The Complainant is Instagram, LLC, United States of America (“United States”), represented by Hogan Lovells (Paris) LLP, France.
The Respondent is Domain Administrator, See PrivacyGuardian.org, United States / Tan Fei Tan, China.
The disputed domain name <howinstagram.com> is registered with NameSilo, LLC (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 9, 2020. On November 10, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 10, 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 12, 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 17, 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 24, 2020. In accordance with the Rules, paragraph 5, the due date for Response was December 14, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 15, 2020.
The Center appointed Reyes Campello Estebaranz as the sole panelist in this matter on January 5, 2021. 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.
The Complainant is a United States company, founded in 2010 and acquired by Facebook, Inc. in 2012. It operates globally under the trademark INSTAGRAM, providing an online mobile photo and video sharing social networking application (or “app”) that allows users across the globe to edit and share photos/videos and exchange messages in an online social network. The Complainant’s social media platform is available in over 31 languages, having over 1 billon monthly users and 500 million daily active users. The nature of the Complainant’s business is exclusively online, being its main website linked to the domain name <instagram.com>. Prior decisions under the Policy have recognized the worldwide renown of the trademark INSTAGRAM1 .
The Complainant holds registered trademark rights in the mark INSTAGRAM in many jurisdictions, being the owner of a substantial trademark portfolio, of which the following are sufficient representative for the present proceeding:
- United States Trademark No. 4,146,057, INSTAGRAM, word mark, registered May 22, 2012, in class 9;
- International Trademark No. 1129314, INSTAGRAM, word mark, registered March 15, 2012, in classes 9 and 42;
- Chinese Trade Mark No. 10614690, INSTAGRAM, figurative, registered June 14, 2013, in class 42, (collectively the “INSTAGRAM mark”).
The Complainant further owns numerous domain names comprising its INSTAGRAM mark, under various generic Top-Level Domains (“gTLDs”) and country code Top-Level Domains (“ccTLDs”), which are linked to its corporate websites in connection with its services. Among others, <instagram.com> (registered on June 4, 2004), <instagram.cn> (registered on October 14, 2010) and <instagram.org.cn> (registered on November 8, 2012).
The disputed domain name was registered on March 11, 2020, and it resolves to a website in Chinese language providing adult content and displaying links to various online gambling websites.
Key contentions of the Complaint may be summarized as follows:
The Complainant sent a cease and desist letter and various communications to the Respondent, which were never replied.
The disputed domain name is confusingly similar to the Complainant’s trademark. The disputed domain name incorporates the INSTAGRAM mark in its entirety with the addition of the dictionary term “how”, being the Complainant’s trademark clearly recognizable.
The Respondent has no rights or legitimate interests in the disputed domain name. The Respondent is not a licensee, nor has he been otherwise authorized to use the INSTAGRAM mark. According to the information provided by the Registrar, the Respondent has been listed as “Tan Fei Tan”, which bears no resemblance to the disputed domain name. The disputed domain name is linked to a website providing adult content.
The disputed domain name was registered and is being used in bad faith. The INSTAGRAM mark is inherently distinctive and well known throughout the world, including in China where the Respondent is based. Although in China the Complainant’s app is currently inaccessible, it is highly popular referring to it many Chinese publications, blogs and forums, and all search results obtained for the term “instagram” in China’s leading search engine Baidu exclusively refer to the Complainant and its social media platform. It is therefore inconceivable that the Respondent did not have knowledge of the Complainant’s trademark at the time of the registration of the disputed domain name, which constitutes a strong evidence of bad faith. Further evidence of bad faith is the use of privacy registration services, the Respondent’s failure to reply to the Complainant’s cease and desist letter and various communications, and the fact that the Respondent has engaged in a bad faith pattern of abusive domain name registration (as he has previously owned other trade mark abusive domain names, including <chinateflon.cn> and <nikereactshoes.com>). The Respondent is using the disputed domain name to intentionally attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation, or endorsement of its website, in accordance with paragraph 4(b)(iv) of the Policy. The INSTAGRAM mark is incorporated in the disputed domain name with the intention to attract customers who were not looking for an adult content site, but for the Complainant’s social media platform. Furthermore, the use of the disputed domain name incorporating the INSTAGRAM mark to point to an adult website tarnish the distinctiveness, image and reputation of the Complainant.
The Complainant has cited previous decisions under the Policy that it considers supportive of its position, and requests the transfer of the disputed domain name.
The Respondent did not reply to the Complainant’s contentions.
The Complainant has made the relevant assertions as required by the Policy and the dispute is properly within the scope of the Policy. The Panel has authority to decide the dispute examining the three elements in paragraph 4(a) of the Policy, taking into consideration all of the relevant evidence, annexed material and allegations, and performing some limited independent research under the general powers of the Panel articulated, inter alia, in paragraph 10 of the Rules.
The Complainant indisputably has rights in the registered trademark INSTAGRAM, both by virtue of its numerous trademark registrations and as a result of its global goodwill and reputation. The disputed domain name incorporates the INSTAGRAM mark in its entirety preceded by the term “how”, which does not prevent a finding of confusing similarity. The Complainant’s trademark is recognizable in the disputed domain name, and the gTLD “.com” is a technical requirement, generally disregarded for the purpose of the analysis of the confusing similarity. See sections 1.7, 1.8 and 1.11 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).
Accordingly, this Panel finds that the disputed domain name is confusingly similar to the Complainant’s mark, and the first element of the Policy under paragraph 4(a)(i) has been satisfied.
