Instagram, LLC, WhatsApp, LLC. v mohsin khan, oppo
WIPO Case No. D2024-1128
•29-05-2024
ARBITRATION
AND
| MEDIATION CENTER |
ADMINISTRATIVE PANEL DECISION
Instagram, LLC, WhatsApp, LLC. v. mohsin khan, oppo
Case No. D2024-1128
1. The Parties
The Complainants are Instagram, LLC. (First Complainant) and WhatsApp, LLC. (Second Complainant),
United States of America (“United States”), represented by Greenberg Traurig, LLP, United States.
The Respondent is mohsin khan, oppo, Pakistan.
2. The Domain Names and Registrars
The disputed domain names <gbwhtsap.com>, <honista-instagram.com>, and <honistainstagram.com> are
registered with GoDaddy.com, LLC (the “Registrar GoDaddy”).
The disputed domain name <honistainstagram.net> is registered with Dynadot Inc. (the “Registrar
Dyndadot”, together with Registrar GoDaddy being hereafter named the “Registrars”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 14, 2024.
On March 15, 2024, the Center transmitted by email to the Registrar a request for registrar verification in
connection with the disputed domain names. On March 18, 2024, the Registrars 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 (Registration Private Domains By Proxy, LLC and REDACTED
for privacy Super Privacy Service LTD c/o Dynadot) and contact information in the Complaint. The Center
sent an email communication to the Complainants on March 18, 2024, providing the registrant and contact
information disclosed by the Registrar which notably showed that all disputed domain names were standing
in the name of the Respondent. The Center invited the Complainants to potentially submit an amendment to
the Complaint by March 23, 2024. The Complainants filed a supplement to the Complaint on March 29,
2024 but chose not to amend the Complaint.
The Center verified that the Complaint together with the supplement to 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”).
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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 April 4, 2024. In accordance with the Rules, paragraph 5,
the due date for Response was April 24, 2024. The Respondent did not submit any response. Accordingly,
the Center notified the Respondent’s default on April 26, 2024.
The Center appointed Theda König Horowicz as the sole panelist in this matter on May 2, 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 First Complainant, Instagram, LLC, belongs to the Meta Group of Companies and is incorporated in the
United States. The First Complainant has been using the trade mark INSTAGRAM since its launch in 2010
in respect of its well-known online photo and video sharing social networking application. It is the owner
common law rights over INSTAGRAM as well as of numerous trademark registrations worldwide including:
- United States Trademark Registration INSTAGRAM No. 4146057 registered on May 22, 2012.
| - United States Trademark Registration No. 5198386 registered on May 19, 2017. |
- United States Trademark Registration No. 5351389 registered on December 5, 2017.
The Second Complainant WhatsApp, LLC, also belongs to the Meta Group of Companies and is
incorporated in the United States. The Second Complainant operated the WhatsApp messaging and
voice-over-IP service and mobile application. It has been using the WHATSAPP trademark since its launch
in 2009 and is the owner of common law rights over WHATSAPP as well of numerous trademark
registrations worldwide including:
- United States Trademark Registration WhatsApp No. 3939463 registered on April 5, 2011.
| - United States Trademark Registration No. 4359872 registered on July 2, 2013. |
The disputed domain names were registered at the following dates:
- <gbwhtsap.com> on September 8, 2023;
- <honistainstagram.com> on September 10, 2023;
- <honista-instagram.com> on October 12, 2023;
- <honistainstagram.net> on November 24, 2023.
The disputed domain names are associated with websites reproducing modified versions of Complainants’
logos. The said websites invite users to download putative mobile applications called “Honista Instagram”
and “GB WhatsApp”. The websites for the disputed domain names state:
“honista instagram is an Android social media networking app. It allows
you to express yourself by sharing photos and videos. Users can upload
pictures and videos using the camera on their phones.
* * * *
[honista instagram] offers various unique and powerful features
unavailable in the original Instagram. Users can customize its entire look
and interface with over fifty different colors. The Honesta app for Android
is a multi-stage app developed from the Instagram app, as it provides you
with many benefits. The Honista app is an updated version with many
features, like blocking Instagram ads. Everyone can easily download
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videos, images, reels, and posts and share them on another app. It also
hides your view of someone’s story and many unique features. honista
instagram apk enables you to watch unlimited content while offline.”
“Honista Instagram is the most famous social media app with millions of
active users. Most famous personalities, like politicians, people in
business, movie stars, actors. With the modified version of Instagram, you
can do many things you can’t find in the original Instagram”.
