Snap Inc. v. Benti / Snap Lens
Claim Number: FA2009001915418
Complainant is Snap Inc. (“Complainant”), represented by Emily DeBow of Kilpatrick Townsend & Stockton LLP, California, USA. Respondent is Benti / Snap Lens (“Respondent”), United Arab Emirates.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <snaplens.biz>, registered with PDR Ltd. d/b/a PublicDomainRegistry.com.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Bruce E. Meyerson as Panelist.
Complainant submitted a Complaint to the Forum electronically on September 30, 2020; the Forum received payment on September 30, 2020.
On October 1, 2020, PDR Ltd. d/b/a PublicDomainRegistry.com confirmed by e-mail to the Forum that the <snaplens.biz> domain name is registered with PDR Ltd. d/b/a PublicDomainRegistry.com and that Respondent is the current registrant of the name. PDR Ltd. d/b/a PublicDomainRegistry.com has verified that Respondent is bound by the PDR Ltd. d/b/a PublicDomainRegistry.com registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On October 2, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 22, 2020 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@snaplens.biz. Also on October 2, 2020, 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 October 27, 2020, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Bruce E. Meyerson 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
1. Complainant owns and distributes the enormously popular SNAPCHAT camera and messaging application. Complainant has rights in both the SNAP mark and LENSES mark through Complainant’s registration of the marks with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 4345533, registered June 4, 2013 (SNAP) and Reg. No. 5594306, registered October 30, 2018 (LENSES)).
2. Respondent’s <snaplens.biz>[i] domain name is identical or confusingly similar to Complainant’s SNAP and LENSES marks as it includes the entire SNAP mark and the dominant portion of the LENSES mark with the inclusion of the gTLD “.biz.”
3. Respondent lacks rights or legitimate interests in the <snaplens.biz> domain name. There is no relationship between Complainant and Respondent, nor has Respondent been authorized by Complainant to use either the SNAP or LENSES mark.
4. Respondent has not used the domain name in connection with a bona fide offering of goods or services as Respondent’s website causes Internet users to mistakenly believe Respondent’s website is affiliated with Complainant by referencing Complainant’s Snapchat app.
5. Furthermore, Respondent is using the domain name to compete with Complainant by offering customized Snapchat Lenses and filters for sale.
6. Respondent registered and uses the <snaplens.biz> domain name in bad faith. Respondent registered the domain name primarily for the purpose of misleading users as to Complainant’s affiliation with the resolving website. Additionally, Respondent uses the disputed domain name to compete with Complainant by offering customized Snapchat Lenses and filters for sale.
7. Respondent had actual knowledge of Complainant’s rights to the SNAP and LENSES marks at registration based on Respondent’s use of the SNAP mark and Complainant’s SNAP mark being internationally recognized and well-known.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant holds trademark rights for the SNAP and LENSES marks. Respondent’s domain name is confusingly similar to Complainant’s SNAP and LENSES marks. Complainant has established that Respondent lacks rights or legitimate interests in the use of the <snaplens.biz> domain name and that Respondent registered and uses the domain name in bad faith.
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).
Respondent has rights in the SNAP mark and LENSES mark through Complainant’s registration of the marks with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 4345533, registered June 4, 2013 (SNAP) and Reg. No. 5594306, registered October 30, 2018 (LENSES)). Registration of marks with the USPTO is sufficient to demonstrate rights in the marks per Policy ¶ 4(a)(i). See DIRECTV, LLC v. The Pearline Group, FA 1818749 (Forum Dec. 30, 2018) (“Complainant’s ownership of a USPTO registration for DIRECTV demonstrate its rights in such mark for the purposes of Policy ¶ 4(a)(i).”). Therefore, Complainant has demonstrated rights in the SNAP and LENSES marks per Policy ¶ 4(a)(i).
