Snap Inc. v. Gerald Washington / Snapchat Premium Members Only
Claim Number: FA1807001798538
Complainant is Snap Inc. (“Complainant”), represented by Peter Kidd of Kilpatrick Townsend & Stockton LLP, California, USA. Respondent is Gerald Washington / Snapchat Premium Members Only (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <snapchatpremium.net>, registered with Tucows Domains Inc..
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.
Bruce E. Meyerson as Panelist.
Complainant submitted a Complaint to the Forum electronically on July 25, 2018; the Forum received payment on July 25, 2018.
On July 25, 2018, Tucows Domains Inc. confirmed by e-mail to the Forum that the <snapchatpremium.net> domain name is registered with Tucows Domains Inc. and that Respondent is the current registrant of the name. Tucows Domains Inc. has verified that Respondent is bound by the Tucows Domains 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 27, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 16, 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@snapchatpremium.net. Also on July 27, 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.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On August 17, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Bruce E. Meyerson 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
1. 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). Respondent’s <snapchatpremium.net>[i] domain name is confusingly similar to Complainant’s mark as it wholly incorporates the SNAPCHAT mark prior to appending the generic term “premium” and the “.net” generic top-level-domain (“gTLD”).
2. Respondent has no rights or legitimate interests in the <snapchatpremium.net> domain name. Respondent is not commonly known by the domain name, nor has Complainant authorized, licensed, or otherwise permitted Respondent to use the SNAPCHAT mark.
3. Respondent also does not use the domain name in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use. Rather, Respondent diverts Internet users otherwise seeking Complainant to the resolving website for Respondent’s commercial gain via the sale of unrelated goods.
4. Respondent registered and uses the <snapchatpremium.net> domain name in bad faith. Respondent diverts Internet users otherwise seeking Complainant to Respondent’s own website for commercial gain via the sale of unrelated goods.
5. Respondent had actual knowledge of Complainant’s rights in the SNAPCHAT mark prior to registration of the domain name.
B. Respondent
Respondent failed to submit a Response in this proceeding.[ii]
Complainant holds trademark rights for the SNAPCHAT mark. Respondent’s 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 <snapchatpremium.net> domain name and that Respondent registered and uses 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 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.”).
Complainant has rights in the SNAPCHAT mark based upon registration with, among others, the USPTO. Registration of a mark with the USPTO sufficiently confers a complainant’s rights in a mark for the purposes of Policy ¶ 4(a)(i). See Humor Rainbow, Inc. v. James Lee, FA 1626154 (Forum Aug. 11, 2015). Complainant has submitted a schedule of trademark registrations from a number of jurisdictions for the SNAPCHAT marks (e.g. Reg. No. 4,375,712, registered July 30, 2013). Accordingly, the Panel holds that Complainant has established trademark rights in the SNAPCHAT mark.
Next, Complainant argues that Respondent’s <snapchatpremium.net> domain name is confusingly similar to Complainant’s mark as it wholly incorporates the SNAPCHAT mark prior to appending the generic term “premium” and the “.net” gTLD. Similar changes in a registered mark have failed to sufficiently distinguish a domain name for the purposes of Policy ¶4(a)(i). See Wiluna Holdings, LLC v. Edna Sherman, FA 1652781 (Forum Jan. 22, 2016) (the addition of a generic term and gTLD are insufficient in distinguishing a domain name from a mark under Policy ¶ 4(a)(i)); see also Textron Innovations Inc. v. Textron Sistemi di Fissaggio srl, FA 1732602 (Forum July 6, 2017) (“It is well-settled that a domain name, which utilizes a trademark along with an additional descriptive, generic terms . . . does not mitigate the confusing use of the trademark.”). The Panel therefore finds that the <snapchatpremium.net> domain name is confusingly similar to the SNAPCHAT mark under Policy ¶4(a)(i).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).
Complainant alleges that Respondent holds no rights or legitimate interests in the <snapchatpremium.net> domain name. This allegation must be supported with a prima facie showing by Complainant under Policy ¶ 4(a)(ii). After a complainant successfully makes a prima facie case, a respondent is faced with the burden of proving it does have rights or legitimate interests in the domain name. In Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Forum Feb. 13, 2007), the panel held that when a complainant produces a prima facie case, the burden of proof then shifts to the respondent to demonstrate its rights or legitimate interests in the domain name under Policy ¶ 4(c); see also Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent. In those circumstances, the common approach is for respondents to seek to bring themselves within one of the examples of paragraph 4(c) or put forward some other reason why they can fairly be said to have a relevant right or legitimate interests in respect of the domain name in question.”). The Panel holds that Complainant has made a prima facie case.
