The Complainant is Instagram, LLC, United States of America, represented by Hogan Lovells (Paris) LLP, France.
The Respondent is Yi Mo Nian Ai Ni, China. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 6, 2020. On November 6, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 6, 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 the Complainant on November 9, 2020 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on November 9, 2020. 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 the Respondent of the Complaint, and the proceedings commenced on November 10, 2020. In accordance with the Rules, paragraph 5, the due date for Response was November 30, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 1, 2020. The Center appointed Francine Tan as the sole panelist in this matter on December 8, 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 The Complainant is known for its online photo and video sharing social networking application. The Complainant states that since its launch on October 6, 2010, it has developed considerable goodwill and renown worldwide. Acquired by Facebook in April 2012, the 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. As one of the fastest growing social media in the world, the Complainant’s website available at “www.instagram.com” is ranked as the 25th most visited website in the world according to web information company Alexa. Currently available in over 31 languages, the Complainant’s Instagram application is one of the most-downloaded application in the world. The Complainant states that although its application and website are currently inaccessible in China, the Complainant is far from an unknown name to the Chinese public, particularly taking into account numerous Chinese press articles on its success and popularity worldwide and the blogs and forums that diffuse information on how to access Instagram from China. The Complainant’s INSTAGRAM trade mark is currently one of the most famous online trade marks in the world, including in China. The Complainant owns numerous trademark registrations for INSTAGRAM worldwide, including in China. Its trademark registrations include the following: − Chinese Trade Mark No. 10614690, registered on June 14, 2013; The Complainant also owns numerous domain names containing the trade mark INSTAGRAM including: The disputed domain name The disputed domain name is confusingly similar to the Complainant’s INSTAGRAM trade mark as the trade mark is incorporated entirely into the disputed domain name. The addition of the dictionary term “hile” which means “trick” in Turkish does not avoid confusingly similarity with the Complainant’s mark. The “.com” generic Top-Level Domain (“gTLD”) is a functional element and not relevant to whether the disputed domain name is identical or confusingly similar to the Complainant’s trade mark. The Respondent has no rights or legitimate interests in the disputed domain name. The Respondent is not a licensee of the Complainant nor authorized or allowed by the Complainant to use the INSTGRAM trade mark in a domain name or otherwise. The Respondent cannot assert that it has been using the disputed domain name in connection with a bona fide offering of goods or services. The Respondent’s use of the disputed domain name for a website providing adult content cannot be considered to be a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the disputed domain name. The disputed domain name was registered and is being used in bad faith. The Respondent could not have been unaware of the Complainant’s INSTAGRAM trade mark when registering the disputed domain name as the trade mark is well known throughout the world, including in China. The Respondent registered and used the disputed domain name with the intention to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s registered INSTAGRAM trade mark as to the source, sponsorship, affiliation, or endorsement of its website or location. The Respondent’s website, to which the disputed domain name resolved, was previously used in connection with adult content with advertising banners. The Respondent failed to respond to the Complainant’s notice filed with the Registrar. The fact that the disputed domain name no longer resolves to an active website does not cure the Respondent’s bad faith conduct. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Identical or Confusingly Similar The Complainant has established it has rights in the INSTAGRAM trade mark. The trade mark is reproduced in its entirety in the disputed domain name and is recognizable. The Panel agrees that the addition of the term “hile”, which could be perceived to the average Internet user as meaningless or recognized by Turkish speakers to be a Turkish word, does not serve to remove the confusing similarity with the Complainant’s INSTAGRAM trade mark which is recognizable within the disputed domain name. The gTLD “.com” is a technical requirement for domain name registrations and not relevant to the issue of the identity or confusing similarity between a disputed domain name and a complainant’s trade mark. The disputed domain name is therefore confusingly similar to the Complainant’s INSTAGRAM trade mark. The Panel accordingly finds that the first element of paragraph 4(a) of the Policy has been satisfied. B. Rights or Legitimate Interests The Complainant has established a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name. The Complainant’s trademark registrations and many years of use of the INSTAGRAM trade mark long predate the registration of the disputed domain name. There is no evidence that any licence or authorization has been extended by the Complainant to the Respondent for the use of the INSTAGRAM trade mark as a trade mark or in a domain name. Neither is there evidence that the Respondent is commonly known by the name “instagram” or “Hileinstagram”. The use of the disputed domain name which incorporates the Complainant’s INSTAGRAM trade mark in relation to advertising and providing adult and pornographic content does not constitute a bona fide offering of goods or services. The Respondent failed to respond to or rebut the Complainant’s assertions. The Panel therefore finds that the second element of paragraph 4(a) of the Policy has been satisfied. C. Registered and Used in Bad Faith The Complainant’s INSTAGRAM trade mark is such a well-known mark that the Respondent could not by pure coincidence and without knowledge of the INSTAGRAM mark have selected the disputed domain name without the Complainant and/or its mark in mind. The Panel finds that the Respondent registered the disputed domain name with a view to attracting, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s registered INSTAGRAM trade mark as to the source, sponsorship, affiliation, or endorsement of its websites or locations or of a product or service on its websites. The inference of opportunistic bad faith on the Respondent’s part has not been rebutted by the Respondent. The fact that the disputed domain name is currently passively being held does not mean that the registration and use of the disputed domain name has ceased to be in bad faith since (i) the instant case involves a well-known mark, (ii) the Respondent has not demonstrated good faith use of the disputed domain name, and (iii) the Respondent also failed to provide correct contact details in its domain name registration. See Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003. The Panel therefore finds that the third element of paragraph 4(a) of the Policy has been satisfied. 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 disputed domain name Francine Tan
− United States Trade Mark No. 4146057, registered on May 22, 2012 (with first use in commerce recorded as October 6, 2010); and
− International Trade Mark No. 1129314, registered on March 15, 2012.
Sole Panelist
Date: December 22, 2020
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