Snap Inc. v. Wissam Boumjahed / Jen K
Claim Number: FA1908001858542
Complainant is Snap Inc. (“Complainant”), represented by Peter Kidd of Kilpatrick Townsend & Stockton LLP, California, USA. Respondent is Wissam Boumjahed / Jen K (“Respondent”), Morocco.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <snaphack.club> and <snapworld.xyz> 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.
The Honourable Neil Anthony Brown QC as Panelist.
Complainant submitted a Complaint to the Forum electronically on August 21, 2019; the Forum received payment on August 21, 2019.
On August 22, 2019, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <snaphack.club> and <snapworld.xyz> domain names are registered with GoDaddy.com, LLC and that Respondent is the current registrant of the names. 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 August 29, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 18, 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@snaphack.club, postmaster@snapworld.xyz. Also on August 29, 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 September 20, 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 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 are under common control because they resolve to webpages that are virtually identical and are being used for the same purpose. See Compl. Annex T. The Panel therefore finds that the domain names are commonly owned/controlled by a single Respondent who is using multiple aliases and that the proceeding may go forward in its present form.
A. Complainant
Complainant made the following contentions.
Complainant owns and distributes the enormously popular SNAPCHAT camera and messaging application and storytelling platform that allows users to share photographs, videos, and messages. Complainant has rights in the SNAP mark through its registration with the United States Patent and Trademark Office (USPTO) and other governmental agencies around the world (e.g. Reg. No. 4,345,533, registered June 4, 2013). See Compl. Annex Q. Respondent’s <snaphack.club> and <snapworld.xyz> are identical or confusingly similar to Complainant’s SNAP mark as the dominant portion of the mark is used along with the inclusion of the generic or descriptive terms “hack” and “world” in addition to the “.club” or “.xyz” generic top-level domain (“gTLDs”).
Respondent has no rights or legitimate interests in the <snaphack.club> and <snapworld.xyz> domain names as Respondent is not commonly known by the disputed domain names and Respondent has no right to own or use any domain names incorporating the SNAP mark. Respondent fails to make a bona fide offering of goods or services or legitimate noncommercial fair use of the disputed domain names. Instead, Respondent is offering and promoting an online hacking tool that purports to access and manipulate data on Complainant’s servers. The resolving websites from Respondent’s domain names further include links to advertising offers for Respondent’s commercial gain. Respondent uses the disputed domain names in furtherance of a phishing scheme by tricking users into revealing personal or confidential information.
Respondent registered and used the disputed domain names in bad faith by attempting to attract Internet users to Respondent’s domain names in furtherance of a phishing scheme. Respondent diverts Internet traffic for Respondent’s financial gain which constitutes bad faith. Respondent’s use of the disputed domain names to promote unlawful access and manipulation of Complainant’s servers disrupts Complainant’s business. Lastly, Respondent had actual or constructive knowledge in Complainant’s rights in the mark as Complainant’s SNAP mark has been widely recognized and relied upon by online consumers around the world and Respondent references Complainant’s business on the resolving webpage of the disputed domain names.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant is a United States company that owns and distributes the enormously popular SNAPCHAT camera and messaging application and storytelling platform that allows users to share photographs, videos, and messages.
2. Complainant has established its trademark rights in the SNAP mark through its registration with the United States Patent and Trademark Office (USPTO) and other governmental agencies around the world (e.g. Reg. No. 4,345,533, registered June 4, 2013).
3. Respondent registered the <snaphack.club> domain name on January 7, 2019 and the <snapworld.xyz> domain name on February 27, 2018.
4. Respondent is offering and promoting an online hacking tool that purports to access and manipulate data on Complainant’s servers. Respondent’s domain names further includes links to advertising offers for Respondent’s commercial gain. Respondent also uses the disputed domain names in furtherance of a phishing scheme by tricking users into revealing personal or confidential information by promotional offers and surveys.
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 SNAP mark through its registration with the USPTO. Registration of a mark with the USPTO or other governmental agency around the world is sufficient to prove rights in a mark per Policy ¶ 4(a)(i). See Alibaba Group Holding Limited v. YINGFENG WANG, FA 1568531 (Forum Aug. 21, 2014) (“Complainant has rights in the ALIBABA mark under the Policy through registration with trademark authorities in numerous countries around the world.”). Here, Complainant has provided the Panel with a copy of its USPTO registration for the SNAP mark (e.g. 4,345,533, registered June 4, 2013). See Compl. Annex Q. Therefore, the Panel finds that Complainant has rights in the SNAP mark per Policy ¶ 4(a)(i).
