Snap Inc. v. Kevin Knowlton / Web Publications
Claim Number: FA2003001888248
Complainant is Snap Inc. (“Complainant”), represented by Caroline Barbee of Kilpatrick Townsend & Stockton LLP, California, US. Respondent is Kevin Knowlton / Web Publications (“Respondent”), US.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <premiumsnapgirls.com>, registered with DNC Holdings, 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.
The Honourable Neil Anthony Brown QC as Panelist.
Complainant submitted a Complaint to the Forum electronically on March 13, 2020; the Forum received payment on March 13, 2020.
On March 16, 2020, DNC Holdings, Inc. confirmed by e-mail to the Forum that the <premiumsnapgirls.com> domain name is registered with DNC Holdings, Inc. and that Respondent is the current registrant of the name. DNC Holdings, Inc. has verified that Respondent is bound by the DNC Holdings, 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 March 19, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 28, 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@premiumsnapgirls.com. Also on March 19, 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 April 30, 2020, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed The Honourable Neil Anthony Brown QC 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 made the following contentions.
Complainant owns and distributes the SNAPCHAT camera and messaging application. Complainant has rights in the SNAP mark through its registration of the mark with multiple trademark agencies, such as the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 4,345,533, registered June 4, 2013). See Compl. Ex. R. Respondent’s <premiumsnapgirls.com> domain name is identical or confusingly similar to Complainant’s mark as it contains Complainant’s SNAP mark and adds the generic or descriptive terms “premium” and “girls” as well as the “.com” generic top-level domain (“gTLD”).
Respondent lacks rights or legitimate interests in the <premiumsnapgirls.com> domain name. Respondent is not commonly known by the disputed domain name, nor has Complainant authorized, licensed, or otherwise permitted Respondent to use the mark. Respondent fails to use the disputed domain name in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, Respondent uses the <premiumsnapgirls.com> domain name to display adult-oriented content. Additionally, Respondent uses the disputed domain name to divert Internet traffic to Respondent’s commercial website. Respondent’s use of the disputed domain name violates Complainant’s terms of service and induces Complainant’s users to do the same.
Respondent registered and uses the <premiumsnapgirls.com> domain name in bad faith. Respondent uses the disputed domain name to divert Internet traffic to an adult-oriented website for Respondent’s financial gain. Respondent registered the disputed domain name with actual knowledge of Complainant’s SNAP mark given the worldwide recognition of the mark and use of the mark on the resolving webpage. Respondent uses the disputed domain name to promote and facilitate activity that violates Complainant’s terms of service.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant is a United States company that owns and distributes the SNAPCHAT camera and messaging application.
2. Complainant has established its trademark rights in the SNAP mark through its registration of the mark with multiple trademark agencies, such as the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 4,345,533, registered June 4, 2013).
3. Respondent registered the <premiumsnapgirls.com> domain name on June 11, 2019.
4. Respondent uses the <premiumsnapgirls.com> domain name to divert Internet traffic to Respondent’s commercial website, does so by displaying adult-oriented content in breach of Complainant’s terms of service and induces Complainant’s internet users to do the same.
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”).
The first question that arises is whether Complainant has rights in a trademark or service mark on which it may rely. Complainant submits that it has rights in the SNAP mark based on registration of the mark with multiple trademark agencies, such as the USPTO (e.g. Reg. No. 4,345,533, registered June 4, 2013). See Compl. Ex. R. Registration of a mark with the USPTO sufficiently confers a complainant’s rights in a mark for the purposes of Policy ¶ 4(a)(i). See Liberty Global Logistics, LLC v. damilola emmanuel / tovary services limited, FA 1738536 (Forum Aug. 4, 2017) (“Registration of a mark with the USPTO sufficiently establishes the required rights in the mark for purposes of the Policy.”). Accordingly, the Panel finds that Complainant has established rights in the SNAP mark for the purposes of Policy ¶ 4(a)(i).
The next question that arises is whether the disputed domain name is identical or confusingly similar to Complainant’s SNAP mark. Complainant next argues that Respondent’s <premiumsnapgirls.com> domain name is identical or confusingly similar to Complainant’s mark as it contains Complainant’s SNAP mark and adds the generic or descriptive terms “premium” and “girls” as well as the “.com” gTLD. The addition of generic or descriptive terms and a gTLD fails to distinguish a domain name sufficiently for the purposes of Policy ¶ 4(a)(i). See Microsoft Corporation v. Thong Tran Thanh, FA 1653187 (Forum Jan. 21, 2016) (determining that confusing similarity exists where [a disputed domain name] contains Complainant’s entire mark and differs only by the addition of a generic or descriptive phrase and top-level domain, the differences between the domain name and its contained trademark are insufficient to differentiate one from the other for the purposes of the Policy). The Panel therefore finds that the <premiumsnapgirls.com> domain name is confusingly similar to the SNAP mark under Policy ¶ 4(a)(i).
