Snapchat, Inc. v. JOHN MAYER / N/A / LUKE H / SC
Claim Number: FA1407001569626
Complainant is Snapchat, Inc. (“Complainant”), represented by Anne H. Peck of Cooley LLP, California, USA. Respondent is JOHN MAYER / N/A / LUKE H / SC (“Respondent”), Florida, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <snapchatweb.com> and <snapchat.bz>, registered with eNom, Inc.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
John J. Upchurch as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on July 14, 2014; the National Arbitration Forum received payment on July 15, 2014.
On July 15, 2014, eNom, Inc. confirmed by e-mail to the National Arbitration Forum that the <snapchatweb.com> and <snapchat.bz> domain names are registered with eNom, Inc. and that Respondent is the current registrant of the names. eNom, Inc. has verified that Respondent is bound by the eNom, 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 July 21, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 11, 2014 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@snapchatweb.com as well as postmaster@snapchat.bz. Also on July 21, 2014, 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 National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On August 18, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed John J. Upchurch as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration 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 National Arbitration 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 names be transferred from Respondent to Complainant.
Complainant’s Contentions
Complainant has rights in the SNAPCHAT mark and the <snapchatweb.com> and <snapchat.bz> domain names are confusingly similar to that mark.
Respondent has no rights or legitimate interests in the two domain names. Respondent has never been known by the <snapchatweb.com> and <snapchat.bz> domain names. Further, Respondent’s use is neither bona fide nor a legitimate noncommercial or fair use.
Respondent has registered and used the domain names in bad faith.
Respondent’s Contentions
Respondent did not submit a formal response; however, the FORUM received an email from Respondent indicating the desire to voluntarily transfer the <snapchatweb.com> domain name to Complainant.
1. Respondent’s <snapchatweb.com> and <snapchat.bz> domain names are confusingly similar to Complainant’s SNAPCHAT mark.
2. Respondent does not have any rights or legitimate interests in the <snapchatweb.com> and <snapchat.bz> domain names.
3. Respondent registered or used the <snapchatweb.com> and <snapchat.bz> domain names 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(e), 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 and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
Preliminary Issue: Multiple Respondents
In the instant proceedings, Complainant has alleged that the entities which control the domain names at issue are effectively controlled by the same person and/or entity, which is operating under several aliases. Paragraph 3(c) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) provides that a “complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name holder.”
The Panel finds the domain names are commonly owned and controlled by a single Respondent who is using multiple aliases.
Complainant has registered the SNAPCHAT mark and uses it to promote its web video services. See, e.g., USPTO Reg. No. 4,375,712 registered July 30, 2013, filed December 12, 2012. The Panel finds this registration to be sufficient evidence of Policy ¶ 4(a)(i) rights in the mark, dating back to the December 2012 filing date. See Hershey Co. v. Reaves, FA 967818 (Nat. Arb. Forum June 8, 2007) (finding that the complainant’s rights in the KISSES trademark through registration of the mark with the USPTO “date back to the filing date of the trademark application and predate [the] respondent’s registration”).
Complainant claims the <snapchatweb.com> and <snapchat.bz> domains are identical to, or confusingly similar to, the SNAPCHAT mark. The Panel initially agrees that the addition of top-level domains (“TLDs”) “.com” or “.bz” are irrelevant. See Nev. State Bank v. Modern Ltd. – Cayman Web Dev., FA 204063 (Nat. Arb. Forum Dec. 6, 2003) (“It has been established that the addition of a …top-level domain is irrelevant when considering whether a domain name is identical or confusingly similar under the Policy.”). Thus, the <snapchat.bz> domain name is identical to the SNAPCHAT mark under Policy ¶ 4(a)(i). As for the <snapchatweb.com> domain name, the Panel finds confusing similarity under Policy ¶ 4(a)(i) because the additional term “web” is generic. See Alticor Inc v. Cao Mai, FA1521565 (Nat. Arb. Forum Nov. 5, 2013) (stating that, “the domain name buy-artistry.com is unquestionably confusingly similar to [c]omplainant’s famous ARTISTRY mark” as a result of the domain name differing from the complainant’s mark by no more than the generic term “buy” and a hyphen).
