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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Instagram, LLC v. kwanyeongkim

Case No. D2018-1708

1. The Parties

The Complainant is Instagram, LLC of California, United States of America (“United States”), represented by Hogan Lovells (Paris) LLP, France.

The Respondent is kwanyeongkim of Seoul, Republic of Korea, self-represented.

2. The Domain Name and Registrar

The disputed domain name <instagramrank.com> is registered with Gabia, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 27, 2018. On July 27, 2018, the Center transmitted to the Registrar a request for registrar verification in connection with the disputed domain name. On July 30, 2018, the Registrar transmitted to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details of the registrant.

On August 2, 2018, the Center notified the Parties, in both English and Korean, that the Complaint was submitted in English, and that according to the Registrar, the language of the registration agreement is Korean. In the same notification, the Center requested the Complainant to provide, by August 5, 2018:

“1) satisfactory evidence of an agreement between the Complainant and the Respondent to the effect that the proceedings should be in English; or

2) the Complaint translated into Korean; or
3) a request for English to be the language of the administrative proceedings….”

To the Respondent, the Center stated that “if the Respondent is intending to participate in these proceedings, and/or has any comments on the Complainant’s submission replying to this notification, the Respondent is requested to submit these to the Center by August 7, 2018.” The Center also advised the Respondent:

“Specifically in the case of the Complainant submitting (or indicating that it will submit) a request for the language of proceedings to be English, and the Respondent objects to such request, the Respondent is invited to indicate that objection for the record, and to submit any arguments/supporting materials … as to why the proceedings should not be conducted in English.

Please note that if we do not hear from you by [August 7, 2018], we will proceed on the basis that you have no objection to the Complainant’s request that English be the language of proceedings.”

On August 2, 2018, the Complainant confirmed its request that the language of the proceeding should be English. On the same date, the Respondent requested, in Korean, that Korean 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, both in Korean and English, formally notified the Respondent of the Complaint, and the proceeding commenced on August 9, 2018. Regarding the language of the proceeding, the Center stated that it would: “1) accept the Complaint as filed in English; 2) accept a Response in either English or Korean; 3) appoint a Panel familiar with both languages mentioned above, if available.” In accordance with the Rules, paragraph 5, the due date for the Response was August 29, 2018. The Respondent did not submit any formal response. The Center received email communications from the Respondent, in Korean text, on August 4, 2018, and August 9, 2018. On August 31, 2018, the Center notified that the due date for the Response was August 29, 2018, and that the Center would proceed to Panel Appointment. The Center received another email communication, also in Korean, from the Respondent on September 1, 2018.

The Center appointed Professor Ilhyung Lee as the sole panelist in this matter on September 17, 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.

4. Factual Background

The Complainant, an American corporation, describes itself as “the world-renowned online photo and video sharing social networking application.” The Complainant has registered a number of INSTAGRAM marks in countries all over the world, including International Registration No. 1129314, registered on March 15, 2012, and registered in the Republic of Korea on April 17, 2013.

The Complainant is also the registrant of several domain names that contain INSTAGRAM, including <instagram.com>, which was registered on June 6, 2004.

The Respondent registered the disputed domain name <instagramrank.com> on December 12, 2017.

5. Parties’ Contentions

A. Complainant

The Complainant contends principally that: (i) the disputed domain name is identical or confusingly similar to a mark in which the Complainant has rights; (ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and (iii) the disputed domain name has been registered and is being used in bad faith. In addition, the amended Complaint states:

“Instagram is one of the fastest growing social media in the world. Instagram’s website available at www.instagram.com is ranked the 14th most visited website in the world, according to web information company Alexa.”

“Currently, Instagram has 1 billion monthly active users, with more than 95 million photos and videos shared per day. In August 2017, there were over 10 million active users in South Korea.”

“The Complainant’s INSTAGRAM trade mark is inherently distinctive and well-known throughout the world in connection with an online photo-sharing social network.”

“The Respondent is not a licensee of the Complainant, nor has he been otherwise allowed by the Complainant to make any use of the Complainant’s trade mark.”

B. Respondent

The Respondent did not submit a formal Response to the Complaint. In addition to its email dated August 2, 2018, requesting that Korean be the language of the proceeding, the Respondent subsequently sent emails to the Center on August 4, 2018, August 9, 2018, and September 1, 2018, in response to the Center’s various transmissions. In these emails, the Respondent, inter alia, asserted that it did not use the disputed domain name for an illegal purpose, suggested that it may give up rights relating to the disputed domain name, and posed questions for the Center. The Respondent’s emails of August 9, 2018 and September 1, 2018, appear to be identical.

