DECISION

 

Snap, Inc. v. Nestor Hernandez

Claim Number: F1709001749325

PARTIES

Complainant is Snap, Inc. (“Complainant”), represented by Peter E. Kidd of Kilpatrick Townsend & Stockton LLP, California, USA.  Respondent is Nestor Hernandez (“Respondent”), New York, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <adult-snapchat.com>, registered with GoDaddy.com, LLC.

 

PANEL

The undersigned certifies that she acted independently and impartially and that to the best of her knowledge she has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits here as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the Forum electronically September 15, 2017; the Forum received payment September 15, 2017.

 

On September 18, 2017, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <adult-snapchat.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name.  GoDaddy.com, LLC verified that Respondent is bound by the GoDaddy.com, LLC registration agreement and thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).

 

On September 18, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 10, 2017, 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@adult-snapchat.com.  Also on September 18, 2017, 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 October 11, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Hon. Carolyn Marks Johnson to sit here as Panelist.

 

Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum 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.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

 

(a)  Complainant’s Contentions in this Proceeding:

 

Complainant registered the SNAPCHAT mark with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 4,375,712 registered July 30, 2013). See Compl. An. N. Respondent’s <adult-snapchat.com> domain name is confusingly similar to Complainant’s mark as it appends the generic term “adult,” a hyphen, and the generic top-level-domain (“gTLD”) “.com” to Complainant’s wholly incorporated mark.

 

Respondent has no rights or legitimate interests in the <adult-snapchat.com> domain name. Respondent is not commonly known by the disputed domain name and Complainant has not authorized, licensed, or otherwise permitted Respondent to use the mark. Respondent also does not use the disputed domain name in connection with a bona fide offering of goods or services or any legitimate noncommercial or fair use. Rather, Respondent uses the website to resolve to an adult oriented website. See Compl. An. P.

 

Respondent registered and uses the <adult-snapchat.com> domain name in bad faith. Respondent uses the infringing domain name to attract Internet users to a website featuring adult-oriented content for Respondent’s commercial gain. Respondent registered the domain name with actual knowledge of Complainant’s rights in the SNAPCHAT mark.

 

(b)  Respondent’s Contentions in Response in this Proceeding:

 

Respondent did not submit a Response in this proceeding. The Panel notes that Respondent registered the <adult-snapchat.com> domain name June 13, 2017. See Compl. An. A.

 

FINDINGS

Complainant established that it has rights to and legitimate interests in the disputed domain name and Complainant’s protected mark that is contained in its entirety within it.

 

Respondent has no such rights to or legitimate interest in the mark or the disputed domain name containing that protected mark.

 

Respondent registered a disputed domain name that is confusingly similar to Complainant’s protected mark.

 

Respondent knowingly registered and uses the disputed domain name in bad faith.

 

DISCUSSION

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 Complainant to 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.

 

Given 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 will draw such inferences as the Panel 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 (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.”).

 

Identical or Confusingly Similar:

 

Complainant asserts rights in the SNAPCHAT mark based upon registration with the USPTO. USPTO registration establishes rights in a mark under Policy ¶ 4(a)(i). See Humor Rainbow, Inc. v. James Lee, FA 1626154 (Forum Aug. 11, 2015) (stating, “There exists an overwhelming consensus amongst UDRP panels that USPTO registrations are sufficient in demonstrating a complainant’s rights under Policy ¶ 4(a)(i) and its vested interests in a mark. . . . Due to Complainant’s attached USPTO registration on the principal register at Exhibit 1, the Panel agrees that it has sufficiently demonstrated its rights per Policy ¶ 4(a)(i).”). Therefore, the Panel finds that Complainant has rights in the SNAPCHAT mark.

 

Next, Complainant contends Respondent’s <adult-snapchat.com> domain name is confusingly similar to Complainant’s mark as it appends the generic term “adult,” a hyphen, and the gTLD “.com” to Complainant’s wholly incorporated mark. Addition of generic terms and gTLDs are insufficient to defeat a test of confusingly similar pursuant to Policy ¶ 4(a)(i); similarly, additional punctuation is irrelevant for a Policy ¶ 4(a)(i) analysis. See Microsoft Corporation v. Thong Tran Thanh, FA 1653187 (Forum Jan. 21, 2016) (determining that confusing similarity exists where [a disputed domain name] contains Complainant’s entire mark and differs only by the addition of a generic or descriptive phrase and top-level domain, the differences between the domain name and its contained trademark are insufficient to differentiate one from the other for the purposes of the Policy.); see also Health Devices Corp. v. Aspen S T C, FA 158254 (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).”). Therefore, the Panel finds that Respondent’s <adult-snapchat.com> is confusingly similar to Complainant’s mark.

 

Respondent makes no contentions relative to Policy ¶ 4(a)(i). 

