Instagram, the leading photo-sharing application owned by Facebook, recently succeeded against a so-called “typo-squatter” in arbitration proceedings concerning the domain name lnstagram.eu.  The decision was the first concerning the .eu top-level domain to be made by an arbitrator appointed by the World Intellectual Property Organisation (WIPO) Arbitration and Mediation Center.

Background

Instagram LLC is the proprietor of a registered European Union Trade Mark (EUTM) for the word INSTAGRAM.  As the arbitrator acknowledged, the INSTAGRAM brand is world-famous and this fame had led to numerous “cybersquatting” or “domain name squatting” cases.  Cybersquatting is where third parties seek to register and use a domain name in bad faith.  Typically, cyber-squatters seek to sell the domain name to the associated brand-owner or seek to exploit the reputation of the brand-owner to attract internet users for commercial gain. 

Success for Instagram

The contested element of the domain name, “lnstagram”, differed from Instagram LLC’s EUTM only in that first letter, “l”, was in fact a lower case “L” (not an “i” as in “instagram”).  The arbitrator found that this deviation did not prevent confusion between the domain name and the EUTM, as the lower case “l” (“L”) in lnstagram.eu was, to the human eye, identical to the upper case “I” (“i”) in INSTAGRAM.  The arbitrator also found that the domain name had been registered in bad faith. 
On 8 September 2017, the WIPO-appointed arbitrator ordered that the respondent’s registration for lnstagram.eu be revoked.

Domain Name Disputes 

The WIPO Arbitration and Mediation Center was appointed as an Alternative Dispute Resolution provider for the .eu top-level domain (TLD), and the Cyrillic script TLD .ею, on 1 June 2017.  All .eu and .ею disputes were previously heard by the Czech Arbitration Court. 

Domain name disputes are generally governed by the same, broad principles but a variety of procedures are used to resolve disputes depending on which TLD is involved.  Unlike other TLDs, the .eu and .ею domains are underpinned by European Union legislation (Regulation No. 733/2002 and Commission Regulation No. 874/2004 (as amended)).  The legislation reflects similar principles to those contained in the Uniform Domain Name Dispute Resolution Policy (UDRP) which applies to the main generic TLDs (.com, .info, .net and .org).  The Uniform Rapid Suspension System (URS) procedure is also available for new generic TLDs (such as .shop, .news and .xyz). Country-code TLDs, meanwhile are determined under a variety of rules, such as the IEDR’s policy for the Irish .ie TLD (see our previous article here).

Contributed by: John Sugrue

Follow us @WIlliamFryLaw