Complainant argues Respondent’s <snaplens.biz> domain name is identical or confusingly similar to Complainant’s SNAP and LENSES marks as it includes the entire SNAP mark and the dominant portion of the LENSES mark with the inclusion of the gTLD “.biz.” The combination of one mark with an abbreviated version of another mark while adding a gTLD fails to sufficiently distinguish a domain name from a mark per Policy ¶ 4(a)(i). See Sterling Jewelers Inc. v. KAY KAY YAN, FA 1542616 (Forum Mar. 17, 2014) (finding that Respondent’s <kisskay.com> domain name is confusingly similar to Complainant’s KAY and EVERY KISS BEGINS WITH KAY marks at it constitutes a mere abbreviation.); see also Wyndham Hotels and Resorts, LLC, and Wyndham Vacation Resorts, Inc. v. James VanBuren, FA 1624028 (Forum July 10, 2015) (“The disputed domain name combines two of Complainant's registered trademarks, WYNDHAM and EXTRA VACATIONS, omitting the space and adding the ".com" top-level domain name. These alterations do not diminish the similarity between the domain name and Complainant's marks.”). Therefore, the Panel holds that the <snaplens.biz> domain name is confusingly similar to Complainant’s marks per Policy ¶ 4(a)(i).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).
Complainant alleges that Respondent holds no rights or legitimate interests in the <snaplens.biz> domain name. This allegation must be supported with a prima facie showing by Complainant under Policy ¶ 4(a)(ii). After a complainant successfully makes a prima facie case, a respondent is faced with the burden of proving it does have rights or legitimate interests in the domain name. In Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Forum Feb. 13, 2007), the panel held that when a complainant produces a prima facie case, the burden of proof then shifts to the respondent to demonstrate its rights or legitimate interests in the domain name under Policy ¶ 4(c); see also Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent. In those circumstances, the common approach is for respondents to seek to bring themselves within one of the examples of paragraph 4(c) or put forward some other reason why they can fairly be said to have a relevant right or legitimate interests in respect of the domain name in question.”). The Panel holds that Complainant has made a prima facie case.
Complainant contends Respondent lacks rights or legitimate interests in the <snaplens.biz> domain name as Respondent is not commonly known by either the SNAP or LENSES mark as Complainant has not authorized Respondent to use either mark. WHOIS information may be used to determine whether a respondent is commonly known by a 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). Where a respondent appears to be commonly known by a domain name, the Panel may still find the respondent lacks rights or legitimate interest in the domain name if the respondent lacks authorization to use the complainant’s mark and the respondent fails to provide affirmative evidence in support of this identity. See Ripple Labs Inc. v. Jessie McKoy / Ripple Reserve Fund, FA 1790949 (Forum July 9, 2018) (finding that, although the respondent listed itself as “Jessie McKoy / Ripple Reserve Fund” in the WHOIS contact information, it did not provide any affirmative evidence to support this identity; combined with the fact that the complainant claimed it did not authorize the respondent to use the mark, the respondent is not commonly known by the domain name). Additionally, lack of authorization to use a complainant’s mark may indicate that the respondent is not commonly known by a domain name. See Navistar International Corporation v. N Rahmany, FA1505001620789 (Forum June 8, 2015) (finding that the respondent was not commonly known by the disputed domain name where the complainant had never authorized the respondent to incorporate its NAVISTAR mark in any domain name registration). Here, the WHOIS information for the <snaplens.biz> domain name lists the registrant as “Snap Lens.” However, there is no other evidence to suggest that Respondent was authorized to use the either the SNAP or LENSES marks and Respondent has provided no additional evidence of its identity. Therefore, the Panel holds Respondent is not commonly known by the <snaplens.biz> domain name per Policy ¶ 4(c)(ii).
Complainant argues that Respondent fails to use the <snaplens.biz> domain name in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use as Respondent’s website causes Internet users to mistakenly believe Respondent’s website is affiliated with Complainant by referencing Complainant’s Snapchat app multiple times. Where a respondent uses a domain name incorporating the mark of a complainant to cause internet users to mistakenly believe the resolving website is affiliated with a complainant, the respondent will fail to make a bona fide offering of goods or services or a legitimate noncommercial or 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).”). Complainant provides screenshots of Respondent’s website and highlights the multiple references to Complainant’s Snapchat App. Complainant argues this indicates that Respondent is using the <snaplens.biz> domain name to confuse internet users into believing it is affiliated with Complainant. The Panel agrees and finds that Respondent fails to make a bona fide offering of goods or services or a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii).
