WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Instagram, LLC v. lu xixi, PRIVATE

Case No. D2015-1168

1. The Parties

The Complainant is Instagram, LLC of Menlo Park, California, United States of America, represented by Kilpatrick Townsend & Stockton LLP, United States of America.

The Respondent is lu xixi, PRIVATE of Beijing, China.

2. The Domain Name and Registrar

The disputed domain name <instagram.mobi> is registered with Vautron Rechenzentrum AG. The disputed domain names <instgra.com> and <intagrm.com> are registered with eName Technology Co., Ltd.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 8, 2015. On July 8 and 9, 2015, the Center transmitted by email to Vautron Rechenzentrum AG and eName Technology Co., Ltd. (the “Registrars”) a request for registrar verification in connection with the disputed domain names. On July 9, 2015, the Registrars transmitted by email to the Center their verification responses respectively confirming that the Respondent is listed as the registrant and providing the contact details.

On July 13, 2015, the Center sent an email communication to the parties in both Chinese and English regarding the language of the proceeding of disputed domain names <instgra.com>and <intagrm.com>. On the same day, the Complainant confirmed its request that English be the language of the proceeding. The Respondent did not comment on the language of the proceeding by the specified due date.

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(a) and 4(a), the Center formally notified the Respondent of the Complaint in both Chinese and English, and the proceeding commenced on July 21, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was August 10, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 11, 2015.

The Center appointed Sok Ling MOI as the sole panelist in this matter on August 14, 2015. 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

The Complainant is a US-based company that provides photo and video sharing and editing services through its social networking platform. Since the successful launch of its Instagram service in October 2010, the Complainant has become a global leader in photography and social networking for mobile devices, boasting over 300 million active users worldwide. The brand and trade mark INSTAGRAM was first used in commerce on October 6, 2010.

The Complainant is the owner of numerous trade mark registrations for the trade mark INSTAGRAM worldwide, including the following:

The Complainant owns a portfolio of domain names incorporating the trade mark INSTAGRAM, including the following:

The disputed domain names <instagram.mobi>, <instgra.com> and <intagrm.com> were registered on January 5, 2011, July 21, 2012, July 21, 2012 respectively, at least three months after the Complainant’s INSTAGRAM trade mark was first used in commerce in the United States of America. According to the evidence provided by the Complainant and as was the case at the date of this decision, the disputed domain names resolves to a parking page with commercial links to third party websites.

5. Parties’ Contentions

A. Complainant

The Complainant has established exclusive rights in the trade mark INSTAGRAM as of the launch of its Instagram service in October 2010. Due to Instagram’s phenomenal exponential growth and immense popularity, it has become an internationally well known and famous mark, recognised by consumers as distinguishing the services of the Complainant.

A1. The disputed domain names are identical or confusingly similar to a trade mark or service mark in which the Complainant has rights:

The disputed domain name <instagram.mobi> incorporates the Complainant’s trade mark INSTAGRAM in its entirety and this is sufficient to establish that identity or confusing similarity.

The disputed domain name <instgra.com> consists of a misspelling of the trade mark INSTAGRAM, by missing the fourth letter “a” and the last letter “m”. The disputed domain name <intagrm.com> also consists of a misspelling of the trade mark INSTAGRAM by missing the third letter “s” and eighth letter “a”. This renders the disputed domain names confusingly similar to the Complainant’s trade mark.

A2. The Respondent has no rights or legitimate interests in respect of the disputed domain names:

The Respondent is using the disputed domain names to direct Internet traffic to a parked webpage containing sponsored links to third party websites, presumably to derive pay-per-click revenue. Previous UDRP panels have consistently held that such use does not constitute a bona fide offering of goods or services.

The Respondent’s name is “lu xixi” which does not remotely correspond to the disputed domain names. The Respondent is not commonly known by the disputed domain names.

The disputed domain names consist of intentional misspellings constituting classic “typosquatting”. Use of such disputed domain names to divert Internet traffic away from the Complainant’s website is neither legitimate nor fair.

A3. The disputed domain names were registered and are being used in bad faith:

The Respondent’s registration and use of the disputed domain names to redirect unsuspecting Internet users to parked websites with sponsored links to third-party commercial websites for commercial gain, is a classic example of typosquatting. Typosquatting alone is sufficient to prove bad faith.

The Respondent undoubtedly registered the disputed domain names in bad faith with actual knowledge of the Complainant’s rights in its INSTAGRAM trade mark because the INSTAGRAM trade mark is internationally recognized.

The Respondent is using the disputed domain names to capture click-through revenue. This is evidence of bad faith.

The Respondent has demonstrated a pattern of bad faith use and registration as it has a portfolio of domain names that consist of names confusingly similar to other well-known trade marks.

