The domain instagramshoes.com incorporates the famous INSTAGRAM mark, but since domains are case-agnostic, the question arises:
Is it InstagramShoes.com or InstagramsHoes.com?
It’s the latter, said the Respondent in the ensuing UDRP, adding that they want 5 million British pounds for it:
The Respondent submitted a short Response which reads as follows: “Hi, my domain name is INSTAGRAMS HOES.com which refers to loose women on social media. I am creating a blog site to talk about these womens [sic] activities on and offline. The word INSTAGRAMS or HOES is not trademarked by anyone. I am in talks with several companies who would like to sponsor my site. The domain name is available to buy from me for the sum of 5 million GBP.”
The subject matter of a UDRP is how the domain infringes on a trademark, and in this case the sole WIPO panelist stated, perhaps with a chuckle:
Therefore, irrespective of whether the disputed domain name is understood as “Instagram shoes” or “Instagrams hoes”, the inactive use of this domain name without a legitimate purpose, under the circumstances of this case, does not prevent a finding of bad faith under the doctrine of passive holding.
Per this decision, instagramshoes.com (Instagram’s Hoes) was ordered to be transferred to the Complainant.
Instagram, LLC v. Jalil Miah, Food Supreme Ltd
Case No. D2020-22581. The Parties
The Complainant is Instagram, LLC, United States of America (“United States”), represented by Hogan Lovells (Paris) LLP, France.
The Respondent is Jalil Miah, Food Supreme Ltd, United Kingdom.
2. The Domain Name and Registrar
The disputed domain name <instagramshoes.com> is registered with 123-Reg Limited (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 28, 2020. On August 28, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 31, 2020, 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 September 2, 2020. In accordance with the Rules, paragraph 5, the due date for Response was September 22, 2020. The Response was filed with the Center on September 21, 2020.
The Center appointed Andrea Mondini as the sole panelist in this matter on October 14, 2020. 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, Instagram LLC, is a world-renowned online photo- and video-sharing social network application. Launched in 2010 and acquired in 2012 by Facebook, Inc., Instagram is today one of the fastest growing online social networks worldwide.
The Complainant owns several registrations for the trademark INSTAGRAM, including United States Trademark Registration No. 4,146,057, INSTAGRAM, registered on May 22, 2012 and the European Union Trademark (“EUTM”) registration No. 014493886, registered on December 24, 2015.
The disputed domain name was registered on January 25, 2019, and resolves to an inactive website.
5. Parties’ Contentions
A. Complainant
The Complainant stated that it tried to send a cease and desist letter to the Respondent but despite multiple attempts was unable to get in contact with the Respondent.
The Complainant in essence contends the following:
The trademark INSTAGRAM is an inherently distinctive mark, and the Complainant owns numerous registrations for this trademark throughout the world.
The disputed domain name is confusingly similar to the Complainant’s marks because it incorporates the INSTAGRAM mark in its entirety. The addition of the term “shoes” does not dispel confusion.
The Respondent is not commonly known by the disputed domain name. The Complainant has not licensed or otherwise authorized the Respondent to use the INSTAGRAM trademark. The Respondent has no association with the Complainant, no rights or legitimate interests in the disputed domain name, or any rights in the INSTAGRAM trademark.
The disputed domain name has been registered and used in bad faith, because the Respondent must have known the Complainant’s trademark when it registered the disputed domain name.
When confronted with the combination of the Complainant’s trademark INSTAGRAM together with the term “shoes”, many Internet users would be confused and wrongly assume that the disputed domain name is owned or otherwise endorsed by the Complainant.
The Respondent has also provided inaccurate WhoIs information when registering the disputed domain name.
The Complainant thus concludes that the Respondent has further used the disputed domain name in bad faith by passively holding it without a legitimate purpose.
B. Respondent
The Respondent submitted a short Response which reads as follows: “Hi, my domain name is INSTAGRAMS HOES.com which refers to loose women on social media. I am creating a blog site to talk about these womens [sic] activities on and offline. The word INSTAGRAMS or HOES is not trademarked by anyone. I am in talks with several companies who would like to sponsor my site. The domain name is available to buy from me for the sum of 5 million GBP.”
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; and
(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.
A. Identical or Confusingly Similar
The Complainant has shown that it holds trademark registrations for the word marks INSTAGRAM.
The Panel finds that the disputed domain name is confusingly similar to the Complainant’s trademark because it incorporates in its entirety the distinctive trademark INSTAGRAM.
Internet users would most likely understand the disputed domain name as “Instagram shoes”. The addition of the word “shoes” does not dispel confusing similarity. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, (“WIPO Overview 3.0”), section 1.8.
But even if the disputed domain name were understood as “Instagrams hoes” as contended by the Respondent, the disputed domain name would still incorporate in its entirety the trademark INSTAGRAM and would thus still be confusingly similar to this trademark.
Accordingly, the Panel finds that the Complainant has satisfied the requirement under paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
The Complainant contends, credibly, that it has not authorized the Respondent to register or use the disputed domain name and that there is no relationship whatsoever between the Parties. Further, there is no evidence showing that the Respondent has been commonly known by the disputed domain name.
In the present case, there is no indication of any bona fide offering of goods or services under the disputed domain name nor any legitimate noncommercial or fair use of the disputed domain name. Even if the disputed domain name were understood as “Instagrams hoes” as contended by the Respondent (which in the Panel’s view is not credible), the use of the word “hoes” (meaning “loose women” as the Respondent states) in combination with INSTAGRAM would not constitute a legitimate noncommercial or fair use (see paragraph 4(c)(iii) of the Policy).
Accordingly, the Panel finds that the Respondent does not have rights or legitimate interests in the disputed domain name.
Therefore, the Panel finds that the Complainant has satisfied the requirement under paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
The INSTAGRAM trademark is inherently distinctive and well known throughout the world.
In his response, the Respondent stated that “the domain name is available to buy from me for the sum of 5 million GBP”, thereby indicating that he had registered the disputed domain name primarily for the purpose of selling it for consideration far in excess of the costs directly related to the disputed domain name, which is a circumstance indicating registration in bad faith (paragraph 4(b)(i) of the Policy).
Further, the Respondent provided inaccurate WhoIs information when registering the disputed domain name.
Therefore, irrespective of whether the disputed domain name is understood as “Instagram shoes” or “Instagrams hoes”, the inactive use of this domain name without a legitimate purpose, under the circumstances of this case, does not prevent a finding of bad faith under the doctrine of passive holding. See WIPO Overview 3.0, section 3.3.
Accordingly, the Panel concludes that the disputed domain name has been registered and used in bad faith.
The Panel therefore finds that the Complainant has satisfied the requirement under paragraph 4(a)(iii) 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 name <instagramshoes.com> be transferred to the Complainant.
Andrea Mondini
Sole Panelist
Date: October 15, 2020