The next question that arises is whether the disputed domain name is identical or confusingly similar to Complainant’s SNAP mark. Complainant argues that Respondent’s <snaphack.club> and <snapworld.xyz> domain names are identical or confusingly similar to Complainant’s SNAP mark as the dominant portion of the mark is used along with the inclusion of the generic or descriptive terms “hack” and “world” in addition to the “.club” or “.xyz” gTLD. Addition of generic terms along with a gTLD to a fully formed or dominant portion of a mark may not distinguish a disputed domain names from a mark. See Wiluna Holdings, LLC v. Edna Sherman, FA 1652781 (Forum Jan. 22, 2016) (finding the addition of a generic term and gTLD is insufficient in distinguishing a disputed domain names from a mark under Policy ¶ 4(a)(i)). Therefore, the Panel finds that Respondent’s <snaphack.club> and <snapworld.xyz> domain names are identical or confusingly similar to Complainant’s SNAP 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 names 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 names 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 SNAP trademark and to use it in its domain names, adding the generic or descriptive terms “hack” and “world” that do not negate the confusing similarity with Complainant’s trademark;
(b) Respondent registered the<snaphack.club> on January 7, 2019 and <snapworld.xyz> on February 27, 2018;
(c) Respondent is offering and promoting an online hacking tool that purports to access and manipulate data on Complainant’s servers. Respondent’s domain names further include links to advertising offers for Respondent’s commercial gain. Respondent also uses the disputed domain names in furtherance of a phishing scheme by tricking users into revealing personal or confidential information by promotional offers and surveys;
(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 <snaphack.club> and <snapworld.xyz> domain names as Respondent is not commonly known by the disputed domain names and Respondent has no right to own or use Complainant’s mark. WHOIS information may be used to determine whether a respondent is commonly known by a disputed domain names. See Amazon Technologies, Inc. v. Suzen Khan / Nancy Jain / Andrew Stanzy, FA 1741129 (Forum Aug. 16, 2017) (finding that respondent had no rights or legitimate interests in the disputed domain names when the identifying information provided by WHOIS was unrelated to the domain names or respondent’s use of the same). Additionally, lack of authorization to use a complainant’s mark may indicate that the respondent is not commonly known by the disputed domain names. 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 names per Policy ¶ 4(c)(ii)”). The WHOIS information provided lists “Wissam Boumjahed / Jen K” as Respondent and there is no evidence in the record to suggest that Respondent was authorized to use Complainant’s SNAP mark. The Panel agrees and find that Respondent has no rights or legitimate interests in the <snaphack.club> and <snapworld.xyz> domain names per Policy ¶ 4(c)(ii);
(f) Complainant additionally argues that Respondent fails to make a bona fide offering of goods or services or legitimate noncommercial or fair use of the <snaphack.club> and <snapworld.xyz> domain names. Instead, Respondent is offering and promoting an online hacking tool that purports to access and manipulate data on Complainant’s server in hopes to gain personal information. Use of domain names that offer and promote a service that offers a hacking or otherwise illegal software is not a bona fide offering of goods or services or legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) and (iii). See Amazon Technologies, Inc. v. Suzen Khan / Nancy Jain / Andrew Stanzy, FA 1741129 (Forum Aug. 16, 2017) (finding that respondent lacked rights and legitimate interests in a domain name with which it conducted a phishing scheme to procure “Internet users’ personal information”). Additionally, using disputed domain names in furtherance of phishing is not a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and (iii). See Google Inc. v. Pritam Singh / Pandaje Technical Services Pvt Ltd., FA 1660771 (Forum Mar. 17, 2016) (agreeing that respondent has not shown any bona fide offering of goods or services or any legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii) as the respondent used the complainant’s mark and logo on a resolving website containing offers for technical support and password recovery services, and soliciting Internet users’ personal information). Here, Complainant provides screenshots of the disputed domain names’ resolving webpages which appear to offer ways to gain access to different accounts and features advertising links. See Compl. Annexes T and U. Therefore, the Panel finds that Respondent has failed to make a bona fide offering of goods or services or legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii);
(g) Complainant further argues that Respondent uses the domain names to divert internet traffic away from Complainant for Respondent’s own commercial gain. Use of domain names to divert Internet users to a respondent’s domain names by creating a likelihood of confusion that some sort of affiliation exists between complainant and respondent is not a bona fide offering of goods or services or legitimate noncommercial fair use per Policy ¶¶ 4(c)(i) or (iii). See Ripple Labs Inc. v. NGYEN NGOC PHUONG THAO, FA 1741737 (Forum Aug. 21, 2017) (“Respondent uses the [disputed] domain name to divert Internet users to Respondent’s website… confusing them into believing that some sort of affiliation exists between it and Complainant… [which] is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”). Here, Complainant has provided the Panel with screenshots of Respondent’s domain names that prominently display Complainant’s marks, creating the belief that Respondent is affiliated with Complainant. See Compl. Annex U. Therefore, the Panel finds that Respondent has failed to make a bona fide offering of goods or services or legitimate noncommercial fair use per 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 names.
