The Complainant is Instagram, LLC of Menlo Park, California, United States of America, represented by Hogan Lovells (Paris) LLP, France.
The Respondent is Jiwon Song of Yangsan, Republic of Korea, self-represented.
The disputed domain names <instagram.com.ph> and <instagram.ph> are registered with dotPH through its partner Interactive.com.ph.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on June 25, 2018. On the same day, the Center transmitted by email to dotPH a request for registrar verification in connection with the disputed domain names. On June 26, 2018, dotPH transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant for both disputed domain names and providing the contact details. The Complainant filed an amendment to the Complaint on July 2, 2018 to address an administrative formality.
The Center verified that the Complaint, as amended, satisfied the formal requirements of the dotPH Uniform Dispute Resolution Policy (the "Policy"), the Rules for dotPH Uniform Dispute Resolution Implementation Rules (the "Rules") and the WIPO Supplemental Rules (the "Supplemental Rules").
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, together with the amendment to the Complaint, and the proceedings commenced on July 17, 2018. In accordance with the Rules, paragraph 5(a), the due date for Response was August 6, 2018. On August 5, 2018, the Respondent requested an extension of time to file the Response. In accordance with the Rules, paragraph 5(d), the Center granted the requested extension. Subsequently, the Center formally notified the Respondent of a corrected notification of complaint and commencement of administrative procedure, and confirmed a new Response due date of August 15, 2018. On August 10, 2018, the Respondent requested disclosure of a domain name assignment agreement regarding the disputed domain name. The following day, the Complainant provided a copy of that agreement to the Center. The Response was filed with the Center on August 16, 2018 (Geneva time). The Complainant made a supplemental filing on August 16, 2018.
The Center appointed Matthew Kennedy as the sole panelist in this matter on August 21, 2018. 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 operates an online photo and video sharing social networking application named "Instagram". It was launched in 2010 and had 200 million monthly active users by March 2014 and 500 million monthly active users by June 2016. It started gaining traction in the Republic of Korea in 2014. Its growth and popularity have been widely reported in specialized technology journals and mainstream media. The Complainant owns multiple trademark registrations in multiple jurisdictions including international trademark registration number 1129314 for INSTAGRAM, registered on March 15, 2012, designating multiple jurisdictions including the Republic of Korea, where a statement of grant of protection was issued on April 17, 2013, and specifying goods and services in classes 9 and 42, including downloadable computer software for modifying the appearance and enabling transmission of photographs, and technical support services.
The Respondent is an individual resident in the Republic of Korea. She has at different times registered other domain names that combine third party trademarks with the country code Top-Level Domain ("ccTLD") suffix ".ph", in some cases with the Second Level Domain ".com" or the element "com". These other domain names include <emirates.com.ph>, <googlecom.ph>, <mitsubishi.ph>, <pacificair.com.ph>, <redtube.com.ph> and <tigerair.ph>.
The disputed domain name <instagram.com.ph> was registered on October 19, 2014 and the disputed domain name <instagram.ph> was registered on March 8, 2016. They resolve to parking pages displaying links to other websites including "Log In Instagram" and "Create Instagram" or "Create an Instagram Account" and "Free Download Instagram APP". The disputed domain name <instagram.com.ph> was previously offered for sale on a broker's website for USD 5,000 while the disputed domain name <instagram.ph> was displayed on another broker's website with the message "This domain is for sale" and a facility for Internet users to submit an offer to buy it.
After the Respondent received notice that the Complainant was planning to send a cease-and-desist letter, the Respondent sent an email to the Complainant dated April 19, 2016 in which she offered to transfer the disputed domain names to the Complainant, for a price. The Parties engaged in correspondence from April 2016 until March 2018 regarding the proposed transfer of the disputed domain names to the Complainant. On July 9, 2016 the Respondent signed a domain name assignment agreement provided by the Complainant. However, the disputed domain names were not subsequently transferred to the Complainant.