For all of the above reasons, the Complainant requests the transfer of the disputed domain names.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

6.1 Language of the Proceeding

Pursuant to paragraph 11(a) of the Rules, unless otherwise agreed by the parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding.

Paragraph 10(b) and (c) of the Rules requires the Panel to ensure that the proceeding takes place with due expedition and that the parties are treated fairly and given a fair opportunity to present their respective case.

The language of the Registration Agreement for the disputed domain names <instgra.com> and <intagrm.com> is Chinese. From the evidence on record, no agreement appears to have been entered into between the Complainant and the Respondent regarding the language issue. The Complainant filed its Complaint in English and has requested that English be the language of the proceeding for the following reasons:

(a) The said disputed domain names are registered in connection with the generic Top-Level Domain (“gTLD”) “.com” which primarily targets English-speaking Internet users.

(b) The contents displayed on the websites to which the said disputed domain names resolved are in English. This suggests that the Respondent is capable of corresponding in English.

(c) To require the Complainant to translate the Complaint into Chinese would unfairly disadvantage the Complainant.

On the record, the Respondent appears to be a Chinese individual and is thus presumably not a native English speaker, but the Panel finds persuasive evidence in the present proceeding to suggest that the Respondent has sufficient knowledge of English. In particular, the Panel notes that:

(a) the disputed domain names <instgra.com> and <intagrm.com> are registered in Latin characters, rather than Chinese script;

(b) the language of the Registration Agreement of the other disputed domain name <instagram.mobi> registered by the Respondent is English; and

(c) the Respondent has registered more than 200 other domain names consisting of Latin characters, for example <awesomeshop.cn>, <besomebody.cn>, <bitcoinbenefit.com>, <brightkite.cn>, <bufferbox.cn>, <checkbook.cn> and <cloudprocessing.cn>, based on the reverse WhoIs lookup information provided by the Complainant.

Additionally, the Panel notes that:

(a) the Center has notified the Respondent of the proceeding in both Chinese and English;

(b) the Respondent has been given the opportunity to present its case in this proceeding and to respond to the issue of the language of the proceeding but has chosen not to do so; and

(c) the Center informed the Respondent that it would accept a Response in either English or Chinese.

Considering the above circumstances, 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 his or her ability to articulate the arguments for this case.

The Panel has taken into consideration the fact that to require the Complaint and all supporting documents to be re-filed in Chinese would in the circumstances of this case cause an unnecessary cost burden to the Complainant and unfairly disadvantage the Complainant. The proceeding would be unnecessarily delayed.

Having considered all the matters above, the Panel determines under paragraph 11(a) of the Rules that (i) it shall accept the Complaint and all supporting materials as filed in English; and (ii) English shall be the language of the proceeding and the decision will be rendered in English.

6.2 Discussion and Findings

Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following three elements to obtain an order for the disputed domain names to be transferred:

(i) the disputed domain names registered by the Respondent are identical or confusingly similar to a trade mark or service mark in which the Complainant has rights;

(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.

On the basis of the evidence introduced by the Complainant, the Panel concludes as follows:

A. Identical or Confusingly Similar

The Panel accepts that the Complainant has unregistered trade mark rights in INSTAGRAM by virtue of its use (since October 2010) for purposes of the Policy and is also the owner of numerous trade mark registrations worldwide for the same mark.

The disputed domain name <instagram.mobi> incorporates the Complainant’s trade mark INSTAGRAM in its entirety without more at the second level.

The Panel accepts the Complainant’s argument that the disputed domain names <instgra.com> and <intagrm.com> each consists of a misspelling of the trade mark INSTAGRAM. The consensus view of previous UDRP panels is that a domain name which contains a common or obvious misspelling of a trade mark will normally be found to be confusingly similar to such trade mark, where the misspelled trade mark remains the dominant or principal component of the domain name. The Panel agrees with this consensus view and finds that the trade mark INSTAGRAM remains identifiable in the disputed domain names despite the misspellings.

The addition of the gTLDs “.mobi” and “.com” does not serve to distinguish the disputed domain names from the Complainant’s trade mark, and is disregarded for the purpose of the similarity assessment in this case.

Consequently, the Panel finds the disputed domain name <instagram.mobi> is identical with the Complainant’s trade mark while the other two disputed domain names are confusingly similar with the Complainant’s trade mark.

Accordingly, the Complainant has satisfied the requirements of the first element under paragraph 4(a) of the Policy.

B. Rights or Legitimate Interests

Under paragraph 4(a)(ii) of the Policy, the Complainant bears the burden of establishing that the Respondent lacks rights or legitimate interests in the disputed domain names. However, once the Complainant makes a prima facie showing under paragraph 4(a)(ii) of the Policy, the burden of production shifts to the Respondent to establish its rights or legitimate interests in the disputed domain names by demonstrating any of the following, without limitation, under paragraph 4(c) of the Policy:

(i) before any notice to it of the dispute, the Respondent’s use of, or demonstrable preparations to use, the disputed domain names or a name corresponding to the disputed domain names in connection with a bona fide offering of goods or services; or

(ii) the Respondent has been commonly known by the disputed domain names, even if it 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 names, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.