Furthermore, Complainant argues that Respondent is using the <snaplens.biz> domain name to compete with Complainant by offering customized Snapchat Lenses and filters for sale. Where a respondent uses a confusingly similar domain name to compete with a complainant’s own products and services, the respondent fails to make a bona fide offering of goods or services or a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii). See General Motors LLC v. MIKE LEE, FA 1659965 (Forum Mar. 10, 2016) (finding that “use of a domain to sell products and/or services that compete directly with a complainant’s business does not constitute 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 argues Respondent’s offering of customized Snapchat Lenses and filters directly competes with Complainant. The Panel agrees and holds that Respondent fails to make a bona fide offering of goods or services or a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant contends Respondent registered and uses the <snaplens.biz> domain name in bad faith because Respondent uses the domain name to purposely mislead internet users as to Complainant’s affiliation with the resolving website. Registration of a domain name containing the mark of another with the intent to confuse internet users about the holder of the mark’s affiliation with the resolving website shows bad faith registration and use per Policy ¶ 4(b)(iii). See Am. Univ. v. Cook, FA 208629 (Forum Dec. 22, 2003) (“Registration and use of a domain name that incorporates another's mark with the intent to deceive Internet users in regard to the source or affiliation of the domain name is evidence of bad faith.”). Complainant provides screenshots of the resolving webpage of the <snaplens.biz> domain name in which Respondent makes multiple references to Complainant’s Snapchat app. Complainant argues this indicates that Respondent is using the <snaplens.biz> domain name to confuse internet users into believing it was affiliated with Complainant. The Panel agrees and finds Respondent registered and uses the <snaplens.biz> domain name in bad faith per Policy ¶ 4(b)(iii).
Furthermore, Complainant contends Respondent registered and uses the <snaplens.biz> domain name in bad faith because Respondent’s website advertises services competing with Complainant. Registration of a confusingly similar domain name with the intent to disrupt the business of a complainant by selling competing products and services to customers shows bad faith registration and use per Policy ¶ 4(b)(iii) and 4(b)(iv)). See ZIH Corp. v. ou yang lin q, FA1761403 (Forum Dec. 29, 2017) (Finding bad faith where Respondent used the infringing domain name to disrupt Complainant’s business by diverting Internet users from Complainant’s website to Respondent’s website where it offered competing printer products); see also Asbury Auto. Group, Inc. v. Tex. Int’l Prop. Assocs., FA 958542 (Forum May 29, 2007) (finding that the respondent’s use of the disputed domain name to advertise car dealerships that competed with the complainant’s business would likely lead to confusion among Internet users as to the sponsorship or affiliation of those competing dealerships, and was therefore evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv)). The record shows that Respondent is offering customized Snapchat Lenses and filters that directly compete with Complainant. Thus, the Panel holds that Respondent registered and uses the <snaplens.biz> domain name in bad faith per Policy ¶¶ 4(b)(iii) and (iv).
Finally, Complainant argues Respondent registered the <snaplens.biz> domain name with actual knowledge of Complainant’s rights to the SNAP and LENSES marks based on Respondent’s use of the SNAP mark and Complainant’s SNAP mark being internationally recognized and well-known. Using a famous mark to divert Internet traffic to a domain name incorporating that mark can demonstrate actual knowledge of a complainant’s rights in a mark and show bad faith per Policy ¶ 4(a)(iii). See iFinex Inc. v. xu shuaiwei, FA 1760249 (Forum Jan. 1, 2018) (“Respondent’s prior knowledge is evident from the notoriety of Complainant’s BITFINEX trademark as well as from Respondent’s use of its trademark laden domain name to direct internet traffic to a website which is a direct competitor of Complainant”). Complainant provides numerous articles and Complainant’s financial statements to evidence the famous nature of Complainant’s mark. Complainant argues that Respondent’s use of Complainant’s famous SNAP mark demonstrates Respondent’s actual knowledge of Complainant’s rights in the mark prior to registering the <snaplens.biz> domain name. Because the Panel agrees, the Panel holds that Respondent registered the domain name in bad faith per Policy ¶ 4(a)(iii).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <snaplens.biz> domain name be TRANSFERRED from Respondent to Complainant.
Bruce E. Meyerson, Panelist
Dated: November 4, 2020
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