DECISION

 

Snap Inc. v. Domain Administrator / Domain Professionals, LLC / Domain Master / Global Personals, LLC / Domain Master / Worldwide Connect Partners, LLC

Claim Number: FA2102001933412

 

PARTIES

Complainant is Snap Inc. (“Complainant”), represented by Caroline Barbee of Kilpatrick Townsend & Stockton LLP, California, USA.  Respondent is Domain Administrator / Domain Professionals, LLC / Domain Master / Global Personals, LLC / Domain Master / Worldwide Connect Partners, LLC (“Respondent”), represented by Jason A. Fischer of Bryn & Associates, P.A., Florida, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAMES

The domain names at issue are <snapsext.com>, <snapcandy.com>, and <snapbang.com>, registered with Moniker Online Services LLC; Topsystem, LLC; GoDaddy.com, LLC.

 

PANEL

The undersigned certify that they have acted independently and impartially and to the best of their knowledge have no known conflict in serving as Panelists in this proceeding.

 

Fernando Triana, Esq. as Chair of the Panel

Sandra J. Franklin, as Panelist

Darryl C. Wilson, as Panelist

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the Forum electronically on February 24, 2021; the Forum received payment on February 24, 2021.

 

On February 25, 2021, February 26, 2021, March 02, 2021, Moniker Online Services LLC; Topsystem, LLC; GoDaddy.com, LLC confirmed by e-mail to the Forum that the disputed domain names <snapsext.com>, <snapcandy.com>, and <snapbang.com> are registered with Moniker Online Services LLC; Topsystem, LLC; GoDaddy.com, LLC and that Respondent is the current registrant of the names.  Moniker Online Services LLC; Topsystem, LLC; GoDaddy.com, LLC have verified that Respondent is bound by the Moniker Online Services LLC; Topsystem, LLC; 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 March 10, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 19, 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@snapsext.com, postmaster@snapcandy.com, postmaster@snapbang.com.  Also on March 10, 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.

 

A timely Response was received and determined to be complete on April 19, 2021.

 

A timely Additional Submission was received from Complainant and determined to be complete on April 26, 2021.

 

A timely Additional Submission was received from Respondent and determined to be complete on April 29, 2021.

 

On April 28, 2021, pursuant to Complainant’s request to have the dispute decided by a three-member Panel, the Forum appointed Fernando Triana, Esq. as Chair of the Panel and Sandra J. Franklin and Darryl C. Wilson, as Co-Panelists.

 

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.

 

RELIEF SOUGHT

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.”

 

Complainant contends that the disputed domain names all distribute adult content via Snapchat accounts, have the same model profiles, social network functionalities and member database. Additionally, the disputed domain names link to the same social media accounts on Twitter and Instagram and have nearly identical terms and conditions that identify the same DMCA agent.

 

The Panel notes that a complainant can commence a proceeding with a single complaint on the basis of the assertion that multiple domain names are registered by the same domain name holder, and even if the panel ultimately does not accept that the domain name holder is in fact the same, can still allow the single complainant to proceed on the basis of its consolidation power in paragraph 10(e) provided there is a sufficient nexus between the disputed domain names to justify consolidation, and provided also that the distinct respondents “are treated with equality and that each Party is given a fair opportunity to present its case” (paragraph 10(b) of the Rules). The Panel notes that a single consolidated proceeding against distinct respondents raises potential issues of prejudice to the Respondents’ procedural rights (e.g. the right of individual Respondents to elect a three member panel: see Apple Inc. v. Private Whois Service) as well as substantive prejudice, given that individual purpose and intention are such important elements of bad faith.

 

The Panel is satisfied that despite the use of different names for registration purposes, the disputed domain names are all in fact registered by the same domain name holder. The following factors lead the Panel to this conclusion: (i) the common features of the disputed domain names themselves; (ii) the disputed domain names promote the distribution of pornography via Snapchat accounts; (iii) the disputed domain names share the same social networking functionalities; (iv) the disputed domain names share the same member database; (v) the disputed domain names share the same social network accounts on Twitter and Instagram; and (vi) the disputed domain names have nearly identical terms and conditions identifying the same DMCA agent.  The Panel also notes that Respondent did not raise the issue of multiple respondents in this proceeding, and will refer to the named Respondents jointly as “Respondent.”

 

PARTIES’ CONTENTIONS

A.   Complainant

a.    Complainant is the owner and distributor of the SnapChat mobile application and related goods and services.

b.    Complainant has rights in the SNAPCHAT and SNAP-formative marks through its registration of the mark with the many different trademark offices around the world.

c.    Respondent’s disputed domain names <snapsext.com>, <snapcandy.com>, and <snapbang.com> are identical or confusingly similar to Complainant’s mark, as Respondent merely includes the generic or descriptive terms “sext,” “candy,” and “bang” and adds the “.com” generic top-level domain (“gTLD”) to Complainant’s SNAP marks.

d.    Respondent has no rights or legitimate interests in the disputed domain names <snapsext.com>, <snapcandy.com>, and <snapbang.com>.

e.    Respondent is not commonly known by the disputed domain names nor has Respondent been licensed, authorized, or otherwise permitted by Complainant to use Complainant’s mark.

f.     Furthermore, Respondent’s use is not a bona fide offering of goods or services, nor a legitimate noncommercial or fair use, as Respondent is selling subscriptions for access to private SnapChat accounts of models that may provide adult oriented content in a manner that violates Complainant’s terms of service prohibiting such conduct.

g.    Additionally, after receiving an infringement notice from Complainant, Respondent made changes to the disputed domain name’s resolving webpages.

h.    Respondent registered and uses the disputed domain names <snapsext.com>, <snapcandy.com>, and <snapbang.com> in bad faith.

i.      Respondent promotes and facilitates activity that violates Complainant’s terms of service.

j.      Respondent is diverting Internet traffic to adult oriented websites for Respondent’s financial gain.

k.    Respondent had actual knowledge of Complainant’s marks at the time of registration.

