Snap Inc. v. Kester Pettitt
Claim Number: FA1909001864819
Complainant is Snap Inc. (“Complainant”), represented by David Caplan of Kilpatrick Townsend & Stockton LLP, California, USA. Respondent is Kester Pettitt (“Respondent”), United Kingdom.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <premiumsnapchat.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.
The Honourable Neil Anthony Brown QC as Panelist.
Complainant submitted a Complaint to the Forum electronically on September 30, 2019; the Forum received payment on September 30, 2019.
On October 1, 2019, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <premiumsnapchat.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 October 7, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 28, 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@premiumsnapchat.com. Also on October 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.
A timely Response was received and determined to be complete on October 7, 2019.
On October 10, 2019, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed The Honourable Neil Anthony Brown QC as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant made the following contentions.
Complainant owns and distributes the enormously popular SNAPCHAT camera and messaging application and storytelling platform. Complainant has rights in the SNAPCHAT mark through its trademark registrations around the world, including with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 4,375,712, registered Jul. 30, 2013). See Compl. Annex P. Respondent’s <premiumsnapchat.com> domain name is confusingly similar to Complainant’s SNAPCHAT mark as it incorporates the mark in its entirety, along with the descriptive term “premium” and a “.com” generic top-level domain (“gTLD”).
Respondent has no rights or legitimate interests in the <premiumsnapchat.com> domain name. Respondent is not authorized to use Complainant’s SNAPCHAT mark nor commonly known by the disputed domain name. Additionally, Respondent fails to use the disputed domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. Rather, Respondent initially used the disputed domain name to feature adult-oriented content for commercial gain. Currently, Respondent fails to actively use the disputed domain name. Respondent also attempted to sell the disputed domain name to Complainant and the general public for more than out-of-pocket costs.
Respondent registered and uses the <premiumsnapchat.com> domain name in bad faith. Respondent attempted to sell the disputed domain name to Complainant and the public for more than out-of-pocket costs. Respondent also attempts to attract, for commercial gain, users to the disputed domain name where it displayed adult content. Finally, Respondent had actual knowledge of Complainant rights in the SNAPCHAT mark prior to registering the disputed domain name.
B. Respondent
Respondent made the following contentions.
The <premiumsnapchat.com> domain name was originally registered on February 26, 2015. See Amend. Compl. Annex A. Respondent purchased the <premiumsnapchat.com> domain name on August 11, 2019 through the GoDaddy marketplace for $470.00. Respondent often buys domain names in bulk and failed to realize that the disputed domain name may be infringing on a third-party’s intellectual property.
Respondent did not use the <premiumsnapchat.com> domain name to host any content, adult or otherwise, and is not the person that demanded compensation from Complainant. All of Complainant’s claims are in relation to the previous owner of the dispute domain name. Respondent is willing to transfer the disputed domain name to Complainant.
1. Complainant is a United States company that owns and distributes the enormously popular SNAPCHAT camera and messaging application and storytelling platform.
2. Complainant has established its trademark rights in the SNAPCHAT mark through its registrations around the world, including with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 4,375,712, registered Jul. 30, 2013).
3. The <premiumsnapchat.com> domain name was registered on February 26, 2015 and Respondent acquired it on August 11, 2019.
4. The disputed domain name was previously used to feature adult-oriented content for commercial gain. Currently, Respondent fails to use the disputed domain name actively. Respondent has also attempted to sell the disputed domain name to Complainant and the general public for more than out-of-pocket costs.
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.
The first question that arises is whether Complainant has rights in a trademark or service mark on which it may rely. Complainant submits that it has rights in the SNAPCHAT mark based upon registration of the mark with the USPTO (e.g., Reg. No. 4,375,712, registered Jul. 30, 2013). See Compl. Annex P. Registration of a mark with the USPTO is sufficient to establish rights in that mark. See Home Depot Product Authority, LLC v. Samy Yosef / Express Transporting, FA 1738124 (Forum July 28, 2017) (finding that registration with the USPTO was sufficient to establish the complainant’s rights in the HOME DEPOT mark). The Panel therefore holds that Complainant’s registration of the SNAPCHAT mark with the USPTO is sufficient to establish rights in the mark under Policy ¶ 4(a)(i).
The next question that arises is whether the disputed domain name is identical or confusingly similar to Complainant’s SNAPCHAT mark. Complainant next argues Respondent’s <premiumsnapchat.com> domain name is confusingly similar to the SNAPCHAT mark, as the name incorporates the mark in its entirety, along with a descriptive term “premium” and a “.com” gTLD. Such changes are not sufficient to distinguish a domain name from an incorporated mark in a Policy ¶ 4(a)(i) analysis. See The Toronto-Dominion Bank v. George Whitehead, FA 1784412 (Forum June 11, 2018) (“[S]light differences between domain names and registered marks, such as the addition of words that describe the goods or services in connection with the mark and gTLDs, do not distinguish the domain name from the mark incorporated therein per Policy ¶ 4(a)(i).”). The Panel therefore determines the <premiumsnapchat.com> domain name is confusingly similar to the SNAPCHAT mark per Policy ¶ 4(a)(i).
