Snap Inc. v. Mario E Zugasti
Claim Number: FA2101001929617
Complainant is Snap Inc. (“Complainant”), represented by Emily A. DeBow of Kilpatrick Townsend & Stockton LLP, California, USA. Respondent is Mario E Zugasti (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <snapalva.com>, registered with Google 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.
Bruce E. Meyerson as Panelist.
Complainant submitted a Complaint to the Forum electronically on January 25, 2021; the Forum received payment on January 25, 2021.
On January 26, 2021, Google LLC confirmed by e-mail to the Forum that the <snapalva.com> domain name is registered with Google LLC and that Respondent is the current registrant of the name. Google LLC has verified that Respondent is bound by the Google 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 January 28, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 17, 2021 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@snapalva.com. Also on January 28, 2021, 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 February 22, 2021, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Bruce E. Meyerson 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
1. Complainant, Snap, Inc., is the owner and developer of the popular social media app, “Snapchat”, and other marks such as “SNAP & Design,” “SNAP ADS,” “SNAP CHANNEL,” “SNAPCODE,” and “SNAP PUBLISHER,” and owner of the domain names SNAPCHAT.COM and SNAP.COM. Its app allows users to share photos, videos, and messages with other users, known as “Snaps.” In the course of its business, Complainant has had 158 million daily users across the globe and the most-downloaded app in the Apple App Store. Complainant has registered its marks with various intellectual property organizations including the United States and Canada and has held these registrations since as early as 2014.
2. Complainant has rights in the SNAP mark due to the registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No 4,925,206,registered Mar. 29, 2016).
3. The <snapalva.com>[i] domain name is confusingly similar to its SNAP mark because it uses the SNAP mark in its entirety which could cause an Internet user to believe that the website using the domain name is associated with the Complainant. The website includes the use of the mark, a generic top-level domain (gTLD) “.com”, and the word “alva.”
4. Respondent has no rights or legitimate interest in the domain name because Respondent has no rights in Complainant’s mark.
5. Furthermore, there is no showing that Respondent is commonly known by Complainant’s mark.
6. Respondent is not using the domain name for a bona fide offering of goods or services both commercially and non-commercially. Instead, Respondent is diverting internet users to a webpage that offers adult oriented material.
7. Respondent has registered and uses the <snapalva.com> domain name in bad faith because the domain includes a popularly recognized mark, and displays adult-oriented content.
8. Respondent also had actual knowledge of Complainant’s rights in the SNAP mark due to the longstanding use of the mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant holds trademark rights for the SNAP mark. Respondent’s domain name is confusingly similar to Complainant’s SNAP mark. Complainant has established that Respondent lacks rights or legitimate interests in the use of the <snapalva.com> domain name and that Respondent registered and uses the domain name 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 has rights in the SNAP mark through its registrations with the USPTO. Registration of a mark with the USPTO is sufficient to demonstrate rights in a mark per policy ¶ 4(a)(i). See BGK Trademark Holdings, LLC & Beyoncé Giselle Knowles-Carter v. Chanphut / Beyonce Shop, FA 1626334 (Forum Aug. 3, 2015) (asserting that Complainant’s registration with the USPTO (or any other governmental authority) adequately proves its rights under Policy ¶ 4(a)(i)). Complainant has provided the Panel with copies of it USPTO registrations for the SNAP mark (e.g. Reg. No 4,925,206, registered Mar. 29, 2016). Therefore, Complainant has rights in the SNAP mark per Policy ¶ 4(a)(i).
Complainant argues that the <snapalva.com> domain name is identical or confusingly similar because it incorporates Complainant’s SNAP mark and adds the generic term “alva”. Use of a domain name that contains a mark in its entirety and adds a generic term does not distinguish the domain name from the mark per Policy ¶ 4(a)(i). See Starbucks Corporation d/b/a Starbucks Coffee Company v. Waseem A Ali / Micron Web Services, FA 1785616 (Forum June 8, 2018) (finding the <starbucksreal.com> domain name to be confusingly similar to the STARBUCKS mark, as “the addition of the generic term ‘real’ to Complainant's mark does not distinguish the Domain Name from Complainant's trade mark pursuant to the Policy.”). Therefore, the Panel holds that Respondent’s <snapalva.com> domain name is confusingly similar to Complainant’s mark per Policy ¶ 4(a)(i).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).
Complainant alleges that Respondent holds no rights or legitimate interests in the <snapalva.com> domain name. This allegation must be supported with a prima facie showing by Complainant under Policy ¶ 4(a)(ii). After a complainant successfully makes a prima facie case, a respondent is faced with the burden of proving it does have rights or legitimate interests in the domain name. In Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Forum Feb. 13, 2007), the panel held that when a complainant produces a prima facie case, the burden of proof then shifts to the respondent to demonstrate its rights or legitimate interests in the domain name under Policy ¶ 4(c); see also Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent. In those circumstances, the common approach is for respondents to seek to bring themselves within one of the examples of paragraph 4(c) or put forward some other reason why they can fairly be said to have a relevant right or legitimate interests in respect of the domain name in question.”). The Panel holds that Complainant has made a prima facie case.
