Snap Inc. v. Noah Adam
Claim Number: FA1905001845891
Complainant is Snap Inc. (“Complainant”), represented by Peter Kidd of Kilpatrick Townsend & Stockton LLP, California, USA. Respondent is Noah Adam (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <snapcode.com>, registered with GoDaddy.com, LLC.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Ho Hyun Nahm, Esq. as Panelist.
Complainant submitted a Complaint to the Forum electronically on May 31, 2019; the Forum received payment on May 31, 2019.
On June 3, 2019, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <snapcode.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On June 7, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 1, 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@snapcode.com. Also on June 7, 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 July 8, 2019, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Ho Hyun Nahm, Esq. 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
i) Complainant owns and distributes a camera and messaging application. Complainant has rights in its SNAPCODE mark through registration with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 4,925,610, registered Mar. 29, 2016). See Compl. Ex. Q. Respondent’s <snapcode.com> domain name is confusingly similar or identical to Complainant’s mark as Respondent merely adds the “.com” generic top-level domain (“gTLD”).
ii) Respondents has no rights or legitimate interests in the <snapcode.com> domain name as Respondent is not commonly known by the disputed domain name nor has Respondent been licensed, authorized, or otherwise permitted by Complainant to use Complainant’s mark. Respondent’s use is not a bona fide offering of goods or services, nor a legitimate noncommercial or fair use, as Respondent attempts to divert internet users to Respondent’s website where it offers pay-per-click hyperlinks to competitors in the social media industry Furthermore, Respondent has moved to offer to the public to sell the disputed domain name for 10,000 GBP. Finally, Respondent added a disclaimer to the disputed domain name after being contacted by Complainant
iii) The disputed domain name was registered and is being used in bad faith, as Respondent is using the disputed domain name to disrupt Complainant’s business by directing users to Complainant’s competitors and offering pay-per-click hyperlinks. Next, Respondent has moved to offer to the public to sell the disputed domain name for 10,000 GBP. Additionally, upon being contacted by Complainant, Respondent changed the design of the resolving webpage for the disputed domain name. Finally, Respondent had actual knowledge of Complainant’s rights in the SNAPCODE mark.
B. Respondent
Respondent did not submit a response in this proceeding.
1. The disputed domain name was registered on March 11, 2003.
2. Respondent acquired the disputed domain name on February 20, 2019.
3. Complainant has established rights in its SNAPCODE mark through registration with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 4,925,610, registered Mar. 29, 2016).
4. The disputed domain name resolves to the website which offers a directory of models and celebrities with links to their social media accounts, including Snapchat, Facebook, Instagram, and Twitter.
5. Respondent published a blog post titled, “How does Snapchat Snapcode Work?” on February 22, 2019.
6. After Complainant’s asking to cease the use of the disputed domain name, Respondent added a disclaimer to the disputed domain name's resolving website, and removed his blog post, “How does Snapchat Snapcode Work?.”
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”).
Complainant claims to have rights in its SNAPCODE mark through registration with the USPTO (e.g. Reg. No. 4,925,610, registered Mar. 29, 2016). See Compl. Annex. Q. Registration with the USPTO is sufficient to demonstrate rights in a mark under 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).”). Therefore, the Panel finds that Complainant has rights in the SNAPCODE mark under Policy ¶ 4(a)(i).
Complainant argues the disputed domain name is confusingly similar or identical to Complainant’s mark as Respondent merely adds the “.com” gTLD. Merely adding a gTLD to a complainant’s mark is not sufficient to distinguish a disputed domain name from the mark under Policy ¶ 4(a)(i). See Marquette Golf Club v. Al Perkins, FA 1738263 (Forum July 27, 2017) (“When a respondent’s domain name incorporates a mark in its entirety and merely adds a generic top-level domain (gTLD), “.com”, then the Panel may find that the disputed domain name is identical to Complainant’s mark.”). Therefore, the Panel finds the disputed domain name is confusingly similar or identical to Complainant’s mark under Policy ¶ 4(a)(i).
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), 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”).
