WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Instagram, LLC v. 李厚昌 (Hou Chang Li)
Case No. D2020-2949
1. The Parties
The Complainant is Instagram, LLC, United States of America (“United States”), represented by Hogan Lovells (Paris) LLP, France.
The Respondent is 李厚昌 (Hou Chang Li), China.
2. The Domain Name and Registrar
The disputed domain name <instgramlive.com> is registered with West263 International Limited (the “Registrar”).
3. Procedural History
The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on November 6, 2020. On November 6, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 8, 2020, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name, which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on November 10, 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 in English on November 11, 2020.
On November 10, 2020, the Center sent a communication to the Parties, in English and Chinese, regarding the language of the proceeding. On November 10, 2020, the Complainant confirmed its request that English be the language of the proceeding. The Respondent did not comment on the language of the proceeding.
The Center verified that the Complaint together with the amended 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 Chinese of the Complaint, and the proceedings commenced on November 17, 2020. In accordance with the Rules, paragraph 5, the due date for Response was December 7, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 18, 2020.
The Center appointed Francine Tan as the sole panelist in this matter on January 21, 2021. 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 known for its online photo and video-sharing social networking application. The Complainant states that since its launch on October 6, 2010, it has developed considerable goodwill and renown worldwide. Acquired by Facebook in April 2012, the Complainant 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. As one of the fastest-growing social media platform in the world, the Complainant’s website, available at “www.instagram.com”, is ranked as the 25th most-visited website in the world by web information company, Alexa. Currently available in over 31 languages, the Complainant’s Instagram application is one of the most‑downloaded applications in the world.
The Complainant states that although its application and website are currently inaccessible in China, the Complainant is far from an unknown name to the Chinese public, particularly taking into account numerous Chinese press articles on its success and popularity worldwide and the blogs and forums that diffuse information on how to access Instagram from China. The Complainant’s INSTAGRAM trade mark is currently one of the most famous online trade marks in the world, including in China.
The Complainant owns numerous trade mark registrations for INSTAGRAM worldwide, including in China. Its trade mark registrations include the following:
- Chinese Trade Mark No. 10614690, registered on June 14, 2013;
- United States Trade Mark No. 4146057, registered on May 22, 2012 (with first use in commerce recorded as October 6, 2010); and
- International Trade Mark No. 1129314, registered on March 15, 2012.
The Complainant also owns numerous domain names containing the trade mark INSTAGRAM including <instagram.com>, <instagram.cn>, <instagram.org.cn>, <instagram.co.at>, <instagram.dk>, <instagram.de>, <instagram.com.br>, <instagram.org.in>, <instagram.com.vn>, <instagram.ae>, and <instagram.ch>.
The disputed domain name <instgramlive.com> was registered on April 22, 2020 and resolves to a pay‑per‑click webpage. The Complaint issued a cease-and-desist letter to the Respondent prior to the commencement of the proceeding. The Respondent replied by email in English on September 14, 2020, requesting USD 588 in exchange for the transfer of the disputed domain name. The Respondent indicated that if the Complainant did not agree to the sum requested, he would be prepared to “go to court in China […] so [the Complainant] don’t get domain even if [the Complainant] win the dispute”.
5. Parties’ Contentions
The disputed domain name is confusingly similar to the Complainant’s INSTAGRAM trade mark as the trade mark is incorporated entirely into the disputed domain name with an intentional misspelling of the Complainant’s distinctive INSTAGRAM mark by omitting the letter “a” between the letters “t” and “g”. The addition of the term “live” does not avoid confusing similarity with the Complainant’s INSTAGRAM trade mark. The “.com” generic Top-Level Domain (“gTLD”) is a functional element and not relevant to whether the disputed domain name is identical or confusingly similar to the Complainant’s trade mark.
The Respondent has no rights or legitimate interests in the disputed domain name. The Respondent is not a licensee of the Complainant nor authorized or allowed by the Complainant to use the INSTAGRAM trade mark in a domain name or otherwise. The Respondent cannot assert that it has been using the disputed domain name in connection with a bona fide offering of goods or services. The Respondent’s use of the disputed domain name for pay-per-click advertising cannot be considered to be a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the disputed domain name.
The disputed domain name was registered and is being used in bad faith. The Respondent could not have been unaware of the Complainant’s INSTAGRAM trade mark when registering the disputed domain name as the trade mark is well known throughout the world, including in China. The Respondent has engaged in a pattern of conduct as research based on WhoIs information reveals that the Respondent has previously owned other trademark abusive domain names, such as <alibbaa.co>, <barclaycardusk.com>, <citiank.co>, and <wwwbayer.us>. The Respondent is also using the disputed domain name to intentionally attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s INSTAGRAM trade mark as to the source, sponsorship, affiliation or endorsement of its website. The Respondent is deriving click-through revenue from the presence of the links on the website to which the disputed domain name resolves. The Respondent’s demand for USD 588 in exchange for the transfer of the disputed domain name, a sum which exceeds the out-of-pocket costs incurred in the registration of the disputed domain name, is also a strong indicator of bad faith.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
6.1 Preliminary Issue: Language of the Proceeding
Paragraph 11 of the Rules provides that:
“(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 authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding.”
