The Complainant is Instagram, LLC of Menlo Park, California, United States of America ("USA"), represented by Hogan Lovells (Paris) LLP, France.
The Respondent is Zhou Murong of Shenzhen, Guangdong, China, represented by Jiawei Wu, China. 2. The Domain Names and Registrars
The disputed domain names , , , , , , , , , , , , , , , , , , , , and ("together the Domain Names") are registered with eName Technology Co., Ltd and 1API GmbH (the "Registrars"). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on September 10, 2014. On September 10, 2014, the Center transmitted by email to the Registrars a request for registrar verification in connection with the Domain Names. On September 11, 2014, both Registrars transmitted by email to the Center their verification responses confirming that the Respondent is listed as the registrant and providing the contact details. On September 23, 2014, the Center transmitted an email to the parties in both Chinese and English regarding the language of the proceeding. On September 23, 2014, the Complainant confirmed its request that English be the language of the proceeding. On September 26, 2014, the Respondent confirmed its request that Chinese be the language of the proceeding.
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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on October 1, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was October 21, 2014. The Response was filed with the Center on October 17, 2014.
The Center appointed Karen Fong as the sole panelist in this matter on October 31, 2014. 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.
On November 3, 2014, the Complainant filed a supplemental filing for the Panel's consideration. On November 10, 2014, the Center notified the parties of Administrative Panel Procedural Order No. 1 which informed the parties that the Panel had accepted the Complainant's supplemental filing and requested the Respondent to provide on or before November 12, 2014, any response to the Complainant's supplemental filing. No response was received from the Respondent. 4. Factual Background
The Complainant is the world's leading photo and video sharing social networking application under the name Instagram. Instagram was launched on October 6, 2010 and by September 2011, it had over 10 million registered users. It was acquired by Facebook in April 2012 for USD 1 billion. The Complainant reached over 100 million monthly active users in September 2012, 150 million active users by September 2013 and 200 million monthly active users now. It has more than 20 billion photos shared and an average of 60 million photos uploaded per day. It is the fastest growing social media in the world, available in 25 languages including Chinese. The Complainant's website at "www.m" is ranked the 15th most visited site in the USA and the 29th most visited website in the world.
The Complainant has also consistently ranked amongst the top apps available for mobile phone devices and has won a number of awards in this regard including "App of the Year" in 2011 from Apple, Inc. The phenomenal growth and popularity within a short space of time made the Complainant the subject of much media coverage from before the date of its launch to the present in mainstream global media outlets like The New York Times, the BBC, The Washington Post, The Guardian, The People's Daily (China), as well as technology publications like Techcrunch.
The Complainant's INSTAGRAM trade mark is registered in many countries around the world including the USA, evidenced e.g., by US trademark registration no. 4146057, which has a filing date of September 19, 2011 and a first use in commerce date of October 6, 2010.
The Complainant's business which is exclusively online relies primarily on the domain names which consist of its trade make INSTAGRAM. The domain names are the main way for its millions of users to use its services. The Complainant's domain name registrations include the following: , , , , , , , , , , , , , , and .
The Complainant also has built up a strong presence online through various social media forums. The following are the URLs at which the pages are available:
/company/instagram
.
The Respondent has registered the 22 Domain Names on the following dates connected to websites (as at date of filing of the Complaint) that are described as follows:
No.
Domain Name
Date of Registration
Website
1
October 13, 2010
Point to parking website with commercial links and hyperlink statement listing it as being for sale and to click to inquire about the domain name.
2
October 20, 2010
Point to parking website with commercial links and hyperlink statement listing it as being for sale and to click to inquire about the domain name.
3
October 20, 2010
Point to parking website with commercial links and hyperlink statement listing it as being for sale and to click to inquire about the domain name.
4
October 20, 2010
Point to parking website with commercial links and hyperlink statement listing it as being for sale and to click to inquire about the domain name.
5
October 23, 2010
Point to parking website with commercial links and hyperlink statement listing it as being for sale and to click to inquire about the domain name.
6
November 5, 2010
Point to parking website with commercial links and hyperlink statement listing it as being for sale and to click to inquire about the domain name.
7
November 6, 2010
Not active but used to point to website displaying commercial links related to photos and mobiles and link inviting users to "inquire about this domain name."
8
November 9, 2010
Point to parking website with commercial links and hyperlink statement listing it as being for sale and to click to inquire about the domain name.
9
November 22, 2010
Point to parking website with commercial links and hyperlink statement listing it as being for sale and to click to inquire about the domain name.
10
December 4, 2010
Redirect users to an advertising page where they are invited to fill out a survey.