Complainant has thus made out the first of the three elements that it must establish.
It is now well established that 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), then the burden shifts to Respondent to show 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”).
The Panel finds that Complainant has made out a prima facie case that arises from the following considerations:
(a) Respondent has chosen to take Complainant’s SNAP trademark and to use it in its domain name, adding the generic words “premium” and “ girls” which do not negate the confusing similarity between the domain name and the trademark;
(b) Respondent registered the <premiumsnapgirls.com> domain name on June 11, 2019.
(c) Respondent uses the <premiumsnapgirls.com> domain name to divert Internet traffic to Respondent’s commercial website, does so by displaying adult-oriented content in breach of Complainant’s terms of service and induces Complainant’s internet users to do the same;
(d) Respondent has engaged in these activities without the consent or approval of Complainant;
(e) Complainant argues Respondent lacks rights or legitimate interests in the <premiumsnapgirls.com> domain name as Respondent is not commonly known by the disputed domain name, nor has Complainant authorized, licensed, or otherwise permitted Respondent to use the mark. WHOIS information may be used to determine whether a respondent is commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Amazon Technologies, Inc. v. LY Ta, FA 1789106 (Forum June 21, 2018) (concluding a respondent has no rights or legitimate interests in a disputed domain name where the complainant asserted it did not authorize the respondent to use the mark, and the relevant WHOIS information indicated the respondent is not commonly known by the domain name). Additionally, lack of authorization to use a complainant’s mark may indicate that the respondent is not commonly known by the disputed domain name. See Emerson Electric Co. v. golden humble / golden globals, FA 1787128 (Forum June 11, 2018) (“lack of evidence in the record to indicate a respondent is authorized to use [the] complainant’s mark may support a finding that [the] respondent does not have rights or legitimate interests in the disputed domain name per Policy ¶ 4(c)(ii)”). The WHOIS information for the disputed domain name lists the registrant as “Kevin Knowlton/Web Publications,” and there is no other evidence to suggest that Respondent was authorized to use the SNAP mark. Therefore, the Panel finds Respondent is not commonly known by the disputed domain name per Policy ¶ 4(c)(ii);
(f) Complainant argues Respondent fails to use the disputed domain name in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use because Respondent uses the <premiumsnapgirls.com> domain name to display adult-oriented content. Displaying adult-oriented content via a disputed domain name does not constitute a bona fide offering of goods or services or legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii). See Altria Group, Inc. and Altria Group Distribution Company v. xiazihong, FA1732665 (Forum July 7, 2017) (holding 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.”). Complainant provides screenshots of the resolving webpage of the disputed domain name which Complainant submits Respondent uses to promote adult-content on Complainant’s platform. See Compl. Annex T. The Panel therefore finds respondent’s use does not amount to a bona fide offering of goods or services or legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii);
(g) Complainant contends Respondent uses the disputed domain name to divert Internet traffic to Respondent’s commercial website. Diverting Internet users away from a complainant and to a respondent’s own commercial website is generally not a bona fide offering of goods or services or legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii). See Invesco Ltd. v. Premanshu Rana, FA 1733167 (Forum July 10, 2017) (“Use of a domain name to divert Internet users to a competing website is not a bona fide offering of goods or services or a legitimate noncommercial or fair use.”). Complainant argues that Respondent uses the SNAP mark to divert Internet users to the disputed domain name. See Compl. Annex T. As the Panel agrees, it finds Respondent does not use the disputed domain name for a bona fide offering of goods or services or legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii);
(h) Complainant submits that Respondent’s use of the disputed domain name violates Complainant’s terms of service and induces Complainant’s users to do the same. Use of a domain name to enable users to violate the terms of service of a Complainant’s product may not be a bona fide offering of goods or services or legitimate noncommercial or fair use of the disputed domain name under Policy ¶¶ 4(c)(i) or (iii). See Google Inc. v. Onur Koycegiz, FA1741705 (Forum Aug. 25, 2017) (finding that respondent’s use of the <10youtube.com> domain name in association with a website that enabled Internet users to download and save content from Google’s YouTube service in violation of Google’s YouTube Terms of Service did not constitute either a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii)). Complainant argues that Respondent uses the disputed domain name to promote and facilitate the sale of access to private Snapchat accounts to obtain adult content, in violation of Complainant’s terms of service for the platform. As the Panel agrees, it finds Respondent does not use the disputed domain name for a bona fide offering of goods or services or legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii).
