WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Instagram, LLC v. Whois Privacy, Private by Design, LLC / Yong Sik Choi
Case No. D2020-2744
1. The Parties
The Complainant is Instagram, LLC, United States of America (“United States”), represented by Hogan Lovells (Paris) LLP, France.
The Respondent is Whois Privacy, Private by Design, LLC, United States / Yong Sik Choi, Republic of Korea.
2. The Domain Names and Registrar
The disputed domain names <igreels.cyou> and <igreels.net> are registered with Porkbun LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 20, 2020. On October 20, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 20, 2020, the Registrar transmitted by email to the Center its verification response:
(a) confirming it is the Registrar for the disputed domain names;
(b) disclosing registrant and contact information for the disputed domain names which differed from the named Respondent and contact information in the Complaint;
(c) stating the registration agreements are in English;
(d) confirming that the registration agreements included acknowledgements that the disputed domain names were registered subject to the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”).
The Center sent an email communication to the Complainant on October 22, 2020, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on October 27, 2020.
The Center verified that the Complaint, together with the amended Complaint, satisfied the formal requirements of 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, and the proceedings commenced on November 6, 2020. On November 6, 2020, the Center received email communications from Dan.com. In accordance with the Rules, paragraph 5, the due date for Response was November 26, 2020. The Respondent did not submit any response. Accordingly, pursuant to paragraph 6 of the Rules, the Center notified the Parties that it would proceed with the panel appointment process on November 27, 2020.
The Center appointed Warwick A. Rothnie as the sole panelist in this matter on December 3, 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.
4. Factual Background
The Complainant operates the well-known online photo and video sharing service under or by reference to “Instagram”. It launched its service on October 6, 2010. The service currently has over 1 billion active monthly users and 500 million daily active users. According to the Complaint, more than 95 million photos and videos are shared each day.
According to Alexa, the web information company, the Complainant’s website at “www.instagram.com” is the 25th most visited website in the world and ranks 31 in the Republic of Korea.
According to the Complaint, “IG” is commonly used as an abbreviation for the Complainant’s name, Instagram. In support of that claim, the Complainant has submitted a number of online media dictionaries and the like. Another UDRP panelist accepted in Instagram, LLC v. Orhan Uzdu, WIPO Case No. D2019-2806, that “IG” “is generally used for the abbreviation of INSTAGRAM”.
On January 31, 2019, the Complainant registered European Union Trademark No. 017946393, IG, in respect of downloadable mobile applications related to its service in International Class 9 and corresponding services in International Classes 42 and 45 (the “EUTM”).
On November 12, 2019, the Complainant launched a new video-music feature under the name “Instagram Reels”. In addition to its publicizing on its own site, the launch generated media attention that day including in online publications such as TechCrunch and Business Insider, which saw it as a response to competition from the TikTok online video sharing service.
On November 13, 2019, the Respondent registered the first disputed domain name, <igreels.net>. The first disputed domain name resolves to a website at “www.Dan.com”, a domain name reseller. The first disputed domain name is offered for sale at this website for USD1,500. This disputed domain name is also offered for sale on a number of other websites.
Dan.com identifies the person offering the first disputed domain name for sale as “Private seller” under the name “Reiwaing.com”.
From at least December 7, 2019, Reiwang.com was also offering for sale the domain name <igreels.com>. The page for this domain name on the Reiwaing.com website invited an offer for purchase. Immediately under this, it stated:
“Domain Effective for Global Trends IGReels.com Selling
“Keywords: Instagram Reels”
Then followed an extract from a news story headed “Instagram Stories launches TikTok clone Reels in Brazil”. The domain name was also listed on the Godaddy Auctions website inviting a minimum offer of USD 1,000.
After the Complainant’s representatives sent a cease and desist letter in respect of this domain name on July 13, 2020, however, the registration of <igreels.com> was transferred to a third party.
The second disputed domain name, <igreels.cyou>, was registered on September 12, 2020. It resolves to the home page on the Reiwaing.com website. The second disputed domain name is also offered for sale on the Dan.com domain reseller website. Unlike the first disputed domain name and the domain name <igreels.com>, however, no price is listed. Instead, there is just the invitation “Make offer”. Of the domain names listed for Reiwaing.com, this appears to be the only Reiwaing.com domain name for which a price, or minimum price, is not specified.
