Snap Inc. v. Sidorov
Claim Number: FA2002001884011
Complainant is Snap Inc. (“Complainant”), represented by Emily A. DeBow of Kilpatrick Townsend & Stockton LLP, United States. Respondent is Sidorov (“Respondent”), Russia.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <snapchatdefamosos.net>, registered with PDR Ltd. d/b/a PublicDomainRegistry.com.
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 February 20, 2020; the Forum received payment on February 20, 2020.
On February 21, 2020, PDR Ltd. d/b/a PublicDomainRegistry.com confirmed by e-mail to the Forum that the <snapchatdefamosos.net> domain name is registered with PDR Ltd. d/b/a PublicDomainRegistry.com and that Respondent is the current registrant of the name. PDR Ltd. d/b/a PublicDomainRegistry.com has verified that Respondent is bound by the PDR Ltd. d/b/a PublicDomainRegistry.com 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 February 24, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 16, 2020 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@snapchatdefamosos.net. Also on February 24, 2020, 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 March 23, 2020, 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, Snap Inc., owns and distributes the enormously popular SNAPCHAT camera and messaging application. Complainant has rights in the trademark SNAPCHAT based upon its use in commerce dating back to 2011 and it registration of the mark with many national trademark offices around the world dating back to 2013. Respondent’s <snapchatdefamosos.net> domain name, registered on April 25, 2019, is confusingly similar to Complainant’s mark as Respondent merely adds the descriptive phrase “de famosos” (which is the Spanish phrase for “of celebrities”) and the “.net” generic top-level domain (“gTLD”) to Complainant’s SNAPCHAT mark.
Respondent does not have rights or legitimate interests in the <snapchatdefamosos.net> domain name. Respondent is not licensed or authorized to use Complainant’s SNAPCHAT mark and is not commonly known by the disputed domain name. Additionally, Respondent is not using the <snapchatdefamosos.net> domain name in connection with any bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, Respondent uses the disputed domain name to host pay-per-click advertisements on a purported internet dating site. In addition, Respondent uses the disputed domain name to conduct a phishing scheme.
Respondent registered and uses the <snapchatdefamosos.net> domain name in bad faith. Respondent uses the disputed domain name to host a purported internet dating site that contains many pay-per-click advertisements. Furthermore, Respondent uses the disputed domain name to conduct a phishing scheme. Finally, Respondent had actual knowledge of Complainant’s SNAPCHAT mark when it registered the <snapchatdefamosos.net> domain name.
B. Respondent
Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is confusingly similar to a trademark in which Complainant has rights;
(2) Respondent has no rights to or legitimate interests in respect of the domain name; and
(3) the disputed 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 to the SNAPCHAT mark based upon registration with the USPTO and many other national trademark offices around the world. Registration with such offices sufficiently establishes rights in a mark under Policy ¶ 4(a)(i). See, e.g., Licensing IP International S.ŕ.r.l. v. Privacy.co.com / Savvy Investments, LLC Privacy ID# 1002007, FA 1881336 (Forum Feb. 29, 2020) (“Registration of a mark with multiple trademark entities is sufficient to establish rights in a mark under Policy ¶ 4(a)(i).”), citing 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.”) Complainant provides copies of many of its registration certificates for the SNAPCHAT mark. Therefore, the Panel finds that Complainant has rights in the SNAPCHAT mark per Policy ¶ 4(a)(i).