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 names were registered in bad faith and have 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 names were registered and used in bad faith. That is so for the following reasons.
First, Complainant contends that Respondent registered and uses the <snaphack.club> and <snapworld.xyz> domain names in bad faith as Respondent disrupts Complainant’s business by using the disputed domain names to promote unlawful access and manipulation of Complainant’s servers that impairs Complainant’s business. Use of a disputed domain name to offer instructions on how to hack a complainant’s website can demonstrate bad faith. See PopSockets LLC v. san mao, FA 1740903 (Forum Aug. 27, 2017) (finding disruption of a complainant’s business which was not directly commercial competitive behavior was nonetheless sufficient to establish bad faith registration and use per Policy ¶ 4(b)(iii)); see also Twitter, Inc. v. Alvaro Martins / Domaina Admin / Whois Privacy Corp., FA 1703001721606 (holding that use of the disputed domain name to offer instructions on how to hack a <twitter.com> account and offer hacking services is evidence of bad faith). Complainant argues that Respondent’s promotion of hacking of Complainant’s website is disruptive to Complainant’s business. As the Panel agrees, the Panel finds Respondent registered and uses the disputed domain names in bad faith under Policy ¶ 4(b)(iii).
Secondly, Complainant contends that Respondent registered and uses the <snaphack.club> and <snapworld.xyz> domain names in bad faith by diverting Internet traffic for financial gain by displaying third-party advertising offers. Using disputed domain names to host links to advertisements, presumably for financial gain, can demonstrate bad faith under Policy ¶ 4(b)(iv). See 3M Company v. Nguyen Hoang Son / Bussiness and Marketing, FA1408001575815 (Forum Sept. 18, 2014) (finding that the respondent’s use of the disputed domain name to host sponsored advertisements for Amazon, through which the respondent presumably profited, indicated that the respondent had used the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iv)). The Panel recalls Complainant provides screenshots of the resolving webpage of the disputed domain names which display links to third-party advertisements. See Compl. Annexes T and U. Therefore, the Panel finds that Respondent registered and uses the disputed domain names in bad faith per Policy ¶ 4(b)(iv).
Thirdly, Complainant argues that Respondent registered and used the disputed domain names in bad faith by attempting to attract internet users to Respondent’s domain names to perpetrate a phishing scheme. Using a disputed domain name to engage in a phishing scheme may be evidence of bad faith registration and use per Policy ¶ 4(a)(iii). See Google Inc. v. Domain Admin / Whois Privacy Corp., FA1506001622862 (Forum Aug. 10, 2015) (finding that the respondent’s apparent use of the disputed domain name in furtherance of a ‘phishing’ scheme further established its bad faith registration and use of the disputed domain name under Policy ¶ 4(a)(iii)). Complainant provides a screenshot of the resolving webpage of the disputed domain names which appear to seek users’ personal information. See Compl. Annexes T and U. Therefore, the Panel finds that Respondent engaged in bad faith by using the domain names in furtherance of a phishing scheme per Policy ¶ 4(a)(iii).
Fourthly, Complainant argues that Respondent had actual knowledge of Complainant’s rights in the SNAP mark at the time of registration. Complainant argues that the fame of the SNAP mark and Respondent’s display of Complainant’s marks on the resolving website indicates that Respondent had actual knowledge of Complainant’s mark and rights at the time of registration. Although panels have not generally regarded constructive notice to be sufficient for a finding of bad faith, the Panel finds that Respondent had actual knowledge of Complainant's mark and rights and therefore determines that Respondent registered the disputed domain names in bad faith under Policy ¶ 4(a)(iii). See Nat'l Patent Servs. Inc. v. Bean, FA 1071869 (Forum Nov. 1, 2007) ("[C]onstructive notice does not support a finding of bad faith registration."); see also Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent "actual knowledge of Complainant's mark when registering the disputed domain name"). Use of a mark on the resolving webpage of a disputed domain name can demonstrate a respondent’s actual knowledge of a complainant’s rights in a mark. 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 names to direct internet traffic to a website which is a direct competitor of Complainant”). Therefore, the Panel concludes that Respondent had actual knowledge of Complainant’s rights in the SNAP mark, thus constituting bad faith per 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 names using the SNAP mark and in view of the conduct that Respondent has engaged in when using the disputed domain names, Respondent registered and used them 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 <snaphack.club> and <snapworld.xyz> domain names be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC
Panelist
Dated: September 21, 2019
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