Snap Inc. v. Sammo Shuvro
Claim Number: FA1908001858470
Complainant is Snap Inc. (“Complainant”), represented by Peter Kidd of Kilpatrick Townsend & Stockton LLP, California, USA. Respondent is Sammo Shuvro (“Respondent”), Bangladesh.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <snapzchat.com>, registered with NameCheap, Inc..
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.
Steven M. Levy, Esq. as Panelist.
Complainant submitted a Complaint to the Forum electronically on August 21, 2019; the Forum received payment on August 21, 2019.
On September 24, 2019, NameCheap, Inc. confirmed by e-mail to the Forum that the <snapzchat.com> domain name is registered with NameCheap, Inc. and that Respondent is the current registrant of the name. NameCheap, Inc. has verified that Respondent is bound by the NameCheap, Inc. 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 September 25, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 15, 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@snapzchat.com. Also on September 25, 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 October 16, 2019, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Steven M. Levy, Esq. 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 enormously popular SNAPCHAT camera and messaging application and storytelling platform. Complainant has rights in the SNAPCHAT trademark through its use in commerce since 2011 and its trademark registrations around the world, including with the United States Patent and Trademark Office (“USPTO”) dating back to 2013. Respondent’s <snapzchat.com> domain name, registered on August 29, 2018, is confusingly similar to Complainant’s SNAPCHAT mark as it incorporates the mark in its entirety, merely adding the letter “z” to create a misspelling, and appends a “.com” generic top-level domain (“gTLD”).
Respondent has no rights or legitimate interests in the <snapzchat.com> domain name. Respondent is not authorized to use Complainant’s SNAPCHAT mark and is not commonly known by the disputed domain name. Additionally, Respondent fails to use the disputed domain name for a bona fide offering of goods or services or a legitimate noncommercial or fair use. Rather, Respondent uses the disputed domain name to feature adult-oriented content and photographs for commercial gain.
Respondent registered and uses the <snapzchat.com> domain name in bad faith. Respondent attempts to attract, for commercial gain, users to the disputed domain name where it features adult-oriented content. Furthermore, Respondent had actual and constructive knowledge of Complainant’s rights in the SNAPCHAT mark prior to registering the disputed domain name.
B. Respondent
Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is confusingly similar to multiple trademarks in which Complainant has rights;
(2) Respondent has no rights to or legitimate interests in respect of the domain name; and
(3) the same domain name was registered and is being used by Respondent in bad faith.
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 requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(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, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules 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. See WIPO Jurisprudential 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”).
Complainant claims rights in the SNAPCHAT mark based upon its registration with the USPTO and many other national trademark offices around the world. Registration of a mark with the USPTO is sufficient to establish rights in that mark. See Home Depot Product Authority, LLC v. Samy Yosef / Express Transporting, FA 1738124 (Forum July 28, 2017) (finding that registration with the USPTO was sufficient to establish the complainant’s rights in the HOME DEPOT mark). The Panel therefore holds that Complainant’s registration of the SNAPCHAT mark with the USPTO is sufficient to establish rights in the mark under Policy ¶ 4(a)(i).
Complainant next argues that Respondent’s <snapzchat.com> domain name is confusingly similar to the SNAPCHAT mark, as the name incorporates the mark in its entirety, merely adding the letter “z” to create a misspelling, and appends the “.com” gTLD. Such changes are not sufficient to distinguish a domain name from an incorporated mark in a Policy ¶ 4(a)(i) analysis. See Vanguard Trademark Holdings USA LLC v. Shuai Wei Xu / Xu Shuai Wei, FA 1784238 (Forum June 1, 2018) (“Respondent arrives at each of the disputed domain names by merely misspelling each of the disputed domain names and adding the gTLD ‘.com.’ This is insufficient to distinguish the disputed domain names from Complainant’s trademark.”). The Panel therefore determines that the <snapzchat.com> domain name is confusingly similar to the SNAPCHAT mark per Policy ¶ 4(a)(i).
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii). Should it succeed in this effort, the burden then shifts to Respondent to show that it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also 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”).
