.The Complainant is Instagram, LLC, United States of America (“United States” or “U.S.”), represented by Hogan Lovells (Paris) LLP, France.
The Respondents are Registration Private, Domains By Proxy, LLC, United States / Yan Jiang, Republic of Korea and Whois Domain Admin, Republic of Korea / Li Dan, Republic of Korea, represented by Woomyon LLP, Republic of Korea.
The disputed domain name <인스타고수.com> (xn--299ak61b7lao3nqon.com) is registered with GoDaddy.com, LLC. The disputed domain name <instagosu.com> is registered with YesNIC (collectively, the “Registrars”).
The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on August 6, 2020. On August 7, 2020, the Center transmitted by email to the Registrars a request for registrar verification in connection with the disputed domain names. On August 10, 2020, the Registrars transmitted by email to the Center their verification responses confirming that the Respondents are listed as the registrants and providing the contact details.
On August 18, 2020, the Center notified the Parties in both English and Korean that the language of the registration agreement for the disputed domain name <instagosu.com> is Korean. On August 18, 2020, the Complainant requested for English to be the language of the proceeding. On August 22, 2020, the Respondent requested for Korean to be 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 in English and Korean of the Complaint, and the proceedings commenced on August 25, 2020. In accordance with the Rules, paragraph 5, the due date for Response was September 14, 2020. The Center received an informal email communication from the Respondent on August 26, 2020. The Response was filed with the Center on September 14, 2020.
The Center appointed Moonchul Chang as the sole panelist in this matter on September 28, 2020. 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, Instagram, LLC, is a world widely known U.S. online photo and video sharing social networking application, which was launched in 2010 and acquired later by Facebook. The Complainant has obtained registrations for the INSTA trademarks in numerous countries including the U.S. (e.g., Registration 5061916, registered on October 18, 2016), Republic of Korea (e.g., INSTA Registration No. 4012107130000, registered on October 21, 2016; 인스타Registration No. 4015461870000, registered on November 21, 2019) and European Union (e.g., Registration No. 014810535, registered on May 23, 2018).
The Respondents had concealed their contact details under a privacy shield. According to the Registrars’ verification responses, the disputed domain name <인스타고수.com> (xn--299ak61b7lao3nqon.com) was registered on November 5, 2019 and the disputed domain name <instagosu.com> on July 16, 2018. The disputed domain names redirect to websites offering Instagram “followers” and “likes” for sale.
The Complainant contends that:
(1) The disputed domain names are identical or confusingly similar to the Complainant’s trademarks because they contain 인스타 (the Korean transliteration of “insta”) or INSTA mark in its entirety. The disputed domain name <인스타고수.com> (xn--299ak61b7lao3nqon.com) incorporates the Complainant’s 인스타 trademark in its entirety with the addition of the dictionary term “고수” (“expert” in Korean characters). The disputed domain name <instagosu.com> incorporates the Complainant’s INSTA trademark in its entirety with the addition of the dictionary term “gosu” (“expert” in Korean). The Complainant’s INSTA and 인스타 trademarks are recognizable as the leading elements of the disputed domain names. The addition of the term “gosu” or its Korean transliteration “고수” would not prevent a finding of confusing similarity under the first element.
(2) The Respondents have no rights or legitimate interests in the disputed domain names. The Complainant has never authorized the Respondents to register or use the disputed domain names or the Complainant’s trademarks. The Respondents are not using or had demonstrable preparation to use the disputed domain names in connection with a bona fide offering of goods or services. Rather, the disputed domain names are used to redirect or resolve to websites promoting the sale of “followers” and “likes” for social media services, notably including Instagram, which involves fraudulent operations and damages the reputation of the Complainant. In addition, the Respondents are not commonly known by the disputed domain names. Given the Respondents’ abusive use of the disputed domain names as mentioned above, the Respondents are not making a legitimate noncommercial or fair use of the disputed domain names.
(3) The disputed domain names were registered and are being used by the Respondents in bad faith. Firstly, at the time of registration of the disputed domain names, the Respondents had constructive knowledge of the Complainant’s trademarks. The Complainant’s INSTA and its Korean transliteration 인스타 trademarks are highly distinctive and well known around the world including in the Republic of Korea where the Respondents are based. Secondly, the Respondents have engaged in a pattern of cybersquatting conduct in bad faith by registering not only the disputed domain names but also another domain name <xiaomithemoney.com> targeting a third party trademark for the purpose of preventing the trademark owner from reflecting its trademark in corresponding domain names.
Thirdly, the Respondent has used the disputed domain names to intentionally attract, for commercial gain, Internet users to the websites associated with the disputed domain names by creating a likelihood of confusion with the Complainant’s trademarks as to the source, sponsorship, affiliation, or endorsement of such websites. The disputed domain names are being used by the Respondents to redirect Internet users to their websites offering Instagram “followers” and “likes” for sale. The website to which the disputed domain name <인스타고수.com> (xn‑-299ak61b7lao3nqon.com) redirects also displays the favicon in the URL, which has the same “feel and look” as the Complainant’s distinctive favicon .
