Complainant is Instagram, LLC, United States of America (“United States”), represented by Hogan Lovells (Paris) LLP, France.
Respondent is A. Bourik, the Netherlands, represented by Houthoff Coöperatief U.A., the Netherlands. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 20, 2020. On July 21, 2020, the Center transmitted by email to SIDN a request for registrar verification in connection with the Domain Name. On July 22, 2020, SIDN transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name, which differed from the named Respondent, and contact information in the Complaint. The Center verified that the Complaint as amended satisfied the formal requirements of the Dispute Resolution Regulations for .nl Domain Names (the “Regulations”). In accordance with the Regulations, articles 5.1 and 16.4, the Center formally notified Respondent of the Complaint, and the proceedings commenced on August 6, 2020. In accordance with the Regulations, article 7.1, the due date for Response was initially August 26, 2020, and was further extended until September 9, 2020. The Response was filed with the Center on September 9, 2020, of which the Center acknowledged receipt. On September 16, 2020, SIDN commenced the mediation process. On October 27, 2020, SIDN extended the mediation process – at the time until at least November 26, 2020. On July 19, 2021, SIDN informed the Center and Parties that the dispute had not been solved in the mediation process. The Center received a further submission from Complainant on July 22, 2021, and from Respondent on August 2, 2021. Complainant is a worldwide well-known online photo and video sharing social networking application. Complainant’s application currently has 500 million daily active users, with more than 95 million photos and videos shared per day. In addition to its online presence, Complainant is the proprietor of various INSTAGRAM trademark registrations: - the European Union word mark INSTAGRAM, registered on December 24, 2015, with registration number 14493886, for goods and services in classes: 25, 35, 38, 41, and 45; and - the International word mark INSTAGRAM, with validity in the European Union, registered on March 15, 2012, with registration number 1129314, for goods and services in classes: 9 and 42 (the “Trademarks”). The Domain Name was registered on December 22, 2010. Complainant has submitted evidence that at the time the Complaint was filed the Domain Name was not resolving to an active webpage. The Panel observed the same when it accessed the website. 5. Parties’ Contentions A. Complainant Complainant states that since its application was launched on October 6, 2010, its exponential growth and explosive popularity has been widely reported in blogs and specialized technology publications in both English and Dutch. Complainant submits that given the exclusive online nature of its business, Complainant’s domain names consisting of its Trademarks, such as Complainant states that it was shortly before filing the Complaint alerted to the fact that Respondent registered the Domain Name. Complainant submits that Respondent has no rights or legitimate interests in the Domain Name, as Respondent is not a licensee of Complainant, nor has he been otherwise authorized or allowed by Complainant to use its Trademarks in a domain name or otherwise. Complainant further submits that the Domain Name has been pointing to the Registrar’s holding page since its registration in 2010. Complainant argues that the Domain Name is passively held, as it does not resolve to an active webpage, and that there is no evidence that Respondent has ever used the Domain Name to host an active website. Complainant further states that Respondent is not commonly known by the Domain Name, and that given the explosive popularity of the Trademarks, and the nature of the Domain Name itself, it is simply impossible to conceive of any plausible actual or contemplated active use of the Domain Name by Respondent that would not be illegitimate. Complainant alleges that Respondent registered the Domain Name in bad faith. Complainant states that the fame of its Trademarks is also evidenced by the number of cybersquatters who have sought to unfairly and illegally exploit the very significant customer recognition and goodwill in the Trademarks. Complainant further alleges that prior UDRP panels have recognized the strength and renown of the Trademarks and ordered the transfer of the domain names at issue to Complainant. Complainant submits that given the wide variety of articles reporting on Complainant’s social networking application launch and growth, published between September and December 2010, Respondent’s registration of the Domain Name on December 22, 2010, cannot be a mere coincidence but rather was a consequence of Respondent’s knowledge of Complainant’s rights and desire