Instagram, LLC v. zechuan chang et al.
Claim Number: FA1505001621216
Complainant: Instagram, LLC of Menlo Park, California, United States of America.
Complainant Representative: Hogan Lovells (Paris) LLP of Paris, France.
Respondent: zechuan chang of luo yang shi, ha, International, China.
zechuan chang of luo yang shi, ha, International, CN.
REGISTRIES and REGISTRARS
Registries: Jiangsu Bangning Science & Technology Co.,Ltd.
Registrars: Chengdu West Dimension Digital Technology Co., Ltd.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Examiner in this proceeding.
David L. Kreider Esq., as Examiner.
Complainant submitted: May 27, 2015
Commencement: May 29, 2015
Response Date: May 29, 2015
Having reviewed the communications records, the Examiner finds that the Forum has discharged its responsibility under URS Procedure, Paragraphs 3 and 4 and Rule 4 of the Rules, for the Uniform Rapid Suspension System (the "Rules") .
Complainant requests that the domain name be suspended for the life of the registration.
Clear and convincing evidence.
A Response was submitted timely on 29 May 2015, in Chinese. The Examiner notes pursuant to URS Rule 9(c) that he is fluent in English and in Chinese and that this Determination is being issued in English.
URS Procedure 1.2.6, requires Complainant to prove, by clear and convincing evidence, each of the following three elements to obtain an order that a domain name should be suspended.
The Complaint alleges that the Complainant, Instagram, LLC, is the world's leading online photo and video sharing social networking application. Since it was launched on 6 October 2010, Instagram has rapidly developed considerable goodwill and renown worldwide. Until September 2014, Instagram operated freely in China and enjoyed considerable popularity amongst Chinese Internet users. The Complainant has trademark registrations in the term INSTAGRAM around the world. Complainant's marks are in current use.
The Domain Name identically reproduces the Complainant's trademark without adornment. The new generic top level domain name (gTLD) ".top" does nothing to prevent confusion with the Complainant's trademark. Thus 1.2.6.1(i) is satisfied.
The Respondent has no rights or legitimate interests in the Domain Name. The Complainant has not authorised the Respondent to make any use of its trademark. The Respondent is not commonly known by the Domain Name and has no rights in the term "Instagram". The Respondent is not making a bona fide offering of goods or services or a legitimate non-commercial or fair use of the Domain Name as it is pointing to a parking page containing commercial links targeting the Complainant and its services (eg. "Advertise on Instagram", "Foto Instagram") and offering the Domain Name for sale for USD 300. Thus 1.2.6.2 is satisfied.
The Domain Name was registered and is being used in bad faith. The Complainant's trademark is well known worldwide, including in China. The Domain Name was registered 4 years after the Complainant's launch. The Respondent was clearly aware of the Complainant's rights at the time of registration, especially as he was notified of potential infringement by the Trademark Clearinghouse and as shown by his subsequent use of the Domain Name for a parking page displaying links targeting the Complainant.
The Respondent's offer to sell the Domain Name for USD 300 on the associated website is evidence of bad faith registration, satisfying 1.2.6.3(a). 1.2.6.3(b) is also satisfied, namely that the Respondent registered the Domain Name to prevent the trademark holder from reflecting its trademark in a corresponding domain name, and has engaged in a pattern of such conduct. The Respondent is also the registrant of at least 80 .TOP domain names, many of which infringe third party trademarks, for instance, <bacardi.top>, <coca-cola.top>, <esteelauder.top>, <loreal.top>, and <macbook.top> and has also lost a prior URS proceeding regarding <morganstanley.top>.
Finally, the Respondent's use of the Domain Name for a parking page containing commercial links targeting the Complainant shows that he is intentionally attempting to attract, for commercial gain, internet users to his website, by creating a likelihood of confusion with the Complainant's trademark as to the source or affiliation of the website, as outlined at 1.2.6.3(d). Thus 1.2.6.3 is satisfied.
On its part, the Respondent expressly concedes that it has no defense or rebuttal to the first element, URS 1.2.6.1.
Regarding the second element, URS 1.2.6.2, Respondent asserts that it paid the service fee to purchase the Domain Name without any intention to use it unlawfully, and thus enjoys legal rights in the Domain Name.
As for the third element, URS 1.2.6.3, Respondent alleges that it never intended to sell the Domain Name to the Complainant or any competitor of the Complainant, but merely intended to park the Domain Name on the Sedo website for "lawful public sale".
The Respondent admits in its Response to owning other ".TOP" Internet domains incorporating the names of "famous companies", and alleges that it has no intention of selling them to the TM owners for improper financial gain, but intends to sell the names for a "modest" price via public sale.
After reviewing the parties’ submissions, the Examiner determines that the Complainant has demonstrated all three elements of the URS by a standard of clear and convincing evidence; the Examiner hereby Orders the following domain names be SUSPENDED for the duration of the registration:
<instagram.top>
David L. Kreider Esq,, Examiner
Dated: May 29, 2015
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