Complainant argues that Respondent has no rights or legitimate interests in the <snapzchat.com> domain name, as Respondent is not commonly known by the disputed domain name, nor has Complainant authorized Respondent to use the SNAPCHAT mark in any way. In considering this issue, WHOIS information can support a finding that the respondent is or is not commonly known by a disputed domain name. See Philip Morris USA Inc. v. Usama Ramzan, FA 1737750 (Forum July 26, 2017) (“We begin by noting that Complainant contends, and Respondent does not deny, that Respondent has not been commonly known by the <marlborocoupon.us> domain name, and that Complainant has not authorized Respondent to use the MARLBORO mark in any way. Moreover, the pertinent WHOIS information identifies the registrant of the domain name only as “Usama Ramzan,” which does not resemble the domain name. On this record, we conclude that Respondent has not been commonly known by the challenged domain name so as to have acquired rights to or legitimate interests in it within the purview of Policy ¶ 4(c)(ii).”) The WHOIS information of record identifies the registrant of the disputed domain name as “Sammo Shuvro,” and no information on the record indicates Respondent is known otherwise or that it was authorized to register a domain name incorporating Complainant’s mark. As the Respondent has not provided a Response or made any other submission in this case, the Panel is left with the evidence at-hand and therefore finds under Policy ¶ 4(c)(ii) that Respondent has not been commonly known by the <snapzchat.com> domain name.
Complainant further argues that Respondent’s lack of rights or legitimate interests in the <snapzchat.com> domain name is demonstrated by its failure to use the name to make a bona fide offering of goods or services or for a legitimate noncommercial or fair use. Complainant contends that Respondent uses the disputed domain name to attract users for commercial gain by resolving it a website featuring sexually explicit adult dating content and photographs. There exist a number of UDRP decisions which hold that a respondent’s use of a disputed domain name to display adult-oriented sexual images is not a bona fide offering of goods or services or a legitimate noncommercial or fair use under the Policy. For example, in Altria Group, Inc. and Altria Group Distribution Company v. xiazihong, FA 1732665 (Forum July 7, 2017), the Panel held that “[u]se of a domain name to display adult-oriented images is not considered a bona fide offering of goods or services or a legitimate noncommercial or fair use under the Policy.” It went on to find that “[h]ere, Complainant provided screenshots of Respondent’s resolving website which displays adult-oriented images. Therefore, the Panel holds that Respondent has not made any bona fide offering of goods or services or any legitimate noncommercial or fair use of the disputed domain name.” Id. No other basis for the Panel’s finding under Policy ¶ 4(c)(i) is made in the Altria Group decision. However, the Panel in the present case does not view the adult-themed nature of a website, alone, as sufficient grounds upon which to find a lack of bona fide offering of goods or services. Rather, such cases should be examined in the same manner as disputes involving industries other than adult entertainment including a full range of factors such as the use of a confusingly similar domain name, the nature of the website (commercial or otherwise), evidence of a genuine (i.e., not pretextual or exploitative) business plan utilizing the domain name, and other evidence generally pointing to a lack of indicia of cybersquatting intent. See TeamShiffrin, LLC v. Ray Leal, FA 1771643 (Forum Mar. 27, 2018) citing WIPO Jurisprudential Overview 3.0 at par. 2.2. As such, the Panel declines to find that Respondent’s use of the disputed domain name is not bona fide solely on the basis of the sexual adult themed dating content to which it resolves.
Complainant also argues that the Respondent is not making a bona fide offering of goods and services under the disputed domain name as the content to which it resolves is of a commercial nature and it makes no mention of, and has no relationship to Complainant or its SNAPCHAT mark. UDRP panels have found that leading consumers who are searching for a particular business, to a site where unrelated commercial services provided by others are listed, is not a bona fide use. See Homer, TLC Inc. v. Lorna Kang, FA 573872 (Forum, Nov. 22, 2005) (“Respondent’s use of domain name that is identical to Complainant’s mark to divert Internet users to third-party website for Respondent’s own commercial gain does not constitute a bona fide offering ... or a legitimate noncommercial or fair use....”) Here, Complainant provides a screenshot of the website that resolves from the disputed domain name and this depicts commercial, sexual adult themed dating content that is unauthorized by, and bears no relationship to Complainant or its mark. The Panel finds that Respondent has improperly leveraged the confusingly similar nature of the disputed domain name in an attempt at commercial gain and that such activity fails to demonstrate a bona fide offering of goods or services under Policy ¶ 4(c)(i).