 

B.   Respondent

a.    Respondent has been operating the disputed domain names for over seven years with Complainant’s knowledge.

b.    Responded registered the disputed domain name <snapsext.com> on October 15, 2013.

c.    Responded registered the disputed domain name <snapcandy.com> on December 8, 2013.

d.    Responded filed the trademark application for SNAPSEXT before the USPTO on March 14, 2014.

e.    Responded registered the disputed domain name <snapbang.com>, on March 3, 2017.

f.     Respondent’s use of Respondent’s SNAPSEXT mark and domain names predate many of Complainant’s SNAP-formative marks.

g.    Complainant fails to establish confusing similarity between Complainant’s SNAPCHAT mark and Respondent’s disputed domain names.

h.    Enough difference exists between Complainant’s mark and the disputed domain names that consumers would not be confused in the market.

i.      Respondent has rights and legitimate interests in the disputed domain names due to Respondent’s registered trademark.

j.      Respondent did not register or use the disputed domain names in bad faith.

k.    Respondent is a dating platform and does not promote the distribution of adult material.

l.      Respondent did alter the resolving websites to mitigate any perceived confusion, but in doing so, believes that the changes are sufficient to avoid any confusion by Internet users.

m.   Complainant does not have sole rights to the “picture with superimposed text” format, and Complainant does not have a website in which Internet traffic can be diverted from, as Complainant is solely a mobile application.

 

C.   Additional Submissions

 

a.    Complainant

                                                  i.    Responded has acted in bad faith to trade on Complainant’s goodwill to drive traffic to Respondent pornographic websites.

                                                ii.    On September 30, 2011, Complainant started using the trademark SNAPCHAT in connection with a mobile app.

                                               iii.    On December 12, 2012, Complainant filed for registration of the trademark SNAPCHAT before the USPTO.

                                               iv.    In 2012, the mobile app grew up to over 50 millions snaps per day.

                                                v.    Complainant’s app identified with the trademark SNAPCHAT won well-known character by June 2013.

                                               vi.    There is a precedent concerning a domain name resolving to the website www.snapsext.com, decided in favor of Complainant (Snap, Inc. v. Nestor Hernandez, Claim Number: F1709001749325).

                                              vii.    The disputed domain names resolve to a pornographic website with the trademark SNAPCHAT within the home page.

                                            viii.    In 2018, Complainant sent a cease and desist letter to Respondent concerning the domain name <snapbang.com>, for the infringer to remove any reference to the trademark SNAPCHAT.

                                               ix.    In 2020, Complainant gained awareness of the existence of further infringing domain names and sent a cease and desist letter to Respondent concerning the domain names <snapsext.com> and <snapcandy.com>, which were offering access to SNAPCHAT accounts for the purpose of distributing pornography, which violates SNAPCHAT’s terms for using the app.

                                                x.    Responded admitted having known about the trademark SNAPCHAT before registering the disputed domain names.

 

b.    Respondent

                                                  i.    Respondent has never utilized or attempted to profit from Complainant’s registered trademarks.

                                                ii.    Complainant implies that the Panel does not understand the difference between time spent searching a database and the time spent analyzing the results of that search.

 

FINDINGS

1.    Complainant owns the trademark SNAPCHAT in the United States of America, registered on June 30, 2013, to identify goods in international class 9, before Respondent acquired the disputed domain names.

 

2.    Complainant’s first use of the trademark SNAPCHAT dates back to September 30, 2011.

 

3.    Complainant owns the trademark SNAP in the United States of America, registered on June 4, 2013 to identify goods in international class 9.

 

4.    Respondent knew of Complainant’s trademark SNAPCHAT before acquiring the disputed domain names. Thus, Respondent used the trademark SNAPCHAT to create a likelihood of confusion aimed to divert consumers to Respondent’s offered services, and included the trademark within the resolving websites and referred users to the accounts on the SNAPCHAT app.

 

5.    Respondent is not affiliated with Complainant in any way.  Complainant has never authorized, contracted, licensed or otherwise permitted Respondent to use the trademarks SNAPCHAT or SNAP.

 

6.    Respondent’s use of the disputed domain names is not in connection with a bona fide offering of goods or services.

 

7.    Respondent has the intention to attract, for commercial gain, Internet users by creating a likelihood of confusion with the Complainant's trademark.

 

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 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.

