Snap Inc. v. jamshad hashmi / tomsahrware
Claim Number: FA1905001845843
Complainant is Snap Inc. (“Complainant”), represented by Peter Kidd of Kilpatrick Townsend & Stockton LLP, California, USA. Respondent is jamshad hashmi / tomsahrware (“Respondent”), Pakistan.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <snapchatapk.online>, registered with NameCheap, 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.
The Honourable Neil Anthony Brown QC as Panelist.
Complainant submitted a Complaint to the Forum electronically on May 31, 2019; the Forum received payment on May 31, 2019.
On June 1, 2019, NameCheap, Inc. confirmed by e-mail to the Forum that the <snapchatapk.online> domain name is registered with NameCheap, Inc. and that Respondent is the current registrant of the name. NameCheap, Inc. has verified that Respondent is bound by the NameCheap, 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 June 4, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 24, 2019 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@snapchatapk.online. Also on June 4, 2019, 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 June 26, 2019, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed The Honourable Neil Anthony Brown QC 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
Complainant made the following contentions.
Complainant, Snap Inc., uses their mark SNAPCHAT in connection with a camera and messaging application. Complainant has rights in the SNAPCHAT mark based on registration with the United States Patent and Trademark Office (“USPTO”) and several other trademark authorities (e.g. Reg. No. 4,375,712, registered July 30, 2013). See Compl. Annex P. Respondent’s <snapchatapk.online> domain name is confusingly similar to Complainant’s SNAPCHAT mark as it includes the mark in its entirety, merely adding the descriptive term “APK” and the generic top-level domain (“gTLD”) “.com.”
Respondent has no rights or legitimate interests in the <snapchatapk.online> domain name. Respondent is not commonly known by the disputed domain name, nor has Complainant authorized Respondent to use the SNAPCHAT mark in any manner. Respondent’s use of the disputed domain name does not amount to a bona fide offering of goods or services or a legitimate noncommercial or fair use. Rather, Respondent is using the disputed domain name to offer unauthorized or counterfeit versions of Complainant’s product. Respondent is also using the disputed domain name to host links to third-party websites that compete with Complainant.
Respondent registered and is using the <snapchatapk.online> domain name in bad faith. Respondent intentionally seeks to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with Complainant’s marks as to the source, sponsorship, affiliation, or endorsement of Respondent’s website. Respondent’s bad faith is demonstrated by its use of the disputed domain name to divert users to third party websites that offer counterfeit or unauthorized versions of Complainant’s products. Respondent registered the disputed domain name with actual knowledge of Complainant’s rights in the SNAPCHAT mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant is a prominent United States company that provides services in connection with a camera and messaging application.
2. Complainant has established its trademark rights in the SNAPCHAT mark based on its registration with the United States Patent and Trademark Office (“USPTO”) and several other trademark authorities (e.g. Reg. No. 4,375,712, registered July 30, 2013).
3. Respondent registered the disputed domain name on September 16, 2018.
4. Respondent uses the disputed domain name to offer unauthorized or counterfeit versions of Complainant’s product and is also using the disputed domain name to host links to third-party websites that compete with Complainant.
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 set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).
The first question that arises is whether Complainant has rights in a trademark or service mark on which it may rely. Complainant submits that it has rights in the SNAPCHAT mark based upon registration of the mark with the USPTO and several other trademark authorities (e.g. Reg. No. 4,375,712, registered July 30, 2013). See Compl. Annex P. Registration of a mark with the USPTO is sufficient to establish rights in that mark. See DIRECTV, LLC v. The Pearline Group, FA 1818749 (Forum Dec. 30, 2018) (“Complainant’s ownership of a USPTO registration for DIRECTV demonstrate its rights in such mark for the purposes of Policy ¶ 4(a)(i).”). The Panel therefore holds that Complainant’s registration of the SNAPCHAT mark with the USPTO is sufficient to establish rights in the mark under Policy ¶ 4(a)(i).
The next question that arises is whether the disputed domain name is identical or confusingly similar to Complainant’s SNAPCHAT mark. Complainant argues that Respondent’s <snapchatapk.online> domain name is confusingly similar to the SNAPCHAT mark as it includes the mark in its entirety, merely adding the descriptive term “APK” and the gTLD “.com.” Generally, the addition of descriptive terms and/or a gTLD is not sufficient to overcome a confusing similarity analysis per Policy ¶ 4(a)(i). See Vanguard Group Inc. v. Proven Fin. Solutions, FA 572937 (Forum Nov. 18, 2005) (holding that the addition of both the word “advisors” and the gTLD “.com” did not sufficiently alter the disputed domain name to negate a finding of confusing similarity under Policy ¶ 4(a)(i)). Here, Respondent added a descriptive term and a gTLD to Complainant’s mark when registering the disputed domain name. See Compl. Annex A. The Panel therefore finds that the disputed domain name is confusingly similar to Complainant’s SNAPCHAT mark per Policy ¶ 4(a)(i).
Complainant has thus made out the first of the three elements that it must establish.
It is now well established that 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), 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) (“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”).
The Panel finds that Complainant has made out a prima facie case that arises from the following considerations:
(a) Respondent has chosen to take Complainant’s SNAPCHAT trademark and to use it in its domain name, merely adding the descriptive term “APK” that does not negate the confusing similarity with Complainant’s trademark;
(b) Respondent registered the disputed domain name on September 16, 2018;
(c) Respondent uses the disputed domain name to offer unauthorized or counterfeit versions of Complainant’s product and is also using the disputed domain name to host links to third-party websites that compete with Complainant.