“GBWhtsApp, an unofficial modification of the original WhatsApp
application, has sparked a digital revolution in instant messaging. With its
kaleidoscope of features, GBWhatsApp Apk transcends the boundaries of
conventional messaging apps.
Users can revel in the ability to customize their chats with an array of
themes, fonts, and styles, giving each conversation a personalized touch.
GBWhtsAp also offers enhanced privacy settings, allowing users to hide
their online status, blue ticks, and even double-check marks, granting a
newfound sense of discretion. Its file-sharing capabilities are equally
impressive, with the ability to send larger files and multimedia without
compromising quality. What truly sets GB WhatsApp App apart, though,
is its flexibility. Users can maintain multiple WhatsApp accounts on a
single device, making it a favorite among those with dual SIM phones or
those who manage personal and business accounts. Additionally, the app
continually evolves with updates, incorporating new features and
improvements that keep users engaged and satisfied. While
GBWhatsApp’s unofficial nature raises questions about security and data
privacy, its unparalleled range of customization and functionality has
undeniably left an indelible mark on the world of mobile messaging.”
Between September and December 2023, the Complainants sought to contact the Respondent directly and
through its registrars GoDaddy and Dynadot and proxy hosting provider Cloudflare requesting the disputed
domain names be suspended. The Respondent answered two emails with regards to the disputed domain
names <honistainstagram.com> and <honistainstagram.net>, from the following email address
“[...]@gmail.com”, saying:
“hi, I am the owner of
honistainstagram.com. I have received the mail from godaddy. they told me that ,
[…]@enf-meta.com., that mail owner want to contact with you.”
and
“I have received gmail from GoDaddy that those people want to chat with
you.”
No follow up was made by the Respondent thereafter.
5. Parties’ Contentions
A. Complainants
The Complainants contend that they have satisfied each of the elements required under the Policy for a
transfer of the disputed domain names.
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Notably, the Complainants contend that the disputed domain names are identical or confusingly similar to
their INSTAGRAM and WHATSAPP Trade Marks in which the Complainants have rights, in accordance with
paragraph 4(a)(i) of the Policy. More specifically, the disputed domain names <honista-instagram.com>,
<honistainstagram.com>, and <honistainstagram.net> comprise the INSTAGRAM Trade Marks of the First
Complainant in their entirety as the leading element of the domain name. The addition of the term “honista”
in the disputed domain names comprising INSTAGRAM are not sufficient to prevent a finding of confusing
similarity having in mind that “honista” is the name of a service that offers a modified version of the official
Instagram app. The disputed domain name <gbwhtsap.com> is composed of a deliberate typographical
error of the Second Complainant’s highly distinctive and well-known WHATSAPP trademark. Specifically,
the Respondent has removed the letter “a” and the letter “p”, and has preceded it by the letters “GB”. The
addition of the letters “GB” and the presence of typographical errors do not prevent a finding of confusing
similarity with the Complainant's well-known WHATSAPP trademark, which remains recognizable within the
disputed domain name <gbwhtsap.com>.
The Complainants further state that the Respondent has no rights or legitimate interests in the disputed
domain names, in accordance with paragraph 4(a)(ii) of the Policy. The Respondent is not using the Domain
Name in connection with a bona fide offering of goods or services within the meaning of paragraph 4(c)(i) of
the Policy. The Respondent is not a licensee of the Complainants, is not affiliated with the Complainants in
any way, while the Complainants have not granted any authorization for the Respondent to make use of the
Trade Marks, in a domain name or otherwise. Moreover, the Complainants contend the following:
- The websites associated with the disputed domain names display a logo that is a modified version of
Complainants INSTAGRAM and WHATSAPP design marks.
- To the best of the Complainants knowledge, the Respondent has not acquired, nor applied for a trademark
registration for “HONISTA INSTAGRAM” or “GBWHTSAP”, or any variation thereof as reflected in the
disputed domain names.
- The Respondent's use of the disputed domain names does not suggest in any reasonable way that
Respondent is commonly known by the disputed domain names.
- The Respondent has configured the disputed domain names to point to Respondent’s website content,
which invites users to download putative mobile applications called “Honista Instagram” and “GB WhatsApp”,
both unauthorized versions of Complainants Instagram and WhatsApp platforms.
- The Respondent is making unauthorized use of the Complainants INSTAGRAM and WHATSAPP
trademarks to market its own, nearly identical, mobile apps in direct competition to the Complainants’.
