Snap Inc. v. sébastien baron / 1991
Claim Number: FA2112001977538
Complainant is Snap Inc. (“Complainant”), represented by Emily A. DeBow of Kilpatrick Townsend & Stockton LLP, California, USA. Respondent is sébastien baron / 1991 (“Respondent”), France.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <snap-fap.com>, registered with OVH sas.
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 December 17, 2021; the Forum received payment on December 17, 2021.
On December 20, 2021, OVH sas confirmed by e-mail to the Forum that the <snap-fap.com> domain name is registered with OVH sas and that Respondent is the current registrant of the name. OVH sas has verified that Respondent is bound by the OVH sas 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 December 28, 2021, the Forum served the Complaint and all Annexes, including a French and English Language Written Notice of the Complaint, setting a deadline of January 18, 2022 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@snap-fap.com. Also on December 28, 2021, the French and English Language 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 January 24, 2022, 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.
PRELIMINARY ISSUE: REQUIRED LANGUAGE OF COMPLAINT
Complainant has submitted that because Respondent is conversant and proficient in the English language, the proceeding should be conducted in the English. The Panel notes that the Registration Agreement relating to the domain name is written in the French language, thereby making the language of the proceedings in French. However, the Panel has a discretion to determine that in all the circumstances, the language should be a language other than the language of the Registration Agreement and that in the present case it should be English. See FilmNet Inc. v. Onetz, FA 96196 (Forum Feb. 12, 2001) (finding it appropriate to conduct the proceeding in English under Rule 11, despite Korean being designated as the required language in the registration agreement because the respondent submitted a response in English after receiving the complaint in Korean and English). In support of its application, Complainant contends Respondent’s website available at the disputed domain name uses English characters and words therein, suggesting that Respondent is at least proficient in the English language. Further, Complainant is not conversant nor proficient in the French language and it would require delay and unnecessary costs to translate the documents which would have to be done if the language of the proceeding remained French.
The Panel therefore determines that the language of the proceeding will be English and the matter may go forward on that basis.
A. Complainant
Complainant made the following contentions.
Complainant is a social media company. Complainant has rights in the SNAP mark through its registrations with various trademark agencies, including the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. 4,925,206, registered Mar. 29, 2016). See Compl. Ex. R. Respondent’s <snap-fap.com> domain name is identical or confusingly similar to Complainant’s mark as it incorporates the mark in its entirety and adds a hyphen, the generic word “fap”, and the “.com” generic top-level domain (“gTLD”).
Respondent lacks rights and legitimate interests in the <snap-fap.com> domain name. Respondent is not commonly known by the disputed domain name, nor has Complainant authorized or licensed Respondent to use its SNAP mark in the disputed domain name. Respondent does not use the disputed domain name for any bona fide offering of goods or services, nor any legitimate noncommercial or fair use, but instead hosts adult material on the disputed domain name’s resolving website.
Respondent registered and uses the <snap-fap.com> domain name in bad faith. Respondent attracts internet users for commercial gain to the disputed domain name’s resolving website, where Respondent hosts adult material. Respondent registered the disputed domain name with actual knowledge of Complainant’s rights in the SNAP mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant is a prominent United States company that is engaged in the social media industry.
2. Complainant has established it trademark rights rights in the SNAP mark through its registrations of the mark with various trademark agencies, including the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. 4,925,206, registered Mar. 29, 2016).
3. Respondent registered the <snap-fap.com> domain name on July. 8, 2020.
4. Respondent has caused the disputed domain name to resolve to a website used to host adult material.
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 claims rights in the SNAP mark through its registrations with various trademark agencies, including the USPTO (e.g. Reg. 4,925,206, registered Mar. 29, 2016). See Compl. Ex. R. Registration with the USPTO is generally sufficient in demonstrating rights in a mark under Policy ¶ 4(a)(i). See Haas Automation, Inc. v. Jim Fraser, FA 1627211 (Forum Aug. 4, 2015) (finding that Complainant’s USPTO registrations for the HAAS mark sufficiently demonstrate its rights in the mark under Policy ¶ 4(a)(i)). Therefore, as the Panel agrees, it finds Complainant has 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 SNAP mark. Complainant argues that Respondent’s <snap-fap.com> domain name is identical or confusingly similar to Complainant’s SNAP mark. Under Policy ¶ 4(a)(i), adding hyphens and generic words, along with the “.com” gTLD, is generally insufficient in differentiating a disputed domain name from the mark it incorporates. See Constellation Wines U.S., Inc. v. Tex. Int’l Prop. Assocs., FA 948436 (Forum May 16, 2007) (finding that the addition of the descriptive term “wine” to the complainant’s BLACKSTONE mark in the <blackstonewine.com> domain name was insufficient to distinguish the mark from the domain name under Policy ¶ 4(a)(i)); see also Innomed Techs., Inc. v. DRP Servs., FA 221171 (Forum Feb. 18, 2004) (finding that hyphens and top-level domains are irrelevant for purposes of the Policy). The disputed domain name incorporates the SNAP mark in its entirety and adds a hyphen, the word “fap”, and the “.com” gTLD. Therefore, as the Panel agrees, it finds Respondent’s domain name is identical or confusingly similar to Complainant’s mark under 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 SNAP mark and to use it in its domain name, adding the generic word “fap” which does not negate confusing similarity which is otherwise present, as it is in the present case;