(d) Respondent has engaged in these activities without the consent or approval of Complainant;
(e) Complainant argues that Respondent has no rights or legitimate interests in the <snapchatapk.online> domain name, as Respondent is not commonly known by the disputed domain name, nor has Complainant authorized Respondent to use the SNAPCHAT mark in any way. Where a response is lacking, WHOIS information can support a finding that the respondent is not commonly known by the disputed domain name. See Chevron Intellectual Property LLC v. Fred Wallace, FA1506001626022 (Forum July 27, 2015) (finding that the respondent was not commonly known by the <chevron-europe.com> domain name under Policy ¶ 4(c)(ii), as the WHOIS information named “Fred Wallace” as registrant of the disputed domain name). Additionally, lack of authorization from complainant to use its mark may be evidence that respondent is not commonly known by the disputed domain name per Policy ¶ 4(c)(ii). See Emerson Electric Co. v. golden humble / golden globals, FA 1787128 (Forum June 11, 2018) (“lack of evidence in the record to indicate a respondent is authorized to use [the] complainant’s mark may support a finding that [the] respondent does not have rights or legitimate interests in the disputed domain name per Policy ¶ 4(c)(ii)”). The WHOIS information of record identifies the owner of the disputed domain name as “jamshad hashmi / tomsahrware” and no information on record indicates Respondent was authorized to register a domain name with Complainant’s mark. The Panel therefore finds under Policy ¶ 4(c)(ii) that Respondent has not been commonly known by the <snapchatapk.online> domain name;
(f) Complainant further argues Respondent’s lack of rights and legitimate interests in the <snapchatapk.online> domain name is demonstrated by its failure to use the name to make a bona fide offering of goods and services or for a legitimate or noncommercial or fair use. Complainant instead contends that the name resolves to a website which is being used to offer unauthorized or counterfeit versions of Complainant’s product. Generally, use of a domain name to offer unauthorized or counterfeit versions of a complainant’s products or services is not a use indicative of rights or legitimate interests per Policy ¶¶ 4(c)(i) or (iii). See Wolverine World Wide, Inc. v. Fergus Knox, FA 1627751 (Forum Aug. 19, 2015) (finding no bona fide offering of goods or legitimate noncommercial or fair use existed where Respondent used the resolving website to sell products branded with Complainant’s MERRELL mark, and were either counterfeit products or legitimate products of Complainant being resold without authorization). Complainant has provided screenshots of the resolving website associated with the disputed domain which displays download links to purportedly counterfeit or unauthorized versions of Complainant’s products. See Compl. Annex S. The Panel therefore determines that Respondent does not have rights or legitimate interests in the <snapchatapk.online> domain name per Policy ¶¶ 4(c)(i) or (iii);
(g) Complainant submits that Respondent’s lack of rights or legitimate interests in the <snapchatapk.online> domain name is demonstrated by its use of the disputed domain name to host links to third-parties that compete with Complainant. Generally, use of a disputed domain name to host links that compete with a complainant is not a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii). See Ashley Furniture Industries, Inc. v. domain admin / private registrations aktien gesellschaft, FA1506001626253 (Forum July 29, 2015) (“Respondent is using the disputed domain name to resolve to a web page containing advertising links to products that compete with those of Complainant. The Panel finds that this does not constitute a bona fide offering or a legitimate noncommercial or fair use.”). The Panel recalls Complainant provides screenshots of the resolving website which also displays links to third-party websites. See Compl. Annex S. The Panel agrees with Complainant and finds that Respondent does not make a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii).
All of these matters go to make out the prima facie case against Respondent. As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant has thus made out the second of the three elements that it must establish.
It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain name was registered in bad faith and has been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.
Having regard to those principles, the Panel finds that the disputed domain name was registered and used in bad faith. That is so for the following reasons.
First, Complainant argues that Respondent’s bad faith is indicated by its use of the <snapchatapk.online> domain name to divert users to third party websites that offer counterfeit or unauthorized versions of Complainant’s products. Generally, use of a disputed domain name to host links that divert users to competing third parties may demonstrate bad faith under Policy ¶ 4(b)(iii). See H-D U.S.A., LLC v. Linchunming / linchunming, FA1411001589214 (Forum Dec. 22, 2014) (“As mentioned above, Respondent uses the domain name to promote counterfeit goods like those offered by Complainant. Doing so disrupts Complainant’s business and demonstrates Respondent’s bad faith under Policy ¶ 4(b)(iii).”). Here, the Panel notes Complainant provides screenshots of the resolving website to support this contention. See Compl. Annex S. The Panel agrees with Complainant and finds that Respondent is using the disputed domain name under Policy ¶ 4(b)(iii) in bad faith.
Secondly, Complainant submits that Respondent’s bad faith is demonstrated by its actual knowledge of Complainant’s rights in the SNAPCHAT mark prior to the registration of the <snapchatapk.online> domain name. Generally, actual knowledge of a complainant’s rights in a mark prior to registering a disputed domain name is evidence of bad faith registration. 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.”). Here, Complainant contends that Respondent’s use of Complainant’s mark on the resolving web page associated with the disputed domain name demonstrates actual knowledge. See Compl. Annex S. The Panel agrees with Complainant and finds that Respondent registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii).
Finally, in addition and having regard to the totality of the evidence, the Panel finds that, in view of Respondent’s registration of the disputed domain name using the SNAPCHAT mark and in view of the conduct that Respondent has engaged in when using the disputed domain name, Respondent registered and used it in bad faith within the generally accepted meaning of that expression.
Complainant has thus made out the third of the three elements that it must establish.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <snapchatapk.online> domain name be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC
Panelist
Dated: June 27, 2019
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