Therefore, the Panel finds that Respondent fails to use the <snapzchat.com> domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii).
Complainant contends that, in light of the fame and notoriety of Complainant's SNAPCHAT mark, it is inconceivable that Respondent could have registered the <snapzchat.com> domain name without actual knowledge of Complainant's rights in the mark. Actual knowledge of a complainant's rights in its asserted mark prior to registering a disputed domain name has been found to be sufficient evidence upon which to build a case of bad faith under Policy ¶ 4(a)(iii). See Google LLC v. Manoj Gupta / Shrish Chandra Yadav, FA 1858276 (Forum Sep. 17, 2019) (“Respondent registered the <gmailcustomerservicenumber.us> and <gmailcustomerservice.us> domain names knowing that Complainant had trademark rights in the GMAIL mark. Respondent’s prior knowledge is evident from the notoriety of Complainant’s trademark….”) Complainant further asserts that Respondent’s registration of the domain name years after Complainant’s mark had already gain worldwide notoriety indicates that it had actual knowledge of the SNAPCHAT mark. The Panel agrees and finds that Respondent had actual knowledge of Complainant’s rights in the mark.
Next, Complainant asserts that Respondent registered and uses the <snapzchat.com> domain name in bad faith. Specifically, Complainant claims that Respondent attempts to attract, for commercial gain, users to the disputed domain name by creating a likelihood of confusion as to source, sponsorship, endorsement or affiliation at the disputed domain name’s website. General diversion of users to a confusingly similar domain name, particularly for commercial gain, may demonstrate bad faith under Policy ¶ 4(b)(iv). See Perot Sys. Corp. v. Perot.net, FA 95312 (Forum Aug. 29, 2000) (finding bad faith where the domain name in question is obviously connected with the complainant’s well-known marks, thus creating a likelihood of confusion strictly for commercial gain); see also MySpace, Inc. v. Myspace Bot, FA 672161 (Forum May 19, 2006) (holding that the respondent registered and used the <myspacebot.com> domain name in bad faith by diverting Internet users seeking the complainant’s website to its own website for commercial gain because the respondent likely profited from this diversion scheme). Here, Complainant provided a screenshot of the <snapzchat.com> domain name’s resolving webpage, showing a number of sexual adult themed images with a link to a third-party adult dating website. The Panel notes that the disputed domain name incorporates the SNAPCHAT mark in connection with a sexual adult themed website having no relation to Complainant or its business and that Respondent appears to seek commercial benefit from this diversion. Therefore, in the absence of a Response or other submission by the Respondent, the Panel finds that a preponderance of the evidence in this case supports a finding that Respondent registered and uses the disputed domain name in bad faith per Policy ¶ 4(b)(iv).
Complainant also argues that Respondent registered and used the <snapzchat.com> domain name in bad faith, as Respondent has the disputed domain name host sexual adult themed content. Prior decisions have found that registration and use of a disputed domain name to host adult oriented content can be evidence of bad faith under Policy ¶ 4(a)(iii). See Molson Canada 2005 v. JEAN LUCAS / DOMCHARME GROUP, FA1412001596702 (Forum Feb. 10, 2015) (“Further, Respondent’s diversion of the domain names to adult-oriented sites is registration and use of the disputed domain names in bad faith under Policy ¶ 4(a)(iii).”) Similar to its reasons noted above, this Panel declines to find bad faith based solely on the nature of the website to which the disputed domain name resolves. In any event, bad faith has already been found for the reasons stated earlier in this decision.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <snapzchat.com> domain name be TRANSFERRED from Respondent to Complainant.
Steven M. Levy, Esq., Panelist
Dated: October 17, 2019
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