified Badges feature displays a check icon next to an Instagram account’s name in search and on the account’s profile, to indicate that Instagram has verified the account as authentic. Complainant also enables group conversations on Instagram by providing a group chat feature that allows users to create a new group chat to send a message to two or more people.

Complainant’s use of the INSTAGRAM mark, in the U.S. and throughout the world, has been extensive, continuous, and substantially exclusive. Complainant has made, and continues to make, a substantial investment of time, effort, and expense in the promotion of Complainant’s goods and services, and the INSTAGRAM mark. As a result of Complainant’s efforts and use, the INSTAGRAM mark is inextricably linked with the products and services offered by Complainant. The INSTAGRAM mark ranked 19th in Interbrand’s current Best Global Brands report.

Complainant registered its domain names <instagram.com> on June 4, 2004, and <instagramverify.com> on
August 28, 2017, among many others. In addition, Complainant has registered its trademark INSTAGRAM
and variations thereof in the U.S., including Registration No. 4,146,057, registered May 22, 2012;
Registration No. 4,170, 675, registered July 10, 2012; and Registration No. 4,756,754, registered June 16,
2015. Moreover, the trademark was registered under International Registration No. 1129314, registered

March 15, 2012, and European Union Trade Mark No. 12111746, registered March 6, 2014.

The disputed domain name was registered on August 14, 2018 and does not resolve to an active website.

5. Parties’ Contentions
A. Complainant

Complainant owns the trademark INSTAGRAM for its global social networking service and mobile application, which is registered in many different countries. This service is widely used by hundreds of millions of followers and is well-known to the consuming public. In addition, Complainant operates a verification function which assists users in identifying authentic accounts, as well as a group chat functionality. Respondent is attempting to trade off the goodwill of Complainant’s trademark by adding the descriptive terms “verify” and “group” to the INSTAGRAM trademark, to attract visits to its website. The addition of these descriptive terms, however, does not reduce the confusing similarity between the disputed domain name and Complainant’s trademark. Moreover, Complainant has no rights or legitimate interests in the disputed domain name and has engaged in bad faith conduct by using false contact information, passively holding the disputed domain name, and using a well-known trademark to divert web traffic.

B. Respondent

Respondent did not reply to Complainant’s contentions.

6. Discussion and Findings

The Panel finds that Complainant’s arguments and evidence are well-founded.

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A. Identical or Confusingly Similar

The disputed domain name is confusingly similar to Complainant’s distinctive trademark INSTAGRAM
trademarks because it has been composed using Complainant’s trademark in its entirety and combines it
with other terms, namely “verify” and “group”. When a domain name wholly incorporates a mark in a
recognizable manner, the addition of other text does not prevent a finding of confusing similarity to the mark.
See section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition
(“WIPO Overview 3.0”): “Where the relevant trademark is recognizable within the disputed domain name,
the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would
not prevent a finding of confusing similarity under the first element. The nature of such additional term(s)
may however bear on assessment of the second and third elements.” Numerous prior UDRP panels have
held that the addition of an additional term to a complainant’s mark does not prevent a finding of confusing
similarity. See, e.g., Instagram, LLC v. Registration Private, Domains By Proxy, LLC /Adana, adana, WIPO
Case No. D2020-3074: “the clear presence of the Complainant’s [INSTAGRAM] trademark in the disputed
domain name is ordinarily sufficient for a finding of confusing similarity”. For example, in Instagram, LLC v.
Azat Mordag, Azat Oruc, WIPO Case No. D2020-1477, the panel found that the disputed domain names
reproduced Complainant’s INSTAGRAM mark in its entirety and the addition of terms such as “verified” and

“verify,” among others, did not avoid a finding of confusing similarity under the Policy.

The requirements of paragraph 4(a)(i) of the Policy have been satisfied.

B. Rights or Legitimate Interests

Under the Policy, once the complainant asserts a prima facie case against the respondent, the respondent bears the burden of production to provide relevant evidence demonstrating it has rights or legitimate interests in the subject domain name pursuant to paragraph 4(a)(ii) of the Policy. See WIPO Overview 3.0, section 2.1.

Complainant has put forward a prima facie case that Respondent lacks rights or legitimate interests in the disputed domain name, noting for example that there is no evidence Respondent is commonly known by the dispute domain name and that the passive holding of the disputed domain name does not constitute a bona fide offering or legitimate noncommercial or fair use. Respondent did not reply to Complainant’s contentions, and there is no evidence in the record which indicate any rights or legitimate interests in the disputed domain name owned by Respondent.

The requirements of paragraph 4(a)(ii) of the Policy have been satisfied.

C. Registered and Used in Bad Faith

It is well settled that the non-use of a domain name that is confusingly similar to a complainant’s mark may constitute use in bad faith, “From the inception of the UDRP, panelists have found that the non-use of a domain name (including a blank or ‘coming soon’ page) would not prevent a finding of bad faith under the doctrine of passive holding.” See WIPO Overview 3.0, section 3.3; see also, e.g., Instagram, LLC v. Asif Ibrahim, WIPO Case No. D2020-2552 (finding no rights or legitimate interests where there was no evidence of the respondents’ use, or demonstrable preparations to use, the disputed domain name in connection with a bona fide offering of goods and services, and the evidence was that the domain name resolved to an inactive placeholder webpage with no substantive content). See Instagram, LLC v. Semen Semchenko, Igor Petrov, Ivan Ivanov, WIPO Case No. D2020-3127 (finding the non-resolving and passively held disputed domain name to have been registered and used in bad faith). In the present circumstances, the Panel finds the strong reputation of the INSTAGRAM mark, the failure of Respondent to respond or provide evidence of any good faith use, and the implausibility of any good faith use to which the confusingly similar disputed domain name could be put, support a finding of bad faith.

It is also settled that the mere registration of a confusingly similar domain name that is obviously connected to a widely-known or famous trademark, by someone with no connection with the trademark owner can by

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itself create a presumption of bad faith. See Instagram, LLC v. Asif Ibrahim, supra (noting that the
complainant’s INSTAGRAM trademark is so famous a mark that it would be inconceivable the respondent
might have registered the disputed domain name without knowing of it). Here, Respondent has no
connection with Complainant and the Panel finds it most likely that Respondent knew of and targeted
Complainant’s famous INSTAGRAM mark when registering the disputed domain name.

Respondent’s bad faith is further indicated by the fact that the disputed domain name has been listed on one or more blacklists indicating previous use in connection with spam, malware, or other domain name abuse. See, e.g., Instagram, LLC. v. yusuf polat, schowix, WIPO Case No. D2021-2791 (the listing of the disputed domain name on a blacklist supported a finding of registration and use in bad faith).

The requirements of paragraph 4(a)(iii) of the Policy have been satisfied.

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 name <instagramverifygroup.com> be transferred to Complainant.

/Clark W. Lackert/
Clark W. Lackert
Sole Panelist
Date: March 19, 2022