to profit from them in some way. Complainant further alleges that Respondent uses the Domain Name in bad faith as the Trademarks have become exclusively associated with Complainant and Respondent failed to provide evidence of actual or contemplated good-faith use of the Domain Name. Finally, Complainant submits that its Complaint should not fail under the doctrine of laches. Complainant states that prior UDRP panels have widely recognized that mere delay in the registration of a domain name and the filing of a complaint neither bars a complainant from filing such case, nor from prevailing on the merits. Complainant concludes that Respondent has not made any active use of the Domain Name to give rise to any potential claim that Complainant has in any way acquiesced to Respondent’s registration and use of the Domain Name. Complainant concludes that there is no evidence that Complainant’s bringing this case caused any prejudice to Respondent. Complainant requests the transfer of the Domain Name. B. Respondent Respondent states that the Complaint must fail on the issue of legitimate interest and bad faith. Respondent argues that contrary to Complainant’s contentions, article 3.1a of the Regulations prescribes that a registrant may demonstrate rights or legitimate interests in a domain name when “before having any notice of the dispute, the registrant made demonstrable preparations to use the domain name in connection with a bona fide offering of goods and services”. Respondent submits that he registered the Domain Name long before Complainant registered its Trademarks. Respondent further submits that while he does not question Complainant’s current popularity, anno 2010 Complainant was hardly known in the United States, let alone in the Netherlands. Respondent argues that it is therefore not surprising that Respondent, a Dutch entrepreneur, had no knowledge of Complainant at the time of registration of the Domain Name. Respondent states that he decided to trigger an innovative online operation of cannabis distribution in the Netherlands. Respondent argues that his business innovation encompasses the idea of an online “coffeeshop” (licensed establishments in the Netherlands where the sale of cannabis for personal consumption is tolerated by the local authorities) platform. According to Respondent this platform connects physical “coffeeshops” with consumers, allowing them to order cannabis online and having it delivered, as he says, almost instantaneously. Respondent argues that such cannabis courier service would be made available under the name “Insta Gram”, the latter using the metric system unit commonly used for measuring cannabis. Respondent states that the Domain Name has been at the core of this new business offering and significant time, effort and money (to the tune of EUR 30,000) have been expended in the development of this new business. Respondent submits that in 2010 the concept of offering products online instead of in a physical shop was not as widely adopted as it is today. Respondent further submits that he pitched his business idea to investors, such as a prominent Dutch hotelier, in 2010 and that this person was willing to invest EUR 1 million in his project. Respondent further argues that as “coffeeshop” licenses are granted and regulated by the Dutch municipalities, he contacted the City of Amsterdam to present his business plan which led to various meetings with members of the municipality. Respondent claims that the launch of his business was delayed due to regulatory issues, but that he has been well underway with his preparations under the business plan. Respondent further states that it is evident that he has legitimate rights and interests in the Domain Name in connection with a bona fide offering of goods and/or services by way of his continuous investments in the business idea of which the Domain Name has been at its core. Respondent argues that he registered the Domain Name on December 22, 2010, combining the prefix “insta” and the metric system “gram”. Respondent further argues that Complainant was named Burbn Inc. until October 2010, when it was renamed Instagram. Respondent also argues that at the time he registered the Domain Name, the domain name Respondent states that he provides this information to show that as a cannabis entrepreneur in the Netherlands, Respondent did not know of Complainant at the time of registration of the Domain Name and that it was profoundly unforeseeable that Complainant would gain worldwide popularity. Respondent further states that Complainant rightly states that previous panels have recognized the strength and the renown of the Trademarks and refers to multiple cases of cybersquatting that have resulted in transfer decisions. Respondent, however, notes that the Domain Name was registered before Complainant had a