WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Instagram, LLC v. shao ning liu, liu shao ning

Case No. D2019-1264

1. The Parties

Complainant is Instagram, LLC, United States of America (“United States” or “US”), represented by Hogan Lovells (Paris) LLP, France.

Respondent is shao ning liu, liu shao ning, China.

2. The Domain Name and Registrar

The disputed domain name <instagramhile.org> is registered with Alibaba Cloud Computing (Beijing) Co., Ltd. (the “Registrar”).

3. Procedural History

The Complaint in English was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 3, 2019. On June 3, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 4, 2019, the Registrar 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 and contact information in the Complaint. The Center sent an email communication to Complainant on June 4, 2019 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint in English on June 5, 2019.

On June 4, 2019, the Center transmitted an email in English and Chinese to the Parties regarding the language of the proceeding. Complainant confirmed its request that English be the language of the proceeding on the same day. Respondent did not comment on the language of the proceeding.

The Center verified that the Complaint together with the amended 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 Respondent in English and Chinese of the Complaint, and the proceedings commenced on June 17, 2019. In accordance with the Rules, paragraph 5, the due date for Response was July 7, 2019. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on July 8, 2019.

The Center appointed Yijun Tian as the sole panelist in this matter on July 15, 2019. 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

A. Complainant

Complainant, Instagram, LLC, is a company incorporated in the United States. It is an online photo and video sharing social networking application, which was launched in October 2010. It was acquired by Facebook in April 2012. Complainant currently has over 1 billion monthly active users, and 500 million daily active users, with more than 95 million photos and videos shared per day.

Complainant has exclusive rights in the INSTAGRAM and INSTAGRAM related marks. Complainant is the exclusive owner of numerous INSTAGRAM trademarks worldwide, including the Chinese trademark registered on June 14, 2013 (the Chinese trademark registration number 10614690), the European Union (“EU”) trademark registered on December 24, 2015 (the EU trademark registration number 014493886), the US trademark registered on May 22, 2012 (the US trademark registration number 4146057), and International trademark registered on March 15, 2012 (the International trademark registration number 1129314) (Annex 12 to the Complaint). Complainant also registered numerous domain names which contain the INSTAGRAM trademark, including <instagram.com>, <instagram.cn> and <instagram.org.cn> (China), <instagram.co.at> (Austria), <instagram.com.br> and <instagram.net.br> (Brazil), and many others (Annex 6 to the Complaint). As one of the fastest growing social media in the world, Complainant’s website at “www.instagram.com” is ranked the 15th most visited website in the world according to web information company Alexa, and Complainant has consistently ranked amongst the top apps available for mobile devices (Annexes 4 and 5 to the Complaint).

B. Respondent

Respondent is shao ning liu, liu shao ning, China. The disputed domain name <instagramhile.org> was registered by Respondent on December 7, 2018. According to the Complaint and relevant evidence provided by Complainant, the disputed domain name currently resolves to an English website of a Chinese company, Shandong Xinhai Mining Technology & Equipment Inc., which provides mineral processing services (Annex 9 to the Complaint).

5. Parties’ Contentions

A. Complainant

Complainant contends that the disputed domain name <instagramhile.org> is confusingly similar to Complainant’s INSTAGRAM trademarks. The disputed domain name reproduces the INSTAGRAM mark in its entirety. The addition of generic terms, such as “hile” (“trick” in Turkish), are not sufficient to eliminate the confusing similarity. The generic Top-Level Domain (“gTLD”) “.org” is irrelevant when assessing whether a domain name is identical or confusingly similar to a trademark.

Complainant contends that Respondent has no rights or legitimate interests in respect of the disputed domain name.

Complainant contends that the disputed domain name was registered and is being used in bad faith.

Complainant requests that the disputed domain name be transferred to it.

B. Respondent

Respondent did not reply to Complainant’s contentions.

