Snap Inc. v. Domain Admin / Whois Privacy Corp.
Claim Number: FA2008001907704
Complainant is Snap Inc. (“Complainant”), represented by Emily A. Debow of Kilpatrick Townsend & Stockton LLP, California, United States. Respondent is Domain Admin / Whois Privacy Corp. (“Respondent”), Bahamas.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <snaphotnames.com>, registered with Internet Domain Service BS Corp.
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.
James Bridgeman SC as Panelist.
Complainant submitted a Complaint to the Forum electronically on August 7, 2020; the Forum received payment on August 7, 2020.
On August 10, 2020, Internet Domain Service BS Corp confirmed by e-mail to the Forum that the <snaphotnames.com> domain name is registered with Internet Domain Service BS Corp and that Respondent is the current registrant of the name. Internet Domain Service BS Corp has verified that Respondent is bound by the Internet Domain Service BS Corp 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 August 12, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 1, 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@snaphotnames.com. Also on August 12, 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 September 3, 2020, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed James Bridgeman SC 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 disputed domain name <snaphotnames.com> be transferred from Respondent to Complainant.
A. Complainant
Complainant claims rights in the SNAPCHAT and SNAP trademarks and service marks based on its ownership of the trademark and service mark registrations described below and extensive use of the marks since 2011 to distinguish its messaging application. By 2016 Complainant’s platform had 158 million active users and as of the second quarter of 2020 the app is used by 238 million people daily.
Complainant submits that as a result of Complainant’s widespread use and the continuous and unsolicited media coverage that Complainant has received, as well as the high degree of consumer recognition, the SNAP and SNAPCHAT marks have become famous as has been found by a number panels appointed under the Policy in previous complaints.
Complainant submits that the disputed domain name is confusingly similar to its SNAPCHAT and SNAP trademarks arguing that its SNAP mark is the dominant element of the disputed domain name. The SNAP mark is also a distinctive element of the SNAPCHAT trademark and the disputed domain name. See SNAP Inc. v. Contact Privacy Inc. Customer 0146764045, et al., D2017-0635 (WIPO May 29, 2017) (finding <snaphack.co> and <snaphacker.org> confusingly similar to complainant’s SNAP and SNAPCHAT marks because “[t]he Panel finds that “snap” and “snapchat” are the distinctive elements of the Disputed Domain Names”).
Complainant adds that the inclusion of the generic or descriptive terms “hot”
and “names” does not distinguish the disputed domain name from Complainant’s marks. Panels established under the Policy, have consistently held that the addition of generic or descriptive terms is not sufficient to distinguish a disputed domain name from a complainant’s mark. See Yahoo! Inc. v. Domain Contact 3, FA0808001222420 (Forum Oct. 3, 2008) (finding the addition of the descriptive terms “hot” and “jobs” followed by complainant’s YAHOO mark without the exclamation point not change the conclusion that the disputed domain name was confusingly similar to complainant’s mark).
Additionally, Complainant submits that the inclusion of the generic Top-Level Domain (gTLD) extension <.com> in the disputed domain name does not change the conclusion that the disputed domain name is confusingly similar to the SNAP and SNAPCHAT marks. See, e.g., Snap Inc. v. Nestor Hernandez, F1709001749325 (Forum Oct. 25, 2017) (“gTLDs are insufficient to defeat a test of confusingly similar”).
Complainant submits that Respondent has no rights or legitimate interests in the disputed domain name arguing that there is nothing in the WHOIS information that indicates that Respondent is commonly known by the disputed domain name.
Complainant also submits that it has no relationship with Respondent.
Referring to screenshots of the website which the disputed domain name resolved, which contained adult orientated material, Complainant submits that in no way has Respondent made use of the disputed domain name for bona fide offerings of goods or services or for making a legitimate noncommercial or fair use of the disputed domain name. See Snap Inc. v. Michael Smith, FA2004001894441 (Forum May 27, 2020) (finding respondent’s use of <baesnaps.com> to resolve to an adult oriented website cannot constitute a bona fide use).
Complainant argues that Respondent is using Complainant’s marks in the disputed domain name to confuse internet users into believing that Respondent’s is in some way affiliated with Complainant because Respondent’s website made and continues to make multiple references to Complainant’s SNAPCHAT App which indicates that Respondent could only be using the term “Snap” in the disputed domain name to refer to Complainant’s brand, in an attempt to trade off the fame of Complainant and confuse internet users into believing it was affiliated with Complainant. Complainant adds that such use is neither legitimate nor fair. See State Farm Mutual Automobile Insurance Company v. George Washere, FA2003001887947 (Forum Apr. 11, 2020) (finding that Respondent’s attempt to create an association with Complainant and trade off the good will associated with Complainant was not legitimate noncommercial or fair use).
