Snap Inc. v. ALI ALSHUMRANI / ALI ALERYANI
Claim Number: FA1805001788602
Complainant is Snap Inc. (“Complainant”), represented by Peter Kidd of Kilpatrick Townsend & Stockton LLP, California, USA. Respondent is ALI ALSHUMRANI / ALI ALERYANI (“Respondent”), Saudi Arabia.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <snaps.chat>, <snapkm.com>, <snapei.com>, and <snaprz.com> , 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.
Flip Jean Claude Petillion as Panelist.
Complainant submitted a Complaint to the Forum electronically on May 24, 2018; the Forum received payment on May 24, 2018.
On May 25, 2018, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <snaps.chat>, <snapkm.com>, <snapei.com>, and <snaprz.com> domain names are registered with GoDaddy.com, LLC and that Respondent is the current registrant of the names. 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 May 29, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 18, 2018 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@snaps.chat, postmaster@snapkm.com, postmaster@snapei.com, postmaster@snaprz.com. Also, on May 29, 2018, 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.
A timely Response was received and determined to be complete on May 31, 2018.
On June 5, 2018, the Forum received an Additional Submission by Complainant, which was filed in a timely manner according to the Forum's Supplemental Rule 7.
On June 6, 2018, a timely Additional Submission by Respondent was received.
On June 7, 2018, the Forum received another Additional Submission by Respondent. However, as the Forum's Supplemental Rule 7(e) only permits one Additional Submission (7(a)) or response to Additional Submission (7(c)) to be filed per Party, the Panel is under no obligation to accept this submission. Therefore, the Panel will not consider this additional submission. The Panel also notes that it does not address any new legal principles or facts that are not included in Respondent's initial Response or its timely Additional Submission.
On June 4, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Flip Jean Claude Petillion 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.
Complainant requests that the domain names be transferred from Respondent to Complainant.
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 is convinced that all of the disputed domain names are effectively controlled by the same person. The WHOIS records for the disputed domain names indicate that the disputed domain names are registered with the same registrar, using the same phone number, city, postal code and country. The WHOIS records of the disputed domain names <snapkm.com> and <snaps.chat> indicate that the name of the Respondent is "Ali Alschumrani". The WHOIS records of the disputed domain names <snapei.com> and <snaprz.com> indicate that the name of the Respondent is "Ali Aleryani". The disputed domain names <snapkm.com>, <snapei.com>, and <snaprz.com> resolve to websites with the same IP address which are substantially similar and which link users to the disputed domain name <snaps.chat>. See Compl. at Attached Annex S. Additionally, in its Additional Submission, the Respondent acknowledged to be the holder of all the disputed domain names. See Additional Submission Respondent.
As a result, the Panel finds that the disputed domain names are commonly owned/controlled by a single Respondent and that the proceeding is therefore compliant with the Rules.
A. Complainant
Complainant submits to have rights based on its registration of the mark SNAP with, among others, the United States Patent and Trademark Office ("USPTO"), e.g. under Reg. No. 4,111,564 on March 13, 2012 in U.S. classes 100 and 101 and under Reg. No. 4,345,533 on June 4, 2013 in U.S. classes 21, 23, 26, 36 and 38. See Compl., at Attached Annex P. Complainant also contends to have rights based on its registration of the mark SNAPCHAT with USPTO, e.g. under Reg. No. 4,375,712 on July 30, 2013 in U.S. classes 21, 23, 26, 36 and 38. See Compl., at Attached Annex O.
Complainant submits that the disputed domain names <snaps.chat>, <snapkm.com>, <snapei.com> and <snaprz.com> are identical or confusingly similar to Complainant's SNAP mark, as they all contain Complainant’s SNAP mark, add one or two letters, and add a generic top-level domain (“gTLD”).
According to Complainant, Respondent lacks rights and legitimate interests in the disputed domain names. Complainant submits that Respondent is not commonly known by the disputed domain names nor has Complainant authorized, licensed or otherwise permitted Respondent to use the SNAP mark. Further, Complainant claims that Respondent failed to use the disputed domain names in connection with a bona fide offering of goods and services or for a legitimate noncommercial or otherwise fair use. Instead, according to complainant, Respondent diverts Internet users otherwise seeking Complainant to Respondent’s resolving commercial websites which offer purported social networks of users of Complainant's Snapchat product. See Compl. at Attached Annex S.
Finally, Complainant argues that Respondent registered and uses the disputed domain names in bad faith. Respondent intentionally attempts to attract, for commercial gain, Internet users through the creation of a likelihood of confusion between Complainant and Respondent. Respondent uses the disputed domain names to divert Internet users away from Complainant to its own competing commercial website. See Compl. Annex S. Such use disrupts Complainant’s business.
B. Respondent
Respondent submitted a timely Response but did not include any argumentation. The Response consists of several images indicating changes made to the websites connected to the disputed domain names after the Complaint was submitted to the Forum. The alterations primarily consist of logo and color changes.
