ARBITRATION AND MEDIATION CENTER ADMINISTRATIVE PANEL DECISION Instagram, LLC v. 赵坤 (Zhao Kun) Case No. D2022-0454 1. The Parties Complainant is Instagram, LLC, United States of America (hereinafter "US"), represented by Hogan Lovells (Paris) LLP, the US. Respondent is 赵坤 (Zhao Kun), China. 2. The Domain Name and Registrar The disputed domain name is registered with Alibaba Cloud Computing (Beijing) Co., Ltd. (the "Registrar"). 3. Procedural History The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the "Center") on February 9, 2022. On February 10, 2022, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 11, 2022, the Registrar transmitted by email to the Center its verification response disclosing the 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 February 11, 2022, 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 February 16, 2022. On February 11, 2022, the Center transmitted another email communication to the Parties in English and Chinese regarding the language of the proceeding. On February 11, 2022, Complainant confirmed its request that English be the language of the proceeding. 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"). page 2 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 February 22, 2022. In accordance with the Rules, paragraph 5, the due date for Response was March 14, 2022. Respondent did not submit any response. Accordingly, the Center notified Respondent's default on March 16, 2022. The Center appointed Yijun Tian as the sole panelist in this matter on March 31, 2022. 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. Instagram LLC is a world-renowned online photo- and video-sharing social-networking application. Since its launch in 2010, Instagram has rapidly acquired and developed considerable goodwill and renown worldwide. Acquired by Meta Platforms, Inc. (Meta) (formerly Facebook, Inc.) in 2012, today Instagram is the world's fastest growing photo- and video-sharing and editing software and online social network, with more than 1 billion monthly active accounts 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 on its success and popularity worldwide and the blogs and forums that diffuse information on how to access Instagram from China (Annex 8 to the Complaint). The INSTAGRAM and INSTAGRAM related marks have been registered worldwide, such as INSTAGRAM mark in the US (the US trademark registration number 4146057, registered May 22, 2012), and INSTAGRAM mark in China (Chinese trademark registration number 10614690, registered June 14, 2013) (Annex 11 to the Complaint). Complainant also registered domain names that contain the INSTAGRAM trademark. For example, it is also the holder of the domain name , which is currently ranked the 20th most visited website in the world, according to web information company Alexa (Annex 6 to the Complaint). B. Respondent Respondent is 赵坤 (Zhao Kun), China. The disputed domain name was registered by Respondent on May 22, 2020. The disputed domain name was resolved to a website, which offered Instagram "likes" and "followers" for sale (Annex 12 to the Complaint). The Panel notes that currently the website at the disputed domain name is inactive. 5. Parties' Contentions A. Complainant Complainant contends that the disputed domain name is confusingly similar to the INSTAGRAM trademark. Simply employing the additions of the hyphen "-" and the word "followers" as suffixes with the INSTAGRAM trademark does not inhibit the finding of confusing similarity. Complainant contends that Respondent has no rights or legitimate interests in the disputed domain name. Complainant contends that Respondent registered and used the disputed domain name in bad faith. Complainant requests that the disputed domain name be transferred to Complainant. page 3 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 is Chinese. Pursuant to the Rules, paragraph 11(a), 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 main reasons: a) The disputed domain name consists of Latin characters, comprising the English term "followers" rather than Chinese characters or terms. b) The disputed domain name used to resolve to a website in English. (Annex 12 to the Compliant). c) Respondent replied in English to the cease and desist letter sent by Complainant's lawyers. (Annex 5 for the correspondence between Respondent and Complainant's lawyers. d) 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 expense 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) 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 page 4 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 fact 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 includes Latin characters ("instagram") and particularly the English word ("followers"), and is registered in the gTLD space comprising of the Latin characters and English word "net" (Compagnie Gervais Danone v. Xiaole Zhang, WIPO Case No. D2008-1047). 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 particularly the English word ("followers"), rather than Chinese script; (b) the disputed domain name used to resolve to a website in English; (c) Respondent replied in English to the cease and desist letter sent by Complainant's lawyers; (d) the Center has notified Respondent of the proceeding in both Chinese and English, and Respondent has not indicated an objection to Complainant's request that English be the language of the proceeding; 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 responses in either English or Chinese but none was filed. 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. Substantive 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 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 comprises the INSTAGRAM mark in its entirety. The disputed domain name only differs from Complainant's trademarks by the suffixes "-" and "followers", and the gTLD ".net" to the INSTAGRAM marks. This does not compromise the recognizability of Complainant's marks within the disputed domain name, nor prevent a finding of confusing similarity between Complainant's registered trademarks and the disputed domain name (Decathlon v. Zheng Jianmeng, WIPO Case No. D2019-0234). page 5 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, section 1.11.1 of 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." The Panel, therefore, holds that 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 and China since 2012, which precede Respondent's registration of the disputed domain name (in 2020). According to the Complaint, Instagram LLC is a world-renowned online photo- and video-sharing social-networking application. Since its launch in 2010, Instagram has rapidly acquired and developed considerable goodwill and renown worldwide. Acquired by Meta Platforms, Inc. (Meta) (formerly Facebook, Inc.) in 2012, today Instagram is the world's fastest growing photo- and video-sharing and editing software and online social network, with more than 1 billion monthly active accounts worldwide. 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 legitimate use of the disputed domain name or reasons to justify the choice of the term "instagram-followers" in the disputed domain name and in its business operation. There has been no evidence to show that page 6 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 2020, long after the INSTAGRAM marks became internationally known. The disputed domain name is identical or 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 was resolved to a website, which offered Instagram "likes" and "followers" for sale (Annex 8 to the Complaint). It seems that Respondent was making profits through the Internet traffic attracted to the website under the disputed domain name. (See BKS Bank AG v. Jianwei Guo, WIPO Case No. D2017-1041; BASF SE v. Hong Fu Chen, Chen Hong Fu, WIPO Case No. D2017-2203). 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 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 Instagram LLC is the world's fastest growing photo- and video-sharing and editing software and online social network, with more than 1 billion monthly active accounts worldwide. As mentioned above, INSTAGRAM marks and INSTAGRAM-related marks were registered in the US and China respectively (since 2012). 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 on its success and popularity worldwide and the blogs and forums that diffuse information on how to access page 7 Instagram from China. (Annex 8 to the Complaint). 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 2020). 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 UDRP previous panel decisions "the failure of the Respondent to respond to the Complaint further supports an inference of bad faith". See The Argento Wine Company Limited v. Argento Beijing Trading Company, supra, and 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 websites offering Instagram "likes" and "followers" for sale, presumably for the commercial gain of Respondent. 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 the current inactive 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 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 be transferred to Complainant. /Yijun Tian/ Yijun Tian Sole Panelist Dated: April 27, 2022
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