 

This discussion, based on the evidentiary support submitted by the parties, will be developed as follows:

 

The Panel will determine the application of the Doctrine of Laches; whether or not the disputed domain names are identical or confusingly similar to the mark in which Complainant has rights. Afterwards, the Panel will verify if Respondent has any rights or legitimate interests in respect of the disputed domain names; and finally, the Panel will establish whether or not the disputed domain names have been registered and are being used in bad faith by Respondent.

 

Doctrine of Laches

Certain jurisdictions endorse the doctrine of laches which typically bars the recovery of damages incurred before the filing of a lawsuit and courts have concluded that the rationale behind the doctrine of laches does not militate against injunctive relief. The remedies under the Policy are injunctive rather than compensatory in nature, and the concern is to avoid ongoing or future confusion as to the source of communications, goods, or services. The Policy offers a limited remedy to avoid future confusion in the marketplace, and it does not contemplate that such a remedy would be unavailable because of delay in instituting a Policy proceeding. Furthermore, lengthy delays in seeking legal or administrative remedies can often have the effect of eroding or undermining the Complainant’s arguments with respect to Respondent’s rights or legitimate interests in the disputed domain name, or Respondent's alleged bad faith in registering and using the domain name.

 

As laches is a defense mechanism for Respondent which finally affects the arguments regarding the elements of rights or legitimate interests in the disputed domain name and bad faith registration and use, the delay should be taken into account in those elements. Hence, we would have to review each element in order to determine whether or not the delay affected the requirements of the Policy as delay is not itself a basis to deny a claim”. Consequently, the only reference to Laches is that it does not apply in this case as is not part of the Policy.

 

Identical and/or Confusingly Similar

Complainant contends that it is the owner of the trademarks SNAPCHAT and SNAP to identify goods of international class 9.

 

a)     Existence of a trademark or service mark in which the Complainant has rights

 

Firstly, it is important to point out that Paragraph 4(a) of the Policy requires the existence of a trademark or a service mark. The intellectual property rights are acquired by registration before the competent office in many jurisdictions around the world.

 

The worldwide-accepted definition of a trademark involves the concept of distinctive force as the most relevant element. Said force gives the mark the capability to identify the products or services of its owner and differentiate them from the product and services of other participants in the market.

 

When a mark is registered, it is surrounded by a presumption of sufficient distinctive force, and the owner is granted with an exclusive right over the mark, which entitles him to prevent any third party from using the registered sign or any other sign confusingly similar to it.

 

However, the UDRP does not discriminate between registered and unregistered trademarks[i] and thus, it is well established that a Complainant does not require owning a registered trademark to invoke the Policy. It is sufficient in certain common law jurisdictions, such as the United States of America, that Complainant has rights in an unregistered trademark as to deserve legal protection, based solely on its use in commerce.

 

In this case, Complainant proved its rights in the trademark SNAPCHAT and SNAP, by means of the registrations in the United States of America before the USPTO, Registration No. 1330589 and No. 4345533 respectively.

 

The first use of the trademark SNAPCHAT was September 30, 2011.

 

This information is conclusive evidence of Complainant’s ownership of the cited marks and the exclusive right to use them in connection with the stated goods. The registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive[ii].

 

Thus, Complainant established its rights in the trademark SNAPCHAT since at least 2011 and in the trademark SNAP since at least 2016.

 

Hence, the trademark SNAPCHAT has been registered since before Respondent acquired the disputed domain names. For clarity, the trademark SNAPCHAT was first used on September 30, 2011, and registered on June 30, 2013. The disputed domain names were registered or acquired by Respondent, as follows:

 

a.    Responded registered the disputed domain name <snapsext.com>, on October 15, 2013.

b.    Responded registered the disputed domain name <snapcandy.com>, on December 8, 2013.

c.    Responded registered the disputed domain name <snapbang.com>, on March 3, 2017.

 

The aforementioned dates were confessed by Respondent and proven by Complainant. Thus, Complainant not only used but also registered the trademark SNAPCHAT before the disputed domain names were registered or acquired by Respondent.

 

Moreover, the trademark SNAPCHAT is well-known, as proven by Complainant, and accepted by the Panel, considering the following:

 

a.    In 2012, the app distinguished with the trademark SNAPCHAT was declared the “Fastest Rising Startup” at the 2012 TechCrunch Crunchies Awards.

b.    In 2013, the app distinguished with the trademark SNAPCHAT was declared the “Best Mobile Application” at the 2013 TechCrunch Crunchies Awards.

c.    In February 2014, a study concluded that 77% of U.S. college students used the app distinguished with the trademark SNAPCHAT at least once per day.

d.    At the end of 2014, the app distinguished with the trademark SNAPCHAT had 70 million daily active users.

e.    By the end of 2015, the app distinguished with the trademark SNAPCHAT had over 100 million daily active users.

f.     From December 2015 to December 2016, there was a 68% increase in number of users to 158 million daily active users.

g.    Those users on average visited the app distinguished with the trademark SNAPCHAT more than 18 times a day, spent an average of 25-30 minutes on the app, and sent over 2.5 billion Snaps.

h.    During this period, the app distinguished with the trademark SNAPCHAT also consistently ranked among the Apple App Store’s top five most downloaded photo applications and top 15 most downloaded mobile applications overall.

i.      In 2016, the app distinguished with the trademark SNAPCHAT was recognized as the most-downloaded app in the Apple App Store.