Complainant contends that Respondent has no rights or legitimate interests in the <snapchatpremium.net> domain name. Where a response is lacking, relevant information includes the WHOIS and any other assertions by a complainant regarding the nature of its relationship with a respondent. See Amazon Technologies, Inc. v. Suzen Khan / Nancy Jain / Andrew Stanzy, FA 1741129 (Forum Aug. 16, 2017) (finding that respondent had no rights or legitimate interests in the disputed domain names when the identifying information provided by WHOIS was unrelated to the domain names or respondent’s use of the same). The WHOIS identifies “Gerald Washington / Snapchat Premium Members Only” as the registrant. Complainant asserts, without contradiction in the record, that no evidence exists to show that Respondent has ever been legitimately known by the SNAPCHAT mark. 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 further alleges that Respondent has never been legitimately affiliated with Complainant, has never been known by the <snapchatpremium.net> domain name prior to its registration, and Complainant has not given Respondent permission to use the <snapchatpremium.net> domain name. Accordingly, the Panel holds that Respondent is not commonly known by the <snapchatpremium.net> domain name under Policy ¶ 4(c)(ii).
Next, Complainant contends Respondent diverts Internet users otherwise seeking Complainant to the resolving website for Respondent’s commercial gain through the sale of unrelated goods. Use of a domain name containing the mark of another to divert Internet users for commercial gain does not represent a bona fide offer of goods and services per Policy ¶ 4(c)(i) or a noncommercial fair use per Policy ¶ 4(c)(iii). See Invesco Ltd. v. Premanshu Rana, FA 1733167 (Forum July 10, 2017) (“Use of a domain name to divert Internet users to a competing website is not a bona fide offering of goods or services or a legitimate noncommercial or fair use.”). Complainant asserts Respondent uses the <snapchatpremium.net> domain name to resolve to another website, <premiumworkouts.com>, which offers personal training videos and related services at various price points. The Panel finds Respondent has failed to use the <snapchatpremium.net> domain name per Policy ¶¶ 4(c)(i) & (iii).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant asserts Respondent uses the <snapchatpremium.net> domain name to divert Internet users, otherwise looking for Complainant, to Respondent’s website for commercial gain through the sale of unrelated products. Use of a domain name under the circumstances of this case to divert Internet users for commercial gain may show bad faith per Policy ¶ 4(b)(iv). See Dovetail Ventures, LLC v. Klayton Thorpe, FA1506001625786 (Forum Aug. 2, 2015) (holding that the respondent had acted in bad faith under Policy ¶ 4(b)(iv), where it used the disputed domain name to host a variety of hyperlinks, unrelated to the complainant’s business, through which the respondent presumably commercially gained). Complainant provides screenshot evidence of Respondent’s appropriation of Complainant’s marks and images into the resolving website, which Respondent uses to sell a fitness evaluation service. The Panel agrees with Complainant and finds Respondent acted in bad faith per Policy ¶ 4(b)(iv).
Last, Complainant claims that Respondent had actual notice knowledge of Complainant’s SNAPCHAT mark prior to registering the <snapchatpremium.net> domain name. Actual knowledge can be determined in an analysis of the totality of the circumstances surrounding the registration and subsequent use per Policy ¶ 4(a)(iii). See Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (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.”). Complainant contends that Respondent must have had actual knowledge of Complainant’s rights in the SNAPCHAT mark based upon Complainant’s first use of the SNAPCHAT mark in September 2011, and that Respondent did not register the <snapchatpremium.net> domain name until Complainant’s mark had gained notoriety. The Panel agrees and finds that Respondent did have actual knowledge of Complainant’s mark when registering the <snapchatpremium.net> domain name, demonstrating bad faith under Policy ¶ 4(a)(iii).
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 <snapchatpremium.net> domain name be TRANSFERRED from Respondent to Complainant.
Bruce E. Meyerson, Panelist
Dated: August 27, 2018
[i]Respondent registered the <snapchatpremium.net> domain name on November 27, 2017.
[ii] Respondent did submit the following communication to the Forum:
I'm reading this "case" & clearly am out the loop because truly have no idea what this case is about or why it's being brought about?
The Shopify account doesn't use Snapchat to bring in traffic to the site, but am unable to remove the snapchat members only url without cancelling ALL members from the site.
Could you inform me of what I'm supposed to be doing or responding to?
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