The Respondent is only leveraging the goodwill and fame associated with the Complainants INSTAGRAM
and WHATSAPP trademarks to offer a competing service. By misleadingly diverting Internet users to its
websites and offering them services misappropriated from Complainants in direct competition with
Complainants, the Respondent is demonstrating a clear intent for commercial gain.
- The Respondent’s use of the disputed domain names, which carries a risk of implied affiliation with the
Complainants, cannot amount to bona fide use under the Policy.
- The Respondent's use of the disputed domain names to attract Internet users to its own site, which
promotes a modified version of Complainants application and leverages Complainants’ reputation and
goodwill attached to its trademarks to do so, cannot be considered as bona fide use.
The Complainants finally assert that the disputed domain names were registered and are being used in bad
faith. The Complainants INSTAGRAM and WHATSAPP trademarks are inherently distinctive and well-
known throughout the world and the Respondent could thus not have ignored these when registering the
disputed domain names. Given the composition of the disputed domain names as highlighted above, and
noting the nature of the Respondent's websites (which make explicit reference to the Complainants
trademarks, promote unauthorized mobile applications in direct competition with Complainants, and offer
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further services for a fee), Internet users are likely to be misled into believing that the disputed domain
names, Respondent’s websites and putative services, are affiliated with or somehow otherwise endorsed by
the Complainants. By using the Disputed Domain Names in this fashion, the Respondent has intentionally
attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion as
to the source, sponsorship, affiliation, or endorsement of the Respondent's websites and the services
marketed therein, in bad faith pursuant to paragraph 4(b)(iv) of the Policy. The Complainants also noted that
the use of a privacy service for registering the disputed domain names is an indication of bad faith under the
Policy.
B. Respondent
The Respondent did not reply to the Complainants’ contentions.
6. Discussion and Findings
6.1. Consolidation of Complainants
The Complaint was filed by two Complainants belonging to the same Group (Meta). The Complainants have
requested consolidation for this same reason.
Paragraph 10(e) of the Rules provides as follows:
“A Panel shall decide a request by a Party to consolidate multiple domain name disputes in accordance with
the Policy and these Rules.”
Past UDRP decisions suggest that a complaint may be brought by multiple complainants where (i) the
complainants have a specific common grievance against the respondent, or the respondent has engaged in
common conduct that has affected the complainants in a similar fashion; and (ii) it would be equitable and
procedurally efficient to permit the consolidation (see WIPO Overview of WIPO Panel Views on Selected
UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 4.11.1).
The Panel finds that the Complainants belong to the same group of companies and that they have common
grievances against the Respondent who has engaged in common conduct that has affected the
Complainants’ rights in a similar fashion. The Panel also finds that it would be procedurally efficient and
equitable to all the Parties for the Complainants to be consolidated.
In all the circumstances, the Panel therefore determines, under paragraph 10(e) of the Rules, that there be
consolidation of the disputed domain names and the Complainants in this proceeding.
6.2. Consolidation of Respondents
The disputed domain names were all registered via the privacy services of the Registrars and the identity of
the registrant(s) was thus not know to the Complainants when the Complaint was filed. The Complaint was
thus filed against the Registrars providing the privacy service. In their Complaint, the Complainants allege
that the domain name registrants are the same entity or mere alter egos of each other, or under common
control. The Complainants request the consolidation of the Complaint against the multiple disputed domain
name registrants pursuant to paragraph 10(e) of the Rules.
After the filing of the Complaint, at the request of the Center, the Registrars disclosed the name of the
registrant for all disputed domain names and the said disclosures showed that all disputed domain names
were actually registered in the name of the same holder.
In their supplemental brief, the Complainants confirm their request for consolidation and indicate that the
Registrar provided registration data represents an identical match and serves strong evidence that each of
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the disputed domain names are subject to common control by the same person. While the Complainants did
not amend the Complaint to reflect the registrant information disclosed, the Complainants encouraged
“the Center to include the subsequently identified registration date in the case caption of the published
decision in order to further important public policy interests of notice and accountability”.
The holder of the disputed domain names did not comment on the Complainants’ request.
In light of the disclosures made by the Registrars and in accordance with Paragraph 3(c) of the Rules which
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, the Panel finds that the consolidation should be granted, as the
case file shows that all disputed domain name are owned by the same holder, mohsin khan, oppo
(hereinafter “the Respondent”).1
Accordingly, the Panel decides to consolidate the proceeding.
6.3. 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 Complainants have shown registered rights in respect of the trademarks INSTAGRAM and WHATSAPP
for the purposes of the Policy. WIPO Overview 3.0, section 1.2.1.