 

The Panel finds that Respondent registered a disputed domain name that is confusingly similar to Complainant’s protected mark; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(i). 

 

Rights or Legitimate Interests:

 

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 of proof shifts to Respondent to show it does have such rights or legitimate interests.  See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (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 (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 contends that Respondent has no rights or legitimate interests in the <adult-snapchat.com> domain name.  Where no Response is filed, relevant information includes the WHOIS and any other assertions by a complainant regarding the nature of its relationship with a respondent. See Braun Corp. v. Loney, FA 699652 (Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark). The WHOIS identifies “Nestor Hernandez” as the registrant.  See Compl. An. A. Complainant asserts that no evidence shows that Respondent has ever been legitimately known by the SNAPCHAT mark. Such assertions are evidence of a lack of rights or legitimate interests. See Navistar International Corporation v. N Rahmany, FA1505001620789 (Forum June 8, 2015) (finding that the respondent was not commonly known by the disputed domain name where the complainant had never authorized the respondent to incorporate its NAVISTAR mark in any domain name registration). Complainant alleges that Respondent has never been legitimately affiliated with Complainant, has never been known by the disputed domain name prior to its registration, and Complainant has not given Respondent permission to use the disputed domain name. Accordingly, the Panel agrees that Respondent is not commonly known by the <adult-snapchat.com> domain name under Policy ¶ 4(c)(ii).

 

Complainant argues as well that Respondent does not use <adult-snapchat.com> in connection with a bona fide offer of goods and services or for a legitimate noncommercial or otherwise fair use because the domain name resolves to adult oriented content. See Compl. An. P. Use of an infringing domain name to resolve to adult oriented content evidences lack of a bona fide offering of goods or services or legitimate noncommercial or fair use. See Target Brands, Inc. v. Bealo Group S.A., FA 128684 (Forum Dec. 17, 2002) (finding that use of the <targetstore.net> domain name to redirect Internet users to an adult-oriented website did not equate to a bona fide offering of goods or services under Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use of a domain name under Policy ¶ 4(c)(iii)). The Panel agrees with Complainant and finds that Respondent does not make a bona fide offering of goods or services under Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use per Policy ¶ 4(c)(iii).

 

Respondent makes no contentions relative to Policy ¶ 4(a)(ii). 

 

The Panel finds that Respondent has no rights or legitimate interests in the disputed domain name or Complainant’s protected mark incorporated entirety within it; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(ii). 

 

Registration and Use in Bad Faith:

 

Complainant contends that Respondent uses the infringing domain name to attract Internet users to a website featuring adult-oriented content for Respondent’s commercial gain. Use of an infringing domain name to redirect Internet users to adult-oriented material for commercial gain supports a finding that a respondent uses the domain name in bad faith under Policy ¶ 4(b)(iv). See Google Inc. v. Bassano, FA 232958 (Forum Mar. 8, 2004) (holding that the respondent’s use of the <googlesex.info> domain name to intentionally attract Internet users to a website featuring adult-oriented content constituted bad faith registration and use under Policy ¶ 4(b)(iv)). Complainant provides screenshots of the resolving website. See Compl. An. P. The Panel therefore finds that Respondent registered and uses the disputed <adult-snapchat.com> in bad faith.

 

Complainant lastly claims that Respondent had actual notice or constructive knowledge of Complainant’s SNAPCHAT mark. However, the Panel disregards arguments of bad faith based on constructive knowledge as UDRP case precedent declines to find bad faith as a result of constructive knowledge. See The Way Int'l, Inc. v. Diamond Peters, D2003-0264 (WIPO May 29, 2003) ("As to constructive knowledge, the Panel takes the view that there is no place for such a concept under the Policy."). The Panel agrees with Complainant, however, that Respondent had actual knowledge here of Complainant's rights in the mark prior to registering the disputed domain name and finds that actual knowledge does adequately evidence bad faith under Policy ¶ 4(a)(iii). See Univision Comm'cns Inc. v. Norte, FA 1000079 (Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering the disputed domain name). Complainant contends that Respondent must have had actual knowledge of the SNAPCHAT mark based on the domain name and the use made of it to resolve to pornographic content related to Complainant’s SNAPCHAT mark. The Panel agrees with Complainant and finds that Respondent had actual knowledge of Complainant’s mark, demonstrating bad faith under Policy ¶ 4(a)(iii), based on the form of the disputed domain name as well as its use.

 

Respondent makes no contentions relative to Policy ¶ 4(a)(iii). 

 

The Panel finds that Respondent registered and used the disputed domain name containing Complainant’s protected mark in its entirety in bad faith; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(iii). 

 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <adult-snapchat.com> domain name be TRANSFERRED from Respondent to Complainant.

 

Hon. Carolyn Marks Johnson, Panelist

Dated: October 25, 2017