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 Complainant's predecessor in title would have succeeded if it had filed a complaint under the Policy.
The reasons for the purchase by the Complainant's predecessor in title of the domain name from the Respondent are irrelevant in this case.
The Respondent continued to register the Domain Names during the sale negotiation and even after the sale of to the Complainant's predecessor in title. This demonstrates bad faith and an intention by the Respondent to profit from these registrations.
3. In response to the Respondent's request for a declaratory judgment for non-infringement of Instagram's rights in the Courts in China and contention that Internet users in China do not know Instagram, the Complainant submits as follows:
The Complainant does not need to demonstrate prior rights in China to succeed in these proceedings under the terms of the Policy.
What the Complainant needs to demonstrate is the Respondent's prior knowledge of the Complainant when he registered the Domain Names.
The Respondent's filing of a declaratory judgment for non-infringement in China is an attempt to unduly delay the present proceedings, impose on the Complainant additional expense and to frustrate the Complainant's attempt to seek relief and recover the Domain Names. It is another indication of the Respondent's bad faith.
Instagram was blocked in China only on September 28, 2014 following the recent protests in Hong Kong.
Prior to that time, Instagram operated freely in China and enjoyed considerable renown and popularity amongst Chinese Internet users.
Instagram was known in China at the time that the Respondent began registering the Domain Names. Articles from the Chinese press show that by October 13, 2010, Instagram had reached 100,000 users.
The Complainant could not have addressed the issue in relation to the declaratory judgment in the Complaint as it was apparently filed on October 8, 2014 after the filing of the Complaint on September 10, 2014. Further the blocking of Instagram in China took place after the filing of the Complaint so the Complainant could not have addressed this in the Complaint. B. Respondent
The Respondent contends as follows:
1. The Respondent claims that he has filed legal proceedings in the People's Court of Futian District, Shenzhen, Guangdong Province, China to request the Court to confirm that he is the rightful owner of the Domain Names on October 8, 2014.
2. The Respondent claims that he has rights to the domain name and the Domain Names that pre-date the Complainant's rights to INSTAGRAM. was first registered on June 4, 2004 in order for the Respondent to start his own company. From October 6, 2010, he registered the 22 Domain Names in order to protect his domain name .
3. The Respondent was induced by the Complainant's intermediary to sell the domain name for an unreasonably low price on January 18, 2011. This sale was invalid as it was done through an intermediary and the purchaser Burbn, Inc. does not exist.
4. The Complainant does not have rights to the name "Instagram" in China. Most people in China have not heard of the Complainant. Further the Complainant's websites cannot be accessed through the Internet in China.
5. The Complainant did not own any trade mark registrations in China prior to the registration of the Domain Names and therefore has no basis to file this Complaint. Further, the INSTAGRAM mark is also not a well-known trade mark in China.
6. The Respondent has rights and legitimate interests in the Domain Names and his use is not in bad faith. All 22 Domain Names were registered in accordance with Chinese law and these are rights accorded to the Respondent. The Complainant's website is an illegal website in China.
7. The Complainant has failed to provide any evidence that the Respondent registered the Domain Names in bad faith. 6. Discussion and Findings A. Effect of Court Proceedings
Paragraph 18(a) of the Rules provide that, "In the event that any legal proceedings are initiated prior to or during an administrative proceeding in respect of a domain-name dispute that is the subject of the complaint, the Panel shall have the discretion to decide whether to suspend or terminate the administrative proceeding, or to proceed to a decision."
The Respondent contends in the Response that he has filed proceedings in the People's Court of Futian District, Shenzhen, Guangdong Province, China on October 8, 2014 for a declaratory judgment that the Domain Names do not infringe the Complainant's trade mark rights. The Panel rules to proceed to a decision since the facts of the case are clear and there is no reason why this matter cannot be decided now. Further, the Respondent has not provided the Panel with any evidence of the Court filing. B. Supplementary Filings
Paragraph 12 of the Rules allows a panel in its discretion to request supplemental filings from either party, and although the Rules do not provide expressly for unsolicited submissions, under paragraph 10(a) the Panel enjoys a broad power to conduct the administrative proceeding in the manner it considers appropriate under the Policy and Rules, provided the parties are treated fairly and the proceeding is conducted expeditiously.
The consensus view on this issue as set out in paragraph 4.2 in the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview") states as follows:
"Panels have discretion whether to accept an unsolicited supplemental filing from either party, bearing in mind the need for procedural efficiency, and the obligation to treat each party with equality and ensure that each party has a fair opportunity to present its case. The party submitting its filing would normally need to show its relevance to the case and why it was unable to provide that information in the complaint or response. Most panels that have allowed unsolicited filings have also tended to require some showing of "exceptional" circumstances. Panels which accept supplemental filing from one side typically allow the other party the opportunity to file a reply to such supplemental filing."
