Snap Inc. v. nawaf / alanazi
Claim Number: FA2101001929628
Complainant is Snap Inc. (“Complainant”), represented by Emily A. DeBow of Kilpatrick Townsend & Stockton LLP, California, USA. Respondent is nawaf / alanazi (“Respondent”), South Africa.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <lensstudio-snapchat.com>, registered with CSL Computer Service Langenbach GmbH d/b/a joker.com.
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.
David A. Einhorn appointed as Panelist.
Complainant submitted a Complaint to the Forum electronically on January 25, 2021; the Forum received payment on January 25, 2021.
On January 26, 2021, CSL Computer Service Langenbach GmbH d/b/a joker.com confirmed by e-mail to the Forum that the <lensstudio-snapchat.com> domain name is registered with CSL Computer Service Langenbach GmbH d/b/a joker.com and that Respondent is the current registrant of the name. CSL Computer Service Langenbach GmbH d/b/a joker.com has verified that Respondent is bound by the CSL Computer Service Langenbach GmbH d/b/a joker.com 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 January 28, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 17, 2021 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@lensstudio-snapchat.com. Also on January 28, 2021, 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 February 22, 2021, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed David A. Einhorn 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 contends that English is the language of the registration agreement for the disputed domain name, and attaches an English language registration agreement to its Complainant. Therefore, these proceedings shall be conducted in English.
Complainant requests that the domain name be transferred from Respondent to Complainant.
Complainant owns and distributes the enormously popular SNAPCHAT camera and messaging application. Complainant has rights in both the SNAPCHAT and LENS STUDIO mark through Complainant’s registration of the marks with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 4,933,187, registered July 11, 2014 (SNAPCHAT) and Reg. No. 5,673,755, registered February 12, 2019 (LENS STUDIO)). Respondent’s <lensstudio-snapchat.com> domain name is identical or confusingly similar to Complainant’s SNAPCHAT and LENS STUDIO marks as it includes the entirety of the SNAPCHAT and LENS STUDIO marks and merely adds a hyphen and the generic top-level domain (“gTLD”) “.com.”
Respondent lacks rights or legitimate interests in the <lensstudio-snapchat.com> domain name. There is no relationship between Complainant and Respondent, nor has Respondent been authorized by Complainant to use either the SNAPCHAT or LENS STUDIO mark. Respondent has not used the disputed domain name in connection with a bona fide offering of goods or services as Respondent passes off as Complainant to perpetrate a phishing scheme.
Respondent registered and uses the <lensstudio-snapchat.com> domain name in bad faith. Respondent passes off as Complainant to perpetrate a phishing scheme. Additionally, Respondent had actual knowledge of Complainant’s rights to the SNAPCHAT and LENS STUDIO marks at registration based on Respondent’s use of the SNAPCHAT mark and Complainant’s SNAPCHAT mark being internationally recognized and well-known.
B. Respondent
Respondent failed to submit a Response in this proceeding. The Panel notes that the <lensstudio-snapchat.com> domain name was registered on October 10, 2020.
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”).
Respondent asserts rights in the SNAPCHAT mark and LENS STUDIO mark through Complainant’s registration of the marks with the USPTO (e.g. Reg. No. 4,933,187, registered July 11, 2014 (SNAPCHAT) and Reg. No. 5,673,755, registered February 12, 2019 (LENS STUDIO)). Registration of marks with the USPTO is sufficient to demonstrate rights in the marks per Policy ¶ 4(a)(i). 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).”); Nintendo of America Inc. v. lin amy, FA 1818485 (Forum Dec. 24, 2018) ("Complainant’s ownership a USPTO trademark registration for the NINTENDO mark evidences Complainant’s rights in such mark for the purposes of Policy ¶ 4(a)(i).”). Therefore, the Panel finds that Complainant has demonstrated rights in the SNAPCHAT and LENS STUDIO marks per Policy ¶ 4(a)(i).
Complainant argues that Respondent’s <lensstudio-snapchat.com> domain name is identical or confusingly similar to Complainant’s SNAPCHAT and LENS STUDIO marks as it includes the entirety of the SNAPCHAT Mark and LENS STUDIO Mark and merely adds a hyphen and the gTLD “.com” The combination of two marks while adding a gTLD fails to sufficiently distinguish a disputed domain name from a mark per Policy ¶ 4(a)(i). See Wyndham Hotels and Resorts, LLC, and Wyndham Vacation Resorts, Inc. v. James VanBuren, FA 1624028 (Forum July 10, 2015) (“The disputed domain name combines two of Complainant's registered trademarks, WYNDHAM and EXTRA VACATIONS, omitting the space and adding the ".com" top-level domain name. These alterations do not diminish the similarity between the domain name and Complainant's marks.”); see also ADP, LLC. v. Ella Magal, FA 1738958 (Forum Aug. 2, 2017) (“Respondent’s <workforce-now.com> domain name appropriates the dominant portion of Complainant’s ADP WORKFORCE NOW mark and adds a hyphen and the gTLD “.com.” These changes do not sufficiently distinguish the disputed domain name from the ADP WORKFORCE NOW mark.”). Therefore, the Panel finds that the disputed domain name is confusingly similar to Complainant’s marks per Policy ¶ 4(a)(i).