The entirety of the mark INSTAGRAM is reproduced within the disputed domain names
<honista-instagram.com>, <honistainstagram.com>, and <honistainstagram.net>. The addition of the term
“honista” does not prevent a finding of confusing similarity between the disputed domain names and the
mark for the purposes of the Policy. WIPO Overview 3.0, section 1.8. Accordingly, the disputed domain
names <honista-instagram.com>, <honistainstagram.com>, and <honistainstagram.net> are confusingly
similar to the mark for the purposes of the Policy.
The Panel also finds that the mark WHATSAPP is recognizable within the disputed domain name
<gbwhtsap.com>. Indeed, the well-known WHATSAPP trademark remains recognizable despite the
misspelling. The addition of the letters “gb” does not prevent a finding of confusing similarity. Accordingly,
the disputed domain name <gbwhtsap.com> is confusingly similar to the mark WHATSAPP for the purposes
of the Policy. WIPO Overview 3.0, section 1.7, 1.8. and 1.9.
In the light of these circumstances, the Panel finds the first element of the Policy has been established.
1While the Complaint identifies “Registration Private, Domains By Proxy, LLC” and “REDACTED FOR PRIVACY, Super Privacy Service
LTD c/o Dynadot” as the “Respondent”, the Registrars disclosed “Mohsin khan, oppo” as the single underlying registrant. Under
paragraph 1 of the Rules, “Respondent” means the holder of a domain-name registration against which a complaint is initiated. Since
the Complaint in the present proceeding is initiated against the disputed domain names, and the Registrar has confirmed that Mohsin
khan, oppo, is the holder of the registration of the disputed domain names, the Panel accepts that Mohsin khan, oppo is the proper
Respondent in this proceeding. The above ruling does not affect the Mutual Jurisdiction under paragraph 3(b)(xii) of the Rules, since
the Complainants have agreed to submit, with respect to any challenges that may be made by the Respondent to a decision by the
Panel to transfer or cancel the disputed domain name, to the jurisdiction of the courts at the location of the principal office of the
Registrars.
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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 proving 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 forward with such relevant
evidence, the complainant is deemed to have satisfied the second element. WIPO Overview 3.0,
section 2.1.
Having reviewed the available record, the Panel finds the Complainant have established a prima facie case
that the Respondent lacks rights or legitimate interests in the disputed domain names. The Respondent is
not affiliated with the Complainant and the Complainant has not granted any license or other authorization for
the Respondent to make use of the Trade Marks, in a domain name or otherwise. The Respondent is not
using the disputed domain names in connection with a bona fide offering of goods or services within the
meaning of paragraph 4(c)(i) of the Policy notably since it uses without authorization the Complainants’
INSTAGRAM and WHATSAPP trademarks in the disputed domain names and in the websites related
thereto to market a mobile app in direct competition to the Complainants’ with the aim to misleadingly divert
Internet users to the Respondent’s websites and offering them services in direct competition with
Complainants. Such intent to mislead through an inference of association is reinforced given the
composition of the disputed domain names and the intentional addition of terms related to the Complainant’s
field of services, such as “honista” that references a downloadable app and “gb” that could likely refer to
“gigabyte”.
The Respondent has not rebutted the Complainants’ 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.
The Panel therefore 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.
Based on the undisputed information and evidence provided by the Complainants, the Panel finds that the
registration is in bad faith. At the time of registration of the disputed domain names, the Respondent must
have been aware of the well-known INSTAGRAM and WHATSAPP trademarks of the Complainants. In
addition, the fact that the Respondent registered disputed domain names containing both INSTAGRAM and
a misspelled version of WHATSAPP shows that the Respondent must have been aware of the said marks
when registering the disputed domain names. In any event, a simple trade mark register search, or even an
Internet search, prior to registration of the disputed domain Name would have informed the Respondent of
the existence of the Trade Marks.
With regard to bad faith use, the Panel finds that the following circumstances taken together warrant a
finding of bad faith use of the Domain Name:
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- the use on the Website of the Trade Marks, as well as the Device Mark, to offer services competing with
those of the Complainants, thereby misleadingly suggesting a connection or relationship with the
Complainants which does not exist;
- the lack of a substantiated response to the cease-and desist letters;
- the failure to submit a Response;
- the use of a privacy service when registering the disputed domain names.
The Panel therefore finds that the Complainants have established the third element of the Policy.
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 <gbwhtsap.com>, <honista-instagram.com>,
<honistainstagram.com>, and <honistainstagram.net> be transferred to the Complainants.
/Theda König Horowicz/
Theda König Horowicz
Sole Panelist
Date: May 29, 2024
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