Snap Inc. v. Jean MARIL
Claim Number: FA1905001845863
Complainant is Snap Inc. (“Complainant”), represented by Peter Kidd of Kilpatrick Townsend & Stockton LLP, California, USA. Respondent is Jean Maril (“Respondent”), USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <piratersnapchaten2018.com>, registered with eNom, LLC.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Charles A. Kuechenmeister
Complainant submitted a Complaint to the Forum electronically on May 31, 2019; the Forum received payment on May 31, 2019.
On June 3, 2019, eNom, LLC confirmed by e-mail to the Forum that the <piratersnapchaten2018.com> domain name (the Domain Name) is registered with eNom, LLC and that Respondent is the current registrant of the name. eNom, LLC has verified that Respondent is bound by the eNom, LLC registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On June 4, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint setting a deadline of June 24, 2019 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@piratersnapchaten2018.com. Also on June 4, 2019, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On June 28, 2019, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Charles A. Kuechenmeister as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum’s Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the Domain Name be transferred from Respondent to Complainant.
A. Complainant
Complainant owns and distributes the Snapchat camera and messaging application, which allows users to share photographs, videos and messages with others via mobile devices. It has rights in the SNAPCHAT mark based upon its registration of the mark with the United States Patent and Trademark Office (“USPTO”) and other governmental trademark authorities throughout the world. Respondent’s Domain Name is identical or confusingly similar to Complainant’s SNAPCHAT mark because it wholly incorporates Complainant’s SNAPCHAT mark, and merely adds the descriptive terms “pirater,” “en,” and “2018” as well as the “.com” generic top-level domain (“gTLD”).
Respondent lacks rights or legitimate interests in the Domain Name. Respondent is not affiliated with Complainant and has no right to own or use any domain name incorporating Complainant’s mark, nor is Respondent commonly known by the Domain Name. Respondent is not using the Domain Name in connection with a bona fide offering of goods and services or for a legitimate noncommercial or fair use because it resolves to a web site that hosts a fake hacking service which merely tricks internet users into making a toll call from which Respondent profits.
Respondent registered and uses the Domain Name in bad faith. It registered the Domain Name with actual knowledge of Complainant and its rights in the SNAPCHAT mark. Also, Respondent’s use of the Domain Name to promote the unlawful access and manipulation of Complainant’s servers directly competes with Complainant and disrupts its business. Finally, Respondent uses the confusingly similar Domain Name to divert Internet traffic for Respondent’s commercial gain.
B. Respondent
Respondent did not submit a Response in this proceeding.
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
Paragraph 4(a) of the Policy provides that in order to obtain an order cancelling or transferring a domain name, Complainant must prove each of the following three elements:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
In view of Respondent's failure to submit a response, pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules the Panel will decide this administrative proceeding on the basis of Complainant's undisputed representations and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).
The Panel finds as follows with respect to the matters at issue in this proceeding:
The SNAPCHAT mark was registered to Snapchat, Inc. in the European Register of Community Trademarks (Reg. No. 012925971) on October 22, 2014. Complaint Annex P. Registration of a trademark with a governmental trademark authority is sufficient to establish a complainant’s rights in that mark for the purposes of Policy ¶ 4(a)(i). Alibaba Group Holding Limited v. YINGFENG WANG, FA 1568531 (Forum Aug. 21, 2014) (“Complainant has rights in the ALIBABA mark under the Policy through registration with trademark authorities in numerous countries around the world.”), Lilly A/S v. yiyi chen, FA 1704586 (Forum Jan. 5, 2017) (“Until March 23, 2016, the EUIPO was known as the Office for Harmonization in the Internal Market. Registration of a mark with the EUIPO (or any other similar governmental authority) is sufficient to establish rights in the mark.”). The European registration certificate for the SNACHAT mark lists the owner of that mark as Snapchat, Inc., but the record of change of corporate name submitted as Complaint Exhibit Q demonstrates that Complainant is the owner of that mark and is entitled to bring and maintain this proceeding.
