Snap Inc. v. John Basham / Celebs Snapchat
Claim Number: FA2106001953363
Complainant is Snap Inc. (“Complainant”), represented by Dennis L. Wilson of Kilpatrick Townsend & Stockton LLP, California, USA. Respondent is John Basham / Celebs Snapchat (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <celebssnapchat.com> (“Domain Name”), registered with GoDaddy.com, 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.
Nicholas J.T. Smith as Panelist.
Complainant submitted a Complaint to the Forum electronically on June 29, 2021; the Forum received payment on June 29, 2021.
On June 30, 2021, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <celebssnapchat.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, 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 July 1, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 21, 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@celebssnapchat.com. Also on July 1, 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 July 27, 2021, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Nicholas J.T. Smith 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., is an is an American camera and social media company which owns and distributes the popular Snapchat camera and messaging application and storytelling platform that allows users to share photographs, videos, and messages. Complainant has rights in the SNAPCHAT mark based on registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 4,933,187, registered Apr. 5, 2016). Respondent’s <celebssnapchat.com> domain name is confusingly similar to Complainant’s mark since it incorporates Complainant’s mark in its entirety, adding only the generic and/or descriptive term “celebs” and the “.com.” generic top-level domain (“gTLD”).
Respondent lacks rights and legitimate interests in the <celebssnapchat.com> domain name. Respondent is not commonly known by the Domain Name, nor has Complainant licensed or authorized Respondent to use the SNAPCHAT mark. Additionally, Respondent does not use the Domain Name for any bona fide offering of goods or services, nor for any legitimate noncommercial or fair use. Instead, Respondent uses the Domain Name to intentionally pass off and divert Internet users to a website (“Respondent’s Website”) for commercial gain. Specifically, Respondent’s Website contains extensive advertising and purports to connect visitors to users of Complainant’s Snapchat service who use their accounts to post pornographic photos. The use of Snapchat to share pornography is in violation of the Snapchat Terms of Service.
Respondent registered and uses the <celebssnapchat.com> domain name in bad faith because Respondent created a likelihood of confusion as to Respondent’s affiliation with Complainant for commercial gain. Specifically, Respondent passes off as Complainant on the resolving website, using the SNAPCHAT mark and the same color scheme, and hosts third-party links that promote adult-oriented content. Moreover, Respondent had constructive and/or actual knowledge of Complainant’s rights in the SNAPCHAT mark based on the fame of Complainant’s mark and Respondent’s reference to Complainant on the resolving website.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant holds trademark rights for the SNAPCHAT mark. The Domain Name is confusingly similar to Complainant’s SNAPCHAT mark. Complainant has established that Respondent lacks rights or legitimate interests in the use of the Domain Name and that Respondent registered and has used 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 SNAPCHAT mark under Policy ¶ 4(a)(i) through its registration of the mark with the USPTO (e.g., Reg. No. 4,933,187, registered Apr. 5, 2016). Registration of a mark with the USPTO is sufficient to establish rights in that mark. 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.”).
The Panel finds that the <celebssnapchat.com> Domain Name is confusingly similar to the SNAPCHAT mark as it fully incorporates the SNAPCHAT mark and adds the word/abbreviation “celebs” and the “.com” gTLD. The addition of a generic term along with a gTLD to a wholly incorporated trade mark does not distinguish a disputed domain name from a mark. See Wiluna Holdings, LLC v. Edna Sherman, FA 1652781 (Forum Jan. 22, 2016) (finding the addition of a generic term and gTLD is insufficient to distinguish a disputed domain name from a mark under Policy ¶ 4(a)(i)); see also Countrywide Fin. Corp. v. Johnson & Sons Sys., FA 1073019 (Forum Oct. 24, 2007) (holding that the addition of the generic top-level domain (“gTLD”) “.com” was irrelevant).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).
Complainant alleges that Respondent holds no rights or legitimate interests in the Domain Name. In order for Complainant to succeed under this element, it must first make a prima facie case that Respondent lacks rights and legitimate interests in the Domain Name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006) and 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.”). The Panel holds that Complainant has made out a prima facie case.