 

Hence, the trademark not only has been registered but widely used and highly recognized in the market.

 

Therefore, the Panel concludes that Complainant has demonstrated rights in the trademarks SNAPCHAT and SNAP for purposes of Paragraph 4(a)(i) of the Policy.

 

b)     Identity or confusing similarity between the Disputed Domain Name and the Complainant’s trademark

 

Complainant alleges that Respondent’s disputed domain names are confusingly similar to Complainant’s trademarks as they partially reproduce the trademark SNAPCHAT.

 

In the first place, before establishing whether or not the disputed domain names <snapsext.com>, <snapcandy.com>, and <snapbang.com> are confusingly similar to Complainant’s trademarks SNAPCHAT and SNAP, the Panel wants to point out that the addition of generic top-level domain (gTLD), i.e., “.com,” “.net,” “.biz,” “.edu,” “.org”, cannot be considered when determining if the registered domain name is identical or confusingly similar to the registered trademark[iii] as the insertion of a gTLD has a distinctive function[iv].

 

UDRP Panels have unanimously accepted that the inclusion of the “.com” and “.net” (gTLD), in the disputed domain name is not a factor in analyzing whether a disputed domain name is identical or confusingly similar to the mark in which Complainant asserts rights. In the Wal-Mart Stores, Inc. v. Walsucks, D2000-0477 (WIPO July 20, 2000), the Panel stated that:

 

“[T]he addition of the generic top-level domain (gTLD) name ‘.com’ is without legal significance since use of a gTLD is required of domain name registrants, ‘.com’ is one of only several such gTLDs, and ‘.com’ does not serve to identify a specific enterprise as a source of goods or services.”

 

The confusing similarity between the domain names containing a partial reproduction of the trademark SNAPCHAT, especially the SNAP portion of the trademark, has been previously decided by other Panels as follows:

 

“Respondent’s <snaphackmaster.com> domain name contains the dominant portion of the SNAP marks, as well as the generic or descriptive terms “hack” and “master” and the “.com” gTLD.  Similar changes in a registered mark have failed to sufficiently distinguish a domain name for the purposes of Policy ¶ 4(a)(i).  See King Ranch IP, LLC v. E Miller, FA 1785596 (Forum June 6, 2018) (“Complainant’s trademark is used in-part with regard to barbecue related goods and services; the term “bbq” is thus suggestive of the KING RANCH trademark. Therefore, the Panel finds that the <kingranchbbq.com> domain name is confusingly similar to Complainant’s KING RANCH mark.”); see also Starbucks Corporation d/b/a Starbucks Coffee Company v. Waseem A Ali / Micron Web Services, FA 1785616 (Forum June 8, 2018) (finding the <starbucksreal.com> domain name to be confusingly similar to the STARBUCKS mark, as “the addition of the generic term ‘real’ to Complainant's mark does not distinguish the Domain Name from Complainant's trade mark pursuant to the Policy.”); see also Longo Brothers Fruit Markets Inc. v. John Obeye / DOMAIN MAY BE FOR SALE, CHECK AFTERNIC.COM, FA 1734634 (Forum July 17, 2017) (“[O]f course it is well established in prior UDRP cases that the addition of a ‘.com’ suffix is irrelevant when determining if a disputed domain name is identical or confusingly similar to a trademark.”).  Accordingly, the Panel finds that Respondent’s <snaphackmaster.com> domain name is confusingly similar to Complainant’s SNAP and SNAPCHAT marks.”[v]

 

This decision is a reiterated position of different Panels:

 

“Complainant argues Respondent’s <premiumsnap.org> and <premiumsnap.biz> domain names are confusingly similar to Complainant’s SNAPCHAT mark as they contain a dominant portion of Complainant’s mark and merely add the term “premium” and the “.org” and “.biz” gTLDs. The addition of a generic or descriptive phrase and gTLD fails to sufficiently distinguish a disputed domain name from a mark per Policy ¶ 4(a)(i). See Huron Consulting Group Inc. v. David White, FA 1701395 (Forum Dec. 6, 2016) (finding that Respondent’s <huroninc.net> domain name is confusingly similar to the HURON CONSULTING GROUP and HURON HEALTHCARE marks under Policy ¶ 4(a)(i) because in creating the domain name, the respondent contains the dominant portion of the marks and appends the term “inc” and a gTLD)”[vi].

 

The most recent decision states the following:

 

“Complainant argues Respondent’s <loginsnap.com> domain name is confusingly similar to Complainant’s SNAP mark as it includes the dominant part of the SNAP mark and merely adds the generic term “login” and the “.com” gTLD. The addition of a generic term and a gTLD fail to sufficiently distinguish a disputed domain name from a mark per Policy ¶ 4(a)(i). 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). The Panel finds that the disputed domain name is confusingly similar to Complainant’s SNAP mark per Policy ¶ 4(a)(i).”[vii]

 

This Panel agrees with the previous Panels’ conclusions. Any domain name reproducing the predominant portion of the trademark SNAPCHAT must be deemed confusingly similar to the trademark.

 

Hence, the Panel considers that the partial reproduction of the trademark SNAPCHAT by the disputed domain names is sufficient ground to establish that the disputed domain names are confusingly similar to the trademark[viii].