The disputed domain names are identical to the Complainant's INSTAGRAM trademark. They reproduce that trademark without adornment. It is generally accepted that a suffix such as ".ph" or ".com.ph" is irrelevant when assessing whether a domain name is identical or confusingly similar to a trademark as it is a functional element.
The Respondent has no rights or legitimate interests in respect of the disputed domain names. The Respondent is not a licensee of the Complainant, nor has she been otherwise allowed by the Complainant to make any use of its INSTAGRAM trademark, in a domain name or otherwise. The Respondent is using the disputed domain names to resolve to parking pages containing sponsored links targeting the Complainant. Such use of the disputed domain names cannot possibly be considered a bona fide offering of goods or services as the Respondent is clearly seeking to unduly profit from the Complainant's goodwill and reputation for her own financial gain. The parking pages are clearly commercial in nature. The Respondent cannot conceivably claim that she is commonly known by the Complainant's trademark.
The disputed domain names were registered and are being used in bad faith. Given the Complainant's renown and goodwill worldwide, including in the Republic of Korea, where the Respondent is based, it would be inconceivable for the Respondent to argue that she did not have knowledge of the Complainant's INSTAGRAM trademark at the time of registration of the disputed domain names. The Respondent registered the disputed domain names in order to prevent the Complainant from reflecting its well-known trademark in the ".ph" ccTLD and has engaged in a pattern of such conduct. The Respondent registered the disputed domain names primarily for the purpose of selling, renting, or otherwise transferring them to the Complainant for valuable consideration in excess of the Respondent's documented out-of-pocket costs directly related to the disputed domain names. The Respondent is using the disputed domain names to intentionally attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation or endorsement of the websites.
The Respondent acknowledges that the disputed domain names are identical or confusingly similar to the Complainant's trademark.
The domain name assignment agreement between the Parties is evidence of the Respondent's rights and legitimate interests in respect of the disputed domain names. The Complainant acknowledges that the domain name assignment agreement exists, although it only provided a copy after the Respondent requested its disclosure. Section 9 of that agreement provides that it constitutes the final, complete and exclusive entire agreement between the Parties with respect to its subject matter. Section 8 of that agreement provides that any suit as regards the disputed domain names ownership, transfer and payments should be brought in the courts in Santa Clara County and governed by and construed under the laws of the State of California.
The Complainant has no rights or legitimate interests in respect of the disputed domain names as it abandoned the disputed domain names' ownership transfer more than one year and two months ago without valid reason. There are at least three methods to change the ownership of the disputed domain names but the Complainant failed to follow any of them. The disputed domain names were renewed at the cost of the Respondent.
The domain name assignment agreement excludes the Respondent from any possible bad faith registration and use committed previously and it binds both Parties to that agreement, not the Policy or Rules. The sale price in the domain name assignment agreement is USD 200 per domain name, including registration and renewal fees, manual documentation, legal fees of a notary public and ownership transfer processing service. The Complainant agreed willingly to that amount, which does not constitute bad faith. The Complainant offered USD 100 per domain name; the Respondent made a counter-offer of USD 200 per domain name, to which the Complainant agreed.
The Complainant has demonstrated bad faith in the process of transfer of the disputed domain names. At the Complainant's request, the Respondent sent a blank transfer form to the Complainant for it to complete the "new registrant" information. However, the Complainant later asked the Respondent to send it a signed transfer form instead for the Complainant to submit to dotPH because it had found another procedure that did not require a notary public. The Complainant failed to do this and abandoned the transfer, allegedly due to difficulties with the transfer procedure. The Complainant's alleged reason for the delay of over one year and two months is not true, and contrasts with its prior statements that no notary public was required. There were at least three easy options to change the ownership of the disputed domain names, including one that could be handled by the Respondent, but the Complainant did nothing. The Respondent suspects the Complainant's motive is bad faith, possibly including a failure to pay the transfer price. The Complainant's failure to disclose the domain name assignment agreement in the Complaint is also an act of bad faith. The existence of that Agreement is a pillar in the context of this dispute, whereas the prior communication is only a referral. That agreement and issues arising in the execution of that agreement should be a basis to determine the bad faith of a party.
