Snap Inc. v. destiny overturf
Claim Number: FA2006001898709
Complainant is Snap Inc. (“Complainant”), represented by Emily A. DeBow of Kilpatrick Townsend & Stockton LLP, California, USA. Respondent is destiny overturf (“Respondent”), Illinois, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <sexysnapchatgirl.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.
Petter Rindforth as Panelist.
Complainant submitted a Complaint to the Forum electronically on June 2, 2020; the Forum received payment on June 2, 2020.
On June 3, 2020, eNom, LLC confirmed by e-mail to the Forum that the <sexysnapchatgirl.com> 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, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 24, 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@sexysnapchatgirl.com. Also on June 4, 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 June 29, 2020, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Petter Rindforth 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
The Complainant owns and distributes the SNAPCHAT camera and messaging application. Complainant has rights in the SNAPCHAT trademark through its registration of the trademark with multiple trademark agencies, such as the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 4,375,712, registered June 4, 2013). Respondent’s <sexysnapchatgirl.com> domain name is identical or confusingly similar to Complainant’s mark as it contains Complainant’s SNAPCHAT mark and adds the generic or descriptive terms “sexy” and “girl” as well as the “.com” generic top-level domain (“gTLD”).
Respondent lacks rights or legitimate interests in the <sexysnapchatgirl.com> domain name. Respondent is not commonly known by the disputed domain name and Respondent has no right to own or use any domain name containing Complainant's trademark. 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 disputed domain name to display adult-oriented content and facilitate the exchange of pornography via Complainant’s platform. 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 <sexysnapchatgirl.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 SNAPCHAT trademark given the worldwide recognition of the trademark and use of the trademark 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.
The Complainant is the owner of a number of national and regional trademark registrations for the word trademark SNAPCHAT, for example
National Antigua and Barbuda Registration No 8221 SNAPCHAT (word), registered January 12, 2015 for services in class 36;
National Antigua and Barbuda Registration No 8220 SNAPCHAT (word), registered January 12, 2015 for goods in class 9;
National Australian Registration No 1558022 SNAPCHAT (word), registered May 20, 2013 for goods in class 9;
National Australian Registration No 1668644 SNAPCHAT (word), registered January 12, 2015 for goods and services in classes 9, 35, 36, 38, 41, 42 and 45;
National Bahamas Registration No 38857 SNAPCHAT (word), registered September 24, 2015 for goods in (national) class 8;
National Belizian Registration No 11407.15 SNAPCHAT (word), registered January 12, 2015 for goods and services in classes 9 and 36;
National Belizian Registration No 11408.15 SNAPCHAT (word), registered January 12, 2015 for goods and services in classes 9, 38, 41, 42 and 45;
National Canadian Registration No TMA954,928 SNAPCHAT (word), registered November 10, 2016;
National Swiss Registration No 648843 SNAPCHAT (word), registered/published September 20, 2013 for goods in class 9;
National Swiss Registration No 676159 SNAPCHAT (word), registered/published July 29, 2015 for goods and services in classes 9, 36, 38, 41, 42 and 45;
National Chilean Registration No 1183465 SNAPCHAT (word), registered October 21, 2015 for services in classes 35, 36, 38, 41 and 42;
National Chinese Registration No 12741857 SNAPCHAT (word), registered August 21, 2015 for goods in class 9;
National Chinese Registration No 14593568A SNAPCHAT (word), registered September 7, 2015 for goods and services in classes 9 and 35;
National Chinese Registration No 16130890 SNAPCHAT (word), registered March 14, 2016 for services in class 36;
National Chinese Registration No 16130891 SNAPCHAT (word), registered March 14, 2016 for goods in class 9;
National Costa Rican Registration No 247391 SNAPCHAT (word), registered October 19, 2015 for goods and services in classes 9, 36, 38, 41, 42 and 45;
National Egyptian Registration No 302462 SNAPCHAT (word), registered July 26, 2015 for services in class 38;
National Egyptian Registration No 302463 SNAPCHAT (word), registered July 22, 2015 for services in class 41;
National Egyptian Registration No 302465 SNAPCHAT (word), registered July 26, 2015 for services in class 45;
National Egyptian Registration No 312435 SNAPCHAT (word), registered June 22, 2016 for services in class 36;
National Egyptian Registration No 312436 SNAPCHAT (word), registered June 22, 2016 for services in class 38;
National Egyptian Registration No 312437 SNAPCHAT (word), registered June 22, 2016 for services in class 41;
National Egyptian Registration No 312438 SNAPCHAT (word), registered June 22, 2016 for services in class 42;
European Union Trade Mark Registration No 013632369 SNAPCHAT (word), registered February 15, 2016 for goods and services in classes 9, 35, 36, 38, 41 and 42;
European Union Trade Mark Registration No 012925971 SNAPCHAT (word), registered October 22, 2014 for goods and services in classes 9, 38, 41, 42 and 45;
European Union Trade Mark Registration No 011827334 SNAPCHAT (word), registered October 16, 2013 for goods and services in classes 9, 38, and 45.