6. Discussion and Findings

6.1. Language of the Proceeding

The language of the Registration Agreement for the disputed domain name <instagramhile.org> is Chinese. Pursuant to the Rules, paragraph 11, in the absence of an agreement between the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement. From the evidence presented on the record, no agreement appears to have been entered into between Complainant and Respondent to the effect that the language of the proceeding should be English. Complainant filed initially its Complaint in English, and has requested that English be the language of the proceeding for the following reasons:

(a) The disputed domain name is currently pointing to a website in English, which strongly suggests that Respondent has a good understanding of the English language (see Annex 9 to the Complaint);

(b) It would be disproportionate to require Complainant to translate and submit the present Complaint in Chinese as this would result in additional expenses and unnecessary delay for Complainant.

Respondent did not make any submissions with respect to the language of the proceeding and did not object to the use of English as the language of the proceeding.

Paragraph 11(a) allows the panel to determine the language of the proceeding having regard to all the circumstances. In particular, it is established practice to take paragraphs 10(b) and (c) of the Rules into consideration for the purpose of determining the language of the proceeding. In other words, it is important to ensure fairness to the parties and the maintenance of an inexpensive and expeditious avenue for resolving domain name disputes (Whirlpool Corporation, Whirlpool Properties, Inc. v. Hui’erpu (HK) electrical appliance co. ltd., WIPO Case No. D2008-0293; Solvay S.A. v. Hyun-Jun Shin, WIPO Case No. D2006-0593). The language finally decided by the panel for the proceeding should not be prejudicial to either one of the parties in its abilities to articulate the arguments for the case (Groupe Auchan v. xmxzl, WIPO Case No. DCC2006-0004). WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) further states:

“Noting the aim of conducting the proceedings with due expedition, paragraph 10 of the UDRP Rules vests a panel with authority to conduct the proceedings in a manner it considers appropriate while also ensuring both that the parties are treated with equality, and that each party is given a fair opportunity to present its case.

Against this background, panels have found that certain scenarios may warrant proceeding in a language other than that of the registration agreement. Such scenarios include (i) evidence showing that the respondent can understand the language of the complaint, (ii) the language/script of the domain name particularly where the same as that of the complainant’s mark, (iii) any content on the webpage under the disputed domain name, (iv) prior cases involving the respondent in a particular language, (v) prior correspondence between the parties, (vi) potential unfairness or unwarranted delay in ordering the complainant to translate the complaint, (vii) evidence of other respondent-controlled domain names registered, used, or corresponding to a particular language, (viii) in cases involving multiple domain names, the use of a particular language agreement for some (but not all) of the disputed domain names, (ix) currencies accepted on the webpage under the disputed domain name, or (x) other indicia tending to show that it would not be unfair to proceed in a language other than that of the registration agreement.” (WIPO Overview 3.0, section 4.5.1; see also L’Oreal S.A. v. MUNHYUNJA, WIPO Case No. D2003-0585).

On the record, Respondent appears to be a Chinese resident and is thus presumably not a native English speaker, but the Panel finds persuasive evidence in the present proceeding to suggest that Respondent may have sufficient knowledge of English. In particular, the Panel notes that (a) the disputed domain name includes Latin characters (“instagram”) and Turkish word “hile”, rather than Chinese script, and is registered in the gTLD space comprising of the Latin characters “.org”, which is the abbreviation of the English word “organization”; (b) the disputed domain name <instagramhile.org> resolves to an English website, and the website contents are in English, rather than in Chinese. Further, the Panel notes that the Center has notified Respondent of the proceeding in both Chinese and English, and the Center informed Respondent that it would accept a Response in either English or Chinese. The Panel has also taken into consideration the facts that Complainant is a company from the United States, and Complainant will be spared the burden of working in Chinese as the language of the proceeding.

Considering these circumstances, the Panel finds the choice of English as the language of the present proceeding is fair to both Parties and is not prejudicial to either one of the Parties in its ability to articulate the arguments for this case. Having considered all the matters above, the Panel determines under paragraph 11(a) of the Rules that English shall be the language of the proceeding, and the decision will be rendered in English.

6.2. Substantial Issues

Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that the disputed domain name should be cancelled or transferred:

(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

(ii) 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.

On the basis of the evidence introduced by Complainant and in particular with regard to the content of the relevant provisions of the Policy (paragraphs 4(a)-(c)), the Panel concludes as follows:

A. Identical or Confusingly Similar

The Panel finds that Complainant has rights in the INSTAGRAM marks acquired through registration. The INSTAGRAM marks have been registered in China since 2013, in the United States since 2012 and has been registered as an international trademark since 2012. The disputed domain name <instagramhile.org> comprises the INSTAGRAM mark in its entirety. The disputed domain name only differs from Complainant’s trademarks by the term “hile” (“trick” in Turkish), and the gTLD suffix “.org”. This does not eliminate the confusing similarity between Complainant’s registered trademarks and the disputed domain name.