Complainant next claims that Respondent’s <snapchatdefamosos.net> domain name is confusingly similar to Complainant’s SNAPCHAT mark as Respondent merely adds a modifier and a gTLD to the mark. Additions of a generic and/or descriptive terms and a gTLD to a complainant’s mark typically does not negate any confusing similarity between a disputed domain name and such mark under Policy ¶ 4(a)(i). See Microsoft Corporation v. Thong Tran Thanh, FA 1653187 (Forum Jan. 21, 2016) (“where as here a disputed domain names contains Complainant’s entire trademark and differs only by the addition of a generic or descriptive phrase and top-level domain name, the differences between the domain name and its contained trademark are insufficient to differentiate one from the other for the purposes of the Policy.”); see also Trip Network Inc. v. Alviera, FA 914943 (Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis). Complainant argues that Respondent merely adds the descriptive phrase “de famosos” (which is the Spanish phrase for “of celebrities”) and the “.net” gTLD to Complainant’s SNAPCHAT mark. The Panel agrees with Complainant and finds that the <snapchatdefamosos.net> domain name is confusingly similar to, and does not contain changes that would sufficiently distinguish it from 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 <snapchatdefamosos.net> domain name. Specifically, Complainant argues that Respondent is not licensed or authorized to use the SNAPCHAT mark and is not commonly known by the disputed domain name. In considering this issue, WHOIS information can support a finding that a respondent is or is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Alaska Air Group, Inc. and its subsidiary, Alaska Airlines v. Song Bin, FA1408001574905 (Forum Sept. 17, 2014) (holding that the respondent was not commonly known by the disputed domain name as demonstrated by the WHOIS information and based on the fact that the complainant had not licensed or authorized the respondent to use its ALASKA AIRLINES mark.) Additionally, lack of authorization to use a complainant’s mark may demonstrate that the respondent is not commonly known by the disputed domain name. See Navistar International Corporation v. N Rahmany, FA1505001620789 (Forum June 8, 2015) (finding that the respondent was not commonly known by the disputed domain name where the complainant had never authorized the respondent to incorporate its NAVISTAR mark in any domain name registration). The WHOIS information of record identifies Respondent as “Sidorov,” and there is no other evidence to suggest Respondent is known otherwise or that it is authorized to use the SNAPCHAT mark. The Panel therefore finds that Respondent is not commonly known by the disputed domain name per Policy ¶ 4(c)(ii).
Moreover, Complainant argues that Respondent is not using the <snapchatdefamosos.net> domain name in connection to a bona fide offering of goods or services or a legitimate noncommercial or fair use. Specifically, Complainant alleges that Respondent uses the disputed domain name to host a webpage that impersonates Complainant and contains links to third party websites which compete with Complainant’s business. Use of a confusingly similar domain name to offer a product or service that competes with a complainant is typically not considered to be a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and (iii). Wes Madan / United Oil Heat, Inc., d/b/a OrderMyOil.com v. William Lajoie, FA 1702295 (Forum, Dec. 27, 2016) (“neither a respondent’s use of a domain name to provide services that are directly competitive with a complainant’s business nor a respondent’s use of a domain name to pass itself off as a complainant constitutes a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)”). Furthermore, resolving a confusingly similar domain name to a website that displays third party links to Complainant’s competitors is also typically not a bona fide, legitimate, or fair use. See Coachella Music Festival, LLC v. josh greenly / All Access Tickets, FA 1629217 (Forum Aug. 10, 2015) (finding that the respondent had failed to provide a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name as required under Policy ¶ 4(c)(i) and Policy ¶ 4(c)(iii), where the respondent was using the disputed domain name to host a web page that featured links to services that competed with those of the complainant); see also 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.”). Here, Complainant provides screenshots of the dispute domain name’s resolving website which offers a purported dating website and which is also monetized with a number of advertisements for third-party goods and services. Therefore, the Panel finds that the Respondent lacks rights or legitimate interests with respect to the disputed domain name pursuant to Policy ¶¶ 4(c)(i) and (iii).
Furthermore, Complainant asserts that Respondent uses the <snapchatdefamosos.net> domain name to perpetrate a phishing scheme and trick users into revealing personal or confidential information under false pretenses. Using a disputed domain name to conduct a phishing scheme is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor a legitimate noncommercial or fair use of the domain name under Policy ¶ 4(c)(iii). See Chem-Trend Limited Partnership v. david wayn, FA 1883922 (Forum Mar. 19, 2020) (use of a disputed domain name “in furtherance of phishing is not indicative of rights or legitimate interests under Policy ¶¶ 4(c)(i) or (iii).”) Complainant submits a screenshot demonstrating that browsing to the disputed domain name without malware protection resolves to a warning page alerting users that the disputed domain name may “trick you into doing something dangerous like installing software or revealing your personal information (for example, passwords, phone numbers, or credit cards.” Therefore, the Panel finds that Respondent’s use of the disputed domain name is not a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii).
