Westmore · UDRP DecisionInstagrampay.com
The Panel ordered transfer of <instagrampay.com>. It found the domain confusingly similar to the Complainant’s INSTAGRAM trademark because it incorporated the mark in full with the additional term “pay.” The Respondent lacked rights or legitimate interests, and the Panel concluded that registration and passive holding were in bad faith because the Respondent could not credibly have been unaware of the heavily used mark and no plausible good-faith use was apparent.
The timeline behind instagrampay.com
Registration, the decision and the archived record of what this domain actually displayed — from public RDAP and the Internet Archive.
Westmore reconstructs the full history behind instagrampay.com — from public RDAP and the Internet Archive — as part of UDRP Intelligence:
The case illustrates a passive-holding transfer where the domain reproduced a heavily used mark and added a term directly relevant to the trademark owner’s expanding services. The Panel did not require evidence of an active scam or commercial website; the mark’s recognition, the composition of the domain, the absence of respondent rights, and the lack of any plausible good-faith use were sufficient in combination.
Result of record. The panel's reasoning and decisive facts behind each element are in the Intelligence dossier below.
WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Instagram, LLC v. James H Park, JIN-1 Case No. D2021-1605 1. The Parties The Complainant is Instagram, LLC, United States of America (the “United States”), represented by Tucker Ellis, LLP, United States. The Respondent is James H Park, JIN-1, Republic of Korea. 2. The Domain Name and Registrar The disputed domain name <instagrampay.com> is registered with DropCatch.com 887 LLC (the “Registrar”). 3. Procedural History The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 22, 2021. On May 25, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 25, 2021, the Registrar transmitted by email to the Center its verification response confirming that the 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 the Respondent of the Complaint, and the proceedings commenced on June 1, 2021. In accordance with the Rules, paragraph 5, the due date for Response was June 21, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 26, 2021. The Center appointed Andrew F. Christie as the sole panelist in this matter on July 28, 2021. 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 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 five hundred million daily active accounts and more than one billion monthly active users from all over the world. Since 2018, the Complainant has offered payment services to its users. It launched its Instagram Checkout feature in 2019, and began offering its Instagram Shop feature in 2020. The Complainant’s payment services enable its users to make purchases from sellers, book appointments, donate to causes, and pay for Instagram advertisements. The Complainant is the owner of numerous registrations for the word trademark INSTAGRAM, including United States Trademark Registration No. 4146057 (registered on May 22, 2012), and International Trademark Registration No. 1129314 (registered on March 15, 2012). The Complainant owns and operates numerous domain names consisting of the INSTAGRAM trademark in combination with various generic Top-Level Domain (“gTLD”) and country-code Top-Level Domain extensions (“ccTLD”) extensions, including <instagram.com>, <instagram.net> and <instagram.org>. The disputed domain name was registered on December 31, 2019. The Complainant has provided an undated screenshot showing that the disputed domain name resolved to a webpage which stated: “This site can’t be reached” followed by “instagrampay.com refused to connect.” At the date of this decision, it appears that the disputed domain name does not resolve to an active website. The Complainant sent a cease and desist letter to the Respondent on March 4, 2021, to which the Respondent replied on the same day: “It is a mistake that I registered this domain. Therefore, I will not continue to have this domain. I will not extend the maintenance period for this domain. Hope you don’t waste unnecessary time and money.” 5. Parties’ Contentions A. Complainant The Complainant contends that the disputed domain name is confusingly similar to a trademark in which it has rights because: (i) the disputed domain name adds the generic term “pay” to the Complainant’s INSTAGRAM trademark, which is a term that is descriptive of and relevant to the Complainant’s services; (ii) the disputed domain name plainly misappropriates all of the textural components of the Complainant’s INSTAGRAM trademark, such that an ordinary Internet user who is familiar with the INSTAGRAM trademark would think an affiliation exists between the disputed domain name and the Complainant and/or its INSTAGRAM trademark; (iii) numerous prior UDRP panels have held that the addition of a descriptive term to a complainant’s trademark fails to distinguish a domain name from the trademark; and (iv) the addition of a gTLD has no distinguishing value. The Complainant contends that the Respondent has no rights or legitimate interests in respect of the disputed domain name because: (i) the Complainant has not licensed or authorized the Respondent to use the Complainant’s INSTAGRAM trademark, and the Respondent does not have any legal relationship with the Complainant that would