Snapchat, Inc. v. VINE BITCHES / LULZ
Claim Number: FA1412001593520
Complainant is Snapchat, Inc. (“Complainant”), represented by Caroline Barbee of Kilpatrick Townsend & Stockton LLP, California, USA. Respondent is VINE BITCHES / LULZ (“Respondent”), New York, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <snapchat-usernames.net>, registered with ENOM, INC.
The undersigned certifies that he has acted independently and impartially, and, to the best of his knowledge, has no conflict of interests in serving as Panelist in this proceeding.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on December 4, 2014; the National Arbitration Forum received payment on December 8, 2014.
On December 9, 2014, ENOM, INC. confirmed by e-mail to the National Arbitration Forum that the <snapchat-usernames.net> domain name is registered with ENOM, INC. and that Respondent is the current registrant of the name. 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 December 10, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 30, 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@snapchat-usernames.net. Also on December 10, 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 January 6, 2015, pursuant to Complainant's request to have the dispute decided by a three-member Panel, the National Arbitration Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
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 name be transferred from Respondent to Complainant.
A. Complainant
Complainant uses the SNAPCHAT mark in connection with to operate and market photo and video sharing services offered through its mobile application software.
Complainant holds a registration for the SNAPCHAT trademark, which is on file with the United States Patent and Trademark Office ("USPTO") (Registry No. 4,375,712, registered July 30, 2013).
Respondent registered the domain name <snapchat-usernames.net> on June 22, 2014.
The <snapchat-usernames.net> domain name is confusingly similar to the SNAPCHAT mark.
Respondent has not been commonly known by the disputed domain name, nor has Complainant authorized Respondent’s use of the SNAPCHAT mark. Respondent is not using the disputed domain name for a bona fide offering of goods or services or for a legitimate noncommercial or fair use.
The domain name resolves to a website purporting to allow users to locate usernames of female users of Complainant’s SNAPCHAT app via Respondent’s “Snapchat Usernames App”.
Internet users are permitted to download Respondent’s app from the mobile version of the website associated with the domain name, but only after they download a “free” third-party app, such as “Castle Clash.”
Respondent generates revenue by promoting the distribution of third-party apps such as “Castle Clash.”
Respondent uses the disputed domain name to pass itself off as Complainant by referencing SNAPCHAT on its resolving website and prominently displaying Complainant’s “ghost logo.”
Respondent has no rights to or legitimate interests in the domain name.
Respondent knew of Complainant and its rights in the SNAPCHAT mark when it registered the disputed domain name.
Respondent registered and is using the domain name in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is confusingly similar to a trademark in which Complainant has rights; and
(2) Respondent has no rights to or legitimate interests in respect of the domain name; and
(3) the same domain name was registered and is being used by Respondent 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:
i. the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
ii. Respondent has no rights or legitimate interests in respect of the domain name; and
iii. 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) (finding that a respondent’s failure to respond allows all reasonable inferences of fact in the allegations of a UDRP 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.”
Complainant has rights the SNAPCHAT trademark for purposes of Policy ¶ 4(a)(i) by reason of its registration of the mark with a national trademark authority, the USPTO. See, for example, Expedia, Inc. v. Emmerson, FA 873346 (Nat. Arb. Forum Feb. 9, 2007):
Complainant’s trademark registrations with the USPTO adequately demonstrate its rights in the mark pursuant to Policy ¶ 4(a)(i).
Turning to the core question posed by Policy ¶ 4(a)(i), we conclude from a review of the record that the <snapchat-usernames.net> domain name is confusingly similar to Complainant’s SNAPCHAT trademark. The domain name contains the mark in its entirety, with only the addition of a hyphen, the term “usernames,” which relates to an aspect of Complainant’s business, and the generic Top Level Domain (“gTLD”) “.net.” These alterations of the mark, made in forming the domain name, do not save it from the realm of confusing similarity under the standards of the Policy. See Chanel, Inc. v. Cologne Zone, D2000-1809 (WIPO Feb. 22, 2001):
The addition of the generic term, “perfumes” is not a distinguishing feature, and in this case seems to increase the likelihood of confusion because it is an apt term for Complainant’s business.
See also Health Devices Corp. v. Aspen S T C, FA 158254 (Nat. Arb. Forum July 1, 2003):
[T]he addition of punctuation marks such as hyphens is irrelevant in the determination of confusing similarity pursuant to Policy ¶ 4(a)(i).
Further see Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to the mark of another in creating a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis).