The Reiwaing website also offers for sale a number of other domain names. A number of these appear to be descriptive terms such as <millennial.cyou> and <hotairballon.cyou>. Others, however, are domain names which appear to incorporate well-known trademarks. These include <amazonlive.stream>, <gopro.cyou>, <tiktoker.cyou> and <xiaomilive.stream>. The Respondent has also been found to have registered and used other domain names in bad faith on at least four occasions:
(a) Calvin Klein Trademark Trust and Calvin Klein, Inc. v. Private By Design, LLC / Yong Sik Choi, WIPO Case No. D2019-2483 (<calvinklein.buzz>);
(b) Compagnie Générale des Etablissements Michelin v. Private by Design, LLC / Yong Sik Choi, WIPO Case No. D2020-1280 (<michelin.buzz>);
(c) Bulgari S.p.A. v. Whois Privacy, Private by Design, LLC / Yong Sik Choi, WIPO Case No. D2019-1901 (<bvlgari.blog>); and
(d) L’Oréal v. Private by Design, LLC / Yong Sik Choi, WIPO Case No. D2019-3154 (<loreal.blog>).
5. Discussion and Findings
No response has been filed. The Complaint has been sent, however, to the Respondent at the physical and electronic coordinates confirmed as correct by the Registrar in accordance with paragraph 2(a) of the Rules. The courier delivery appears to have been signed for by a person using the Respondent’s name. The Panel therefore finds that the Respondent has been given a fair opportunity to present her, his or its case.
When a respondent has defaulted, paragraph 14(a) of the Rules requires the Panel to proceed to a decision on the Complaint in the absence of exceptional circumstances. Accordingly, paragraph 15(a) of the Rules requires the Panel to decide the dispute on the basis of the statements and documents that have been submitted and any rules and principles of law deemed applicable.
Paragraph 4(a) of the Policy provides that in order to divest the Respondent of a disputed domain name, the Complainant must demonstrate each of the following:
(i) the disputed domain name is 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 name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
The registration agreements are in English. Under paragraph 11 of the Rules, therefore, the language of the proceeding is English. While the Panel does have a discretion to depart from that rule in an appropriate case, the website at “www.Reiwaing.com” and the other websites where the disputed domain names are or have been offered for sale are in English. So there does not appear to be any prejudice to the Respondent which would warrant consideration of departure from the rule.
A. Identical or Confusingly Similar
The first element that the Complainant must establish is that the disputed domain name is identical with, or confusingly similar to, the Complainant’s trademark rights.
There are two parts to this inquiry: the Complainant must demonstrate that it has rights in a trademark and, if so, the disputed domain name must be shown to be identical or confusingly similar to the trademark.
Apart from anything else, the Complainant has proven ownership of the EUTM for IG.
The second stage of this inquiry simply requires a visual and aural comparison of each disputed domain name to the proven trademarks. Questions such as the scope of the trademark rights, the geographical location of the respective parties and other considerations that may be relevant to an assessment of infringement under trademark law are not relevant at this stage. Such matters, if relevant, may fall for consideration under the other elements of the Policy e.g. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (WIPO Overview 3.0), section 1.7.
In undertaking that comparison, it is permissible in the present circumstances to disregard the generic Top Level Domain (“gTLD”) component as a functional aspect of the domain name system. WIPO Overview 3.0, section 1.11.
Disregarding the respective gTLD, each disputed domain name consists of the Complainant’s registered trademark and the term “reels”. As this requirement under the Policy is essentially a standing requirement, the addition of that term does not preclude a finding of confusing similarity. See e.g. WIPO Overview 3.0, section 1.8. Apart from anything else, the Complainant’s trademark remains visually and aurally recognisable within the disputed domain name. Moreover, the name Instagram Reels is the name of the Complainant’s service. As the name Instagram is often shortened to “IG”, the association with the Complainant is reinforced.
Accordingly, the Panel finds that the Complainant has established that both disputed domain names are confusingly similar to the Complainant’s trademark and the requirement under the first limb of the Policy is satisfied.
