The Complainant is Instagram, LLC of Menlo Park, California, United States of America (“United States”), represented by Hogan Lovells (Paris) LLP, France.
The Respondent is Zhou Murong of Shenzhen, Guangdong, China. 2. The Domain Name and Registrar
The disputed domain name is registered with eName Technology Co., Ltd. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 14, 2017. On April 18, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 19, 2017, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
On April 26, 2017, the Center sent an email communication to the parties in both Chinese and English regarding the language of the proceeding. On April 26, 2017, the Complainant confirmed its request that English be the language of the proceeding. The Respondent did not comment on 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceeding commenced on May 12, 2017. In accordance with the Rules, paragraph 5, the due date for Response was June 1, 2017.
On May 17, 2017, the Respondent sent an email to the Center identifying an ongoing court proceeding in China concerning the disputed domain name.
On May 23, 2017, the Complainant made a supplemental filing to the Center.
The Respondent did not submit any response save for the above-mentioned email communication dated May 17, 2017. Accordingly, the Center notified the Parties that it would proceed to Panel Appointment on June 2, 2017.
The Center appointed Sebastian M.W. Hughes as the sole panelist in this matter on June 13, 2017. 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
The Complainant is a company incorporated in the United States and is the developer and owner of the world’s leading online photo and video sharing social networking application. The Complainant has used the trade mark INSTAGRAM (the “Trade Mark”) continuously since October 2010 in connection with its online photo and video sharing social networking application.
The Complainant is the owner of registrations for the Trade Mark in numerous jurisdictions worldwide, including United States registration No. 4146057, registered on May 22, 2012, with a first use in commerce of October 6, 2010; and Chinese registration No. 10614690, registered on June 14, 2013. B. Respondent
The Respondent is an individual resident in China. C. The Disputed Domain Names
The disputed domain name was registered on August 18, 2013. D. Passive Use of the Disputed Domain Name
The disputed domain name has not been used. 5. Parties’ Contentions A. Complainant
The Complainant contends that the disputed domain name is identical or confusingly similar to the Trade Mark, the Respondent has no rights or legitimate interests in respect of the disputed domain name, and the disputed domain name has been registered and is being used in bad faith. B. Respondent
The Respondent did not formally reply to the Complainant’s contentions, but notified the Center in the Respondent’s email of May 17, 2017 that the Respondent has applied to the Siming District People’s Court in Xiamen City, Fujian Province for a declaration of non-infringement in relation to the disputed domain name, and requested suspension of the present UDRP proceeding in light of the pending court proceeding initiated by the Respondent in China. The Respondent attached to the Respondent’s May 17, 2017 email a photograph of a one page filing receipt dated April 26, 2017 issued and sealed by the Siming District People’s Court in Xiamen City, Fujian Province. 6. Discussion and Findings 6.1 Supplemental Filing
Panels have sole discretion, under paragraphs 10 and 12 of the Rules, 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.
The Complainant’s reply submissions address specifically the Respondent’s request for suspension of this proceeding in light of the pending court proceeding initiated by the Respondent in China.
In all the circumstances, the Panel determines that it will admit the Complainant’s supplemental filing. 6.2 Language of the Proceeding
The language of the registration agreement for the disputed domain name is Chinese. Pursuant to the Rules, paragraph 11, in the absence of an agreement between the parties, or unless specified otherwise in the registration agreement, the language of the administrative proceeding shall be the language of the registration agreement. However, 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 order to ensure fairness to the parties and the maintenance of an inexpensive and expeditious avenue for resolving domain name disputes. Language requirements should not lead to undue burdens being placed on the parties and undue delay to the proceeding.