C. Additional Submissions
a. Complainant
Complainant filed a timely Additional Submission in accordance with Supplemental Rule 7. Complainant contends that the website changes demonstrated by Respondent in its Response should be disregarded, as bona fide use of the disputed domain names should be evaluated at the time before Respondent received any notice of the dispute. Complainant further contends that Respondent is still using the disputed domain names in connection with commercial websites with online advertisements that make references to Complainant’s marks and logos, despite any changes made.
b. Respondent
In its first Additional Submission, which was filed in accordance with Supplemental Rule 7, Respondent submits a text document indicating his disputed domain names <snapkm.com>, <snapei.com>, <snaps.chat> and <snaprz.com>, and containing arguments which were presumably translated from Arabic to English using automatic translation software.
Respondent contends that it does not use the disputed domain names in correspondence to Complainant's mark nor prevent Complainant from reflecting its mark in corresponding domain names. Respondent claims that the websites connected to the disputed domain names do not contain any explicit or implied violations of Complainant's rights. Respondent further contends that he has voluntarily changed any alleged violations and that it wants to resolve the dispute in an amicable manner. Lastly, Respondent claims to use the disputed domain names in connection to their dictionary meaning in Arabic, without creating any likelihood of confusion with Complainant's business or mark.
Respondent submitted several other Additional Submissions which were not in accordance with Supplemental Rule 7, as only one response to Complainant's Additional Submission is permitted. As a result, the Panel will not consider these Additional Submissions. Nevertheless, the Panel notes that these Additional Submissions do not address any new legal principles or facts that are not included in Respondent's initial Response or its timely Additional Submission, as they include similar argumentation and images of changes made to the websites connected to the disputed domain names.
Complainant, Snap Inc., is a developer of mobile applications, operating the image messaging and multimedia mobile application Snapchat. In connection with this business, Complainant registered the SNAP mark with the USPTO under Reg. No. 4,111,564 on March 13, 2012 in U.S. classes 100 and 101 and under Reg. No. 4,345,533 on June 4, 2013 in U.S. classes 21, 23, 26, 36 and 38. See Compl., at Attached Annex P. Complainant also registered the SNAPCHAT mark in multiple jurisdiction across the world, e.g. with the USPTO under Reg. No. 4,375,712 on July 30, 2013 in U.S. classes 21, 23, 26, 36 and 38. See Compl., at Attached Annex O.
Respondent registered the domain names on the following dates: <snaps.chat> (August 8, 2015), <snapkm.com> (August 8, 2015), <snapei.com> (March 24, 2016), and <snaprz.com> (July 4, 2017).
The disputed domain names are used to resolve to websites written in Arabic featuring an alleged social media platform displaying Complainant's trademark and users of its Snapchat application, as well as logos identical or similar to those of Complainant. The websites connected to the disputed domain names contain various sponsored advertisements. The different websites give Internet users the option to search for users of Complainant's Snapchat application and add them to their Snapchat network by providing a link to the profile on Complainant's own website.
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.
Complainant shows to have rights in the SNAP mark through registration of the SNAP mark with the USPTO (e.g. Reg. No. 4,111,564, registered Mar. 13, 2012). 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). See Compl. at Attached Annex P.
Complainant claims that the disputed domain names <snapkm.com>, <snapei.com>, <snaps.chat> and <snaprz.com> are confusingly similar to the SNAP mark. The disputed domain names contain Complainant's SNAP mark in its entirety. The disputed domain names differ from the SNAP mark by adding one or two letters and adding the gTLDs “.com” and “.chat.” Previous Panels have held that similar small additions to a registered mark have failed to sufficiently distinguish a domain name for the purposes of Policy ¶4(a)(i). See Google Inc. v. Henry Brito, FA 1297484 (Forum Jan. 25, 201 (finding that the addition of two letters to Complainant’s mark is insufficient to adequately distinguish the disputed domain name from the mark and the addition of a gTLD is irrelevant to a Policy ¶ 4(a)(i) analysis); see also Isleworth Land Co. v. Lost in Space, SA, FA 117330 (Forum Sept. 27, 2002) (finding that it is a well established principle that generic top-level domains are irrelevant when conducting a Policy ¶ 4(a)(i) analysis.). The addition of the gTLD “.chat” in the disputed domain name <snaps.chat> even adds to the confusion, as the overall domain name directly corresponds to Complainant's SNAPCHAT mark and product.
In view of the above, this Panel finds that Respondent’s disputed domain names are confusingly similar to Complainant's SNAP mark for the purposes of Policy ¶ 4(a)(i).
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 Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (holding that under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests”).
Complainant argues that because Respondent is not commonly known as “Snap” and/or “Snapchat” there is no connection between the disputed domain names and Respondent, and Complainant has not authorized, licensed, or endorsed Respondent’s use of the SNAP mark in any form. WHOIS information associated with the disputed domain names identify Respondent as, “Ali Aleryani” as the registrant for the <snaps.chat> and <snapkm.com> domain names, and “Ali Alshumrani” as the registrant for the <snaprz.com> and <snapei.com> domain names, which does not appear to resemble the disputed domain name. See Compl. at Attached Annex A. Previous panels have held that a respondent is not commonly known by a disputed domain name based on WHOIS information and a lack of authorization or licensing arrangement from a complainant. 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). The fact that Respondent was never legitimately known by the disputed domain names and was never authorized, licensed or otherwise permitted by Complainant to operate domain names incorporating its SNAP mark may be used as evidence of lacking rights or legitimate interests. See Navistar International Corporation v. N Rahmany, FA1505001620789 (Forum June 8, 2015). For these reasons, the Panel finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii).