There was no direct evidence that the disputed domain names would be transferred to the Complainant other than the law firm's claim that they are representatives of the Complainant. The law firm did not present any contract or proof of commission between itself and the Complainant. For that reason, the Respondent requested that the transfer form be completed with the Buyer's information, which was also previously agreed between the Parties. However, no copy was sent to the Respondent. Refusal to provide to the Respondent a copy of the agreement between the parties – even when requested – is an act of bad faith, and the failure to disclose the relationship between the law firm and the Complainant is another form of bad faith in business and legal contract.
The Complainant demonstrates an unwillingness to take responsibility for the delay of transfer of the disputed domain names and a lack of effort to fulfil the domain name assignment agreement and abuses the Policy by threatening to bring the Respondent before the Center unless it agrees to add only renewal costs, without taking account of the Complainant's wrongdoing and damage to the Respondent's interests and not even asking what kind of compensation could be agreed. The Respondent believes that the party responsible for the failure of execution of the domain name assignment agreement should compensate the other party for the damage caused.
The domain name assignment agreement between the Parties should govern the settlement of the matter regarding the disputed domain names.
The Respondent submits that the appropriate venue is a local court of jurisdiction as mentioned in the domain name assignment agreement between the Parties, rather than the Center.
The Panel notes that the domain name services agreement for .ph domain names ("domain name registration agreement") incorporates the Policy. Paragraph 4(a) of the Policy requires the registrant of the disputed domain names to submit to a mandatory administrative proceeding in the event that a complainant asserts to the applicable provider, in compliance with the Rules, the three elements set out below in Section 6.2A, B and C of this Decision. The Complainant has filed such a Complaint with the Center and the Center is a dispute-resolution service provider approved by dotPH.1 Therefore, the Respondent is required to submit to this mandatory administrative proceeding.
In any event, the Panel observes that the domain name assignment agreement is between the Respondent and the Complainant and concerns the voluntary transfer of the disputed domain names. It does not purport to pre-empt the mandatory jurisdiction of the Panel under the Policy, which arises under the domain name registration agreement between the Respondent and dotPH and which concerns the mandatorytransfer of the disputed domain names.
For the above reasons, the Panel rejects the Respondent's challenge to its jurisdiction in this proceeding and will proceed to examine the Complaint.
The Panel draws the Respondent's attention to paragraph 5 of the Policy which provides that "[a]ll other disputes between [the respondent] and any party other than [dotPH] regarding the domain name registration that are not brought pursuant to the mandatory administrative proceeding provisions of Paragraph 4 shall be resolved between [the respondent] and such other party through any court, arbitration or other proceeding that may be available."
The Complainant has made two supplemental filings, neither of them solicited by the Panel. Paragraph 10(d) of the Rules provides that "[t]he Panel shall determine the admissibility, relevance, materiality and weight of the evidence".
The Complainant made a supplemental filing on August 11, 2018 at the request of the Respondent. This supplemental filing provided a copy of the domain name assignment agreement between the Parties. That agreement was later provided in an annex to the Response. Given that the domain name assignment agreement was relevant to the issue of jurisdiction raised by the Respondent, and that the Complainant's supplemental filing shows that the existence and content of that agreement are not in dispute, the Panel has taken this supplemental filing into consideration.
The Complainant made a further supplemental filing on August 16, 2018 in reply to the Response. This supplemental filing annexed pre-Complaint correspondence between the Parties. The Panel sees nothing relevant in this supplemental filing that was not already annexed to the Complaint. Therefore, the Panel sees no reason to take this supplemental filing into consideration.
Paragraph 11 of the Rules provides that "[t]he language of the administrative proceeding shall be English." The Panel notes that all filings by both Parties are in English.
Paragraph 4(a) of the Policy provides that the complainant must prove each of the following elements:
(i) the disputed domain names are identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) the respondent has no rights or legitimate interests in respect of the disputed domain names; and
(iii) the disputed domain names have been registered and are being used in bad faith.