The Complainant has requested that the language of the proceeding be English, for the following reasons:
(i) The disputed domain name is registered under the “.tv” country code Top-Level Domain (“ccTLD”) for Tuvalu, where English is an official language;
(ii) The disputed domain name identically reproduces the term “instagram”, which is a highly distinctive term in English;
(iii) The Registration Agreement for the disputed domain name is available in the English language;
(iv) It would be disproportionate to require the Complainant not to submit the present Complaint in English as this would result in additional expense and unnecessary delay for the Complainant.
The Respondent, having received the Center’s communication regarding the language of the proceeding in both Chinese and English, did not make any submissions regarding the language of the proceeding. Having received notice of the proceeding in both Chinese and English, the Respondent chose not to file a formal response.
In exercising its discretion to use a language other than that of the registration agreement, the Panel has to exercise such discretion judicially in the spirit of fairness and justice to both Parties, taking into account all relevant circumstances of the case, including matters such as the Parties’ ability to understand and use the proposed language, time and costs.
The Panel considers that the grounds relied upon by the Complainant do not support the likely possibility that the Respondent is conversant in English. However, the Panel considers that, in all the circumstances (including the Respondent’s passive use of the disputed domain name), and in light of the Respondent’s decision not to file any submissions regarding the language of the proceeding, and to take no formal part in the proceeding, the Respondent will not be significantly prejudiced if the language of the proceeding is English.
In all the circumstances, the Panel determines under paragraph 11(a) of the Rules that the language of the proceeding shall be English. 6.3 Court Proceeding
Paragraph 4(k) of the UDRP provides as follows:
“Availability of Court Proceeding. The mandatory administrative proceeding requirements set forth in Paragraph 4 shall not prevent either you or the complainant from submitting the dispute to a court of competent jurisdiction for independent resolution before such mandatory administrative proceeding is commenced or after such proceeding is concluded. If an Administrative Panel decides that your domain name registration should be canceled or transferred, we will wait ten (10) business days (as observed in the location of our principal office) after we are informed by the applicable Provider of the Administrative Panel’s decision before implementing that decision. We will then implement the decision unless we have received from you during that ten (10) business day period official documentation (such as a copy of a complaint, file-stamped by the clerk of the court) that you have commenced a lawsuit against the complainant in a jurisdiction to which the complainant has submitted under Paragraph 3(b)(xiii) of the Rules of Procedure. (In general, that jurisdiction is either the location of our principal office or of your address as shown in our Whois database. See Paragraphs 1 and 3(b)(xiii) of the Rules of Procedure for details.) If we receive such documentation within the ten (10) business day period, we will not implement the Administrative Panel’s decision, and we will take no further action, until we receive (i) evidence satisfactory to us of a resolution between the parties; (ii) evidence satisfactory to us that your lawsuit has been dismissed or withdrawn; or (iii) a copy of an order from such court dismissing your lawsuit or ordering that you do not have the right to continue to use your domain name.”
Paragraph 4(k) of the Policy contemplates situations where court proceedings are commenced either before a UDRP proceeding is commenced, or after it has been concluded. It does not expressly contemplate a situation where a legal proceeding may have been commenced during the pendency of a UDRP proceeding.
Paragraph 18 of the Rules provides as follows: “Effect of Court Proceeding
(a) In the event of any legal proceeding 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.
(b) In the event that a Party initiates any legal proceeding during the Pendency of an administrative proceeding in respect of a domain-name dispute that is the subject of the complaint, it shall promptly notify the Panel and the Provider. See Paragraph 8 above.”
Paragraphs 4.14.1 and 4.14.2 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) state as follows:
“4.14.1 Suspension
Appointed panels are reluctant to suspend a UDRP case due to concurrent court proceedings, most notably because of the potential for indeterminate delay; the WIPO Center would similarly be reluctant to facilitate such suspension.
4.14.2 UDRP decision
Panels generally issue a UDRP decision on the merits even in an overlapping court-UDRP proceeding scenario where, notwithstanding the fact that a UDRP decision would not be binding on the court, the relative expediency of the UDRP versus courts is seen as a benefit to the parties. Panel reluctance to terminate a UDRP case on this basis often also takes account of, and respects, the potential for a court action to address causes of action separate from that being addressed in the UDRP proceeding.
