Complainant is Instagram, LLC, United States of America (“US”), represented by Hogan Lovells (Paris) LLP, France.
Respondent is Huang Wei (黄伟), China. 2. The Domain Name and Registrar
The disputed domain name The Complaint in English was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 13, 2020. On August 13, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 17, 2020, 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 August 18, 2020 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 August 24, 2020. On August 18, 2020, the Center transmitted an email communication to the Parties in English and Chinese regarding the language of the proceeding. On August 18, 2020, Complainant confirmed its request that English be the language of the proceeding. On August 19, 2020, Respondent submitted a brief email requesting that Chinese be 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 August 25, 2020. In accordance with the Rules, paragraph 5, the due date for Response was September 14, 2020. The Center received communications from Respondent by email on August 25, 2020, on August 27, 2020, on September 3, 2020 and on September 9, 2020. Respondent did not submit any formal response. Accordingly, on September 15, 2020, the Center informed the Parties that it would proceed to appoint a panel. The Center appointed Yijun Tian as the sole panelist in this matter on October 5, 2020. 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 US. It is one of the world leading company providing online photo and video sharing social networking application. Launched in 2010, Instagram 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. Currently available in over 31 languages, the Instagram app is the 5th most downloaded application in the world as per App Annie Top App rankings in 2020. Complainant has exclusive rights in INSTAGRAM, and INSTAGRAM related marks (hereinafter “INSTAGRAM marks”). Complainant is the exclusive owner of numerous INSTAGRAM marks worldwide, including a Chinese trademark registration for INSTAGRAM registered on June 14, 2013 (Chinese trademark registration number 10614690); a US trademark registration for INSTAGRAM registered on May 22, 2012 (US trademark registration number 4146057); and an international trademark registration for INSTAGRAM registered on March 15, 2012 (international trademark registration number 1129314). Complainant also owns and operates numerous domain names which contain the INSTAGRAM mark in entirety, such as Respondent is Huang Wei (黄伟), China. The disputed domain name Complainant contends that the disputed domain name Complainant contends that Respondent does not have any rights or legitimate interests in the disputed domain name. Complainant contends that Respondent has registered and used the disputed domain name in bad faith. Complainant requests that the disputed domain name be transferred to Complainant. B. Respondent Respondent’s submissions in this case are limited to its request that Chinese be the language of the proceeding, submitted on August 19, 2020. Respondent’s other communications are inquiries regarding the Center’s Written Notice of the Commencement of Administrative Proceedings sent to Respondent by fax. Respondent did not reply on the merits of this case. 6. Discussion and Findings 6.1. Language of the Proceeding The language of the Registration Agreement for the disputed domain name (a) The disputed domain name consists of Latin characters, such as the English term “threads”, rather than Chinese characters; (b) The disputed domain name previously redirected to a webpage in English at “dan.com” offering it for sale (Annex 10 to the Compliant), which strongly suggests that Respondent understands the English language; (c) It would be disproportionate to require Complainant, an international business which operates primarily in English, to translate and submit the present Complaint in Chinese as this would result in additional expenses and unnecessary delay for Complainant. Respondent has requested Chinese be the language of the proceeding, but he/she did not submit any arguments on the merits. Paragraph 11(a) of the Rules 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). The Panel has taken into consideration the facts that Complainant is a company from the US, and Complainant will be spared the burden of working in Chinese as the language of the proceeding. The Panel has also taken into consideration the fact that the disputed domain name On the record, Respondent appears to be a Chinese resident and is thus presumably not a native English speaker. However, considering the following, the Panel has decided that English should be the language of the proceeding: (a) the disputed domain name includes Latin characters (“instagram”) and English word “threads”, rather than Chinese script; (b) the gTLD of the disputed domain name is “.com”, so the disputed domain name seems to be prepared for users worldwide, particularly English speaking countries; (c) the website previously resolved by the disputed domain name was an website in English, and contained English contents, such as “The domain name instagramthreads.com is for sale!” (Annex 10 to the Compliant); (d) the Center has notified Respondent of the proceeding in both Chinese and English; and (e) the Center informed the Parties, in English and Chinese, that it would accept a Response in either English or Chinese. The Panel would have accepted a response in Chinese but none was filed (See also Bollore SE v. 赵竹飞 (Zhao Zhu Fei),WIPO Case No. D2020-0691). The Panel notes that the Respondent submitted several emails in Chinese but he did not submit any arguments for Chinese to be the language of the proceeding. Accordingly, 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 registered by Respondent 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. 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). Further, in relation to the gTLD suffix, WIPO Overview 3.0 further states: “The 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 1.11.1.) 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 panel 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). The INSTAGRAM marks have been registered in the US since 2012, and registered as a Chinese trademark since 2013, which precede Respondent’s registration of the disputed domain name (in 2019). According to the Complaint, Complainant is one of the world leading company providing online photo and video sharing social networking application. Instagram 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. Although it is currently inaccessible in mainland China, Instagram is 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 and the blogs and forums that diffuse information on how to access Instagram from China (Annex 5 to the Compliant). 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 his/her business operation. 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 2019, long after the INSTAGRAM marks became internationally known. The disputed domain name is confusingly similar to the 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 disputed domain name used to resolve to a website offering the sale of the disputed domain name (Annex 10 to the Complaint), and the website is currently inactive. The Panel notes that Respondent has not produced any evidence to establish his rights or legitimate interests in the disputed domain name. Accordingly, Complainant has established that Respondent has no 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 the 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 disputed 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 is using the disputed domain name in bad faith. (a) Registration in Bad Faith The Panel finds that the INSTAGRAM marks have widespread reputation as one of the world’s leading company providing online photo and video sharing social networking application. As mentioned above, INSTAGRAM marks are registered internationally, including in the US (since 2012) and in China (since 2013). As introduced above, Instagram is far from an unknown name to the Chinese public, and has been reported in numerous Chinese press articles, including China’s state media People’s Daily. It is not conceivable that Respondent would not have had actual notice of the INSTAGRAM marks at the time of the registration of the disputed domain name (in 2019). 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 UDRP 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) Use 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 website to a website previously offering the sale of the disputed domain name for USD 9,000. Such conduct falls within the language of paragraph 4(b)(i) and (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, which is confusingly similar to the INSTAGRAM marks, intended to ride on the goodwill of this 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 Yijun Tian
Sole Panelist
Dated: October 23, 2020
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