Under Policy ¶ 4(a)(ii), Complainant must make a prima facie showing that Re-spondent lacks rights to and legitimate interests in the disputed domain name, whereupon the burden shifts to Respondent to show that it does have such rights or interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that a complainant must make a prima facie case that a respondent lacks rights to and legitimate interests in a disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to that re-spondent to show that it does have such rights or interests); 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 has made out a sufficient prima facie showing under this head of the Policy. Respondent’s failure to respond to the Complaint therefore permits us to infer that Respondent does not have rights to or legitimate interests in the disputed domain name. See Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that a respondent’s failure to respond to a UDRP complaint allows a presumption that a complainant’s allegations are true unless clearly contradicted by the evidence). Nonetheless, we will examine the record before us, in light of the several considerations set out in Policy ¶ 4(c), to deter-mine whether there is in it any basis for concluding that Respondent has rights to or legitimate interests in the disputed domain name which are cognizable under the Policy.
We begin by noting that Complainant asserts, and Respondent does not deny, that Respondent has not been commonly known by the disputed domain name, <snapchat-usernames.net>, nor has Complainant authorized Respondent’s use of its SNAPCHAT trademark. Moreover, the pertinent WHOIS information identifies the registrant of the domain name only as “VINE BITCHES / LULZ,” which does not resemble the domain name. On this record, we conclude that Respondent has not been commonly known by the domain name so as to have acquired rights to or legitimate interests in it within the meaning of Policy ¶ 4(c)(ii). See IndyMac Bank F.S.B. v. Eshback, FA 830934 (Nat. Arb. Forum Dec. 7, 2006) (finding, under Policy ¶ 4(c)(ii), that a respondent failed to establish rights to or legitimate interests in the <emitmortgage.com> domain name where that respondent was not authorized to register domain names featuring a UDRP complainant’s mark and failed to submit evidence showing that it was commonly known by the domain name).
We next observe that Complainant asserts, without objection from Respondent, that Respondent has not used the disputed domain name for a bona fide offering of goods or services, or for a legitimate noncommercial or fair use, in that the disputed domain name resolves to a website purporting to allow users to locate usernames belonging to female users of Complainant’s SNAPCHAP app via Respondent’s “Snapchat Usernames App,” that Respondent generates revenue from its promotion of the distribution of third-party apps such as “Castle Clash” on its resolving website, and that Respondent also attempts to pass itself off as Complainant on that website by referencing SNAPCHAT and prominently displaying Complainant’s “ghost logo.” This employment of the domain name is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use of the domain name under Policy ¶ 4(c)(iii). See, for example, Fox News Network, LLC v. Reid, D2002-1085 (WIPO Feb. 18, 2003) (finding that a UDRP respondent’s use of a disputed domain name to generate revenue via advertisement and affiliate fees was not a bona fide offering of good or services or a legitimate noncommercial or fair use under the Policy).
The Panel therefore finds that Complainant has satisfied the requirements of Policy ¶ 4(a)(ii).
We are persuaded by the evidence that Respondent’s use of the domain name <snapchat-usernames.net> as alleged in the Complaint to profit from the likelihood of Internet user confusion stands as proof of Respondent’s bad faith in the registration and use of the domain name under Policy ¶ 4(b)(iv). See Allianz of Am. Corp. v. Bond, FA 680624 (Nat. Arb. Forum June 2, 2006) (finding bad faith registration and use under Policy ¶ 4(b)(iv) where a respondent diverted to its own website Internet users searching for the website of a UDRP complainant, likely profiting in the process) See also Target Brands, Inc. v. JK Internet Servs., FA 349108 (Nat. Arb. Forum Dec. 14, 2004) (finding bad faith under Policy ¶ 4(b)(iv) where a respondent employed a contested domain name to reproduce on its resolving website a UDRP complainant’s mark in an effort to profit by passing itself as that complainant).
We are also convinced by the evidence that Respondent knew of Complainant and its SNAPCHAT trademark when it registered the disputed domain name. This too is proof of Respondent’s bad faith in the registration of the domain name. See Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Nat. Arb. Forum Feb. 6, 2014):
The Panel … here finds actual knowledge through the name used for the domain and the use made of it.
For these reasons, the Panel finds that Complainant has met its obligations of proof under Policy ¶ 4(a)(iii).
Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be, and it is hereby, GRANTED.
Accordingly, it is Ordered that the <snapchat-usernames.net> domain name be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: January 7, 2015
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page