Where there are prior or pending court or administrative (e.g., trademark office) proceedings, it is within the panel’s discretion to determine the relevance to ascribe to such proceeding in the UDRP context, in light of the case circumstances.”
The court proceeding was issued by the Respondent on April 26, 2017, after the Complaint had been filed with the Center and served on the Respondent.
The Panel has not been informed of any further procedural actions in the court proceeding, nor has the Panel been provided with any other documents relating to the court proceeding other than the filing receipt attached to the Respondent’s email.
The Panel considers that the limited information before it does not in itself provide any reason why this UDRP dispute cannot be evaluated separately from the ongoing court proceeding, which, at least on the face of the filing receipt provided by the Respondent, appears at this time to be limited to a request for a declaration of non-infringement under the relevant Chinese trade mark laws. Accordingly, in all the circumstances, the Panel does not therefore consider that the present UDRP dispute should be suspended or terminated.
The Panel will therefore proceed to a Decision.
The Panel notes, however, that this Decision is without prejudice to any action the court may deem appropriate or necessary in furtherance of the court proceeding. 6.4 Substantive Elements of the Policy
The Complainant must prove each of the three elements in paragraph 4(a) of the Policy in order to prevail. A. Identical or Confusingly Similar
The Panel finds that the Complainant has rights in the Trade Mark acquired through use and registration.
The disputed domain name comprises the Trade Mark in its entirety and is, excluding the ccTLD for Tuvalu (in accordance with previous UDRP decisions), identical to the Trade Mark.
The Panel therefore finds that the disputed domain name is identical or confusingly similar to the Trade Mark. Accordingly, the first element under paragraph 4(a) of the Policy has been made out. B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides a list of non-exhaustive circumstances any of which is sufficient to demonstrate that a respondent has rights or legitimate interests in a disputed domain name:
(i) before any notice to the respondent of the dispute, the respondent’s use 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) the respondent (as an individual, business, or other organization) has been commonly known by the disputed domain name even if the respondent has acquired no trade mark or service mark rights; or
(iii) the 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 the trade mark or service mark at issue.
The Complainant has not authorised, licensed, or permitted the Respondent to register or use the disputed domain name or to use the Trade Mark. The Panel finds on the record that there is therefore a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name, and the burden is thus on the Respondent to produce evidence to rebut this presumption.
The Respondent has failed to show that it has acquired any trade mark rights in respect of the disputed domain name or that the disputed domain name has been used in connection with a bona fide offering of goods or services. To the contrary, the disputed domain name has not been used.
In addition, the panel notes that “.tv” is the ccTLD for the Pacific Ocean nation of Tuvalu, but there is no evidence before the Panel to suggest that the Respondent, a Chinese national, has anything to do with Tuvalu.
There has been no evidence adduced to show that the Respondent has been commonly known by the disputed domain name; and there has been no evidence adduced to show that the Respondent is making a legitimate noncommercial or fair use of the disputed domain name.
The Panel finds that the Respondent has failed to produce any evidence to rebut the Complainant’s prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name, and therefore finds that the requirements of paragraph 4(a)(ii) are met. C. Registered and Used in Bad Faith
Given the notoriety of the Complainant and of its Trade Mark (including in China, where the Respondent is based), the lack of any explanation from the Respondent, and the passive use of the disputed domain name, the Panel has no hesitation in concluding the requisite element of bad faith has been made out. The Panel considers it is inconceivable the Respondent was not aware of the Complainant’s well-known Trade Mark at the time of registration of the disputed domain name.
For all the foregoing reasons, the Panel concludes that the disputed domain name has been registered and is being used 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 disputed domain name be transferred to the Complainant.
Sebastian M.W. Hughes
Sole Panelist
Dated: June 27, 2017
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