Respondent’s Domain Name is identical or confusingly similar to Complainant’s SNAPCHAT mark. It wholly incorporates the mark, merely adding the generic terms “pirater,” “en,” and “2018” as well as the “.com” gTLD. These changes are not sufficient to distinguish the Domain Name from Complainant’s mark for the purposes of Policy ¶ 4(a)(i). The addition of generic or descriptive terms and a gTLD to a complainant’s mark have been found insufficient to withstand a test of confusing similarity pursuant to Policy ¶ 4(a)(i). Wiluna Holdings, LLC v. Edna Sherman, FA 1652781 (Forum Jan. 22, 2016) (finding the addition of a generic term and gTLD is insufficient in distinguishing a disputed domain name from a mark under Policy ¶ 4(a)(i)), The Toronto-Dominion Bank v. George Whitehead, FA 1784412 (Forum June 11, 2018) (“[S]light differences between domain names and registered marks, such as the addition of words that describe the goods or services in connection with the mark and gTLDs, do not distinguish the domain name from the mark incorporated therein per Policy ¶ 4(a)(i).”). Finally, the WIPO Overview 3.0 at ¶ 1.7, states that the test for confusing similarity “typically involves a side-by-side comparison of the domain name and the textual components of the relevant trademark to assess whether the mark is recognizable within the domain name.” Notwithstanding the changes described above, Complainant’s mark is clearly recognizable within the Domain Name, and this establishes its confusing similarity to Complainant’s mark for the purposes of Policy ¶ 4(a)(i).
For the reasons set forth above, the Panel finds that the Domain Name is identical or confusingly similar to the SNAPCHAT mark, in which Complainant has substantial and demonstrated rights.
If a complainant makes a prima facie case that the respondent lacks rights or legitimate interests in the domain name under Policy ¶ 4(a)(ii), the burden of production shifts to the respondent to come forward with evidence that it has rights or legitimate interests in it. Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests”). If a respondent fails to come forward with such evidence, the complainant’s prima facie evidence will be sufficient to establish that respondent lacks such rights or legitimate interests. If the respondent does come forward with such evidence, the Panel must assess the evidence in its entirety. At all times, the burden of proof remains on the complainant. WIPO Overview 3.0, at ¶ 2.1.
Policy ¶ 4(c) lists the following three nonexclusive circumstances, any one of which if proven can demonstrate a respondent’s rights or legitimate interests in a domain name for the purposes of Policy ¶ 4(a)(ii):
(i) before any notice to respondent of the dispute, respondent has used or has made demonstrable preparations to use the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) respondent (as an individual, business or other organization) has been commonly known by the domain name, even if respondent has acquired no trademark or service mark rights; or
(iii) respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
Complainant asserts that Respondent has no rights or legitimate interests in the Domain Name because (i) Respondent is not affiliated with Complainant and Complainant has not authorized Respondent to use the SNAPCHAT mark, (ii) Respondent is not commonly known by the Domain Name, and (iii) Respondent is not using the Domain Name in connection with a bona fide offering of goods or services or for a legitimate noncommercial or other fair use because the name resolves to a web site that purports to offer an online hacking tool but tricks internet users into making a toll call from which Respondent profits. These allegations are supported by competent evidence.
The information furnished to the Forum by the registrar lists the registrant of the Domain Name as “Jean MARIL.” This name bears no resemblance to the Domain Name. Evidence could, of course, in a given case demonstrate that the respondent is commonly known by a domain name different from the name in which it registered the domain name, e.g., the case of a domain name incorporating the brand name of a specific product offered by and associated with the respondent. In the absence of any such or similar evidence, however, UDRP panels have consistently held that a registrant name that is materially different from the domain name at issue is competent evidence that the respondent is not commonly known by the domain name. Guardair Corporation v. Pablo Palermo, FA1407001571060 (Forum Aug. 28, 2014) (holding that the respondent was not commonly known by the <guardair.com> domain name according to Policy ¶ 4(c)(ii), as the WHOIS information lists “Pablo Palermo” as registrant of the disputed domain name). There is no evidence before the Panel in this case to suggest that Respondent has been commonly known by the Domain Name and the Panel finds that it has not been so known.
Complainant states that Respondent is not affiliated with Complainant and it has never licensed or authorized Respondent to use its mark. Complainant has specific competence to make this statement, and it is unchallenged by any evidence before the Panel. In the absence of evidence that a respondent is authorized to use a complainant’s mark in a domain name or that a respondent is commonly known by the disputed domain name, the respondent may be presumed to lack rights or legitimate interests in the domain name. IndyMac Bank F.S.B. v. Eshback, FA 830934 (Forum Dec. 7, 2006) (finding that the respondent failed to establish rights and legitimate interests in the <emitmortgage.com> domain name as the respondent was not authorized to register domain names featuring the complainant’s mark and failed to submit evidence that it is commonly known by the domain name), Indeed, Inc. v. Ankit Bhardwaj / Recruiter, FA 1739470 (Forum Aug. 3, 2017) (”Respondent lacks both rights and legitimate interests in respect of the at-issue domain name. Respondent is not authorized to use Complainant’s trademark in any capacity and, as discussed below, there are no Policy ¶ 4(c) circumstances from which the Panel might find that Respondent has rights or interests in respect of the at-issue domain name.”).