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), 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 (Nat. Arb. 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); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. 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.”).
Complainant claims Respondent has never been known by either of these <snapchatweb.com> and <snapchat.bz> domain names. The Panel notes the WHOIS information for the domain names lists “LUKE H” or “JOHN MAYER” as the registrants of record. Here the Panel concludes that Respondent is not known by the <snapchatweb.com> and <snapchat.bz> domain names under Policy ¶ 4(c)(ii). See M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record).
Complainant claims that Respondent seeks to compete with Complainant by passing off as Complainant through the domain names’ websites. The Panel notes Annex 12, which illustrates Respondent using logos similar to Complainant’s to market its offerings. The Panel finds these offerings and all other purposes behind the <snapchatweb.com> and <snapchat.bz> domain names to fall short of a Policy ¶ 4(c)(i) bona fide offering of goods or services, or a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use. See Alcon, Inc. v. ARanked, FA 1306493 (Nat. Arb. Forum Mar. 18, 2010) (“The Panel finds that capitalizing on the well-known marks of Complainant by attracting internet users to its disputed domain names where Respondent sells competing products of Complainant is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).”).
Complainant claims that Respondent’s offering of competing services evidences its intent to disrupt Complainant’s SNAPCHAT operations. The Panel again notes the domain name is being used to promote a service called “SnapChatWeb.” See Compl., at Attached Ex. 12. Complainant cites to Google Inc. v. Private Person / Dmitriy Rekruta, FA1212001473942 (Nat’l Arb. Forum Jan. 14, 2013), noting that “The Panel finds Respondent’s use of the disputed domain name to offer competing game applications while using Complainant’s logo shows bad faith registration and use under Policy ¶4(b)(iii).” The Panel finds that the offering of these services illustrates an attempt to disrupt Complainant’s business in Policy ¶ 4(b)(iii) bad faith. See, e.g., Spark Networks PLC v. Houlihan, FA 653476 (Nat. Arb. Forum Apr. 18, 2006) (holding that the respondent’s registration of a domain name substantially similar to the complainant’s AMERICAN SINGLES mark in order to operate a competing online dating website supported a finding that respondent registered and used the domain name to disrupt the complainant’s business under Policy ¶ 4(b)(iii)).
Complainant further claims Respondent’s actions with respect to the use of the two <snapchatweb.com> and <snapchat.bz> domain names showcase an intent to profit through the likelihood of Internet users’ confusion. Complainant cites to Hewlett-Packard Co. v. Ali, FA 353151 (Nat’l Arb. Forum Dec. 13, 2004) “Respondent [used “HP” in its domain name] to benefit from the goodwill associated with Complainant’s HP marks and us[ed] the <hpdubai.com> domain name, in part, to provide products similar to those of Complainant. Respondent’s practice of diversion, motivated by commercial gain, constitutes bad faith registration and use pursuant to Policy ¶ 4(b)(iv).” The Panel agrees that the evidenced use of the domain names, as seen in Exhibit 12, similarly shows an intent to profit off the likelihood Internet users will confuse these domain names’ offerings with Complainant’s SNAPCHAT business. As such, the Panel finds Policy ¶ 4(b)(iv) bad faith.
Complainant also claims that Respondent registered the domain names with actual and constructive notice of Complainant’s rights in the SNAPCHAT mark. As such, the Panel agrees that Respondent actually knew of Complainant’s rights in the mark and as such Respondent is liable of bad faith under Policy ¶ 4(a)(iii). See, e.g., Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Nat. Arb. Forum Feb. 6, 2014) (“The Panel notes that although the UDRP does not recognize ‘constructive notice’ as sufficient grounds for finding Policy ¶ 4(a)(iii) bad faith, the Panel here finds actual knowledge through the name used for the domain and the use made of it.”).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <snapchatweb.com> and <snapchat.bz> domain names be TRANSFERRED from Pespondent to Complainant
John J. Upchurch, Panelist
Dated: August 29, 2014
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