(See Taylor Wimpey PLC, Taylor Wimpey Holdings Limited v. honghao internet foshan co, ltd, WIPO Case No. D2013-0974.)

There is no evidence that the Respondent is commonly known by the disputed domain names.

Each of the disputed domain names resolves to an active website, which appears to be a parking page, containing links to third party websites. The consensus view of previous UDRP panels is that use of a domain name to post parking and landing pages or pay-per-click links may be permissible in some circumstances, but would not of itself confer rights or legitimate interests arising from a “bona fide offering of goods or services” or from “legitimate noncommercial or fair use” of the domain name. This is especially so where such links result in a connection to goods or services competitive with those of the Complainant.

The Panel notes a disclaimer on the parking page stating that “the sponsored listings displayed above are served automatically by a third party”. This is a system inherently likely to result in the display of sponsored links in the field of commercial activity of a company whose mark corresponds to the domain name, including links to that company’s competitors. Therefore, such use of the disputed domain names is neither legitimate nor fair.

The consensus view of previous UDRP panels is that a domain name registrant is normally deemed responsible for content appearing on a website at its domain name, even if such registrant may not be exercising direct control over such content - for example, in the case of advertising links appearing on an “automatically” generated basis. Therefore, the Respondent is deemed responsible for the content that appears at the disputed domain names.

The Panel is therefore satisfied that the Complainant has made out a prima facie case showing that the Respondent lacks rights or legitimate interests in the disputed domain name.

The Respondent has however failed to respond.

Accordingly, the Complainant has satisfied the requirements of the second element under 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 names in bad faith, namely:

(i) circumstances indicating that the Respondent has registered or acquired the disputed domain names primarily for the purpose of selling, renting, or otherwise transferring the domain name registrations to the Complainant who is the owner of the trade mark or service mark or to a competitor of the Complainant, for valuable consideration in excess of the Respondent’s documented out-of-pocket costs directly related to the disputed domain names; or

(ii) the Respondent has registered the disputed domain names in order to prevent the owner of the trade mark or service mark from reflecting the mark in a corresponding domain name, provided that the Respondent has engaged in a pattern of such conduct; or

(iii) the Respondent has registered the disputed domain names primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the disputed domain names, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the Respondent’s websites or other on-line location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s websites or location or of a product.

The Complainant and its trade mark INSTAGRAM enjoy a worldwide reputation. The Complainant’s brand and trade mark was first used in commerce on October 6, 2010. A cursory Internet search would have disclosed the INSTAGRAM trade mark and its extensive use by the Complainant (now totaling over-300 million users). Thus a presumption arises that the Respondent was aware of the Complainant’s INSTAGRAM trade mark when it registered the disputed domain names.

With the sponsored links on the Respondent’s website, there is a presumption that the Respondent or a third party stands to profit from advertising or pay-per-click revenue. This is clearly an arrangement that seeks to unfairly capitalise on the trade mark value of the Complainant’s INSTAGRAM trade mark. In this case, a diversionary use of the Complainant’s trade mark for commercial gain is evidence of bad faith.

The Panel accepts the Complainant’s argument that “instgra” and “intagrm” are obvious and common misspellings of the Complainant’s trade mark INSTAGRAM. Internet users attempting to enter the URL address for the Complainant’s website at “www.instagram.com” in a browser and making a minor typographical error will be diverted to the Respondent’s websites instead. This is indeed a classic example of typo-squatting, which may in itself be indicative of bad faith registration and use.

Furthermore, the Panel notes, based on the reverse WhoIs look up information provided by the Complainant which, that the Respondent has registered a number of domain names comprising misspellings of known trade marks, such as <dnapchat.com>, <snabchat.com>, <snapchad.com>, <snapchit.com> and <pintereast.com>.

The Panel therefore determines that the Respondent has intentionally attempted to attract for commercial gain Internet users to its website by creating a likelihood of confusion with the Complainant’s mark as to source, sponsorship, affiliation, or endorsement of the Respondent’s website. A such, the Panel finds that the circumstances referred to in paragraph 4(b)(iv) of the Policy are applicable to the present case.

Taking into account all other relevant circumstances, it is adequate to conclude that the Respondent has registered and used the disputed domain names in bad faith.

Accordingly, the Complainant has satisfied the requirements of the third element under paragraph 4(a) of the Policy.

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 names <instagram.mobi>, <instgra.com> and <intagrm.com> be transferred to the Complainant.

Sok Ling MOI
Sole Panelist
Date: September 3, 2015