All of these matters go to make out the prima facie case against Respondent. As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant has thus made out the second of the three elements that it must establish.
It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain name was registered in bad faith and has been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.
Having regard to those principles, the Panel finds that the disputed domain name was registered and used in bad faith. That is so for the following reasons.
First, Complainant argues that Respondent registered and uses the <premiumsnapgirls.com> domain name in bad faith as Respondent uses the disputed domain name to divert Internet traffic to an adult-oriented website for Respondent’s financial gain. Bad faith registration and use under Policy ¶ 4(b)(iv) can be found where a respondent uses a disputed domain name to divert Internet users to a pornographic website. See Andrey Ternovskiy dba Chatroulette v. Abdelbasset Selmi, FA 1638963 (Forum Oct. 28, 2015) (finding the respondent’s use of the at-issue domain name to resolve to pornographic content indicated the respondent registered and used the <chatroulette.us> domain name in bad faith per Policy ¶ 4(b)(iv)). Complainant argues that Respondent uses the SNAP mark to divert Internet users to the disputed domain name’s resolving website. See Compl. Annex T. Therefore, the Panel finds bad faith registration and use per Policy ¶ 4(b)(iv).
Secondly, Complainant submits Respondent registered the disputed domain name with actual knowledge of Complainant’s SNAP mark given the worldwide recognition of the mark and use of the mark on the resolving webpage. Actual knowledge of a complainant’s trademark rights at the time of registration of a domain name can show bad faith registration per Policy ¶ 4(a)(iii). See Snap Inc. v. Deepika Priyadarshinie / entsl, FA 1788600 (Forum June 21, 2018) (finding the respondent had actual knowledge of the complainant and its rights in the claimed mark due to the fame of the mark, established by the complainant’s submission of numerous articles regarding the success of the complainant’s product); see also Ripple Labs Inc. v. Jessie McKoy / Ripple Reserve Fund, FA 1790949 (Forum July 9, 2018) (“Complainant contends Respondent’s appropriation of Complainant’s trademark was a clear intent to trade upon Complainant’s reputation and goodwill in order to confuse Internet users. Therefore, the Panel finds Respondent did have actual knowledge of Complainant’s mark prior to registration and this constitutes bad faith per Policy ¶ 4(a)(iii).”). Complainant provides screenshots of the disputed domain name resolving website which makes reference to Complainant and Complainant’s marks. See Compl. Annex T. Complainant also provides articles evidencing the fame and notoriety of Complainant’s mark. See Compl. Annexes E through P. The Panel therefore finds Respondent had actual knowledge of Complainant’s rights in the SNAP mark and registered the disputed domain name in bad faith per Policy ¶ 4(a)(iii).
Thirdly, Respondent uses the disputed domain name to promote and facilitate activity that violates Complainant’s terms of service. Use of a disputed domain name to violate or induce others to violate a complainant’s terms of service can indicate bad faith registration per Policy ¶ 4(a)(iii). See Google Inc. v. Onur Koycegiz, FA1741705 (Forum Aug. 25, 2017) (finding use of a domain name for activity that violated the complainant’s terms of service to constitute bad faith use and registration under the Policy). Complainant argues that Respondent uses the disputed domain name to promote and facilitate the sale of access to private Snapchat accounts to obtain adult content, in violation of Complainant’s terms of service for the platform. The Panel therefore finds Respondent registered and uses the disputed domain name in bad faith per Policy ¶ 4(a)(iii).
Fourthly, in addition and having regard to the totality of the evidence, the Panel finds that, in view of Respondent’s registration of the disputed domain name using the SNAP mark and in view of the conduct that Respondent has engaged in when using the disputed domain name, Respondent registered and used it in bad faith within the generally accepted meaning of that expression.
Complainant has thus made out the third of the three elements that it must establish.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <premiumsnapgirls.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC
Panelist
Dated: May 1, 2020
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