The language of the Registration Agreements for the disputed domain name is Chinese.
The Complainant requested that the language of the proceeding be English. The reasons are that:
(i) the disputed domain name consists of Latin characters, such as the English term “live”, rather than Chinese characters;
(ii) the Respondent’s reply to the Complainant’s cease-and-desist letter was in English, which clearly indicates that he has a good understanding of the English language; and
(iii) the Complainant will be put through unnecessary expense and the proceeding delayed if Chinese were made the language of the proceeding.
The Respondent did not comment on the language of the proceeding.
The Panel cites the following with approval:
“Thus, the general rule is that the parties may agree on the language of the administrative proceeding. In the absence of this agreement, the language of the Registration Agreement shall dictate the language of the proceeding. However, the Panel has the discretion to decide otherwise having regard to the circumstances of the case. The Panel’s discretion must be exercised judicially in the spirit of fairness and justice to both parties taking into consideration matters such as command of the language, time and costs. It is important that the language finally decided by the Panel for the proceeding is not prejudicial to either one of the parties in his or her abilities to articulate the arguments for the case.” (See Groupe Auchan v. xmxzl, WIPO Case No. DCC2006-0004).
Having considered the above factors, the Panel determines that English be the language of the proceeding. The Panel agrees that the Respondent appears to be familiar and comfortable with the English language, taking into account his selection of the English-language trade mark to register the disputed domain name, and his response to the Complainant’s cease-and-desist letter. In the absence of an objection by the Respondent, the Panel does not find it procedurally efficient to have the Complainant translate the Complaint and evidence into Chinese. There is no evidence that the Panel’s decision in this regard would be prejudicial to the Respondent.
6.2 Substantive Issues
A. Identical or Confusingly Similar
The Complainant has established it has rights in the INSTAGRAM trade mark. The trade mark is reproduced in its entirety in the disputed domain name and is recognizable. The Panel agrees that the intentional misspelling of the Complainant’s INSTAGRAM mark by omitting the letter “a” between the letters “t” and “g” and the addition of the dictionary term “live” do not serve to avoid the confusing similarity with the Complainant’s INSTAGRAM trade mark, which is recognizable within the disputed domain name. The gTLD “.com” is a technical requirement for domain name registrations and not relevant to the issue of the identity or confusing similarity between the disputed domain name and the Complainant’s trade mark.
The disputed domain name is therefore confusingly similar to the Complainant’s INSTAGRAM trade mark.
The Panel accordingly finds that the first element of paragraph 4(a) of the Policy has been satisfied.
B. Rights or Legitimate Interests
The Panel finds that the Complainant has established a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name. The Complainant’s trade mark registrations and many years of use of the INSTAGRAM trade mark long predate the registration of the disputed domain name. There is no evidence that any licence or authorization has been extended by the Complainant to the Respondent for the use of the INSTAGRAM trade mark as a trade mark or in a domain name. Neither is there evidence that the Respondent is commonly known by the name “instagram”, “instgram” or “instgramlive”. The use of the disputed domain name which incorporates the Complainant’s INSTAGRAM trade mark in relation to pay-per-click advertising does not constitute a bona fide offering of goods or services.
The Respondent failed to respond to or rebut the Complainant’s assertions in this proceeding. Neither did he, by his reply to the Complainant’s cease-and-desist letter, claim to have rights or legitimate interests in the disputed domain name.
The Panel therefore finds that the second element of paragraph 4(a) of the Policy has been satisfied.
C. Registered and Used in Bad Faith
The Complainant’s INSTAGRAM trade mark is such a well known mark that the Respondent could not by pure coincidence and without knowledge of the INSTAGRAM mark have selected the disputed domain name without the Complainant and/or its mark in mind. The Panel finds that the Respondent registered the disputed domain name with a view to attracting, for commercial gain, Internet users to his website by creating a likelihood of confusion with the Complainant’s registered INSTAGRAM trade mark as to the source, sponsorship, affiliation, or endorsement of his website or location or of a product or service on his website. The inference of opportunistic bad faith on the Respondent’s part has not been rebutted by the Respondent.
The Complainant’s evidence of the Respondent’s pattern of conduct was not disputed by the Respondent. A respondent’s use of a domain name comprising a misspelling of a complainant’s well-known trade mark in relation to a parking page displaying pay-per-click advertising has been considered by prior UDRP panels to constitute bad faith. Finally, the Respondent’s offer to transfer the disputed domain name for the sum of USD 588 and his threat to hinder any order of transfer obtained through the standard UDRP administrative process by “dragging” the Complainant through the judicial system in China are strong indicators of bad faith.
The Panel therefore finds that the third element of paragraph 4(a) of the Policy has been satisfied.
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 <instgramlive.com> be transferred to the Complainant.
Date: January 27, 2021