B. Rights or Legitimate Interests
The second requirement the Complainant must prove is that the Respondent has no rights or legitimate interests in the relevant disputed domain name.
Paragraph 4(c) of the Policy provides that the following circumstances can be situations in which the Respondent has rights or legitimate interests in a disputed domain name:
(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.
These are illustrative only and are not an exhaustive listing of the situations in which a respondent can show rights or legitimate interests in a domain name.
The onus of proving this requirement, like each element, falls on the Complainant. Panels have recognized the difficulties inherent in proving a negative, however, especially in circumstances where much of the relevant information is in, or likely to be in, the possession of the respondent. Accordingly, it is usually sufficient for a complainant to raise a prima facie case against the respondent under this head and an evidential burden will shift to the respondent to rebut that prima facie case. See e.g., WIPO Overview 3.0, section 2.1.
The Complainant states that it has not authorised the Respondent to use the disputed domain names. Nor is the Respondent affiliated with it.
The disputed domain names are plainly not derived from the Respondent's name. Nor is there any suggestion of some other name by which the Respondent is commonly known from which the disputed domain names could be derived.
The Respondent is not making any use of either disputed domain name other than to offer it for sale. It is not unlawful per se under the Policy to register a domain name for purposes of resale. However, the Policy does not tolerate registration of a domain name to take advantage of someone else’s trademark.
In the present case, the price at which the first disputed domain names is being offered for sale exceeds what would typically be the out-of-pocket costs of registering a domain name. Having regard to that price and the price with Reiwaing.com was offering <igreels.com> for sale as well as what appears to be the nature of the Respondent’s business model (particularly as revealed on the Dan.com website), the Panel infers that the Respondent is also seeking a price in excess of the Respondent’s out-of-pocket expenses for the second disputed domain name.
It is noteworthy that the Respondent registered the first disputed domain name the day after the Complainant launched its then new Instagram Reels service. A service which, as already noted, attracted no small degree of media attention. Further, the Respondent registered the second disputed domain name only after the Complainant’s cease and desist letter was sent to Reiwaing.com in respect of <igreels.com> and that domain name was transferred off to a third party.
These matters, taken together, are sufficient to establish a prima facie case under the Policy that the Respondent has no rights or legitimate interests in either disputed domain name. The basis on which the Respondent has adopted the disputed domain names, therefore, calls for explanation or justification. The Respondent, however, has not sought to rebut that prima facie case or advance any claimed entitlement. Accordingly, the Panel finds the Complainant has established the second requirement under the Policy also.
C. Registered and Used in Bad Faith
Under the third requirement of the Policy, the Complainant must establish that the relevant disputed domain name has been both registered and used in bad faith by the Respondent. These are conjunctive requirements; both must be satisfied for a successful complaint: see e.g. Burn World-Wide, Ltd. d/b/a BGT Partners v. Banta Global Turnkey Ltd WIPO Case No. D2010-0470.
Generally speaking, a finding that a domain name has been registered and is being used in bad faith requires an inference to be drawn that the respondent in question has registered and is using the disputed domain name to take advantage of its significance as a trademark owned by (usually) the complainant.
In the circumstances outlined above, the Panel readily infers that the Respondent registered the first disputed domain name opportunistically to take advantage of the launch by the Complainant of its then new Instagram Reels service. The second disputed domain name is a continuation of that conduct, bearing in mind the Respondent registered it soon after Reiwaing.com received a cease and desist letter in respect of <igreels.com> and transferred it to a third party in conduct which appears to have had all the hallmarks of “cyberflight”. At the very least, it seems highly likely that the Respondent was on notice that domain names based on “IGREELS” were inconsistent with the Complainant’s trademark rights.
The offering of the disputed domain names for prices which exceed typical out-of-pocket costs in the absence of rights or legitimate interests in the disputed domain name is well-stablished as use in bad faith. Moreover, as the Complainant contends, it appears the Respondent has engaged in a pattern of registering other people’s trademarks without permission to take advantage of their significance as trademark.
Accordingly, the Complainant has established all three requirements under 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 names <igreels.cyou> and <igreels.net> be transferred to the Complainant.
Warwick A. Rothnie
Date: December 17, 2020