The Complainant has also provided copies of other national trademark registrations for SNAPCHAT (word), however not translated to English from the respective local languages.
Further, the Complainant has claimed to have national US trademark registration for SNAPCHAT (word), but not provided any copy of the related certificate of registration.
Respondent registered the <sexysnapchatgirl.com> domain name on January 17, 2020.
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 Complainant asserts rights in the SNAPCHAT trademark based on registration of the trademark with numerous trademark agencies around the world (e.g. Australian. Reg. No. 1668644 registered Jan. 12, 2015). Registration of a trademark with multiple trademark agencies is sufficient to establish rights in the trademark. See 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.”). Accordingly, the Panel find that Complainant has established rights in the SNAPCHAT trademark for the purposes of Policy ¶ 4(a)(i).
Complainant next argues that Respondent’s <sexysnapchatgirl.com> domain name is identical or confusingly similar to Complainant’s trademark as it contains Complainant’s SNAPCHAT trademark and adds the generic or descriptive terms “sexy” and “girl” as well as the “.com” gTLD. The addition of generic or descriptive terms and a gTLD fails to sufficiently distinguish a domain name 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 trademark 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 agrees that, even placed in the mid of the disputed domain name, with the descriptive/generic words “sexy” and “girl” in front and after, the trademark SNAPCHAT is still a dominant part of <sexysnapchatgirl.com>. The Panel therefore find that the disputed <sexysnapchatgirl.com> domain name is confusingly similar to the SNAPCHAT trademark under Policy ¶ 4(a)(i).
Once the Complainant makes a prima facie case in support of its allegations in respect of the second element of the Policy, the burden shifts to the Respondent to show that it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). See AOL LLC v. Gerberg, FA 780200 (Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”); see also Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name).
Complainant argues that Respondent lacks rights or legitimate interests in the <sexysnapchatgirl.com> domain name. Respondent is not commonly known by the disputed domain name and Respondent has no right to own or use any domain name containing Complainant's trademark. 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 trademark, 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 trademark 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 “destiny overturf,” and there is no other evidence to suggest that Respondent is authorized to use the SNAPCHAT trademark. Therefore, the Panel find that Respondent is not commonly known by the disputed domain name per Policy ¶ 4(c)(ii).
The Complainant next argues Respondent fails to use the <sexysnapchatgirl.com> domain name in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use, as Respondent uses the disputed domain name to display adult-oriented content and facilitate the exchange of pornography. Displaying adult-oriented content via a disputed domain name may 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’s asserts Respondent uses to promote adult-content on Complainant’s platform. The Panel therefore find that 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).
Additionally Complainant argues that Respondent uses the SNAPCHAT trademark, via the <sexysnapchatgirl.com> domain name, to divert Internet users to Respondent’s own website for commercial gain. 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.”). The Panel agrees, and find that 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).
Complainant submits that Respondent’s use of the <sexysnapchatgirl.com> 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. Looking at the evidence provided by the Complainant, the Panel agrees, and find that 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).
The Complainant argues that Respondent registered and uses the <sexysnapchatgirl.com> domain name in bad faith as Respondent uses <sexysnapchatgirl.com> to divert Internet traffic to an adult-oriented website. Bad faith registration and use under Policy ¶ 4(b)(iii) can be found where a respondent uses a disputed domain name to divert Internet users to a pornographic website. PopSockets LLC v. san mao, FA 1740903 (Forum Aug. 27, 2017) (finding disruption of a complainant’s business which was not directly commercial competitive behavior was nonetheless sufficient to establish bad faith registration and use per Policy ¶ 4(b)(iii)); see also 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)). The Panel recalls that Complainant argues and has indeed provided evidence in support of that argument, that Respondent uses the SNAPCHAT mark to divert Internet users to the disputed domain name which features adult-oriented content. Therefore, the Panel find bad faith registration and use per Policy ¶ 4(b)(iv).
Complainant asserts that Respondent registered the <sexysnapchatgirl.com> domain name with actual knowledge of Complainant’s SNAPCHAT trademark given the worldwide recognition of the trademark and use of the trademark 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).”). Again, the Panel notes that Complainant provides screenshots of the website connected with the disputed domain name which makes reference to Complainant and Complainant’s trademarks. The Panel therefore finds that Respondent had actual knowledge of Complainant’s rights in the SNAPCHAT trademark and registered the disputed domain name in bad faith per Policy ¶ 4(a)(iii).
Complainant further arguers that Respondent uses the <sexysnapchatgirl.com> 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. Therefore the Panel find that Respondent registered and uses the disputed 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 <sexysnapchatgirl.com> domain name be TRANSFERRED from Respondent to Complainant.
Petter Rindforth, Panelist
Dated: July 4, 2020
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