Although the Complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, UDRP panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the often impossible task of proving a negative, requiring information that is primarily if not exclusively within the respondent’s knowledge. Thus, the consensus view is that paragraph 4(c) of the Policy shifts to the respondent the burden of production to come forward with relevant evidence of rights or legitimate interests in the disputed domain name, once the complainant has made a prima facie case that the respondent lacks rights or legitimate interests.
The Complainant’s above-noted assertions and evidence in this case effectively shift the burden to the Respondent of producing evidence of rights or legitimate interests in the disputed domain name, providing the circumstances of paragraph 4(c) of the Policy, without limitation, that may establish rights or legitimate interests in the disputed domain name in order to rebut the Complainant’s prima facie case.
The Respondent has not replied to the Complainant’s contentions, not providing any explanation or evidence of rights or legitimate interests in the disputed domain name.
The Panel has corroborated that the disputed domain name resolves to an adult website in Chinese language, which seems to offer access to various videos and photographs of pornographic content, as well as to various links to online gambling websites.
A core factor in assessing fair use of the disputed domain name is that it does not falsely suggest affiliation with the Complainant’s trademark. The disputed domain name incorporates the INSTAGRAM mark preceded by the term “how”, which may refer to a way to access to the Complainant’s social media platform from China, where it is not currently accessible. The Panel has found many websites over the Internet offering options to access the Complainant’s site and other social media platforms from China. Therefore, the Panel considers that there is a risk of implied affiliation. See section 2.5.1, WIPO Overview 3.0.
The Panel further notes the extensive presence of the trademark INSTAGRAM over the Internet, as well as the extensive use of this mark worldwide, which makes it difficult to think of any rights or legitimate interests in a domain name comprising this mark, unless authorized by the Complainant.
The Panel further considers remarkable the Respondent’s attitude of deliberately choosing not to reply to the Complaint, the various communications and the cease and desist letter sent by the Complainant.
All these circumstances lead the Panel to conclude that the Complainant has established a strong prima facie case, not rebutted by the Respondent, and all cumulative facts and circumstances of this case point to consider that the Respondent lacks any rights or legitimate interests in the disputed domain name. Therefore, the second element of the Policy under paragraph 4(a)(ii) has been established.
The Policy, paragraph 4(a)(iii), requires that the Complainant establishes that the disputed domain name has been registered and is being used in bad faith.
The applicable standard of proof in UDRP cases is the “balance of probabilities” or “preponderance of the evidence”, being the Panel prepared to draw certain inferences in light of the particular facts and circumstances of the case. See section 4.2, WIPO Overview 3.0.
The Panel notes that the INSTAGRAM mark has extensive presence over the Internet and is worldwide well known, being inconceivable that the Respondent did not have knowledge of this trademark at the time of registration of the disputed domain name. Furthermore, all cumulative circumstances of this case point to bad faith registration and use of the disputed domain name:
(i) the disputed domain name incorporates the Complainant’s trademark in its entirety, preceded by a term (“how”) that may refer to a way to access the Complainant’s platform content in China, where this platform is not accessible, which enhances the intrinsic likelihood of confusion and affiliation;
(ii) the Complainant’s trademark is inherently distinctive and well known worldwide;
(iii) the Complainant operates globally through the Internet, and while in China the Complainant’s social media platform is not currently accessible, there are many websites and third party providers offering options to access to the Complainant’s site;
(iv) the Respondent used a privacy registration service, and, according to the evidence provided by the Complainant, has engaged in a bad faith pattern of abusive domain name registration, having registered at least 2 other domain names comprising third-party trademarks;
(iv) the website linked to the disputed domain name includes content unrelated to the Complainant or its business, namely adult content and links to various online gambling websites; and
(v) the Respondent has not offered any explanation of any rights or legitimate interests in the disputed domain name and has not come forward to deny the Complainant’s assertions of bad faith, choosing not to reply to the Complaint, or to any of the communications sent by the Complainant.
In light of the above, taking into consideration all cumulative circumstances of this case, on the balance of probabilities, the Panel considers that the disputed domain name was registered and is being used in bad faith, with the intention of obtaining a free ride on the established reputation of the Complainant by intentionally creating a likelihood of confusion as to the affiliation or association with the Complainant and its reputed trademark, trying to misleadingly attract Internet users to the Respondent’s site.
Accordingly, the Panel concludes that the Complainant has met its burden of establishing that the disputed domain name has been registered and is being used in bad faith.
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 <howinstagram.com> be transferred to the Complainant.
Reyes Campello Estebaranz
Sole Panelist
Date: January 14, 2021
1 See Instagram, LLC v. lu xixi, WIPO Case No. D2015-1168; Instagram, LLC v. Sedat Das, Arda, Domain Admin, whoisprotection biz, Domain Admin Domain Admin, whoisprotection biz, WIPO Case No. D2016-2382; Instagram, LLC v. Ozgur Kalyoncu, Seo Master and Huseyin Erdem, WIPO Case No. D2016-1710; Instagram, LLC v. Omer Ulku, WIPO Case No. D2018-1700; Instagram, LLC v. Ellie Walker, WIPO Case No. D2018-0669; Instagram, LLC v. Orhan Uzdu, WIPO Case No. D2019-2806; and Instagram, LLC v. Super Privacy Service LTD c/o Dynadot / Zayed, WIPO Case No. D2019-2897.