Complainant refers to a copy of its Terms of Service and adds that Respondent’s use of the disputed domain name to promote the distribution of pornographic content via SNAPCHAT accounts also violates Complainant’s Terms of Service.
Complainant argues specifically that Respondent’s website lists usernames described as containing pornographic content, inducing SNAPCHAT users to visit the identified SNAPCHAT accounts to access pornographic content, in violation of Complainant’s Terms of Service prohibiting such conduct. See, e.g., Snap Inc. v. Kazi Raihan / Rashel Hossain / refath kanta / MOIN UDDIN, FA2004001890945, (Forum May 11, 2020) (finding respondent’s use of the domain name to induce others to violate Snap’s Terms of Service could not serve to provide the respondent with rights or legitimate interests in the disputed domain names).
Component further submits that after Complainant’s attorneys sent infringement notices to Respondent, Respondent removed the some of the infringing SNAP brand elements from Respondent’s website, including the “Ghost” logo but did not abandon the disputed domain name. Complainant submits that changes made to a website after receiving an infringement notice do not give Respondent any rights or legitimate interest in the disputed domain name. See, e.g., Google, Inc. v. Star Co. Ltd., FA0901001245134 (Forum March 25, 2009) (finding changes made to a website after receiving notice of infringement did not create rights or legitimate interests in disputed domain) citing Wal-Mart Stores, Inc. v. Walmarket Canada, D2000-0150 (WIPO May 2, 2000) (finding that the respondent had no rights or legitimate interests where he decided to develop the website for the sale of wall products after receiving the complainant’s infringement notice).
Complainant submits that the disputed domain name was registered and is being used in bad faith.
Complainant submits that the disputed domain name was registered with actual knowledge of Complainant’s rights in the SNAP and SNAPCHAT marks.
Complainant first made use of the SNAPCHAT mark in September 2011. The disputed domain name was not registered until December 10, 2017, well after Complainant’s marks and SNAPCHAT App had become internationally recognized and well-known. Complainant submits that Respondent’s registration of the disputed domain name long after Complainant had first used its marks is sufficient to satisfy the bad faith requirement. See Snap Inc. v. Daisy Ducharme / baby & belly photography, FA1911001872261 (Forum Dec. 28, 2019) (finding Respondent had actual knowledge of Complainant’s rights in the SNAPCHAT and SNAP marks due to notoriety of Complainant’s marks).
Complainant adds that Respondent repeatedly refers to the SNAPCHAT App on the website to which the disputed domain name resolves and argues that this is uncontroverted evidence that Respondent had actual knowledge of Complainant’s marks prior to registering the disputed domain name. See Snap Inc. v. Daisy Ducharme / baby & belly photography, FA1911001872261 (Forum Dec. 28, 2019) (finding Respondent had actual knowledge of Complainant’s rights in the SNAPCHAT and SNAP marks based on Respondent’s use of Complainant’s logos, marks, and color scheme on its webpage).
Complainant further submits that Respondent’s use of the disputed domain name to promote activity that violates Complainant’s Terms of Service, which prohibit use of the SNAPCHAT App to distribute pornography, is further evidence of bad faith. See, e.g., See, e.g., Snap Inc. v. Kazi Raihan / Rashel Hossain / refath kanta / MOIN UDDIN (Forum May 11, 2020) (finding use of confusingly similar domain names to connect adult models with members who paid a fee to be added as followers to the adult models’ private Snapchat accounts in violation of Snap’s terms of service was evidence of bad faith registration and use for the purposes of Policy ¶ 4(a)(iii).
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant owns and distributes the SNAPCHAT camera and messaging application, and storytelling platform which is available for both the iOS and Android operating systems and is the registered owner of a large portfolio of trademark and service mark registrations for the SNAPCHAT, SNAP and other trademarks incorporating the word SNAP and a logo described as a “Ghost Design” including the following examples:
· European Union Trade Mark SNAPCHAT, registration number 012925971, registered on October 22, 2014 for goods and services in classes 09, 38, 41, 42 and 45;
· European Union Trade Mark SNAPCHAT, registration number013632369, registered on February 15, 2016 for goods and services in classes 09, 35, 36, 38, 41, 42;
· People’s Republic of China trademark registration SNAPCASH, registration number 16282385, registered on June 28, 2016 for services in class 38;
· United States registered service mark SNAP (Design), registration number 5,022,674, registered on the Principal Register on August 16, 2016 for services in international classes 41 and 42;
· United States registered trademark (“Ghost” Design) registration number 4,573, 338, registered on July 22, 2014 for goods in international class 9.