registered trademark, let alone gained worldwide fame and consumer recognition. Respondent concludes that he has not acquired the Domain Name for the purpose of selling, renting, or otherwise transferring the Domain Name to Complainant or to a competitor of Complainant, for valuable consideration in excess of Respondent’s documented out-of-pocket costs related to the Domain Name. Respondent argues that he has not, at any time, made an offer to sell the Domain Name to Complainant or any third party. Respondent argues that given his business plans, the Domain Name is not for sale. Finally, while Respondent acknowledges that the doctrine of laches generally does not apply in UDRP or .NL proceedings, he refers to a panel decision where it was stated that laches should not be precluded entirely from taking delay into account, in weighing up the merits of a complaint and lengthy delay should, in its view, be a factor which either supports a complaint or in the case of relatively lengthy delay may work in respondent’s favor (see NYLSTAR S.A. v. Domain Administrator, Meryl Blog,WIPO Case No. D2016-0561). 6. Discussion and Findings Pursuant to article 2.1 of the Regulations, Complainant’s request to transfer the Domain Name must meet three cumulative conditions: a. the Domain Name is identical or confusingly similar to: I. a trademark, or trade name, protected under Dutch law in which Complainant has rights; or II. a personal name registered in the General Municipal Register (“gemeentelijke basisadministratie”) of a municipality in the Netherlands, or the name of a Dutch public legal entity or the name of an association or foundation registered in the Netherlands under which complainant undertakes public activities on a permanent basis; and b. Respondent has no rights to or legitimate interests in the Domain Name; and c. the Domain Name has been registered or is being used in bad faith. Considering these conditions, the Panel rules as follows. A. Identical or Confusingly Similar Complainant has submitted a copy of the registration of the Trademarks demonstrating that Complainant is the holder of the Trademarks. The Trademarks are protected around the world including under Dutch law. The unrebutted evidence provided in the Complaint regarding the Trademarks constitutes prima facie evidence that Complainant has trademark rights for purposes of the Regulations, and accordingly the Panel will review the Complaint on this basis. The Panel notes that it is established “.nl” case law that the country code Top-Level Domain “.nl” may be disregarded in assessing confusing similarity between the relevant trademark on the one hand, and the disputed domain name on the other hand (see, e.g., Caterpillar Inc. v. H. van Zuylen Materieel,WIPO Case No. DNL2011-0073; Roompot Recreatie Beheer B.V. v. Edoco LTD,WIPO Case No. DNL2008-0008). The Panel finds that the Domain Name is identical to the Trademarks. Consequently, the Panel finds that the first requirement of article 2.1(a)(I) of the Regulations is met. B. Rights or Legitimate Interests Article 2.1.b of the Regulations requires Complainant to establish that Respondent has no rights to or legitimate interests in the disputed domain name. This condition is met if Complainant makes out a prima facie case that Respondent has no such rights or legitimate interests and if Respondent fails to rebut this (see, e.g., Technische Unie B.V. and Otra Information Services v. Technology Services Ltd.,WIPO Case No. DNL2008-0002). Complainant claims that Respondent has no rights to or legitimate interests in the Domain Name. The Panel notes that Complainant is correct in its statement that absent contrary evidence from Respondent, passive holding of a domain name does not by itself constitute “legitimate noncommercial or fair use” (see, e.g., ASN Bank N.V. v. Richard Spades,WIPO Case No. DNL2015-0053). The Panel notes that while Respondent registered the Domain Name shortly after Complainant commenced operations which included rapid growth, this was on the other hand before Complainant registered its Trademarks. Furthermore, Respondent provided evidence that at the time of registration of the Domain Name, Complainant did not own the domain name Respondent provided documentation in the form of two affidavits purporting to demonstrate that Respondent has been making preparations to use the Domain Name in connection with a bona fide offering of goods or services. While the Panel does not have reason to doubt the veracity of this documentation as such, it is noted that one of these refers to Respondent’s project as a “Cannabis Experience / Cannabis drive-in coffeeshop and Cannabis Museum” and another contains an undated statement from a purported prospective investor that “[t]here is still no party that is [providing cannabis delivery] to my knowledge” which statement