Complaint Annex S is a screenshot of the web site resolving from the Domain Name. The page is written in French and prominently features the message “Pirate Un Compte Snapchat en 2019,” which translates to “Hack a Snapchat Account in 2019.” It also prominently features a picture of Complainant’s ghost logo which Complainant registered with the USPTO (Reg. No 5,100,318) on December 13, 2016, and with the governmental trademark authorities of several other countries (Complaint Annex R). The ghost logo appears on Complainant’s own web site (Complaint Annex D) and Complainant says that it has used it as a Snapchat icon since 2011. The print copy on Respondent’s web site purports to offers an online tool to hack the Snapchat accounts of others. If a visitor accepts the invitation he or she is after one or two steps promised a successful hack, which can be finalized by dialing the telephone number which appears on the page. According to an internet search of the phone number, it is a ”numéro surtaxé,” which term translates as a “premium rate number,” and which number, when dialed, results in a surcharge being added to the caller’s phone bill to the benefit of the owner of the phone number (Complaint Annex T). According to the Complaint, the web site does not actually offer the hacking tool it advertises; it is instead a fraudulent scheme designed to relieve aspiring hackers of their money, which goes to the Respondent when they dial the numéro surtaxé. There may be some element of rough justice here in that the motives of the “victim” are neither honorable nor innocent, but this use of the Domain Name is, obviously, neither a bona fide offering of goods or services as contemplated by Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use for the purposes of Policy ¶ 4(c)(iii). Panels have consistently held that use of a domain name to offer hacking software is not a bona fide offering of goods and services or a legitimate noncommercial or fair use. SNAP Inc. v. Contact Privacy Inc. Customer 0146764045, et al., D2017-0635 (WIPO May 29, 2017) (finding no legitimate or bona fide use of domains in connection with hacking services), Star Stable Entertainment AB v. WhoisGuard Protected, WhoisGuard Inc. / Federico James, D2016-1427 (WIPO Aug. 31, 2016) (finding that unauthorized hacking is by its nature an illegitimate activity), Microsoft Corp. v. Webmasterz Entertainment, FA 1266932 (Forum Aug. 5, 2009) (determining that there was no bona fide offering, or legitimate use, when the domain name at issue was being used to hack into the accounts and services of the complainant and complainant’s customers).
Further, Respondent’s use of the Domain Name to divert Internet traffic to Respondent’s web site for commercial gain fails to qualify as a bona fide offering of goods or services or a legitimate noncommercial or fair use, even without the hacking element. This theory is commonly used in cases where the resolving web site provides pay-per-click revenues for the respondent but it is equally applicable in this case, and numerous UDRP panels have so held. Snap Inc. v. Domain Admin / WhoisPrivacy Corp., FA1706001735300 (Forum July 14, 2017) (use of a disputed domain name to host malicious software for commercial gain evinces a finding of a lack of rights and legitimate interests), Snap Inc. v. Gerald Washington / Snapchat Premium Members Only, FA1807001798538 (Forum Aug. 27, 2018) (“Use of a domain name containing the mark of another to divert Internet users for commercial gain does not represent a bona fide offer of goods and services per Policy ¶ 4(c)(i) or a noncommercial fair use per Policy ¶ 4(c)(iii)), Insomniac Holdings, LLC v. Mark Daniels, FA 1735969 (Forum July 15, 2017) (”Respondent’s use of <edcorlando.xyz> also does not qualify as a bona fide offering… the <edcorlando.xyz> domain name resolves to a site containing pay-per-click hyperlinks and advertisements… Since these kinds of advertisements generate revenue for the holder of a domain name, they cannot be noncommercial; further, they do not qualify as a bona fide offering.”).
Complainant has made its prima facie case. On the evidence presented, and in the absence of any evidence from Respondent, the Panel finds that Respondent has no rights or legitimate interests in the Domain Name.
(i) respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant which is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of respondent’s documented out-of-pocket costs directly related to the domain name;
(ii) respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that respondent has engaged in a pattern of such conduct;
(iii) respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, respondent has intentionally attempted to attract, for commercial gain, Internet users to respondent’s web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation or endorsement of respondent’s web site or location or of a product of service on respondent’s web site or location.