Based on the information submitted, the Panel finds that the Complainant has rights in the INSTAGRAM trademark.
The disputed domain names incorporate the Complainant's INSTAGRAM trademark in its entirety. The only additional elements are the ccTLD suffix ".ph", which is a technical requirement of registration and, in one case, the Second Level Domain ".com". These elements are generally incapable of dispelling confusing similarity between domain names and a trademark. See Microsoft Corporation v. Maganda Industries and/or Douglas Morris a.k.a. Douglas Morrison, WIPO Case No. DPH2004-0001 and Skype Limited v. Leize Ang, Leize, WIPO Case No. DPH2011-0002.
Therefore, the Panel finds that the disputed domain names are confusingly similar to a trademark in which the Complainant has rights. The Complainant has satisfied the first element in paragraph 4(a) of the Policy.
Paragraph 4(c) of the Policy sets out the following circumstances which, without limitation, if found by the Panel, shall demonstrate that the Respondent has rights to, or legitimate interests in, a disputed domain name, for the purposes of paragraph 4(a)(ii) of the Policy:
(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 trademark 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 trademark or service mark at issue.
As regards the first and third circumstances above, the disputed domain names are parked at landing pages displaying links to other websites. Many of the links are generated based on the value of the Complainant's mark. That does not create a right or legitimate interest in the disputed domain names for the purposes of the Policy. See Express Scripts, Inc. v. Windgather Investments Ltd. / Mr. Cartwright, WIPO Case No. D2007-0267. This is neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use for the purposes of the Policy. Accordingly, the Panel does not find that the Respondent's use falls within the first or third circumstances of paragraph 4(c) of the Policy.
As regards the second circumstance, the Respondent's name is listed in dotPH's WhoIs database as "Jiwon Song" and she signs her emails "Jiwon", neither of which resembles "Instagram". There is no evidence that the Respondent has been commonly known by the disputed domain names.
In summary, the Panel considers that the Complainant has made a prima facie case that the Respondent has no rights or legitimate interests in respect of the disputed domain names.
The Respondent asserts rights and legitimate interests in the disputed domain names stemming from a domain name assignment agreement between the Parties. The Panel has reviewed that agreement but finds nothing in it that would evidence any claim or interest in the disputed domain names beyond those that the Respondent enjoys as the registrant of those domain names. The mere act of registration of a domain name does not confer rights or legitimate interests for the purposes of the Policy; otherwise, no complaint could ever succeed, which would be an illogical result. See Pharmacia & Upjohn Company v Moreonline, WIPO Case No. D2000-0134. The domain name assignment agreement also provides for the Respondent to assign any trademark rights that it may have in the disputed domain names but there is no evidence on the record of this proceeding that the Respondent possesses any such rights.
The Respondent also alleges that the Complainant abandoned the disputed domain names' ownership transfer more than one year and two months ago without valid reason.
The Panel notes that the domain name assignment agreement was signed by the Respondent over two years ago but the disputed domain names have still not been transferred. The record shows a chain of correspondence between the Parties regarding the dotPH transfer procedures that ultimately ended due to a disagreement over an increase in the price. The Panel sees nothing in the domain name assignment agreement, the Parties' correspondence or the Complainant's delay in initiating this proceeding that could be construed as consent to the Respondent's registration of the disputed domain names.
Accordingly, the Respondent has failed to rebut the Complainant's prima facie case.
Therefore, based on the record of this proceeding, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain names. The Complainant has satisfied the second element in paragraph 4(a) of the Policy.
Paragraph 4(b) of the Policy provides that certain circumstances, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith. These circumstances are not exhaustive. The first and fourth circumstances are as follows:
"(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(iv) by using the [disputed] domain name, [the respondent has] intentionally attempted to attract, for commercial gain, Internet users to [the respondent's] website or other online location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of [the respondent's] website or location or of a product or service on [the respondent's] website or location."