Previous UDRP panels have consistently held that a domain name is identical or confusingly similar to a trademark for purposes of the Policy “when the domain name includes the trademark, or a confusingly similar approximation, regardless of the other terms in the domain name” (Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a For Sale, WIPO Case No. D2000-0662).

Generally a respondent “may not avoid likely confusion by appropriating another’s entire mark and adding descriptive or non-distinctive matter to it”. (The Argento Wine Company Limited v. Argento Beijing Trading Company, WIPO Case No. D2009-0610 citing General Electric Company v. CPIC NET and Hussain Syed, WIPO Case No. D2001-0087).

Further, in relation to the gTLD suffix, WIPO Overview 3.0 further states: “[t]he applicable Top Level Domain (‘TLD’) in a domain name (e.g., ‘.com’, ‘.club’, ‘.nyc’) is viewed as a standard registration requirement and as such is disregarded under the first element confusing similarity test.” (WIPO Overview 3.0, section 1.11)

Thus, the Panel finds that disregarding the term “hile”, as well as the gTLD suffix “.org”, the disputed domain name is otherwise identical to the INSTAGRAM marks.

The Panel therefore holds that the Complaint fulfils the first condition of paragraph 4(a) of the Policy.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy provides a list of circumstances any of which is sufficient to demonstrate that Respondent has rights or legitimate interests in the disputed domain name:

(i) before any notice to Respondent of the dispute, the use by Respondent of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; or

(ii) Respondent has been commonly known by the disputed domain name, even if Respondent has acquired no trademark or service mark rights; or

(iii) Respondent is making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish Complainant’s trademarks.

The overall burden of proof on this element rests with Complainant. However, it is well established by previous UDRP decisions that once a complainant establishes a prima facie case that a respondent lacks rights or legitimate interests in a domain name, the burden of production shifts to respondent to rebut complainant’s contentions. If respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy. (Danzas Holding AG, DHL Operations B.V. v. Ma Shikai, WIPO Case No. D2008-0441; WIPO Overview 3.0, section 2.1 and cases cited therein).

Complainant has rights in the INSTAGRAM marks in the United States since 2012, in China since 2013, and internationally since 2012, which precede Respondent’s registration of the disputed domain name (2018). According to the Complaint, Complainant is an online photo and video sharing social networking application, which was launched in October 2010. It was acquired by Facebook in April 2012. Complainant currently has over 1 billion monthly active users, and 500 million daily active users, with more than 95 million photos and videos shared per day.

Moreover, Respondent is not an authorized dealer of INSTAGRAM branded products or services. Complainant has therefore established a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name and thereby shifted the burden to Respondent to produce evidence to rebut this presumption (The Argento Wine Company Limited v. Argento Beijing Trading Company, WIPO Case No. D2009-0610; Do The Hustle, LLC v. Tropic Web, WIPO Case No. D2000-0624; Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455).

Based on the following reasons the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name:

(a) There has been no evidence adduced to show that Respondent is using the disputed domain name in connection with a bona fide offering of goods or services. Respondent has not provided evidence of a legitimate use of the disputed domain name or reasons to justify the choice of the term “instagram” in the disputed domain name and in its business operation. Rather, Respondent appears to attempt to take advantage of the goodwill associated with Complainant’s INSTAGRAM marks to attract Internet users to the company website of Shandong Xinhai Mining Technology & Equipment Inc., which provides mineral processing services, presumably for commercial gain. There has been no evidence to show that Complainant has licensed or otherwise permitted Respondent to use the INSTAGRAM marks or to apply for or use any domain name incorporating the INSTAGRAM marks.

(b) There has been no evidence adduced to show that Respondent has been commonly known by the disputed domain name. There has been no evidence adduced to show that Respondent has any registered trademark rights with respect to the disputed domain name. Respondent registered the disputed domain name in 2018, after the INSTAGRAM marks became internationally known. The disputed domain name is confusingly similar to Complainant’s INSTAGRAM marks.

