WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Instagram, LLC v. 王雪松 (wang xue song)
Case No. DCC2020-0002
1. The Parties
The Complainant is Instagram, LLC, United States of America (“United States”), represented by Hogan Lovells (Paris) LLP, France.
The Respondent is 王雪松 (wang xue song), China.
2. The Domain Name and Registrar
The disputed domain name <instagram.cc> is registered with Alibaba Cloud Computing (Beijing) Co., Ltd. (the “Registrar”).
3. Procedural History
The Complaint in English was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 23, 2020. On January 24, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 4, 2020, 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 February 4, 2020, the Center transmitted an email in English and Chinese to the Parties regarding the language of the proceeding. The Complainant confirmed the request that English be the language of the proceeding on February 4, 2020. 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” 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 February 14, 2020. In accordance with the Rules, paragraph 5, the due date for Response was March 5, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 6, 2020.
The Center appointed Francine Tan as the sole panelist in this matter on March 16, 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 is a world-renowned online photo and video sharing social networking application, which was launched in October 2010. Since then, the Instagram application has rapidly developed considerable goodwill and renown worldwide. Instagram is one of the fastest growing social media applications in the world. 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. The Complainant states that its Instagram application is the 5th most downloaded application in the world, and is currently available in over 31 languages.
The Complainant submits that although inaccessible in mainland China, Instagram is far from an unknown name to the Chinese public as there are numerous Chinese press articles on its success and popularity worldwide, and numerous blogs and forums that disseminate information on how to access Instagram from mainland China.
The Complainant owns numerous trade mark registrations for INSTAGRAM around the world, in connection with online photo-sharing software. These trademark registrations include Chinese Trade Mark No. 10614690, registered on June 14, 2013; European Union Trade Mark No. 014493886, registered on December 24, 2015; United States Trade Mark No. 4146057, registered on May 22, 2012 (with first use in commerce dating from October 6, 2010); and International Registration No. 1129314, registered on March 15, 2012.
The Complainant also owns numerous domain name registrations consisting of or containing the term “instagram”. These registrations include <instagram.com>, <instagram.cn>, <instagram.org.cn>, <instagram.co.at>, <instagram.com.br>, <instagram.org.in>, <instagram.de>, <instagram.com>, <instagram.ch>, <instagram.com.vn>, and <instagram.org.il>.
The Complainant states that the fame of its INSTAGRAM trade mark is also evidenced by the number of cybersquatters, including those based in China, who have sought to register domain names incorporating the term “instagram”.
The disputed domain name was registered on July 14, 2016 and points to a webpage offering it for sale and containing the detailed contact information of the Respondent. Additionally, the research appears to show that the offer for sale of the disputed domain name commenced from the time of its registration.
According to the Complainant’s research, the Respondent previously registered a number of domain names targeting the Complainant’s and third party trademark rights. Examples of these include <insta.cc>, <facelook.cn>, <fakebook.cn>, <thefacebook.com.cn>, <hsbcbank.cn>, <fisherprice.cc> and <starbuckscoffee.cc>.
Additionally, the Respondent has been named as the respondent in a number of domain name disputes, wherein the UDRP panels ordered the transfer of all domain names in dispute under the “.cc” extension (e.g., JCDecaux SA v. Wang Xuesong, Wangxuesong, WIPO Case No. DCC2017-0003 involving the <jcdecaux.cc> domain name; Accor v. Wang Xuesong, WIPO Case No. DCC2016-0003 involving the <accorhotels.cc> domain name; Zentiva Group, a.s. v. Wangxuesong, wang xuesong, WIPO Case No. DCC2016-0002 involving the <zentiva.cc> domain name).
5. Parties’ Contentions
(1) The disputed domain name is identical to the Complainant’s INSTAGRAM trade mark since the suffix, “.cc”, is irrelevant when assessing whether a domain name is identical or confusingly similar to a trade mark.
(2) The Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent is not a licensee of the Complainant, nor has he been authorized or allowed by the Complainant to make any use of its INSTAGRAM trade mark, in a domain name or otherwise. The disputed domain name appears to have been offered for sale since its registration. The Respondent therefore cannot assert any claim that he has made demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods or services. The Respondent cannot conceivably assert that he is commonly known by the disputed domain name. There is, moreover, no legitimate noncommercial or fair use of the disputed domain name.