Complainant argues Respondent is not commonly known by Complainant’s registered mark and that the WHOIS information does not show that Respondent is commonly known by <snapalva.com> domain name. Evidence, which includes information from WHOIS, that shows a registrant’s information is materially different from the domain name is sufficient to show that the registrant is not commonly known by a domain name per Policy ¶ 4(c)(ii). See Emerson Electric Co. v. Cai Jian Lin / Shen Zhen Shi colorsun Zi Dong Hua You Xian Gong Si, FA 1798802 (Forum Aug. 31, 2018) (“UDRP panels have consistently held that evidence of a registrant name that is materially different from the domain name at issue is competent evidence that the respondent is not commonly known by the domain name.”).; see also Amazon Technologies, Inc. v. Suzen Khan / Nancy Jain / Andrew Stanzy, FA 1741129 (Forum Aug. 16, 2017) (finding that respondent had no rights or legitimate interests in the disputed domain names when the identifying information provided by WHOIS was unrelated to the domain names or respondent’s use of the same). Here, within the WHOIS database, there is no showing that Respondent is known by the <snapalva.com> domain. Therefore, the Panel holds that Respondent is not commonly known by the <snapalva.com> domain name per Policy ¶ 4(c)(ii).
Complainant next argues that Respondent does not use the <snapalva.com> domain name for a bona fide offer of goods or services because the domain name directs users to a webpage that displays adult-oriented content. The use of a domain name incorporating the mark of another to display adult-oriented images is not considered a bona fide offer of goods or services nor is it legitimate noncommercial or fair use. 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.”).; Karen Koehler v. Hiroshi Ishiura/ Lifestyle Design Inc., FA1730673 (Forum June 1, 2017) (holding that “Respondent is not using the disputed domain name for any bona fide offering of goods or services or a legitimate non-commercial fair use because Respondent uses the domain name to host [an adult-oriented] website.”). Complainant provides screenshots of Respondent’s domain name’s resolving webpage that shows adult-oriented images and content. Therefore, the Panel holds that Respondent is not making a bona fide offering of goods or services nor is not using the <snapalva.com> domain name for a legitimate noncommercial purpose per Policy ¶ 4(c)(i) or (iii).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant first argues Respondent registered the <snapalva.com> domain name in bad faith because Respondent had actual knowledge of Complainant’s rights in its SNAP mark. Under Policy ¶ 4(a)(iii), it is a bad faith use of a domain name if the registrant had actual knowledge of the complainant’s mark at the time of registration. See United States Postal Service v. Yongkun Wang, FA 1788170 (Forum July 11, 2018) (finding Respondent had actual knowledge of Complainant’s rights in the USPS mark “given the widespread use of Complainant’s mark and the fact that Respondent registered four separate domain names all of which include Complainant’s USPS mark in its entirety”). According to Complainant, Complainant’s mark is associated with one of the most popular social media apps in the world, “SNAPCHAT.” The record indicates that Complainant had logged more than 178 million daily active users in 2017 and 3.5 billion Snaps every day in September 2017. Therefore, the Panel agrees that Respondent had actual knowledge of Complainant’s rights in the SNAP mark per Policy ¶ 4(a)(iii).
Complainant next argues that Respondent has acted within bad faith by redirecting users to an adult-oriented website through the use of Complainant’s mark. Use of a complainant’s mark that directs users to an adult-oriented website constitutes a bad faith use per Policy ¶ 4(a)(iii). See H-D U.S.A., LLC v. Nobuyoshi Tanaka / Personal, FA1312001534740 (Forum Jan. 31, 2014) (“Therefore, the Panel concludes that Respondent is acting in bad faith because Respondent is using the <harley-davidsonsales.com> domain name to tarnish Complainant’s HARLEY-DAVIDSON mark, as the Panel also finds that the content displayed on the resolving website constitutes adult-oriented content.”); see also Microsoft Corp. v. Horner, D2002-0029 (WIPO Feb. 27, 2002) (holding that the respondent’s use of the complainant’s mark to post adult-oriented photographs and to publicize hyperlinks to additional adult-oriented websites evidenced bad faith use and registration of the domain name). The record contains a screenshot of Respondent’s <snapalva.com> domain name that displays adult-oriented content. Therefore, the Panel holds that Respondent registered and used the <snapalva.com> domain name in bad faith per Policy ¶ 4(a)(iii).
The Panel finds Complainant has satisfied 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 <snapalva.com> domain name be TRANSFERRED from Respondent to Complainant.
Bruce E. Meyerson, Panelist
Dated: March 4, 2021
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