The disputed domain names were registered in 2014 and 2016, after the Complainant registered its INSTAGRAM trademark, including in the Republic of Korea, where the Respondent is resident. The disputed domain names, but for a ccTLD suffix and, in one case, the Second Level Domain ".com", are identical to the Complainant's INSTAGRAM trademark. "Instagram" is an invented word with no dictionary meaning, even though, as the Respondent pointed out in her initial email to the Complainant, it combines parts of the dictionary words "instant" and "telegram". The INSTAGRAM trademark was already well-known by the time the Respondent registered the disputed domain names due to the exponential growth in the number of its monthly active users. The Respondent has registered other domain names that, like the disputed domain names, combine a third party trademark with the ccTLD suffix ".ph" and, in some cases, the Second Level Domain ".com", including <pacificair.com.ph> and <tigerair.ph>. Even though the Complainant had not previously registered its trademark in the ".ph" ccTLD, it did not renounce any rights in its INSTAGRAM trademark. In view of these circumstances, the Panel is persuaded that the Respondent was aware of the INSTAGRAM trademark at the time of registration and deliberately chose to register it in the disputed domain names in bad faith.
With respect to use, the disputed domain name <instagram.com.ph> was previously offered for sale on a broker's website for USD 5,000. The Parties agreed on a lower price for both disputed domain names in June 2016. However, in an email dated February 26, 2018, the Respondent sought to increase the price to include amounts for breach of contract and time elapsed, which were not based on documented
out-of-pocket costs directly related to the disputed domain names. The Panel finds that these facts satisfy the requirements of paragraph 4(b)(i) of the Policy.
Further, both disputed domain names are parked at a landing page that displays links to other websites based on the value of the Complainant's mark. The disputed domain names operate by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of the landing pages. This use is intentional and for the commercial gain of the Respondent or the operators of the linked websites, or both. In any event, these facts satisfy the requirements of paragraph 4(b)(iv) of the Policy. See Express Scripts, Inc. v. Windgather Investments Ltd. / Mr. Cartwright, supra. Accordingly, the Panel finds that the disputed domain names are being used in bad faith.
Therefore, the Panel finds that the disputed domain names have been registered and are being used in bad faith. The Complainant has satisfied the third element in paragraph 4(a) of the Policy.
Paragraph 15(e) of the Rules, provides that if "after considering the submissions the panel finds that the complaint was brought in bad faith, for example in an attempt at Reverse Domain Name Hijacking or was brought primarily to harass the domain-name holder, the panel shall declare in its decision that the complaint was brought in bad faith and constitutes an abuse of the administrative proceeding". "Reverse Domain Name Hijacking" is defined in paragraph 1 of the Rules as "using the UDRP in bad faith to attempt to deprive a registered domain-name holder of a domain name."
The Respondent alleges that the Complainant has acted in bad faith by failing to disclose the domain name assignment agreement in the Complaint and failing to present proof of the Complainant's legal representative's authority to represent the Complainant. She also alleges that the Complainant has abused the Policy by threatening to bring this proceeding without compensation other than reimbursement of domain name registration renewal fees.
The Panel observes that the Complaint does refer to the domain name assignment agreement. Although a copy of that agreement was not provided to the Panel until requested by the Respondent, nothing in that agreement deprives the Panel of jurisdiction under the Policy, contrary to the Respondent's assertions, for the reasons stated in Section 6.1A above. The issue regarding the identity or authority of the Complainant's legal representative related to a Registry procedure for the transfer of the disputed domain names rather than to this proceeding. The Respondent's demand for compensation for alleged injury in excess of documented out-of-pocket expenses directly related to the disputed domain names is evidence of the Respondent's bad faith, for the reasons stated in Section 6.2C above.
The Panel sees nothing on the record that would indicate that the Complaint was brought in bad faith or constitutes an abuse of the administrative proceeding.
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 names, <instagram.com.ph> and <instagram.ph>, be transferred to the Complainant.
Matthew Kennedy
Sole Panelist
Date: August 24, 2018
1 See "www.dot.ph/corporate/apudrpp".