6. Discussion and Findings

Initially, the Panel must address the language of the proceeding. Paragraph 11(a) of the Rules provides that the language of the registration agreement is the language of the administrative proceeding, unless otherwise agreed by the parties or specified in the registration agreement. The rule also states that the determination of the language is “subject to the authority of the Panel …, having regard to the circumstances of the administrative proceeding.” Here, the language of the registration agreement is Korean. Nevertheless, the Complainant requests that English be the language of the proceeding.

The Panel notes that the Respondent’s responses to a company that contacted the Respondent on the Complainant’s behalf were in English. In addition, after the Respondent requested Korean to be the language of the proceeding, the Center provided in an attachment a model response in Korean for the Respondent’s reference. Yet apart from its emails to the Center, the Respondent did not submit a Response.

In all events, the Panel will consider all of the communications and submissions by the Complainant and the Respondent, in both languages. For convenience of both parties, this decision is in English. As paragraph 11(a) allows, and as the Center notified, “The Panel may choose to write a decision in either language ….”

On the merits, in order to prevail, the Complainant must satisfy each of the three elements of paragraph 4(a) of the Policy.

A. Identical or Confusingly Similar

For the first element, the Complainant must show that the disputed domain name is identical or confusingly similar to a mark in which the Complainant has rights. There is ample evidence to establish the Complainant’s rights in the mark, INSTAGRAM. The Panel determines that the disputed domain name <instagramrank.com> is identical or confusingly similar to the Complainant’s mark. INSTAGRAM appears prominently in the disputed domain name. The addition of the generic term “rank” does not defeat confusing similarity. The generic Top-Level Domain, “.com” is a technical requirement for every domain name.

The first element of paragraph 4(a) of the Policy is demonstrated.

B. Rights or Legitimate Interests

The Complainant states that it has not authorized the Respondent to use the Complainant’s INSTAGRAM mark, and has met its initial burden of making a prima facie showing that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The burden shifts to the Respondent to demonstrate any such rights or legitimate interests. Paragraph 4(c) of the Policy provides a non-exhaustive list of circumstances that may demonstrate the Respondent’s rights or legitimate interests in the disputed domain name. The Panel is unable to ascertain any evidence that would demonstrate the Respondent’s rights or legitimate interests in the disputed domain name, as described in paragraph 4(c) of the Policy, or otherwise.

The second element of paragraph 4(a) of the Policy is present.

C. Registered and Used in Bad Faith

Under paragraph 4(a)(iii) of the Policy, the Complainant must show that the disputed domain name “has been registered and is being used in bad faith.” Paragraph 4(b) provides a non-exhaustive list of circumstances that are “evidence of the registration and use of a domain name in bad faith”.

Given the worldwide recognition and use of INSTAGRAM as a social networking application, one wonders how the Respondent selected <instagramrank.com> for its purported business. If it is possible that the Respondent could have innocently selected the disputed domain name without knowledge of the Complainant or its operations, or that its use is for a legitimate purpose, it is not supported in the record. Nor did the Respondent choose to explain by submitting a response.

The Panel can only conclude that the bad faith requirement is present in this case. The Respondent’s statement (in English) to the Complainant’s representative that “[i]f the Instagram is serious and my domain is required, paying USD 100,000 may also transfer ownership” suggests that the Respondent registered the disputed domain name for the purpose of selling it to the Complainant for valuable consideration in excess of standard out-of-pocket costs, under paragraph 4(b)(i) of the Policy.

In addition, at the time of the Complaint, the disputed domain name resolved to a website containing a login page for a search engine operated by a Korean company. The website also displayed an image for Facebook, which acquired the Complainant in 2012. The Panel determines that the Respondent has “intentionally attempted to attract, for commercial gain, Internet users to [the Respondent’s] website … by creating a likelihood of confusion with the [C]omplainant’s mark,” as set forth in paragraph 4(b)(iv) of the Policy.

The third element of paragraph 4(a) of the Policy is established.

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 name <instagramrank.com> be transferred to the Complainant.

Ilhyung Lee
Sole Panelist
Date: October 1, 2018

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