The Complainant is Instagram, LLC, United States of America (“Unites States”), represented by Hogan Lovells (Paris) LLP, France.
The Respondent is Masaki Shishino, Japan.
The disputed domain name <lnstagram.info> is registered with GMO Internet, Inc. d/b/a Discount-Domain.com and Onamae.com (the “Registrar”).
The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on August 28, 2019. On August 28, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 30, 2019, 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 August 30, 2019, the Center transmitted an email communication to the Parties, in both English and Japanese, regarding the language of the proceeding. The Complainant confirmed its request that English be the language of the proceeding on the same day. 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”), 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, in English and Japanese, and the proceedings commenced on September 6, 2019. In accordance with the Rules, paragraph 5(a), the due date for Response was September 26, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 27, 2019.
The Center appointed Erica Aoki as the sole panelist in this matter on October 25, 2019. 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 world-renowned online photo and video sharing social networking application launched on October 6, 2010 and was acquired by Facebook in April 2012. The Complainant reached over 100 million monthly active users by February 2013 and currently has over 1 billion monthly active users and 500 million daily active users, with more than 95 million photos and videos shared per day.
The Complainant is one of the fastest growing social media in the world. The Complainant’s website is available at “www.instagram.com” and is ranked as the 28th most visited website in the world and 40th in Japan according to web information company Alexa. The Complainant has also consistently ranked amongst the top apps available for mobile devices. Currently available in over 31 languages, the Instagram app is the 9th most downloaded application in Japan and 5th in the world as per App Annie Top App rankings in 2019.
The Complainant owns numerous trademark registrations in the term INSTAGRAM in many jurisdictions, throughout the world, including International Trademark Registration No. 1129314, registered on March 15, 2012 and Japanese Trademark Registration No. TS967143, registered on July 28, 2017.
The Complainant is the registrant of numerous domain names worldwide consisting of or including the term INSTAGRAM, for example, <instagram.com>.
The Respondent is the registrant of the disputed domain name <lnstagram.info>, which was registered on December 4, 2018. The disputed domain name resolves to a WordPress page template predominately in Japanese.
The Complainant contends that the disputed domain name <lnstagram.info> registered on December 4, 2018 is confusingly similar to the Complainant’s trademark since it incorporates a typosquatted version of the Complainant’s INSTAGRAM trademark (the initial “I” in the term INSTAGRAM has been replaced by “L”), which looks visually similar to the Complainant’s trademark notably when it is written in lower case. The disputed domain name is confusingly similar to the Complainant’s mark under the Policy, paragraph 4(a)(i).
Furthermore, the Complainant contends that the Respondent has no rights or legitimate interests in relation to the disputed domain name. The Respondent is not affiliated or related to the Complainant in any way, or licensed or otherwise authorized to use the Complainant’s mark in connection with a website or for any other purpose. The Respondent is not using the disputed domain name in connection with any bona fide offering of goods or services, is not generally known by the disputed domain name, and has not acquired any trademark or service mark rights in that name or mark. Accordingly, the Respondent’s registration and use of the disputed domain name has disrupted the Complainant’s business and is a clear attempt to attract Internet users to his website by creating a likelihood of confusion in accordance with paragraph 4(b)(iv) of the Policy. The Complainant asserts that the disputed domain name was registered and is being used in bad faith, in accordance with paragraph 4(a)(iii) of the Policy.
The Respondent did not reply to the Complainant’s contentions.
Considering that the disputed domain name Registration Agreement is in Japanese, pursuant to the Rules, paragraph 11(a), 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 authpority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding. Therefore, the default language of the proceedings is Japanese. However, the Complainant submitted arguments along with the Complaint as to why the proceeding should be in English.
The Complainant’s arguments on the language of the proceeding are set out in full below:
a) The Complainant is a United States corporation with English as its principal operational language;
b) The disputed domain name consists of an approximation of the Complainant’s trademark (i.e., INSTAGRAM) in Latin script;
c)The disputed domain name is currently pointing to a website partially in English (Annex 8 to the Complaint for the screen capture of the WordPress page template associated with the disputed domain name);
d)To require the Complaint and Annexes to be translated into Japanese would only lead to delay and increased costs, running contrary to the aim of the Policy of providing time- and cost-effective means of resolving domain name disputes.
On September 6, the Center notified the Complaint to the Respondent in English and Japanese and indicated:
“Given the provided submissions and circumstances of this case, the Center has decided to:
1) accept the Complaint filed in English;
2) accept a Response filed in either English or Japanese;
3) appoint a Panel familiar with both languages mentioned above, if available.”