Complainant contends that Respondent lacks rights or legitimate interests in the <lensstudio-snapchat.com> domain name as Respondent is not commonly known by either the SNAPCHAT or LENS STUDIO mark as Complainant has not authorized Respondent to use either mark. WHOIS information may be used to determine whether a respondent is commonly known by the disputed domain name under Policy ¶ 4(c)(ii). 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 to use a complainant’s mark may indicate that the respondent is not commonly known by the disputed domain name. See Navistar International Corporation v. N Rahmany, FA1620789 (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). Here, the WHOIS information for the disputed domain name lists the registrant as “Nawaf / alanazi,” and Complainant argues there is no other evidence to suggest Respondent was authorized to use either mark. Therefore, the Panel finds that Respondent is not commonly known by the disputed domain name per Policy ¶ 4(c)(ii).
Complainant argues that Respondent fails to use the <lensstudio-snapchat.com> domain name in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use as Respondent passes off as Complainant to perpetrate a phishing scheme. Using a disputed domain name to pass off as a Complainant to perpetrate a phishing scheme may not be a bona fide offering of goods or services or a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii). See ShipChain, Inc. v. 谢东东 / 谢东东, FA 1785189 (Forum June 21, 2018) (“The resolving webpages between Complainant’s and Respondent’s websites are virtually the same. Respondent’s use of the disputed domain name does not confer rights and legitimate interests under Policy ¶¶4(c)(i) and (iii).”); see also Enterprise Holdings, Inc. v. I S / Internet Consulting Services Inc., FA 1785242 (Forum June 5, 2018) (“On its face, the use of a domain name that is confusingly similar to the mark of another in order to facilitate a phishing scheme cannot be described as either 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).”). Here, Complainant argues that the content on the resolving landing page for the disputed domain name is an identical copy of the online login page for Complainant’s official website at <accounts.snapchat.com>. Complainant also argues that visitors seeking Complainant’s services are redirected to the disputed domain name and encouraged to enter their SNAPCHAT login credentials (believing they were logging into Snapchat). Therefore, the Panel finds that Respondent fails to make a bona fide offering of goods or services or a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii).
Complainant has therefore also satisfied Policy ¶ 4(a)(ii).
Complainant contends that Respondent registered and uses the <lensstudio-snapchat.com> domain name in bad faith because Respondent uses the disputed domain name to pass off as Complainant to perpetrate a phishing scheme. Using a disputed domain name to pass off as a Complainant to perpetrate a phishing scheme can evidence bad faith registration and use per Policy ¶¶ 4(b)(iv) and (a)(iii). See Bittrex, Inc. v. Wuxi Yilian LLC, FA 1760517 (Forum Dec. 27, 2017) (finding bad faith per Policy ¶ 4(b)(iv) where “Respondent registered and uses the <lbittrex.com> domain name in bad faith by directing Internet users to a website that mimics Complainant’s own website in order to confuse users into believing that Respondent is Complainant, or is otherwise affiliated or associated with Complainant.”); see also Morgan Stanley v. Bruce Pu, FA 1764120 (Forum Feb. 2, 2018) (“[T]he screenshot of the resolving webpage allows users to input their name and email address, which Complainant claims Respondent uses that to fraudulently phish for information. Thus, the Panel agrees that Respondent phishes for information and finds that Respondent does so in bad faith under Policy ¶ 4(a)(iii).”). Complainant argues the disputed domain name resolves to a webpage that is identical to Complainant’s official website while encouraging visitors to enter their SNAPCHAT login credentials. Therefore, the Panel finds that Respondent registered and uses the disputed domain name in bad faith per Policy ¶¶ 4(b)(iv) and (a)(iii).
Finally, Complainant argues that Respondent registered the <lensstudio-snapchat.com> domain name with actual knowledge of Complainant’s rights to the SNAPCHAT and LENS STUDIO marks based on Respondent’s use of the SNAPCHAT mark and Complainant’s SNAPCHAT mark being internationally recognized and well-known. Using a famous mark to divert Internet traffic to a disputed domain name can demonstrate actual knowledge of a complainant’s rights in a mark at registration and show bad faith per Policy ¶ 4(a)(iii). See iFinex Inc. v. xu shuaiwei, FA 1760249 (Forum Jan. 1, 2018) (“Respondent’s prior knowledge is evident from the notoriety of Complainant’s BITFINEX trademark as well as from Respondent’s use of its trademark laden domain name to direct internet traffic to a website which is a direct competitor of Complainant”). Here, Complainant argues that prior UDRP Panels have found that the SNAPCHAT mark is famous. See, e.g., Snap Inc. v. Daisy Ducharme / baby & belly photography, FA1872261 (Forum Dec. 28, 2019) (finding the SNAPCHAT and SNAP marks to be notorious); see also Snap Inc. v. Roger Yafushi / Agencia Master, FA1806649 (Forum Oct. 11, 2018) (finding the SNAPCHAT mark famous). Therefore, the Panel finds that Respondent registered the disputed domain name in bad faith per Policy ¶ 4(a)(iii).
Thus, Complainant has also 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 <lensstudio-snapchat.com> domain name be TRANSFERRED from Respondent to Complainant.
David E. Einhorn, Panelist
Dated: March 9, 2021
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