The evidence of Respondent’s use of the Domain Name set forth above in the rights or legitimate interests analysis also supports a finding of bad faith use and registration of that domain, based upon the foregoing grounds articulated in the Policy and upon additional grounds adopted by UDRP panels over the years. First, Respondent is clearly using the Domain Name to advertise unlawful access to Complainant’s services and is thus competing with Complainant. Using a domain name that implies a means of enabling a visitor to hack into Snapchat accounts is necessarily hostile and disruptive to Complainant’s business. Respondent’s conduct fits squarely within the circumstances articulated by Policy ¶ 4(b)(iii). Snap Inc. v. Domain Admin / Whois Privacy Corp., FA1706001735300 (Forum July 14, 2017) (holding use of a disputed domain name to distribute unlawful hacking software is evidence of bad faith registration and use), Snap, Inc. v. Domain Admin / Whois Privacy Corp., FA1707001741287 (Forum Aug. 17, 2017) (holding use of the disputed domain name in connection with a hacking website is disruptive to complainant’s business and demonstrates respondent’s bad faith), Yahoo! Inc. v. Yahoozone Services / Nitin Gupta, FA 1512791 (Forum Aug. 23, 2013) (finding Respondent’s hacking services “disruptive of Complainant’s business, as well as competitive with the commercial and profit-generating endeavor that Complainant seeks to make through the services that Respondent is hacking.”).
Further, Respondent is using the Domain Name to promote unlawful access to the accounts of Complainant and its customers by offering software designed to provide free, unauthorized access to them. While this use does not fit neatly within any of the examples of bad faith listed in Policy ¶ 4(b), that paragraph recognizes that mischief can assume many different forms and takes an open-ended approach to bad faith, listing some examples without attempting to enumerate all its varieties. Worldcom Exchange, Inc. v. Wei.com, Inc., WIPO Case No. D-2004-0955 (January 5, 2005). The non-exclusive nature of Policy ¶ 4(b) allows for consideration of additional factors in an analysis for bad faith, and UDRP panels have held that providing unauthorized free access to a complainant’s products and services is evidence of bad faith registration and use. Microsoft Corp. v. Thanh, FA 1653178 (Forum Jan. 24, 2016) (holding that respondent registered and used its domain in bad faith where it was used to offer free access to complainant’s Minecraft game).
Moreover, the fact that this conduct is unlawful has also been held, in and of itself, to evidence bad faith registration and use. Autodesk Inc. v. Telecom Tech Corp, WIPO Case No. D2011-1670 (January 30, 2011) (“A respondent’s use of a disputed domain name to pursue an illegal activity automatically qualifies that domain as having been registered and used in bad faith.”), Cameron Thomaz P/K/A Wiz Khalifa and Wize Khalifa Trademark, LLC v. Kyle Lynch, WIPO Case No. 2014-1525 (November 4, 2014) (finding bad faith registration and use where respondent’s webpages offered illegal downloads of complainant’s music.).
Finally, it is evident from (i) the world-wide fame and notoriety of Complainant’s camera and messaging application, (ii) the fact that Complainant’s mark is incorporated verbatim into the Domain Name, (iii) the fact that the hacking services advertised in the Domain Name and on Respondent’s web site directly and explicitly target Complainant, and (iv) the fact that Respondent’s web site prominently displays Complainant’s ghost logo that Respondent had actual knowledge of Complainant’s SNAPCHAT mark on June 23, 2018, when according to the WHOIS report submitted as Complaint Annex A it registered the Domain Name. Respondent designed not only the Domain Name but its entire business model as presented on the web site around Complainant’s products and services. Again, the non-exclusive nature of Policy ¶ 4(b) allows for consideration of additional factors in an analysis for bad faith, and actual knowledge of a complainant’s rights in a mark prior to registering an identical or confusingly similar domain name has often been held to be evidence of bad faith registration and use for the purposes of Policy ¶ 4(a)(iii). Univision Comm'cns Inc. v. Norte, FA 1000079 (Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering the disputed domain name), Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum Feb. 6, 2014) (“The Panel notes that although the UDRP does not recognize ‘constructive notice’ as sufficient grounds for finding Policy ¶ 4(a)(iii) bad faith, the Panel here finds actual knowledge through the name used for the domain and the use made of it.”).
For the reasons set forth above, the Panel finds that Respondent registered and is using the Domain Name in bad faith within the meaning of Policy ¶ 4(a)(iii).
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <piratersnapchaten 2018.com> Domain Name be TRANSFERRED from Respondent to Complainant.
Charles A. Kuechenmeister, Panelist
July 1, 2019
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