11
December 4, 2010
Point to parking website with commercial links and hyperlink statement listing it as being for sale and to click to inquire about the domain name.
12
December 4, 2010
Point to parking website with commercial links and hyperlink statement listing it as being for sale and to click to inquire about the domain name.
13
December 4, 2010
Point to parking website with commercial links and hyperlink statement listing it as being for sale and to click to inquire about the domain name.
14
December 22, 2010
Redirect users to an advertising page where they are invited to fill out a survey.
15
December 22, 2010
Point to parking website with commercial links and hyperlink statement listing it as being for sale and to click to inquire about the domain name.
16
December 22, 2010
Point to parking website with commercial links and hyperlink statement listing it as being for sale and to click to inquire about the domain name.
17
December 22, 2010
Point to parking website with commercial links and hyperlink statement listing it as being for sale and to click to inquire about the domain name.
18
January 14, 2011
Point to parking website with commercial links and hyperlink statement listing it as being for sale and to click to inquire about the domain name.
19
January 14, 2011
Point to parking website with commercial links and hyperlink statement listing it as being for sale and to click to inquire about the domain name.
20
January 14, 2011
Point to parking website with commercial links and hyperlink statement listing it as being for sale and to click to inquire about the domain name.
21
January 14, 2011
Redirect users to another webpage.
22
January 14, 2011
Point to parking website with commercial links and hyperlink statement listing it as being for sale and to click to inquire about the domain name.
The Respondent is also the registrant or closely linked to the following country code Top-Level Domain ("ccTLD") domain names which comprise the Complainant's INSTAGRAM trade mark which are not subject to this Policy:
, , , , , , and .
The Respondent has also registered the following domain names which are identical or misspellings of the Complainant's INSTAGRAM trade mark which it has since allowed to lapse and have been subsequently registered by third parties:
, , , , , ,
, , , , , , , , , , , , , , , , , , and .
The Respondent has also registered a number of domain names that include famous third party brands, including the following:
, , , , , , amongst others.
Further, the Respondent has a number of UDRP decisions against him. These include Inter Ikea Systems B.V. v. zhou murong,WIPO Case No. D2011-1962; Google Inc. v. Zhou Murong, NAF Claim Number: FA1109001403692 and Dr. Leonard's Healthcare Corp. v. Zhoumurong / zhou murong,NAF Claim Number: FA 1211001473823. 5. Parties' Contentions A. Complainant
1. The Complainant contends that the Domain Names are identical or confusingly similar to the INSTAGRAM trade mark, the Respondent has no rights or legitimate interests with respect to the Domain Names, and that the Domain Names were registered and are being used in bad faith. The Complainant requests transfer of the Domain Names.
2. The Complainant filed a Supplemental Statement after receiving the Response. In response to the Respondent's claim that he registered the domain name on June 4, 2004 prior to the Complainant's acquiring rights to the INSTAGRAM trade mark on October 6, 2010, the Complainant contends as follows:
Between March 18, 1999 and March 18, 2004, the registrant of was Millennium Historical Society, Inc. a company based in Florida, USA.
It is likely that between June 4, 2004 and November 4, 2010, Griffin IT Media, Inc. was the registrant of .
On November 5, 2010, was registered to Weiming Zhou using the Respondent's current email address.
On January 20, 2011, the WhoIs records show that the domain name was registered to the Respondent. Screen shots from archive website records show that by January 22, 2011, the website connected to was pointing to a parking page displaying links related to the Complainant's services like photos and iPhone apps.
The Respondent has not provided any evidence of its acquisition of the domain name prior to November 5, 2010 which was a month after the Complainant's launch of Instagram.
The Respondent does not have rights or legitimate interests in this domain name. It was acquired and used in bad faith.
The first Domain Name acquired by the Respondent, , on October 13, 2014 mirrors the domain name under which Instagram was initially launched by the Complainant's predecessor: , seven days after the Complainant's launch.
The domain name was just one of the many domain names acquired by the Respondent between October 13, 2010 and February 6, 2011 following the Complainant's launch of Instagram on October 6, 2010.
The Complainant puts forward the following reasons for not submitting the evidence in the Complaint:
The Complainant's parent company, Facebook Inc. acquired Instagram in 2012. The Complainant and its parent company therefore were not aware that the Complainant's predecessor, Burbn Inc., bought the domain name from the Respondent on January 18, 2011.
It was therefore not anticipated that the Respondent would claim that the prior ownership of the domain name which he sold for a substantial sum would confer upon him a legitimate interest in the Domain Names.
The acquisition of the domain name by the Complainant's predecessor in title is no bar against it succeeding under the Policy and is not evidence that this domain name was acquired in good faith by the Respondent.
The Complai