Complainant is also the owner of the <snapchat.com> and <snap.com> domain names and corresponding websites and services.
The disputed domain name was registered on December 10, 2017 and resolves to a website with adult content with a banner which states “SNAPCHAT NUDES & NAMES OF SNAPCHAT PORSTARS with Complainant’s “GHOST” design mark prominently displayed:
There is no information about Respondent except that which is provided in the Amended Complaint, the Registrars WhoIs, and information provided by the Registrar in response to the Forum’s request verification of the registration details of the disputed domain name. Respondent of privacy service which concealed its identity on the published WhoIs database.
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 has provided clear and convincing, uncontested evidence of its rights in the SNAPCHAT and SNAP trademarks and service marks based on its ownership of the trademark and service mark registrations described above and goodwill that it has acquired by the extensive use of the marks since 2011 to distinguish its messaging application. By 2016 Complainant’s platform had 158 million active users and as of the second quarter of 2020 the app is used by 238 million people daily. The global success of Complainant’s app appropriately qualifies it to be designated as famous.
The disputed domain name consists of Complainant’s mark in combination with the words “hot” and “names”. Complainants SNAP mark is the initial and dominant element of the disputed domain name and the combination of the elements “snap” and “hot” have a visual and aural similarity to SNAPCHAT likely to confuse some readers.
The terms “hot” and “names” provide no distinguishing characteristic and in the context of this domain name registration the gTLD <.com> extension would be regarded as a technical necessity for the domain name registration.
This Panel finds therefore that the disputed domain name is confusingly similar to both Complainant’s SNAP and SNAPCHAT marks and Complainant has therefore succeeded in the first element of the test in Policy ¶ 4(a)(i).
Complainant has made out a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name arguing
· that there is nothing in the WHOIS information that indicates that Respondent is commonly known by the disputed domain name;
· that which the owner of the SNAP and SNAPCHAT marks has no relationship with Respondent;
· that Complainant’s rights in the SNAP and SNAPCHAT marks predate the registration of the disputed domain name;
· that the screenshots of the website which the disputed domain name resolved, show that Respondent is using the disputed domain name which is confusingly similar to Complainant’s marks, without authority, to lure Internet users to Respondent’s website which contains adult orientated material and facilitates use of Complainant’s SNAPCHAT App in violation of its Terms of Service, which is not a bona fide offerings of goods or services or a legitimate noncommercial or fair use of the disputed domain name.
It is well established that if Complainant makes out a prima facie case, the burden of production shifts to Respondent to prove his rights or legitimate interests in the disputed domain name. Respondent has failed to file any Response to the Complaint or provide any defense to Complainant’s allegations and so has not discharged the burden. In the circumstances this Panel must find that on the balance of probabilities Respondent has no rights or legitimate interests in the disputed domain name.
Complainant has therefore succeeded in the second element of the test in Policy ¶ 4(a)(ii).
This Panel finds that on the balance of probabilities the disputed domain name was registered in bad faith with actual knowledge of Complainant’s rights in the SNAP and SNAPCHAT marks. Complainant first made use of the SNAPCHAT mark in September 2011. The disputed domain name was not registered until December 10, 2017, well after Complainant’s marks and SNAPCHAT App had become internationally recognized and well-known and had reached a famous status among Internet users.
It is most improbable that the registrant of the disputed domain name was unaware of Complainant, its App, mark and reputation when the disputed domain name was chosen and registered. The subsequent use of the disputed domain name would indicate that the intention of the registrant was to take predatory advantage of Complainant’s reputation and goodwill and reputation in the SNAP and SNAPCHAT marks.
This Panel finds therefore that the disputed domain name was registered in bad faith with Complainant’s mark and App in mind.
The screenshots that have been annexed to the Compliant show that the disputed domain name is being used in bad faith as the address of a website, that unlawfully uses Complainant’s name and registered trademark “Ghost” logo and purports to offer services facilitating Internet users to use Complainant’s App to access pornographic material in breach of Complainant’ Terms of Service.
As this Panel has found that the disputed domain name was registered and is being used in bad faith, Complainant has therefore succeeded in the third and final element of the test in Policy ¶ 4(a)(iii) it is entitled to succeed in its application for transfer of the disputed domain name.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <snaphotnames.com> domain name be TRANSFERRED from Respondent to Complainant.
__________________________________
James Bridgeman SC
Panelist
Dated: September 4, 2020
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page