(3) The disputed domain name was registered and is being used in bad faith. The INSTAGRAM trade mark is inherently distinctive and well known globally; it has been continuously and extensively used since its launch in 2010; and has acquired considerable goodwill and renown worldwide including in China where the Respondent is based. The Respondent has registered the disputed domain name primarily for the purpose of selling it to the Complainant for valuable consideration. The Respondent has engaged in a pattern of conduct of registering domain names targeting the Complainant’s and third-party trademark rights. The use of the disputed domain name to capitalize on the Complainant’s reputation and goodwill constitutes bad faith use under the Policy.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
6.1 Preliminary Issue: Language of the Proceeding
The language of the Registration Agreement is Chinese. The Complainant, however, requested that English apply as the language of the proceeding for these reasons:
(i) The disputed domain name points to a webpage offering the disputed domain name for sale in both Chinese and English, which suggests that the Respondent understands the English language.
(ii) The disputed domain name consists of Latin characters.
(iii) It would be disproportionate to require the Complainant, an international business which operates primarily in English, to translate and submit the Complaint in Chinese. This would result in additional expenses and unnecessary delay in the proceeding.
The Respondent did not respond to the issue of the language of the proceeding.
Paragraph 10(c) of the Rules states that “[t]he Panel shall ensure that the administrative proceeding takes place with due expedition”. Paragraph 11(a) of the Rules provides that “[u]nless 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 Panel is satisfied that it would be appropriate for English to be the applicable language for the proceeding. The Respondent appears to be familiar with the English language: apart from the above-mentioned points submitted by the Complainant, the Panel also notes that the Respondent’s portfolio of domain name registrations include those which are made up of English words (i.e., <facelook.cn>, <fakebook.cn>, <thefacebook.com.cn>, <hsbcbank.cn>, <accorhotels.cc>, <fisherprice.cc> and <starbuckscoffee.cc>).
The Complainant’s points have not been rebutted or disproved by the Respondent. The Panel finds no circumstances which warrant a delay in the proceeding which would be the result of requiring the Complainant to have Chinese translations of the Complaint and evidence prepared.
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. The “.cc” element is but a technical requirement of domain name registrations and does not feature as a relevant consideration in the issue of whether a domain name registration is identical or confusingly similar to a 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 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 continued and extensive use of the INSTAGRAM trade mark long predate the registration of the disputed domain name.
There is no evidence that the Complainant allowed the Respondent register domain names incorporating its INSTAGRAM trade mark. Neither is there evidence that the Respondent is commonly known by the name “Instagram”. The Respondent failed to respond to or rebut the Complainant’s assertions.
Moreover, the Panel finds that the nature of the disputed domain name being identical to the Complainant’s trade mark carries a high risk of implied affiliation. See section 2.5.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).
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 Panel also finds that the disputed domain name was registered and has been used in bad faith.
The Complainant’s INSTAGRAM trade mark is a well-known mark across the world such that the Respondent could not by pure coincidence have selected the disputed domain name without the Complainant and/or its INSTAGRAM mark in mind. The Panel has taken into account the Complainant’s evidence which showed that the webpage that was previously associated with the disputed domain name displayed a Chinese advertisement, which translates to read:
“An appropriate domain name symbolizes the strength of brands. It may redirect a lot of traffic to your website and bring you unexpected business opportunities. A domain name is free advertisement and real estate over the Internet!”
The Respondent is evidently savvy and well understands the value of domain names which incorporate famous trade marks. The said posting which it made on the webpage is a reflection of the Respondent’s intention and frame of mind when he registered the disputed domain name. This, as well as the Respondent’s pattern of conduct shown by the Complainant, demonstrate that the Respondent has registered and used the disputed domain name in bad faith. The inference of opportunistic bad faith on the Respondent’s part has not been rebutted by the Respondent. 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 <instagram.cc> be transferred to the Complainant.
Date: March 30, 2020