The Center also notified the Parties that the discretion to decide the language of the proceeding is with the Panel to be appointed.
The Panel notes that the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 4.5:
“Noting the aim of conducting the proceedings with due expedition, paragraph 10 of the UDRP Rules vests a panel with authority to conduct the proceedings in a manner it considers appropriate while also ensuring both that the parties are treated with equality, and that each party is given a fair opportunity to present its case.
Against this background, panels have found that certain scenarios may warrant proceeding in a language other than that of the registration agreement. Such scenarios include (i) evidence showing that the respondent can understand the language of the complaint, (ii) the language/script of the domain name particularly where the same as that of the complainant’s mark, (iii) any content on the webpage under the disputed domain name […] (vi) potential unfairness or unwarranted delay in ordering the complainant to translate the complaint […]”
The Panel notes, in the present case, the disputed domain name is composed of Latin script and is a typosquatting of the Complainant’s mark. Moreover, the Respondent failed to file any response to object the Complainant's language request nor objected to the Center’s decision on the language of the proceeding. In this sense, the Panel may consider that the Respondent’s failure to respond to this notice, can lead to the decision of the Panel to elect to proceed in favor of the language of the Complaint. See for example, the panel’s decision in Zappos.com, Inc. v. Zufu aka Huahaotrade, WIPO Case No. D2008-1191.
Also, the Center’s dual languages approach has provided the Respondent with ample opportunity to object to the Complaint being filed in English and to file a Response in Japanese. The Respondent failed to respond and the lack of any communication as to language of the proceeding from the Respondent and considering that the main issues of the present case being strongly in favor of the Complainant and translating the Complaint would cause unnecessary delays and expense, the Panel has decided to issue the decision in English.
In order for the Complainant to obtain the transfer of the disputed domain name, it has to satisfy the following requirements specified under paragraph 4(a) of the Policy:
(i) that the disputed domain name is identical or confusingly similar to a trademark or service mark in respect of which the Complainant has rights; and
(ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) that the disputed domain name has been registered and is being used in bad faith.
Based on the facts presented by the Complainant, the Panel finds that the disputed domain name is confusingly similar to a mark in which the Complainant has rights, as required under paragraph 4(a)(i) of the Policy. The Panel finds that the disputed domain name is confusingly similar to the Complainant’s registered trademark, as the disputed domain name consists of the Complainant’s INSTAGRAM mark with a typosquatted version (the initial “I” in the term INSTAGRAM has been replaced by “L”).
Accordingly, the Panel finds that the Complainant has satisfied the first element of the Policy.
The Panel finds the following on the record in this proceeding:
- The Respondent is in default and thus has made no affirmative attempt to show any rights or legitimate interests in the disputed domain name;
- The Respondent is in no way connected with the Complainant and has no authorization to use any of the Complainant’s trademarks; and
- There is no evidence that the Respondent is or was commonly known by the disputed domain name as an individual, business or other organization.
Thus, in the Panel’s view, the Complainant has made a prima facie case that the Respondent has no rights or legitimate interests in respect of the disputed domain name. There is no evidence of 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.
Further, the Panel notes that the Respondent has not used the disputed domain name in connection with a legitimate noncommercial or fair use activity.
The Panel therefore finds that the Respondent has no rights or legitimate interests in the disputed domain name, under paragraph 4(a)(ii) of the Policy.
The Complainant contends that the Respondent has registered and used the disputed domain name in bad faith. The Panel notes that given the distinctiveness and notoriety of the Complainant’s INSTAGRAM trademark worldwide, there is likely no reasonable explanation for the Respondent to have registered this disputed domain name other than to attract, for commercial gain, Internet users to the website associated with the disputed domain name by creating confusion with the Complainant’s brand. Although the disputed domain name resolves to a WordPress page template without developed content other than displaying the message, “Hello world! 2018 年 12 月 7 日WordPress へようこそ。これは最初の投稿です。編集もしくは削除してブログを始めてください !” (Welcome to WordPress. This is the first post. Edit or delete it and start blogging!), the Panel finds that in this case, passive holding of the disputed domain name does not prevent a finding of bad faith. In addition, the Complainant contends that the Respondent’s incomplete contact information at the time of registering the disputed domain name is indicative of bad faith.
Accordingly, the Panel finds that the Respondent registered and is using the disputed domain name in bad faith, under paragraph 4(a)(iii)of the Policy.
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 <lnstagram.info> be transferred to the Complainant.
Erica Aoki
Sole Panelist
Date: November 7, 2019