Recent Case Notes & Commentary

INSTAGRAM MAY BE MORE USEFUL THAN YOU THOUGHT : PROVING A LEGITIMATE INTEREST


VROOMRes, LLC v. Carlos Garcia

WIPO Case No. D2020-0963

July 1, 2020


In good news for business owners, it seems that Instagram accounts are even more useful than you may have thought.


Respondents can win a UDRP dispute by demonstrating they have a ‘legitimate interest’ in the domain name (see paragraph 4(a)(ii)). One of the ways to do this is to make use of the name prior to any dispute arising, so long as the use relates to a bona fide offering of goods or service. This is where an Instagram account can be of great help to Respondents.

In VROOMRes, LLC v. Carlos Garcia a US company operating under the trademark BOOKFULL, went after the domain name <bookfully.com>. It was unsuccessful because the Respondent had been using the BOOKFULLY name prior to the Complainant registering its trademark. How did the panel know that? Instagram.

The evidence relating to when the Respondent began using the BOOKFULLY name consisted almost entirely of Instagram posts using the handle “bookfully_”. The posts dated back to 5th May 2018, whereas the Complainant did not file its trademark application until two months later.

The Instagram posts in this case were not themselves an offering of goods or services. They were merely promotional yet still considered to be sufficiently connected to an offering of services (online property rentals). The Panel took the posts to be evidence of a legitimate interest.

The Panel in VROOMRes, LLC v. Carlos Garcia took the number of followers of the Instagram account into consideration to find that the Respondent intended to be known by the BOOKFULLY name. It might be necessary to have followers of your Instagram account in order for your posts to serve as useful evidence. If there aren’t any followers, Panels might decide that the posts are not sufficiently connected to the business. After all, if nobody sees your promotions, are they really promotions? The significance of requiring followers would be that ‘sham’ Instagram accounts won’t cut it for the purposes of evidence.

Aside from the promotional benefits of having an Instagram account with a large following, businesses can now also use them – albeit in a narrow range of cases – to protect their domain name. As is often the advice, register early!

A question arises. Could the same principle apply if the social media use had been via Facebook or Twitter?