Complainant asserts that Respondent has no rights or legitimate interests in the Domain Name as Respondent is not commonly known by the Domain Name, nor has Complainant authorized Respondent to use the SNAPCHAT mark. Respondent has no relationship, affiliation, connection, endorsement or association with Complainant. WHOIS information can help support a finding that a respondent is not commonly known by the disputed domain name, especially where a privacy service has been engaged. See State Farm Mutual Automobile Insurance Company v. Dale Anderson, FA1504001613011 (Forum May 21, 2015) (concluding that because the WHOIS record lists “Dale Anderson” as the registrant of the disputed domain name, the respondent was not commonly known by the <statefarmforum.com> domain name pursuant to Policy ¶ 4(c)(ii)); see also Kohler Co. v. Privacy Service, FA1505001621573 (Forum July 2, 2015) (holding that the respondent was not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii) where “Privacy Service” was listed as the registrant of the disputed domain name).
The WHOIS lists “John Basham / Celebs Snapchat” as registrant of record. However there is no affirmative evidence that the Respondent is actually commonly known under the Celebs Snapchat name as opposed to simply registering the Domain Name under a name for the purpose of asserting rights or legitimate interests. Even if a respondent appears from the WHOIS record to be known by the domain name, without additional affirmative evidence, it can be concluded that a respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Google Inc. v. S S / Google International, FA1506001625742 (Forum Aug. 4, 2015) (“Respondent did identify itself as ‘Google International’ in connection with its registration of the Disputed Domain Name, and this is reflected in the WHOIS information. However, Respondent has not provided affirmative evidence from which the Panel can conclude that Respondent was commonly known by the Disputed Domain Name before Respondent’s registration thereof.”); see also Hewlett-Packard Co. v. HP Supplies, FA 282387 (Forum July 22, 2004) (“The Panel finds, because of the prominence of the HP mark, that Respondent’s registration under the ‘HP Supplies’ name does not establish that Respondent is commonly known by the <hpsupplies.com> domain name.”). Given the lack of evidence that the Respondent trades under any name corresponding to the Domain Name, and Complainant’s unrebutted assertions as to absence of any affiliation or authorization between the parties, the Panel finds that Respondent is not commonly known by the Domain Name in accordance with Policy ¶ 4(c)(ii).
The Domain Name is presently inactive but prior to the commencement of a proceeding resolved to the Respondent’s Website, an advertising-supported website that supports a service that allows users to access Snapchat accounts displaying pornography, in breach of Complainant’s terms of service. The use of a domain name containing the SNAPCHAT Mark to resolve to a website that, for commercial gain, assists and encourages individuals to breach Complainant’s terms of service is not a bona fide offering of goods or services or legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) and (iii). See Microsoft Corporation and Skype v. Attila Zilahi, FA 1489200 (Forum Apr. 18, 2013) (finding third-party links to salacious providers as well as selling placements for “Skype Live Girls Ads” and providing a “pornstar name generator” do not contribute to rights or legitimate interests); see also Snap Inc. v. Michael Smith, FA 1894441 (Forum May 27, 2020) (finding respondent’s use of <baesnaps.com> to resolve to an adult oriented website cannot constitute a bona fide use of the disputed domain name).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
The Panel finds on the balance of probabilities that, at the date of registration of the Domain Name, August 28, 2016, Respondent had actual knowledge of Complainant’s SNAPCHAT mark as the Respondent’s Website makes repeated references to Complainant’s services; indeed its purported business model relies on the exploitation of Complainant’s Snapchat service. In the absence of rights or legitimate interests of its own this demonstrates registration in bad faith under Policy ¶ 4(a)(iii).
The Panel finds that Respondent registered and uses the Domain Name in bad faith to create confusion with Complainant’s SNAPCHAT Mark for commercial gain by using the confusingly similar Domain Name to resolve to a website linking to and promoting adult-oriented content that exploits Complainant’s Snapchat service. Use of a disputed domain name to host links to promote adult oriented content may be evidence of bad faith per Policy ¶ 4(a)(iii). See Qwest Comm’ns Int’l Inc. v. Ling Shun Shing, FA 187431 (Forum Oct. 6, 2003) (“Respondent has attempted to commercially benefit from the misleading <qwestwirless.com> domain name by linking the domain name to adult oriented websites, gambling websites, and websites in competition with Complainant. Respondent’s attempt to commercially benefit from the misleading domain name is evidence of bad faith pursuant to Policy ¶ 4(b)(iv).”); 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 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 <celebssnapchat.com> domain name be TRANSFERRED from Respondent to Complainant.
Nicholas J.T. Smith, Panelist
Dated: July 27, 2021
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