 

In consequence, as per this reasoning, the Panel finds that, in the present case, the disputed domain names are confusingly similar to Complainant’s mark and thus, the requirement set forth in Paragraph 4(a)(i) of the Policy is duly complied with.

 

Rights or Legitimate Interests

 

a)  Prima Facie Case.

 

Regarding this second element of Paragraph 4(a) of the Policy, UDRP Panels have unanimously consented that requiring the Complainant to prove the lack of rights or legitimate interests of the Respondent in the disputed domain name is often an impossible task: it is not only a negative but also demands access to information that is mostly within the knowledge of the Respondent[ix].

 

In Julian Barnes v. Old Barn Studios Ltd., D2001-0121 (WIPO Mar. 30, 2001), the Panel stated that:

 

“Is the Respondent required to adduce any such evidence, if the onus is on the Complainant to prove the three elements of paragraph 4 of the Policy? While the overall burden of proof is on the Complainant, this element involves the Complainant proving matters, which are peculiarly within the knowledge of the Respondent. It involves the Complainant in the often impossible task of proving a negative. In the Panel’s view the correct approach is as follows: the Complainant makes the allegation and puts forward what he can in support (e.g. he has rights to the name, the Respondent has no rights to the name of which he is aware, he has not given any permission to the Respondent). Unless the allegation is manifestly misconceived, the Respondent has a case to answer and that is where paragraph 4(c) of the Policy comes in. If the Respondent then fails to demonstrate his rights or legitimate interests in respect of the Domain Name, the complaint succeeds under this head”.

 

Therefore, a Complainant is required to make a prima facie case that Respondent lacks rights or legitimate interests in the disputed domain name. Once this prima facie case is made, the burden of production shifts to Respondent, who must come forward with concrete evidence of its rights or legitimate interests[x].  If Respondent fails to do so, Complainant is deemed to have met the second element of Paragraph 4(a) of the Policy.

 

Complainant asserts that Respondent has no rights or legitimate interests in the disputed domain names <snapsext.com>, <snapcandy.com>, and <snapbang.com> because of the following: i) Respondent knew or should have known of the existence and use of the trademark SNAPCHAT, when including it within the disputed domain names; ii) Respondent was not authorized by Complainant to use the trademark SNAPCHAT within the disputed domain names; iii) Neither Respondent nor the services offered by Respondent on the website to which the disputed domain names resolved are affiliated with, associated with, or otherwise endorsed by Complainant; iv) Respondent uses Complainant’s trademark within the resolving website; v) Complainant has not authorized, licensed, or otherwise permitted Respondent to use its trademarks within the website to which the disputed domain names resolved; and vi) Respondent does not use the disputed domain names in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use. Rather, Respondent uses the disputed domain names in connection with a website that uses Complainant colors and trademarks, and facilitates the exchange of pornography via private Snapchat accounts.

 

The Panel accepts these assertions as a prima facie case made by Complainant that shifts the burden of production to Respondent.

 

b)  Respondent’s rights or legitimate interests in the disputed Domain Name.

 

Paragraph 4(c) of the Policy includes a listing of circumstances that prove Respondent’s rights or legitimate interests in a disputed domain name:

 

(i) before any notice of the dispute, Respondent’s use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

 

(ii) Respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or

 

(iii) Respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

 

Respondent states that Respondent has rights concerning the disputed domain names, as it owns the trademark SNAPSEXT but does not provide any evidence concerning the trademark registration or registrations to support this allegation.

 

Moreover, Respondent asserts that it is known by the disputed domain names but does not support its claim with any evidence.

 

In any case, the Policy is clear as to establish that the use must be in connection with a bona fide offering of goods and services. Hence, the mere use of a domain name or the registration of a trademark does not indicate rights or legitimate interests. The burden is higher; said use must be done in good faith.

 

Previous Panels have stated:

 

“It is sometimes the case that a domain name registrant has registered a trademark in circumstances indicating that the registrant was seeking to take unfair advantage of the owner of previously existing trademark rights. See, e.g, Madonna Ciccone, p/k/a Madonna v. Dan Parisi and “Madonna.com” WIPO Case No. D2000-0847”[xi].

 

This Panel agrees that mere ownership of a trademark registration is not enough to prove rights or legitimate interest in a disputed domain name. Besides the fact that no trademark registration has been proven by Respondent. In this case, it is relevant that Respondent has been trying to create a link between Respondent’s resolving website and Complainant’s trademark SNAPCHAT.

 

The following actions lead the Panel to conclude that Respondent knew of Complainant’s trademark and tried to create confusion or a connection between Respondent’s resolving website and Complainant’s trademark:

 

a.    The use of the yellow color from Complainant’s trademark as the background and highlight element of the sign and other elements within the site.

 

b.    The use of the SNAP portion of Complainant’s trademark.

 

c.    The use of the trademark SNAPCHAT within the resolving website.

 

d.    The offering of subscriptions for access to private SNAPCHAT accounts of models that may provide adult oriented content in a manner that violates Complainant’s terms of service that prohibits such conduct.

 

Consequently, Respondent seeks to take unfair advantage of the owner of previously existing trademark rights.