(c) There has been no evidence adduced to show that Respondent is making a legitimate noncommercial or fair use of the disputed domain name. By contrast, the Panel finds that the disputed domain name resolved to a company’s English website displaying content related to mineral processing services.

The Panel finds that Respondent has failed to produce any evidence to establish rights or legitimate interests in the disputed domain name. The Panel therefore holds that the Complaint fulfils the second condition of paragraph 4(a) of the Policy.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy sets out four circumstances which, without limitation, shall be evidence of registration and use of the disputed domain name in bad faith, namely:

(i) circumstances indicating that Respondent has registered or acquired the disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to Complainant who is the owner of the trademark or service mark or to a competitor of Complainant, for valuable consideration in excess of Respondent’s documented out-of-pocket costs directly related to the disputed domain name; or

(ii) Respondent has registered the disputed domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that Respondent has engaged in a pattern of such conduct; or

(iii) Respondent has registered the disputed domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the disputed domain name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website or other online location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product or service on the website or location.

The Panel concludes that the circumstances referred to in paragraph 4(b)(iv) of the Policy are applicable to the present case and upon the evidence of these circumstances and other relevant circumstances, it is adequate to conclude that Respondent has registered and used the disputed domain name in bad faith.

(a) Registered in Bad Faith

The Panel finds that Complainant has a widespread reputation in the INSTAGRAM marks with regard to its products or services. Complainant has registered its INSTAGRAM marks internationally since 2012, and registered in China since 2013. It is not conceivable that Respondent would not have had actual knowledge of Complainant’s trademark right at the time of registration of the disputed domain name. Complainant currently has over 1 billion monthly active users, and 500 million daily active users worldwide. Currently inaccessible in mainland China, Instagram is however far from an unknown name to the Chinese public, particularly taking into account numerous Chinese press articles, including China’s state media People’s Daily, on its success and popularity worldwide (Annex 5 to the Complaint).

The Panel therefore finds that the INSTAGRAM mark is not one that a trader could legitimately adopt other than for the purpose of creating an impression of an association with Complainant (The Argento Wine Company Limited v. Argento Beijing Trading Company, supra).

Moreover, Respondent has chosen not to respond to Complainant’s allegations. According to the panel’s decision in The Argento Wine Company Limited v. Argento Beijing Trading Company, supra, “the failure of the Respondent to respond to the Complaint further supports an inference of bad faith”. See also Bayerische Motoren Werke AG v. (This Domain is For Sale) Joshuathan Investments, Inc., WIPO Case No. D2002-0787.

Thus, the Panel concludes that the disputed domain name was registered in bad faith.

(b) Used in Bad Faith

Complainant also has adduced evidence to show that by using the confusingly similar disputed domain name, Respondent has “intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website or other online location”. To establish an intention for commercial gain for the purpose of this Policy, evidence is required to indicate that it is more likely than not that such intention existed (The Argento Wine Company Limited v. Argento Beijing Trading Company, supra).

As noted above, the disputed domain name has been used to attract Internet users seeking Complainant’s websites to an English website displaying contents of a Chinese company, which provides mineral processing services, presumably for commercial gain. Such conduct falls squarely within the language of paragraph 4(b)(iv) of the Policy.

Further, given the lack of response, the Panel cannot envision any other plausible use of the disputed domain name that would not be in bad faith under the present circumstances. Taking into account all the circumstances of this case, the Panel concludes that current use of the disputed domain name by Respondent is in bad faith also.

In summary, Respondent, by choosing to register and use the disputed domain name, intended to ride on the goodwill of Complainant’s trademark in an attempt to exploit, for commercial gain, Internet users destined for Complainant. In the absence of evidence to the contrary and rebuttal from Respondent, the choice of the disputed domain name and the conduct of Respondent as far as the website to which the disputed domain name resolves is indicative of registration and use of the disputed domain name in bad faith.

The Panel therefore holds that the Complaint fulfils the third condition of paragraph 4(a) of the Policy.

7. Decision

For all 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 <instagramhile.org> be transferred to Complainant.

Yijun Tian
Sole Panelist
Dated: August 1, 2019