A supplemental filing has the potential to delay and complicate proceedings. Consequently, whether it is appropriate to admit an unsolicited supplemental filing will depend inter alia on its relevance to the issues in the case, whether the Panel considers the content of the submission essential to reaching a fair decision on the facts, and whether the submission could have been made earlier and, if so, why it was not.
In this case, the Panel has accepted the Complainant's supplementary filing as the issues raised by the Respondent could not have been reasonably anticipated by the Complainant. The Respondent was given an opportunity to respond but chose not to do so. Neither will suffer any prejudice and procedural efficiency will be better served, by the Panel proceeding to a decision based on the materials now before it. C. Preliminary Procedural Issue – Language of the Proceeding
The Rules, paragraph 11, provides that unless otherwise agreed by the parties or specified otherwise in the registration agreement between the respondent and the registrar in relation to the disputed domain name, the language of the proceeding shall be the language of the registration agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceedings. According to the information received from the Registrars, the language of the registration agreements for one of the Domain Names is English and for the rest of the 21 Domain Names is Chinese.
The Complainant submits in paragraph 12 of the Complaint that the language of the proceeding should be English for the following reasons:
(1) The majority of the Domain Names are registered under generic extensions such as ".net" or ".com".
(2) The Domain Names either identically reproduce or consist of an obvious misspelling of the term "Instagram", which is a highly distinctive term in English.
(3) The content of the websites to which the Domain Names are pointing, including the commercial links and offer to sell the corresponding Domain Names is in English and therefore the Respondent is targeting English speakers which indicates that the Respondent is likely to have a good understanding of the English language.
(4) The registration agreement for one of the Domain Names, is English.
(5) The activities carried out via the Domain Names are blatantly illegitimate and detrimental to the Complainant and it would be disproportionate to require the Complainant to submit the Complaint in Chinese as it would result in unnecessary delay and additional expense for the Complainant.
The Respondent in an email on September 26, 2014 submits that the language of the proceeding be Chinese for the following reasons:
(1) The registration agreements for almost all the Domain Names are in Chinese and under the Rules, the language of the proceeding should be Chinese.
(2) The use of Chinese would also balance the unequal status between the two parties.
(3) As a Chinese national, the Respondent's command of the English language would not be on par with a US company which would contribute to the inequality of the parties' respective positions.
(4) The Respondent cannot pay the high cost of translation whilst the Complainant being a powerful company will be able to do that without it being an excessive burden.
Having considered the submissions of both parties, the Panel accepts the Complainant's submissions regarding the language of the proceeding and is satisfied that the Respondent will not be disadvantaged from the proceeding being in English. The Respondent has had a number of UDRP decisions against him, and the ones that have been submitted in evidence have been in English as the registration agreements were in English. The registration agreement of one of the Domain Names is in English. The Respondent clearly has much experience in dealing with domain name disputes under the Policy and would not select a registrar which conducts its business in English if he is not well versed in the language himself. The Panel is satisfied that the Respondent is familiar with the English language and will not be in any way disadvantaged by English being the language of the proceeding. Furthermore, the Panel notes that all of the communications from the Center to the parties were transmitted in both Chinese and English and the Respondent's Response in Chinese has been given due consideration by the Panel. Having considered all the circumstances of this case, the Panel determines that English is the language of the proceeding. D. General
According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the Domain Names, the Complainant must prove each of the following, namely that:
(i) The Domain Names are identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
(ii) The Respondent has no rights or legitimate interests in respect of the Domain Names; and
(iii) The Domain Names were registered and are being used in bad faith. E. Identical or Confusingly Similar
The Panel is satisfied that the Complainant has established that it has rights to the trade mark INSTAGRAM as of the launch of Instagram on October 6, 2010 or shortly thereafter. There is no requirement under the Policy that for the Complainant to satisfy this first UDRP element that the Complainant has to have enforceable registered or unregistered trade mark rights in the jurisdiction where a respondent is based prior to the registration of the Domain Names as the Respondent appears to be alleging. The UDRP makes no specific reference to the date of which the owner of the trade mark or service mark acquired rights. Further the trade mark rights registered or unregistered can be in any jurisdiction. In this case, the Complainant is able to rely on both registered rights as well as unregistered rights. Generally, for a mark to acquire secondary meaning i.e., that the name has become a unique identifier associated with the complainant or its goods and services, will take some time. But the Complainant's product is unique in its phenomenal growth within a very short period of time which is strongly evidenced by the Complainant's evidence of the company's weekly growth from the date of launch to it being able to obtain a sale price of a billion dollars within two years of launch.
The threshold test for confusingly similarity involves the comparison between the trade mark and the domain name itself to determine likelihood of Internet user confusion. The Panel finds that the Domain Names 7 and 17 are identical with and the Domain Names 1-6, 8-16, 18-22 are confusingly similar to the INSTAGRAM trade mark for the purposes of the first requirement of paragraph 4(a) of the Policy. The Domain Names 1-6, 8-16, 18-22 consist of typographical misspellings of the INSTAGRAM trade mark by the addition of one letter (e.g., ; the substitution of one letter (e.g., ) or the re-arranging or addition of several letters (e.g., ). The Respondent is thus clearly engaging in "typosquatting", a practice that has been condemned and been found to be confusingly similar to the marks which they mimic (See, e.g., Yahoo! Inc. and GeoCities v. Data Art Corp., DataArt Enterprises, Inc., Stonybrook Investments, Global Net 2000, Inc., Powerclick, Inc., and Yahoo Search, Inc.,WIPO Case No. D2000-0587).