 

The Panel finds that Respondent failed to prove rights or legitimate interests in the disputed domain names. Respondent’s use of the disputed domain names is not a bona fide offering of goods or services or a legitimate noncommercial or fair use, since the disputed domain names resolve to a website that prominently displayed elements imitating Complainant’s colors and trademarks, which is directed to capitalize on Complainant’s trademarks goodwill by attracting internet users to its disputed domain names where Respondent offers pornography and access to private accounts on Complainant’s app, in violation of Complainants terms[xii]. 

 

Moreover, as evidenced by the cease and desist letters, Complainant has never authorized Respondent to use its colors, trademarks or accounts to provide pornographic or adult content.

 

Furthermore, Respondent’s arguments concerning the definition of the word SNAP, does not explain the reason for choosing the colors, trademarks and private accounts offered by Complainant.

 

The arguments concerning the generic nature of the word SNAP are construed to mislead the Panel. Given the websites themselves, it is clear that Respondent chose the word SNAP to include it within the disputed domain names with previous knowledge of Complainant’s well-known trademark.

 

Respondent undoubtedly knew of Complainant’s trademark SNAPCHAT since Complainant’s trademarks and colors are included in the resolving website, but nonetheless incorporated said trademark in the disputed domain names. Thus, Respondent used the SNAP portion of the trademark SNAPCHAT to create a likelihood of confusion aimed to divert consumers to Respondent’s offered services.

 

Therefore, the second requirement of paragraph 4(b) of the Policy is met.

 

Registration and Use in Bad Faith

According to paragraph 4(b) of the Policy, the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:

 

(1)   Circumstances indicating that Respondent has registered or has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of Respondent’s documented out-of-pocket costs directly related to the domain name; or

 

(2)   Respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that Respondent has engaged in a pattern of such conduct; or

 

(3)   Respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or

 

(4)   By using the domain name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to his/her website or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of his/her website or location or of a product or service on his/her website or location.

 

This Panel deems that the mere fact of knowingly incorporating a third-party’s trademark in a domain name constitutes registration in bad faith[xiii].  See Aktiebolaget Electrolux v. Jorgeariel Figueroa Rodríguez, WIPO Case No. D2011-1311, where the panel found: “The selection of this word is certainly not a random decision; the Panel finds that it is a consequence of Respondent’s prior knowledge of the mark. This fact, by itself, is registration in bad faith in the Panel’s opinion”.

 

Moreover, since Complainant’s trademarks are used in the disputed domain names “it is reasonable to conclude that many Internet users would suppose that the websites to which the disputed domain names resolve have a connection with the Complainant”[xiv]. This disrupts Complainant’s business, especially since Respondent used the same colors as Complainant’s trademarks, included Complainant’s trademarks in the resolving websites and offers access to private accounts on Complainant’s app. Thus, the unauthorized use of Complainant’s look-and-feel amounts to bad faith registration and use. In fact, Respondent takes advantage of the services provided by Complainant.

 

Respondent’s use falsely suggests sponsorship and/or endorsement by Complainant of Respondent’s websites and use of the disputed domain names.

 

Hence, Respondent has registered the domain names for the purpose of disrupting the business of a competitor and it is indicative of bad faith registration and use pursuant to Policy ¶ 4(a)(iii).

 

Furthermore, Respondent is profiting from its use of the trademarks SNAPCHAT and SNAP in the disputed domain names by attracting Internet users to the resolving website. Respondent has created confusion as to Complainant’s affiliation or sponsorship of the disputed domain names and websites in order to distribute adult content. This is indicative of bad faith under Policy ¶ 4(b)(iv)[xv]. 

 

Moreover, in this case Paragraph 2 of the Policy, must be duly interpreted.

 

A threshold issue is identifying the relevant time period to consider in evaluating Respondent’s rights and legitimate interests, and whether his conduct constituted bad faith. Paragraph 2 of the Policy addresses this issue – it provides that by applying to register a domain name, or by asking to maintain or renew a domain name registration, a Registrant represents and warrants that (a) the statements Registrant made in the Registration Agreement are complete and accurate; (b) to Registrant’s knowledge, the registration of the domain name will not infringe upon or otherwise violate the rights of any third party; (c) Registrant is not registering the domain name for an unlawful purpose; and (d) Registrant will not knowingly use the domain name in violation of any applicable laws or regulations. It is Registrant’s responsibility to determine whether the domain name registration infringes or violates someone else’s rights.

 

The obligations set forth in Paragraph 2 of the Policy apply when registering the domain name as well as when renewing it, since the Policy is meant to be fulfilled while the domain name remains registered.

 

The panel in Octogen Pharmacal Co., Inc. v. Domains By Proxy, Inc. / Rich Sanders and Octogen e-Solutions, explains Paragraph 2 of the Policy, as follows:

 

“As this Panel sees it, this provision not only imposes a duty on the part of the registrant to conduct an investigation at the time of registration, but also includes a representation and warranty by the registrant that it will not now or in the future use the domain name in violation of any laws or regulations. This effectively imposes on the registrant a continuing duty to ensure that the domain name is not used in violation of another’s rights and clearly covers intellectual property rights and the laws protecting them, including copyright and trademark. This representation and warranty is not limited to the moment at which the registrant registers the domain name; rather, it extends to any use of the domain name in the future. This obligation is an integral part of the Policy, and it cannot be ignored. A party can register or acquire a domain name in good faith, yet use the domain name in the future in such a way that the representations and warranties that the registrant made as of the time of registration are violated. If a party uses the domain name in the future so as to call into question the party’s compliance with the party’s representations and warranties, this may be deemed to be retroactive bad faith registration.”^[1]

 

Consequently, a domain name not only must be registered as per the requirements of Paragraph 2 of the Policy, but also its renewals must comply with the same standards. Thus, the requirements of the Policy can be studied not only regarding a domain name registration but also when it is renewed.