Complainant next argues that Respondent is not using the disputed domain names in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. Respondent’s disputed domain names redirect to websites written in Arabic displaying logos identical or similar to Complainant's trademarked and copyrighted logos, as well as profiles of Complainant's Snapchat users and links to those profiles on Complainant's own website. The websites connected to the disputed domain names also include sponsored advertisements. See Disney Enters., Inc. v. Kamble, FA 918556 (Forum Mar. 27, 2007) (holding that the operation of a pay-per-click website at a confusingly similar domain name was not a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii)). The Panel considers that Respondent has been using the disputed domain names to divert Internet users otherwise seeking Complainant to Respondent’s resolving websites for commercial gain. The content of the websites gives the impression that a connection exists between the Complainant and Respondent, whereas no such connection exists.
Although Respondent claims to have changed certain aspects of the websites connected to the disputed domain names, such as the logos and colors, Respondent continues to operate these commercial websites in connection with Complainant's business, aggregating profiles of Complainant's Snapchat users and providing links to Complainant's own website. See Resp. Moreover, these website changes should be disregarded, as Respondent's bona fide use of the disputed domain names must be evaluated at the moment the Complaint was filed. See MB Financial Bank, N.A. v. MBBANK, FA 644517 (Forum Apr. 4, 2006) (holding that the proper record for review of th[e] dispute should be based on the website at the Domain Name as it existed on the date the Complaint was filed, not on the post hoc website that the Respondent created after the fact).
Respondent further claims to have used the disputed domain names in connection to their dictionary meaning in Arabic. Respondent contends that the disputed domain name <snaprz.com> means "Snape s!" in Arabic and that the disputed domain name <snapei.com> means "Snabi" or "Marafi". The Panel finds these arguments unconvincing, as Respondent has clearly used the websites connected to the disputed domain name in connection with Complainant's business. Indeed, Respondent expressly acknowledged to have removed Complainant's "snapchat ghost" logo from its websites after the Complaint had been filed. See Respondent Additional Submission.
In light of the above, the Panel finds that Respondent lacks rights and legitimate interests in the disputed domain names.
Complainant asserts that Respondent had knowledge of Complainant’s rights in its SNAP and SNAPCHAT mark at the time of registration and thus registered and used the disputed domain names in bad faith. Complainant also contends that, in light of the similarity between the disputed domain names and its well-known SNAP and SNAPCHAT marks and the use of Complainant's logos and user profiles on the websites connected to the disputed domain names, Respondent could not have registered the <snapkm.com>, <snapei.com>, <snaps.chat> and <snaprz.com> domain names without actual knowledge of Complainant's rights in the marks. The Panel finds, on the balance of probabilities and taking into account the combination of domain names, that Respondent had actual knowledge of Complainant's rights in the mark prior to registering the disputed domain names and finds that actual knowledge is adequate evidence of bad faith registration 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).
Further, Complainant argues that Respondent registered and uses the disputed domain names in bad faith as Respondent intentionally attempts to attract, for commercial gain, Internet users through the creation of a likelihood of confusion between Complainant and Respondent. Use of disputed domain names to attract Internet users otherwise seeking a complainant to a respondent’s website for respondent’s commercial gain evinces a finding of bad faith per Policy ¶ 4(b)(iv). See Xylem Inc. and Xylem IP Holdings LLC v. YinSi BaoHu YiKaiQi, FA1504001612750 (Forum May 13, 2015) (finding that Respondent’s use of the website to display products similar to Complainant’s, imputes intent to attract Internet users for commercial gain, and finds bad faith per Policy ¶ 4(b)(iv).”); see also Allianz of Am. Corp. v. Bond, FA 680624 (Forum June 2, 2006) (finding bad faith registration and use under Policy ¶ 4(b)(iv) where the respondent was diverting Internet users searching for the complainant to its own website and likely profiting). By using Complainant's logos, trademarks and user profiles on websites displaying sponsored advertisements, Respondent clearly aimed to attract Internet users to its confusingly similar domain names to generate advertising revenue for its financial gain.
Respondent fails to substantiate its contentions that it did not have Complainant or his trademarks in mind when registering the disputed domain names or that it did not intend to trade on the goodwill of Complainant and its SNAP and SNAPCHAT marks for commercial gain. On the contrary, Respondent acknowledges to have used the websites connected to the disputed domain names to benefit from advertisement views displayed on those websites.
For these reasons, the Panel finds that Respondent disrupts Complainant’s business and attempted to commercially benefit off Complainant’s mark in bad faith under Policy ¶¶ 4(b)(iii) & (iv).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <snaps.chat>, <snapkm.com>, <snapei.com>, and <snaprz.com> domain names be TRANSFERRED from Respondent to Complainant.
Flip Jean Claude Petillion, Panelist
Dated: June 14, 2018
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