Complainant argues Respondents has no rights or legitimate interests in the disputed domain name as Respondent is not commonly known by the disputed domain name nor has Respondent been licensed, authorized, or otherwise permitted by Complainant to use Complainant’s mark. Relevant information, such as WHOIS information, can be used as evidence to show a respondent is or is not 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 lacks rights or legitimate interest in a disputed domain name. 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)”). Here, Complainant provides the WHOIS information for the disputed domain name, showing “Noah Adam” as the registrant of the disputed domain name, and there is no evidence in the record to suggest Respondent was authorized to use the mark. See Amend. Compl. Annex. A. Therefore, the Panel finds that Respondent has no rights or legitimate interest in the disputed domain name as Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii).
Next, Complainant argues Respondents has no rights or legitimate interests in the disputed domain name as Respondent’s use is not a bona fide offering of goods or services, nor a legitimate noncommercial or fair use. Rather, Respondent attempts to divert internet users to Respondent’s website where it offers pay-per-click hyperlinks to competitors in the social media industry. Use of a disputed domain name to divert internet users to respondent’s website is not a bona fide offering of goods or services, nor a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and (iii). See Summit Group, LLC v. LSO, Ltd., FA 758981 (Forum Sept. 14, 2006) (finding that the respondent’s use of the complainant’s LIFESTYLE LOUNGE mark to redirect Internet users to respondent’s own website for commercial gain does not constitute either a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)). Additionally, offering pay-per-click hyperlinks to complainant’s competitors is not a bona fide offering of goods or services, nor a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and (iii). See Walgreen Co. v. Privacy protection service - whoisproxy.ru, FA 1785188 (Forum June 10, 2018) (“Respondent uses the <walgreensviagra.net> domain name to pass itself off as Complainant and display links to a website offering products similar to those offered by Complainant. Using the domain name in this manner is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor a non-commercial or fair use under Policy ¶ 4(c)(iii).”). Here, Complainant provided screenshots of the resolving webpage for the <snapcode.com> domain name, showing pages designed to convince internet users of an affiliation with Complainant, as well as links to advertisement and social media accounts. See Compl. Annex. T. Therefore, the Panel finds Respondent has no rights or legitimate interests in the disputed domain name as Respondent’s use is not a bona fide offering of goods or services, nor a legitimate noncommercial or fair use.
Additionally, Complainant argues Respondent has no rights or legitimate interests in the disputed domain name as Respondent has moved to offer to the public to sell the disputed domain name. Placing a disputed domain name up for sale is evidence of a lack of rights or legitimate interest under Policy ¶4(a)(ii). See 3M Company v. Kabir S Rawat, FA 1725052 (Forum May 9, 2017) (holding that “a general offer for sale… provides additional evidence that Respondent lacks rights and legitimate interests” in a disputed domain name). Here, Complainant has provided a screenshot of a domain name sale site, showing that the disputed domain name is for sale of 10,000 GBP. See Compl. Annex. U. Therefore, the Panel finds Respondent has no rights or legitimate interests in the disputed domain name as Respondent has moved to offer to the public to sell the disputed domain name under Policy ¶4(a)(ii).
Finally, Complainant argues Respondents has no rights or legitimate interests in the disputed domain name as Respondent added a disclaimer to the webpage after being contacted by Complainant. Adding a disclaimer is not sufficient to establish right or legitimate interest in a disputed domain name under Policy ¶ 4(a)(ii). See Google Inc. v. Domain Admin / Whois Privacy Corp, FA 1726692 (Forum May 16, 2017) (finding that the mere existence of a disclaimer on a webpage is not sufficient to confer rights and legitimate interests in a disputed domain name). Here, Complainant contends that a disclaimer was added by Respondent after being contacted by Complainant, and is currently on the resolving webpage.
The Panel finds that Complainant has made out a prima facie case that arises from the considerations above. 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.