entitle the Respondent to use the INSTAGRAM trademark; (ii) neither the WhoIs data for the disputed domain name, nor the corresponding website resolving from the disputed domain name, supports that the Respondent is known by the disputed domain name, and the Complainant is not aware of the Respondent being known by the disputed domain name in any other way; (iii) the Respondent has no legitimate reason for using the INSTAGRAM trademark with the disputed domain name and, instead, is using it in connection with his passive holding of it in an inactive state; (iv) the Respondent’s registration of the disputed domain name the year after the Complainant’s launch of its payment services and within a few months of the Complainant’s launch of its Instagram Checkout feature, strongly suggests that it was registered to make an undue profit based on the Complainant’s rights; (v) given the fame of the Complainant’s INSTAGRAM trademark, and the Respondent’s unauthorized incorporation of the exact INSTAGRAM trademark into the disputed domain name, there are no circumstances under which the Respondent’s use of it could plausibly be in good faith under the Policy; and (vi) the disputed domain name is not in use by the Respondent, and such non-use is not a legitimate noncommercial or fair use under the Policy. The Complainant contends that the Respondent has registered and is using the disputed domain name in bad faith because: (i) it is well settled that the non-use of a domain name that is confusingly similar to a complainant’s trademark constitutes bad faith; (ii) the Respondent’s bad faith is also evidenced by his registration of several other domain names which infringe the rights of other famous and distinctive trademark owners, and by him being the respondent in other UDRP proceedings that ordered the transfer of other infringing domain names; (iii) the registration of a confusingly similar domain name that is obviously connected with a particular trademark owner, by someone with no connection with the trademark owner, suggests bad faith; and (iv) despite the Complainant’s cease and desist letter sent to the Respondent on March 4, 2021, the Respondent continues to manage and control the disputed domain name even though he is on notice of the Complainant’s rights. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Identical or Confusingly Similar Once the gTLD “.com” is ignored (which is appropriate in this case), the disputed domain name consists of the whole of the Complainant’s registered word trademark INSTAGRAM followed by the word “pay”. The Complainant’s word trademark is clearly recognizable within the disputed domain name. The addition of the word “pay” does not prevent a finding of confusing similarity of the disputed domain name with the Complainant’s word trademark. As provided in section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“ WIPO Overview 3.0 ”), the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element. Accordingly, the Panel finds that the disputed domain name is confusingly similar to a trademark in which the Complainant has rights. B. Rights or Legitimate Interests The Respondent is not a licensee of the Complainant, is not otherwise affiliated with the Complainant, and has not been authorized by the Complainant to use its INSTAGRAM word trademark. The Respondent has not provided any evidence that he has been commonly known by, or has made a bona fide use of, the disputed domain name, or that he has, for any other reason, rights or legitimate interests in the disputed domain name. The evidence provided by the Complainant shows that the disputed domain name does not resolve to an active website. The Complainant has put forward a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name, and the Respondent has not rebutted this. Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name. C. Registered and Used in Bad Faith The disputed domain name was registered many years after the Complainant first registered its INSTAGRAM word trademark. It is inconceivable that the Respondent registered the disputed domain name ignorant of the existence of the Complainant’s trademark, given that the Complainant’s trademark has been heavily used and that the disputed domain name consists of that trademark with the mere addition of the word “pay”. Given the Respondent’s lack of rights or legitimate interests in the disputed domain name, and the confusing similarity of the disputed domain name to the Complainant’s word trademark, any use of the disputed domain name by the Respondent almost certainly would imply an affiliation with the Complainant that does not exist, and so would be a use in bad faith. Furthermore, given the above and that the Respondent has not submitted a Response to the Complaint, it is not possible to conceive of any good faith use to which the Respondent could put the disputed domain name. Therefore, even if the Respondent has not actually used the disputed domain name to engage in a bad faith activity, its holding of the disputed domain name is in bad faith. Accordingly, the Panel finds that the disputed domain name has been registered and is being used in bad faith. 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, <instagrampay.com>, be transferred to the Complainant. Andrew F. Christie Sole Panelist Date: August 11, 2021
Source of record: WIPO . Reproduced for research; WIPO is the authoritative source.
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