 

In fact, it is very important to stress that Paragraph 2 of the Policy states that Registrant represents and warrants, when applying to register a domain name, or when requesting to maintain or renew a domain name registration, that the domain name will not infringe upon or otherwise violate the rights of any third party.

 

The panel in Eastman Sporto Group LLC v. Jim and Kenny, sets the scope of Paragraph 2 of the Policy, as follows:

 

“Paragraph 2 does not distinguish among the initial date of registration and subsequent requests for renewal – the undertaking by its terms applies as of all such dates.” ^[2]

 

Furthermore, good faith registration does not mean good faith renewal as set forth by the panel in PAA Laboratories GmbH v. Printing Arts America:

 

“The abusive refreshing of the original registration is an act which this Panel considers should be an act of a kind encompassed by paragraph 4(a)(iii) of the Policy. The benefit of an original good faith registration should not be perpetual to the point where it can cloak successors in title and successors in “possession” long after the original registration would have expired.”^[3]

 

Therefore, the elements of the Policy must be studied at the time of the registration and at the time of the renewal according to the specific circumstances of the case. In our case, it is clear that the renewals were done after Respondent knew of Complainant’s rights and tried to create and association with Complainant’s business in the consumer’s minds. This can only be qualifies as acting in bad faith.

 

Therefore, the three elements of the Policy 4(a) are satisfied in the present case in respect to Respondent of the disputed domain names.

 

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 <snapsext.com>, <snapcandy.com>, and <snapbang.com> domain names be TRANSFERRED from Respondent to Complainant.

 

 

Fernando Triana, Esq.

Chair of the Panel

 

Sandra J. Franklin

Panelist

 

Dated:  May 11, 2021

Panelist Concurrence and Dissent

 

I respectfully dissent from the decision of the majority as to the domain names <snaptext> and <snapcandy>. I concur as to the domain name <snapbang>.

 

First, the majority list in the section above noted FINDINGS;

 

3.    Complainant owns the trademark SNAP in the United States of America, registered on June 4, 2013 to identify goods in international class 9.

 

While that statement is true, I find that it does not present the complete picture and as such should not stand alone, without reference to additional relevant facts. The SNAP trademark registered above was not registered by Complainant. Complainant acquired the mark via assignment on or about May 16, 2016.

Prior to the assignment Complainant only had registered trademark rights in its SNAPCHAT mark.

 

The majority next states in FINDINGS;

 

4.    Respondent knew of Complainant’s trademark SNAPCHAT before acquiring the disputed domain names. Thus, Respondent used the trademark SNAPCHAT to create a likelihood of confusion aimed to divert consumers to Respondent’s offered services, and included the trademark within the resolving websites and referred users to the accounts on the SNAPCHAT app.

 

I partially disagree with that finding as well as I believe it also only partially states relevant facts. Respondent agrees that Respondent knew of Complainant’s trademark SNAPCHAT when it filed for and registered its <snapsext> and <snapcandy> domain names in 2013 and Respondent’s own SNAPSEXT mark 2014. However, Respondent did not directly use Complainant’s SNAPCHAT mark in its domain name or trademark registrations. Respondent created an online community where some members have referenced SNAPCHAT. Although the SNAPCHAT mark was used on some pages on Respondent’s sites, Respondent addressed those uses when contacted by Complainant’s counsel whenever Complainant has complained of potential confusion. But Complainant is conflating its use and registration of SNAPCHAT in June, 2013 as giving Complainant the exclusive rights to SNAP and all SNAP formative marks despite not securing rights to the mark SNAP several years later in May, 2016.

 

The majority later states in FINDINGS;

 

6.    Respondent’s use of the disputed domain names is not in connection with a bona fide offering of goods or services.

 

I disagree. I find Respondent’s use of the disputed domain names in creating an online social dating community to be a bona fide offering of services.

 

In the Identical and/or Confusingly Similar section above the majority finds;

 

Thus, Complainant established its rights in the trademark SNAPCHAT since at least 2011 and in the trademark SNAP since at least 2016.

 

Hence, the trademark SNAPCHAT has been registered since before Respondent acquired the disputed domain names. For clarity, the trademark SNAPCHAT was first used on September 30, 2011, and registered on June 30, 2013. The disputed domain names were registered or acquired by Respondent, as follows:

 

d.    Responded registered the disputed domain name <snapsext.com>, on October 15, 2013.

e.    Responded registered the disputed domain name <snapcandy.com>, on December 8, 2013.

f.      Responded registered the disputed domain name <snapbang.com>, on March 3, 2017.

 

The aforementioned dates were confessed by Respondent and proven by Complainant. Thus, Complainant not only used but also registered the trademark SNAPCHAT before the disputed domain names were registered or acquired by Respondent.