The Panel notes that the date of creation of the disputed domain name, i.e., March 11, 2003 predates Complainant’s first claimed rights in the SNAPCODE mark, i.e., March 29, 2016. The Panel also notes that Respondent acquired the disputed domain name on February 20, 2019 which postdates Complainant’s first claimed rights in the SNAPCODE mark. Merely because a domain name is initially created by a registrant other than the respondent before a complainant’s trademark rights accrue does not mean that a UDRP respondent cannot be found to have registered the domain name in bad faith. Irrespective of the original creation date, if a respondent acquires a domain name after the complainant’s trademark rights accrue, the panel will look to the circumstances at the date the UDRP respondent itself acquired the domain name. See section 3.8.1 of “WIPO Jurisprudential Overview 3.0.”
Complainant argues the disputed domain name was registered and is being used in bad faith, as Respondent has moved to offer to the public to sell the disputed domain name for excess of out-of-pocket costs. Selling a disputed domain name for an excessive amount of money can be evidence of bad faith registration and use under Policy ¶ 4(b)(i). See Retail Royalty Company and AE Direct Co LLC v. Whois Foundation / DOMAIN MAY BE FOR SALE, CHECK AFTERNIC.COM Domain Admin, FA 1821246 (Forum Jan. 13, 2019) (“Respondent lists the disputed domain name for sale for $5,759, which is a price well in excess of out of pocket costs. Such an offering can evince bad faith under Policy ¶ 4(b)(i).”). Here, Complainant provided a screenshot of a domain sale site, showing that the disputed domain name is for sale of 10,000 GBP to the general public. See Compl. Annex. U. Therefore, the Panel finds the disputed domain name was registered and is being used in bad faith, as Respondent has moved to offer to the public to sell the disputed domain name for excess of out-of-pocket costs under Policy ¶ 4(b)(i).
Next, Complainant argues the disputed domain name was registered and is being used in bad faith, as Respondent is using the disputed domain name to disrupt Complainant’s business by directing users to Complainant’s competitors and offering pay-per-click hyperlinks. Use of a disputed domain name to host pay-per-click advertisements and links to competitors is evidence of bad faith under Policy ¶ 4(b)(iii). See State Farm Mutual Automobile Insurance Company v. Niang, huai, FA1412001594788 (Forum Jan. 16, 2015) (“The at-issue domain name’s website includes advertisements for third parties, some which may sell insurance and banking services similar to those offered by Complainant. Using the at-issue domain name to display competing advertisements disrupts Complainant’s business and demonstrates Respondent’s bad faith registration and use under Policy ¶ 4(b)(iii)). Here, Complainant provided screenshots of the resolving webpage for the disputed domain name, showing pages with advertisements and links to celebrities’ social media accounts hosted by Complainant’s competitors. Respondent published a blog post titled, “How does Snapchat Snapcode Work?” on February 22, 2019. See Compl. Annex. T.
Therefore, the Panel finds the disputed domain name was registered and is being used in bad faith, as Respondent is using the disputed domain name to disrupt Complainant’s business under Policy ¶ 4(b)(iii).
The Panel notes that after Complainant’s asking to cease the use of the disputed domain name, Respondent added a disclaimer to the disputed domain name's resolving website. However, the Panel finds that the mere existence of a disclaimer cannot cure such bad faith where the overall circumstances of a case point to the respondent’s bad faith. See section 3.7 of “WIPO Jurisprudential Overview 3.0.” (where the overall circumstances of a case point to the respondent’s bad faith, the mere existence of a disclaimer cannot cure such bad faith. In such cases, panels may consider the respondent’s use of a disclaimer as an admission by the respondent that users may be confused.).
Finally, Complainant argues the disputed domain name was registered and is being used in bad faith, as Respondent had actual knowledge of Complainant’s rights in the SNAPCODE mark. Here, Complainant provides evidence of a fame of its mark, as well as screenshots of the resolving webpage for the disputed domain name showing various uses of Complainant’s SNAPCODE and related marks. See Compl. Annex. T. Therefore, the Panel infers, due to the manner of use of the disputed domain name and the fame of Complainant’s mark that Respondent had actual knowledge of Complainant’s rights in the SNAPCODE mark.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <snapcode.com> domain name be TRANSFERRED from Respondent to Complainant.
Ho Hyun Nahm, Esq., Panelist
Dated: July 15, 2019
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