is demonstrably untrue as can be seen in even a most cursory online search. The Panel also notes that missing from Respondent’s documentation, aside from the above affidavits, is anything to support his claimed expenditure as well as any concrete documentation of steps taken to bring his business plan to fruition (e.g., correspondence with suppliers or service providers, or proposed website content for his claimed venture) over the past 10 years. As is made doubly apparent by the fact of an unusually long SIDN mediation process spanning some 10 months, the Panel finds there are questions of fact that require resolution of a kind that is better suited for a court. C. Registered or Used in Bad Faith For a Complainant to succeed, the Panel must be satisfied that the Domain Name has been registered or is being used in bad faith. Article 3.2 of the Regulations provides the following examples of circumstances which may demonstrate that the domain name has been registered or is being used in bad faith: b. the domain name has been registered in order to prevent complainant from using it; c. the domain name has been registered primarily for the purpose of disrupting complainant’s activities; d. the domain name has been or is being used for commercial gain, by attracting Internet users to a website of the registrant or other online location through the likelihood of confusion which may arise with the trademark, trade name, personal name, name of a Dutch public legal entity or name of an association or foundation registered in the Netherlands as to, for example, the source, sponsorship, affiliation or endorsement of the website of the registrant or other online location(s) or of products or services on the domain registrant’s website or another online location.” The Panel observes that there is not adequate evidence before the Panel to determine whether Respondent unfairly sought to take unfair commercial advantage of Complainant when registering the Domain Name. While this is not dispositive in itself, the Panel observes further that, as far as this record reveals, Respondent has not registered a vast number of infringing domain names, and has not engaged in other types of activity that mark a cybersquatter. It is also not apparent from the record that Respondent would have intentionally attempted to attract for commercial gain Internet users to Respondent’s website by creating a likelihood of confusion with the Trademarks as to the source, sponsorship affiliation, or endorsement of Respondent’s website. The parking page provided by the Registrar at the Domain Name does not refer to Complainant or its services. As previous panels have decided, the mere use of a parking page cannot lead to a finding of bad faith use (see, e.g., Marcus Charles Catharina Koehorst v. Arvy Music,WIPO Case No. DNL2018-0018). However this may be, as observed under 6B. above, the Panel finds that the present case lends itself better to resolution by a court. For the sake of completeness the Panel notes the following regarding the doctrine of laches, which both Complainant and Respondent addressed. Previous panels have declined to specifically adopt concepts such as laches or its equivalent in UDRP cases. Panels have however noted that in specific cases, certain delays in filing a UDRP complaint may make it more difficult for a complainant to establish its case on the merits, particularly where Respondent can show detrimental reliance on the delay (see, e.g., The Hebrew University of Jerusalem v. Alberta Hot Rods,WIPO Case No. D2002-0616, and section 4.17 of WIPO Overview 3.0. Complainant asserts that it relatively recently learned of the Domain Name and that it engaged in communications with Respondent in December 2019. The Panel finds that Respondent did not show detrimental reliance. In conclusion, as stated above: taking all of the facts as presented to the Panel (and again noting the fact of an unusually long SIDN mediation process), the Panel finds there are questions of fact here that require resolution of a kind that is better suited for a court (e.g., with potential discovery and party examination). 7. Decision For all the foregoing reasons, the Complaint is denied. Remco M. R. van Leeuwen
The Center appointed Remco M.R. van Leeuwen as the panelist in this matter on July 27, 2021. The Panel finds that it was properly constituted. The Panelist has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required to ensure compliance with the Regulations, article 9.2. 4. Factual Background
“a. the domain name has been registered or acquired primarily for the purpose of selling, renting or -transferring it to the complainant or to the complainant’s competitors for valuable consideration in excess of the cost of registration;
Panelist
Date: August 25, 2021
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