Complainant has thus made out the first of the three elements that it must establish.
It is now well established that Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), then the burden shifts to Respondent to show it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests”).
The Panel finds that Complainant has made out a prima facie case that arises from the following considerations:
(a) Respondent has chosen to take Complainant’s SNAPCHAT trademark and to use it in its domain name, incorporating the mark in its entirety, along with the descriptive word “premium” that does not negate the confusing similarity with Complainant’s trademark;
(b) The <premiumsnapchat.com> domain name was originally registered on February 26, 2015 and the registrar has verified that Respondent is the current domain name holder, having acquired it on August 11, 2019;
(c) The disputed domain name was previously used to feature adult-oriented content for commercial gain. Currently, Respondent fails to use the disputed domain name actively. Respondent has also attempted to sell the disputed domain name to Complainant and the general public for more than out-of-pocket costs;
(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 <premiumsnapchat.com> domain name, as Respondent is not commonly known by the disputed domain name, nor has Complainant authorized Respondent to use the SNAPCHAT mark in any way. Even where there is a response, WHOIS information can support a finding that the respondent is not commonly known by a disputed domain name. See Philip Morris USA Inc. v. Usama Ramzan, FA 1737750 (Forum July 26, 2017) (“We begin by noting that Complainant contends, and Respondent does not deny, that Respondent has not been commonly known by the <marlborocoupon.us> domain name, and that Complainant has not authorized Respondent to use the MARLBORO mark in any way. Moreover, the pertinent WHOIS information identifies the registrant of the domain name only as “Usama Ramzan,” which does not resemble the domain name. On this record, we conclude that Respondent has not been commonly known by the challenged domain name so as to have acquired rights to or legitimate interests in it within the purview of Policy ¶ 4(c)(ii).”). The WHOIS information of record identifies the registrant of the at-issue domain name as “Kester Pettitt,” and no information on the record indicates Respondent was authorized to register a domain name incorporating Complainant’s mark. The Panel therefore finds under Policy ¶ 4(c)(ii) that Respondent has not been commonly known by the <premiumsnapchat.com> domain name;
(f) Complainant argues Respondent’s lack of rights or legitimate interests in the <premiumsnapchat.com> domain name is demonstrated by its failure to use the name to make a bona fide offering of goods or services or for a legitimate noncommercial or fair use. Complainant contends Respondent initially used the domain name to redirect users to a website that featured adult content, presumably for commercial gain. Use of a disputed domain name that features adult-oriented content in connection with a complainant’s mark may not amount to a bona fide offering of goods or services or for a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii). See Karen Koehler v. Hiroshi Ishiura/ Lifestyle Design Inc., FA1730673 (Forum June 1, 2017) (holding that “Respondent is not using the disputed domain name for any bona fide offering of goods or services or a legitimate non-commercial fair use because Respondent uses the domain name to host a pornographic website.”); see also 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)). Complainant claims that the disputed domain name initially redirected users to the <fancentro.com> platform, a website that lets users monetize social media accounts and that the domain name’s resolving website features adult-oriented content. See Compl. Annexes R and S. Therefore, the Panel finds that Respondent fails to use the disputed domain name for a bona fide offering of goods or services or for a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii);
(g) Complainant also submits Respondent’s inactive holding of the <premiumsnapchat.com> domain name indicates it does not have rights or legitimate interests in the name. Inactive holding of a domain name does not demonstrate rights or legitimate interests in the name per Policy ¶¶ 4(c)(i) or (iii). See George Weston Bakeries Inc. v. McBroom, FA 933276 (Forum Apr. 25, 2007) (finding that the respondent had no rights or legitimate interests in a domain name under either Policy ¶ 4(c)(i) or Policy ¶ 4(c)(iii) where it failed to make any active use of the domain name). Complainant contends Respondent’s domain name does not resolve to an active webpage as of July 25, 2019. See Compl. Annex V. The Panel therefore finds Respondent does not have rights or legitimate interests in the domain name per Policy ¶¶ 4(c)(i) or (iii);
(h) Complainant submits Respondent’s attempts to offer the <premiumsnapchat.com> domain name for sale further indicates it does not have rights or legitimate interests in the domain name. A respondent’s offer to sell a domain name to the general public can indicate the respondent lacks rights and legitimate interests in the name per 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). Complainant provides correspondence with Respondent in which Respondent first demanded $5,000.00 for the domain name and then increased the demand to $10,000.00. See Compl. Annex T. Complainant also provides screenshots indicating the at-issue domain name resolves to a website which purports to offer up the name for sale for $300.00 with a disclaimer stating “SNAP INC DOES NOT sponsor or endorse premiumsnapcat.com. WE ARE NOT SNAPCHAT.” See Compl. Annex U. The Panel therefore finds Respondent lacks rights and legitimate interests in the <premiumsnapchat.com> domain name per Policy ¶ 4(a)(ii).
All of these matters go to make out the prima facie case against Respondent.
It is therefore necessary to consider what Respondent has said in reply to rebut the prima facie case against it.
Respondent’s arguments are set out above and it is not necessary to repeat them here.