Complainant argues that Respondent must have had actual and constructive knowledge of Complainant’s SNAPCHAT mark. The fame of a complainant’s trademark has, in some instances, been held to support the assumption that a respondent had knowledge thereof at the time it registered a disputed domain name. See Google Inc. v. Ahmed Humood, FA 1591796 (Forum Jan. 7, 2015) (“This Panel makes that inference; Respondent has actual knowledge of Complainant’s mark at the time of domain name registration based on the fame of Complainant’s GOOGLE mark and Respondent’s use of one of the disputed domain names to detail Internet domain name registration and maintenance services related to and in competition with Complainant.”) Complainant asserts that the SNAPCHAT mark is internationally recognized and it submits evidence in support thereof including news stories, website statistics, industry awards, and consumer research studies. Therefore, the Panel finds it highly likely that Respondent had actual knowledge of Complainant’s rights in the SNAPCHAT mark at the time it registered the disputed domain name.
Complainant further claims that Respondent registered and uses the <snapchatdefamosos.net> domain name in bad faith. Specifically, Complainant claims that Respondent attempts to disrupt Complainant’s business and attract, for commercial gain, users to a competing website which purports to offer social communication/dating services and features click-through advertisements to third parties. Using a confusingly similar domain name to disrupt a complainant’s business and commercially benefit via a competing website, and monetized links can evince bad faith registration and use per Policy ¶¶ 4(b)(iii) and (iv). See Google Inc. v. James Lucas / FireStudio / Jameschee / FIRESTUDIO / SEONG YONG, FA 1605757 (Forum Apr. 7, 2015) (“This Panel agrees that Respondent’s inclusion of advertisements to likely reap click-through fees is an example of bad faith pursuant Policy ¶ 4(b)(iv).”); Amazon Technologies, Inc. v. reynald grattagliano / cote azur holding ltd, FA 1767935 (Forum Feb. 14, 2018) (finding use of the disputed domain name to offer online retail services in direct competition with Complainant constituted bad faith). Here, Complainant contends that Respondent’s disputed domain name is intended to mislead Internet users and disrupt Complainant’s business by diverting Internet traffic away from Complainant’s site to Respondent’s website which competes with Complainant, insofar as the Infringing Website purports to offer services related to social networking - i.e., dating - to Snapchat App users, among others. Complainant also claims that Respondent hosts links to third party websites to generate click-through advertisement revenue. Complainant provides a screenshot of Respondent’s website to support its allegations. Therefore, and in the absence of any Response or other submission in this case by Respondent, the Panel finds that Respondent registered and uses the disputed domain name in bad faith pursuant Policy ¶¶ 4(b)(iii) and/or (iv).
Next, Complainant contends that Respondent uses the disputed domain name to host a phishing scheme. Use of a disputed domain name in connection with a phishing scheme does not represent good faith per Policy ¶ 4(a)(iii). See Klabzuba Oil & Gas, Inc. v. LAKHPAT SINGH BHANDARI, FA 1625750 (Forum July 17, 2015) (“Respondent uses the <klabzuba-oilgas.com> domain to engage in phishing, which means Respondent registered and uses the domain name in bad faith under Policy ¶ 4(a)(iii).”) As previously mentioned, Complainant argues that browsing to the disputed domain name without malware protection resolves to the following warning page, alerting users that the disputed domain name may “trick you into doing something dangerous like installing software or revealing your personal information (for example, passwords, phone numbers, or credit cards.) The Panel agrees with Complainant and finds that Respondent registered or used the disputed domain name in bad faith.
Finally, Complainant submits copies of a demand letter and follow-up emails that it sent to the Respondent insisting that all activities under the disputed domain name be ceased and that the name be transferred to Complainant. Respondent did not reply to any of these communication attempts and this provides supplemental evidence of bad faith. See LEGO Juris A/S v. store24hour, D2013-0091 (WIPO Feb. 22, 2013) (“The Respondent’s failure to respond to the Complainant’s cease and desist letter is an additional indication of bad faith”).
For the above-stated reasons, the Panel finds that Respondent registered and uses the <snapchatdefamosos.net> domain name in bad faith per Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <snapchatdefamosos.net> domain name be TRANSFERRED from Respondent to Complainant.
Steven M. Levy, Esq., Panelist
Dated: March 24, 2020
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