Fourthly, the Respondents’ sale of purported Instagram “likes” and “followers” is likely to involve some type of fraudulent operation such as creation of fake accounts or hacking into existing accounts. In addition, such sale of Instagram “likes” and “followers” is also destroying the authenticity of the user experience provided by the Complainant’s social network and breaches Instagram’s Terms of Use. Finally, the Respondents’ use of the privacy shield to conceal their contact details further to the Complainant’s cease and desist letter also indicates bad faith.
The Respondents contend that:
(1) The disputed domain names are not identical to the Complainant’s trademarks. While the Korean term “인스타” or the English word “insta” of the disputed domain names appear to be identical to the Complainant’s trademarks, the term “고수” or “gosu” is entirely different from the Complainant’s trademarks. Since the word “고수” or its English transliteration “gosu” refers to a person eminently skilled in a field or a group like an English word “master”, “인스타고수” or its English transliteration “instagosu” connotes a master of Instagram. The Korean search engines of “Naver” or “Daum” also recognize the word “인스타고수” as sites of the Respondents or a master of Instagram rather than as the Complainant’s trademarks.
(2) The Respondents have rights or legitimate interests in the disputed domain names. The disputed domain names were legitimately registered and are being used to operate their websites for a registered business, which assists Internet users with increasing the number of Instagram “likes” and “followers”. The registration of the disputed domain names is neither purposed for cybersquatting conduct nor for fraudulent operations.
(3) The disputed domain names were registered and are being used by the Respondents in good faith. The commercial business of the Respondents mainly provides Internet users of popular SNS platforms such as Instagram, Youtube, and Tiktok with SNS accounts managing and marketing services at a fixed small cost. Since the Respondents are not competitors of SNS service providers to the Complainant, there is no possibility of creating a likelihood of confusion with the Complainant’s business and no intention to take advantage of the popularity and reputation of the Complainant’s trademarks. Rather, the Respondents’ online business with the disputed domain names may be beneficial to the Complainant’s Instagram services by increasing the number of Instagram users.
The Panel has considered the possible consolidation of the Complaint for the disputed domain names at issue. According to section 4.11.2 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), “Where a complaint is filed against multiple respondents, panels look at whether (i) the domain names or corresponding websites are subject to common control, and (ii) the consolidation would be fair and equitable to all parties. Procedural efficiency would also underpin panel consideration of such a consolidation scenario”.
The Panel notes the following factors of the disputed domain names and arguments submitted by the Complainant in favor of the consolidation: (i) the websites associated with the two disputed domain names both refer to the company “Ad People” and display the same contact information; (ii) the internationalized disputed domain name <인스타고수.com> (xn-299ak61b71ao3nqon.com) can be displayed as “인스타고수” in Unicode which is the Korean transliteration of “instagosu”; (iii) both disputed domain names went under privacy during the same period; (iv) both disputed domain names target the Complainant’s INSTA trademark (or its Korean transliteration 인스타) and were registered under the generic Top-Level Domain (“gTLD”) “.com”; (v) many of the Complainant’s substantive arguments against these two Respondents are the same.
Considering all the above, the Panel notes that, as the Complainant has argued, there appears prima facie to be one single Respondent in the same entity. Furthermore, the Respondents did not submit any arguments to rebut this inference. The Panel finds therefore that consolidation is fair to both Parties, as the Respondents have been given an opportunity to object to consolidation through the submission of their Response but have chosen not to do that (see Virgin Enterprises Limited v. LINYANXIAO aka lin yanxiao, WIPO Case No. D2016-2302).
According to paragraph 11 of the Rules, the language of the administrative proceeding shall be the language of the registration agreement unless the Panel determines otherwise or is otherwise agreed to by the Parties. In this present case, the Registrar YesNIC confirmed that the language of the registration agreement for the disputed domain name <instagosu.com> is Korean.
However, the Complaint was filed in English. The Complainant requests that the language of proceeding be English for the following reasons: (i) the disputed domain name <instagosu.com>, for which the registration agreement is both in English and in Korean, consists of Latin letters rather than Korean characters; (ii) the Complainant’s cease and desist letter, the reply sent by the Respondents’ lawyer and correspondence between the Parties were all in English, which proves that the Respondents have a good understanding of English; and (iii) it would be disproportionate to require the Complainant to translate and submit the Complaint in Korean as this would result in additional expenses and unnecessary delay for the proceedings. On the other hand, the Respondents request to conduct the administrative proceeding in Korean because the language of the registration agreement is Korean and the Respondents do not understand English.
Here, the Panel observes that the Center, for its part, has communicated with the Parties in a bilingual manner in both English and Korean concerning all of the various steps and requirements thus far in the administrative proceeding. The spirit of paragraph 11 of the Rules is to ensure fairness in the selection of the language of the proceeding by giving full consideration, inter alia, to the parties’ level of comfort with each language, expenses to be incurred, and possibility of delay in the proceeding in the event translations are required, and other relevant factors.