 

I agree that Complainant secured rights to the SNAP mark in 2016 and that they asserted their date of first use in the SNAPCHAT mark to be in 2011, said mark being registered in 2013. Rights to the SNAPCHAT mark did not provide rights to the mark SNAP and all SNAP formative marks at the time. If that were the case, there would have been no need for Complainant to acquire the SNAP mark at a later time. However, a number of SNAP and SNAPS mark were registered prior to 2016 as was Respondent’s SNAPTEXT mark and Complainant took the steps necessary to later acquire a SNAP mark covering products related to its own goods and services.

 

In the initial complaint, under C. Legal Arguments, at paragraph 20. Complainant states;

 

“Complainant has continuously used the Snap Marks since before the Infringing Domain Names were registered, giving Complainant trademark rights that predate the registration date of the Infringing Domain Names. See Annexes A and D-T.”

 

A review of the Annexes did not provide any direct support for a claim of common law trademark rights from any time certain using the normal metrics involved in such a finding. The Complainant at best implicitly asserted that the beginning time it was relying on was the first use date for the mark SNAPCHAT.

 

For example; The Panel notes that while a trademark registration is not required under Policy ¶ 4(a)(i), a complainant must show that the mark has acquired secondary meaning to demonstrate common law rights. See Microsoft Corporation v. Story Remix / Inofficial, FA 1734934 (Forum July 10, 2017) (finding that “The Policy does not require a complainant to own a registered trademark prior to a respondent’s registration if it can demonstrate established common law rights in the mark.”); see also Marquette Golf Club v. Al Perkins, 1738263 (Forum July 27, 2017) (finding that Complainant had established its common law rights in the MARQUETTE GOLF CLUB mark with evidence of secondary meaning, including “longstanding use; evidence of holding an identical domain name; media recognition; and promotional material/advertising.”). Further; Acquired distinctiveness is shown through proof of secondary meaning. Secondary meaning requires establishing that the public primarily associates the mark in question with certain goods or services originating from the purported mark holder. See AOL LLC v. DiMarco, FA 1275978 (Forum Sept. 9, 2009) (“‘Secondary meaning’ is acquired when ‘in the minds of the public, the primary significance of a product feature . . . is to identify the source of the product rather than the product itself.’”).  Secondary meaning generally requires the claimant indicate length of use and amount of sales under the mark, the nature and extent of advertising, and consumer association through surveys and media recognition. See also Golden Title Loans, LLC dba 745Cash v. roylee, FA 1618801 (Forum June 23, 2015) (holding, “Relevant evidence of secondary meaning includes continuous and ongoing use of a mark, holding of a domain name identical to the mark, or using the mark in commerce before a disputed domain name is created.” Finding “Complainant has provided evidence of secondary meaning . . . displaying Complainant’s business registration with the state of Tennessee, showing use of the 745-CASH mark since July 2005 . . . showing the creation date as March 30, 2004 of Complainant’s own website <745cash.com>. Complainant also urges that its business phone number is 745-CASH.).

 

There is no evidence provided of the type noted above to support Complainant’s assertion that “Complainant has continuously used the Snap Marks since before the Infringing Domain Names were registered, giving Complainant trademark rights that predate the registration date of the Infringing Domain Names. While Complainant’s SNAPCHAT mark was deemed distinctive enough to secure registration, I cannot find that it simultaneously bestowed upon Complainant a right to control all rights to the generic word SNAP. I find that Respondent’s <snaptext> and <snapcandy> domain name registrations predate Complainant’s rights to the SNAP mark by several years.

 

I also find that Respondent’s establishment of a social dating community in 2013 at the time they registered the domain names <snapsext> and <snapbang>, which they have continuously maintained since that time, would under Paragraph 4(c)(ii) of the Policy prove Respondent’s rights or legitimate interests in a disputed domain name. Policy 4(c)(ii) states in relevant part as follows;

 

(ii) Respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if you have acquired no trademark or service mark rights;

 

Respondent was commonly known by the two domain names noted prior to Complainant establishing any rights in the SNAP mark.

 

Additionally, in accordance with the WIPO 3.0 Overview, while the UDRP makes no specific reference to the date on which the holder of the trademark or service mark acquired its rights, such rights must be in existence at the time the complaint is filed. The fact that a domain name may have been registered before a complainant has acquired trademark rights does not by itself preclude a complainant’s standing to file a UDRP case, nor a panel’s finding of identity or confusing similarity under the first element. However, where a domain name has been registered before a complainant has acquired trademark rights, only in exceptional cases would a complainant be able to prove a respondent’s bad faith”. This not such an exceptional case. I find that Respondent did not register or use the disputed domain names <snapsext> and <snapcandy> in bad faith since Complainant had no rights to SNAP at the time the domain names were registered.

 

Finally, I would also find, contrary to the WIPO 3.0 Overview, that laches should be considered in appropriate cases, such as this one, where several years have passed since Respondent established and continuously ran its business, and Complainant after passively watching, seeks retrospective relief. As is so oft stated, the UDRP is an administrative proceeding meant to provide equitable relief. It strains credulity to accept the proceeding as properly balanced in potentially providing equitable relief without due consideration to equitable defenses.

 

Darryl C. Wilson, Panelist