The Panel has naturally given careful consideration to everything that Respondent has said. However, it is not persuaded on the evidence that Respondent has rebutted the prima facie case against it. Moreover, the essence of Complainant’s case on this issue still stands, despite the submissions of Respondent.
Accordingly, the Panel finds that, whatever any other party may have done, Respondent itself has no rights or legitimate interests in the disputed domain name.
Complainant has thus made out the second of the three elements that it must establish.
It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain name was registered in bad faith and has been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.
Having regard to those principles, the Panel finds that the disputed domain name was registered and used in bad faith. That is so for the following reasons.
First, Complainant contends Respondent’s only purpose in registering the <premiumsnapchat.com> domain name was to gain commercially from the sale of the same, indicating its registration and use of the domain name in bad faith. A general offer to sell a domain name can be evidence the respondent intended to make such an offer at the time it registered the name, supporting a finding of bad faith per Policy ¶ 4(b)(i). See Citigroup Inc. v. Kevin Goodman, FA1506001623939 (Forum July 11, 2015) (holding that the evidence showed that the respondent registered the disputed domain name primarily for the purpose of transferring it for a profit and demonstrates the respondent’s bad faith registration and use of the disputed domain name pursuant to Policy ¶ 4(b)(i).); see also Pocatello Idaho Auditorium Dist. v. CES Mktg. Group, Inc., FA 103186 (Forum Feb. 21, 2002) ("[w]hat makes an offer to sell a domain [name] bad faith is some accompanying evidence that the domain name was registered because of its value that is in some way dependent on the trademark of another, and then an offer to sell it to the trademark owner or a competitor of the trademark owner"). Complainant contends that given its longstanding trademark registration of the SNAPCHAT mark, and Respondent’s current use of the domain name to offer to sell the name (see Compl. Annexes T and U), it is evident Respondent’s purpose for registering and using the domain name was and is to sell the name for a profit. The Panel agrees and finds Respondent to have registered and used the <premiumsnapchat.com> domain name in bad faith per Policy ¶ 4(b)(i).
Secondly, Complainant contends Respondent’s intentional use of the <premiumsnapchat.com> domain name to create a likelihood of confusion with Complainant’s mark in order to attract Internet users for commercial gain, namely to feature adult content, is evidence of Respondent’s bad faith. Use of a confusingly similar domain name for commercial purposes unrelated to a complainant’s business can indicate bad faith registration and use per Policy ¶¶ 4(b)(iv). See Allianz of Am. Corp. v. Bond, FA 680624 (Forum June 2, 2006) (finding bad faith registration and use under Policy ¶ 4(b)(iv) where the respondent was diverting Internet users searching for the complainant to its own website and likely profiting); see also H-D U.S.A., LLC v. Nobuyoshi Tanaka / Personal, FA1312001534740 (Forum Jan. 31, 2014) (“Therefore, the Panel concludes that Respondent is acting in bad faith because Respondent is using the <harley-davidsonsales.com> domain name to tarnish Complainant’s HARLEY-DAVIDSON mark, as the Panel also finds that the content displayed on the resolving website constitutes adult-oriented content.”). The Panel recalls Complainant’s contention that the <premiumsnapchat.com> domain name initially resolved to a website that featured adult-oriented content, a commercial use unrelated to Complainant’s business. See Compl. Annexes R and S. The Panel therefore finds that the evidence indicates Respondent registered and used the at-issue domain name in bad faith per Policy ¶ 4(b)(iv).
Thirdly, Complainant contends that in light of the fame and notoriety of Complainant's SNAPCHAT mark, it is inconceivable that Respondent could have registered the <premiumsnapchat.com> domain name without actual knowledge of Complainant's rights in the mark. The Panel here notes that arguments of bad faith based on constructive notice are unlikely to succeed, however, because prior UDRP decisions generally decline to find bad faith as a result of constructive knowledge. See The Way Int'l, Inc. v. Diamond Peters, D2003-0264 (WIPO May 29, 2003) ("As to constructive knowledge, the Panel takes the view that there is no place for such a concept under the Policy."). The Panel agrees with Complainant, however, that Respondent had actual knowledge of Complainant's rights in the mark prior to registering the disputed domain name and finds that actual knowledge is adequate evidence of bad faith under Policy ¶ 4(a)(iii). See Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum Feb. 6, 2014) (“The Panel notes that although the UDRP does not recognize ‘constructive notice’ as sufficient grounds for finding Policy ¶ 4(a)(iii) bad faith, the Panel here finds actual knowledge through the name used for the domain and the use made of it.”). The Panel agrees and finds Respondent had actual knowledge of Complainant’s rights in the mark and thus registered the name in bad faith.
Finally, in addition and having regard to the totality of the evidence, the Panel finds that, in view of Respondent’s registration of the disputed domain name using the SNAPCHAT mark and in view of the conduct that Respondent has engaged in when using the disputed domain name, Respondent registered and used it in bad faith within the generally accepted meaning of that expression.
Complainant has thus made out the third of the three elements that it must establish.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <premiumsnapchat.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC
Panelist
Dated: October 11, 2019
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