For the purposes of assessing identity and confusing similarity under paragraph 4(a)(i) of the Policy, it is typically permissible for the Panel to ignore the domain suffix ".com", "net" and ".co".
For the reasons above, the Panel finds that the Domain Names are identical or confusingly similar to a trade mark in which the Complainant has rights. F. Rights or Legitimate Interests
The Complainant's case is that the Respondent has no rights or legitimate interests in the Domain Names as:
He is not authorized by the Complainant to use the INSTAGRAM trade mark as a domain name or in any other way;
He is not commonly known by the name "Instagram";
He does not own any trade marks for "Instagram";
Domain Names are either pointing to parking pages containing commercial links directly related to the Complainant's goods and services (photos and mobile devices), offering for sale the Domain Names or redirecting Internet users to an advertising page;
He is not making a legitimate noncommercial or fair use of the Domain Names.
The Respondent's case is that he has rights or legitimate interests in the Domain Names because he acquired the domain name in 2004, a long time before the Complainant came into existence and commenced using the INSTAGRAM mark. The Domain Names registered from October 2010 were done in order to secure the rights he had in . The Respondent has not produced any evidence that he owned any such mark as of 2004. The Complainant has in fact disproved the Respondent's ownership of from at least between 2004 and November 4, 2010. The domain name was owned by Griffin IT Media, Inc. during that period. It would appear that the Respondent or his representative acquired the domain name on November 5, 2010. Prior to this acquisition, the Respondent had already acquired some of the Domain Names. If the acquisition of , , , , and were in bad faith under the UDRP than the acquisition of too would also have been in bad faith.
By the time the Respondent acquired in November 2010, the Complainant's app had already taken off. The Respondent has not provided a credible explanation as to why a Chinese national who claims not to be conversant in English would have registered the domain name. There is also no explanation as to why he registered on October 13, 2014, some seven days after the launch of Instagram which at the time of launch operated under the domain name , nor why he then followed it up with a host of misspellings of "Instagram" when he is not known by the name nor has any trade mark rights in the name. Even if the Respondent had acquired rights and legitimate interests in (which he did not), he would have lost these rights when he sold the domain name to the Complainant's predecessor in title on January 18, 2011.
Further, the Respondent's activities and use of the Domain Names are not bona fide and therefore do not create any rights or legitimate interests.
In the circumstances, the Panel finds that the Respondents have no rights or legitimate interests in respect of the Domain Names. G. Registered and Used in Bad Faith
To succeed under the Policy, the Complainant must show that the Domain Names have been both registered and used in bad faith.
The Panel is satisfied that the Respondent must have been aware of the Complainant's INSTAGRAM trade marks when he registered the Domain Names as well as the domain name . The trajectory of the launch of the Complainant's app and its exponential growth from the day it launched globally is well documented. The Respondent is a known cybersquatter with a prior history of bad faith registration of domain names incorporating third party trade marks. He would presumably be on the lookout of new trade marks which he could profit from. Until the launch of the Complainant's product, the word "Instagram" was not a term used in normal parlance. The Respondent has not provided any credible explanation as to how he happened upon a name which is confusingly similar to the "Instagram" name. The Respondent's contention that the Complainant's trade mark and product are not known in China because the Complainant's website is blocked in China is misleading. It is clear that the blocking of Instagram happened only recently. There would not have been any need for it to be blocked if it was not a site that would otherwise be widely used in China. The Domain Names were registered in bad faith clearly with INSTAGRAM specifically in mind and to intentionally attempt to attract, for commercial gain, Internet users to his websites connected to the Domain Names by creating a likelihood of confusion with the INSTAGRAM trade mark as to source, sponsorship, affiliation or endorsement.
The Respondent's bad faith is indicated by the prior history of bad faith registration of domain names incorporating third party trade marks. The Respondent is a known cybersquatter and typosquatter. As the UDRP panel said in National Association of Professional Baseball Leagues, Inc., d/b/a Minor League Baseball v. John Zuccarini,WIPO Case No. D2002-1011, "Typosquatting is inherently parasitic and of itself evidence of bad faith". The Respondent is clearly also trying sell the Domain Names as evidenced from the websites connected to some of the Domain Names.
The above is clearly bad faith under paragraph 4(b) of the Policy and the Panel concludes that the Respondent's registration and use of the Domain Names are in bad faith. 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 Domain Names , , , , , , , , , , , , , , , , , , , , and be transferred to the Complainant.
Karen Fong
Sole Panelist
Date: November 20, 2014
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