In consideration of the above circumstances and in the interest of fairness to both Parties, the Panel concludes, in view of all of the above, that it will accept the Complaint as filed in English, the Response as filed in Korean, and that it is appropriate to render this Decision in English.
Under paragraph 4(a) of the Policy, the Complainant must demonstrate that the three elements enumerated in paragraph 4(a) of the Policy have been satisfied. These elements are that:
(i) the disputed domain names are identical or confusingly similar to the Complainant’s trademark or service mark; and
(ii) the Respondents have 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.
The disputed domain name <인스타고수.com> (xn--299ak61b7lao3nqon.com) incorporates the Complainant’s 인스타 trademark in its entirety with the addition of the dictionary term “고수” (English transliteration “gosu”). The disputed domain name <instagosu.com> incorporates the Complainant’s INSTA trademark in its entirety with the addition of the dictionary term “gosu” (Korean transliteration “고수”). The dominant feature of the disputed domain names is INSTA or 인스타, which is identical to the Complainant’s trademarks and the word “gosu” or “고수” is only a dictionary term. The addition of other terms such as “gosu” or “고수” would not prevent a finding of confusing similarity under the first element. Numerous UDRP panels have held that where a domain name substantially incorporates a complainant’s trademark, this is sufficient to make the domain name “confusingly similar” within the meaning of the Policy (section 1.7 of WIPO Overview 3.0). The gTLD suffix “.com” can be disregarded under the confusing similarity test (see DHL Operations B.V. v. zhangyl, WIPO Case No. D2007-1653).
Accordingly, the Panel finds that the first element under paragraph 4(a) of the Policy has been met by the Complainant.
Under paragraph 4(a)(ii) of the Policy, the overall burden of proof is on the Complainant. However, once the Complainant presents a prima facie case that the Respondents have no rights or legitimate interests in the disputed domain names, the burden of production shifts to the Respondents to come forward with relevant evidence demonstrating rights or legitimate interests (section 2.1 of WIPO Overview 3.0).
Firstly, the Complainant contends that it has never licensed or authorized the Respondents to use the Complainant’s trademarks or to register any domain names incorporating the INSTA or 인스타 mark, but that the Respondents have used the Complainant’s trademarks without permission of the Complainant. Here, the Panel finds that the Complainant has made out a prima facie case.
Secondly, the Complainant contends that the Respondents are not using the disputed domain names in connection with a bona fide offering of goods or services. Rather, the Respondents have registered and used the disputed domain names for the purpose of selling “followers” and “likes” for social media services including Instagram, for a profit. In the meantime, the Respondents allege that the disputed domain names were legitimately registered and are being used to operate their websites for online business of the sale of “followers” and “likes” for social media services including Instagram. The Panel finds that the Respondents are not making a legitimate noncommercial or fair use of the disputed domain names, and it is presumed that the Respondents’ business involves fraudulent operations and damages the reputation of the Complainant.
Thirdly, there is no evidence to suggest that the Respondents have been commonly known by the disputed domain names.
Accordingly, the Panel concludes that the Complainant has satisfied the second element under paragraph 4(a) of the Policy in the present case.
Paragraph 4(a)(iii) of the Policy requires that the disputed domain names have been registered and are being used in bad faith. Hence, the Complainant must establish both bad faith registration and bad faith use of the disputed domain names. In addition, the circumstances listed in paragraph 4(b) of the Policy are not exclusive, and other circumstances may likewise lead to a finding of bad faith registration and use.
Firstly, since the Complainant’s INSTA and 인스타 marks are widely well known in many countries including the Republic of Korea, the Respondents registered the disputed domain names with actual notice of the Complainant’s trademarks and its business. Therefore, the Respondent in all likelihood registered the disputed domain names with the expectation of taking advantage of the reputation of the Complainant’s trademarks.
Secondly, the disputed domain names are being used with bad faith by the Respondents to redirect Internet users to their websites offering Instagram “followers” and “likes” for sale. Here, the Respondents’ sale of purported Instagram “likes” and “followers” is likely to involve some type of fraudulent operation and constitutes bad faith use of the disputed domain names. In addition, such sale of Instagram “likes” and “followers” is also destroying the authenticity of the user experience provided by the Complainant’s social network and breaches Instagram’s Terms of Use.
Finally, having considered the Respondent’s registration of another domain name incorporating a third-party famous trademark, the Panel finds that these registrations constitute a typical pattern of cybersquatting in bad faith.
Accordingly, the Panel concludes that the Complainant has satisfied the third element under paragraph 4(a) of the Policy in the present case.
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, <인스타고수.com> (xn--299ak61b7lao3nqon.com) and <instagosu.com>, be transferred to the Complainant.
Moonchul Chang
Sole Panelist
Date: October 19, 2020