(b) Respondent registered the <snap-fap.com> domain name on July 8, 2020;
(c) Respondent has caused the disputed domain name to resolve to a website used to host adult material;
(d) Respondent has engaged in these activities without the consent or approval of Complainant;
(e) Complainant argues that Respondent is not commonly known by the <snap-fap.com> domain name, nor has Complainant authorized or licensed Respondent to use its SNAP mark in the disputed domain name. Under Policy ¶ 4(c)(ii), where a response is lacking, relevant WHOIS Information may demonstrate that a Respondent is not commonly known by a disputed domain name. See Bittrex, Inc. v. Operi Manaha, FA 1815225 (Forum Dec. 10, 2018) (concluding that the respondent was not commonly known by the <appbittrex.com> domain name where the WHOIS information listed Respondent as “Operi Manaha,” and nothing else in the record suggested Respondent was authorized to use the BITTREX mark.). The WHOIS of record identifies Respondent as “Sebastien Baron”, and nothing in the record rebuts Complainant’s assertion that it never authorized or licensed Respondent to use its SNAP mark in the disputed domain name. See Registrar Verification Email. Therefore, as the Panel agrees, it finds Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii);
(f) Complainant argues that Respondent does not use the <snap-fap.com> domain name for any bona fide offering of goods or services, nor any legitimate noncommercial or fair use. Under Policy ¶¶ 4(c)(i) and (iii), using a disputed domain name to host adult material is generally not considered a bona fide offering of goods or services, nor a legitimate noncommercial or fair use. See Altria Group, Inc. and Altria Group Distribution Company v. xiazihong, FA1732665 (Forum July 7, 2017) (holding that “[u]se of a domain name to display adult-oriented images is not considered a bona fide offering of goods or services or a legitimate noncommercial or fair use under the Policy.”). Complainant provides screenshots of the disputed domain name’s resolving website, which features various images, media, and solicitations for online adult content and services. See Compl. Ex. V. Therefore, as the Panel agrees, it finds Respondent does not use the disputed domain name for any bona fide offering of goods or services, nor any legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and (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 does not have a right or legitimate interest 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 argues that Respondent registered and uses the <snap-fap.com> domain name for bad faith attraction for commercial gain. Under Policy ¶ 4(b)(iv), using a disputed domain name to capitalize on a mark’s goodwill and divert internet users to a domain name generally, as well as hosting advertisements on that resolving website, may be considered evidence of bad faith attraction for commercial gain. See Perot Sys. Corp. v. Perot.net, FA 95312 (Forum Aug. 29, 2000) (finding bad faith where the domain name in question is obviously connected with the complainant’s well-known marks, thus creating a likelihood of confusion strictly for commercial gain); see also 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 additionally Tumblr, Inc. v. Ailing Liu, FA1402001543807 (Forum Mar. 24, 2014) (“Bad faith use and registration exists under Policy ¶ 4(b)(iv) where a respondent uses a confusingly similar domain name to resolve to a website featuring links and advertisements unrelated to complainant’s business and respondent is likely collecting fees.”). The Panel recalls Complainant’s screenshots of the disputed domain name’s resolving website, which feature advertisements and media for adult content, all with Complainant’s mark. See Compl. Ex. V. Therefore, as the Panel agrees, it finds Respondent registered and uses the disputed domain name in bad faith under Policy ¶ 4(b)(iv).
Secondly, Complainant argues that Respondent registered and uses the <snap-fap.com> domain name in bad faith by hosting adult material on the domain name’s resolving website. Such use of a resolving website may be considered evidence of bad faith registration and use under Policy ¶ 4(a)(iii). See Molson Canada 2005 v. JEAN LUCAS / DOMCHARME GROUP, FA1412001596702 (Forum Feb. 10, 2015) (“Further, Respondent’s diversion of the domain names to adult-oriented sites is registration and use of the disputed domain names in bad faith under Policy ¶ 4(a)(iii).”). The Panel recalls Complainant’s screenshots of the disputed domain name’s resolving website, which feature advertisements and media for adult content. See Compl. Ex. V. Therefore, as the Panel agrees, it finds Respondent registered and uses the disputed domain name in bad faith under Policy ¶ 4(a)(iii).
Thirdly, Complainant argues that Respondent registered the <snap-fap.com> domain name with bad faith actual knowledge of Complainant’s rights in the BLINK mark. Under Policy ¶ 4(a)(iii), actual knowledge is generally sufficient in demonstrating bad faith, and may be established through incorporation of a mark into a domain name, as well as Respondent’s use of the disputed domain name. See G.D. Searle & Co. v. Pelham, FA 117911 (Forum Sept. 19, 2002) (“[I]t can be inferred that Respondent had knowledge of Complainant’s rights in the CELEBREX mark because Respondent is using the CELEBREX mark as a means to sell prescription drugs, including Complainant’s CELEBREX drug.”). The Panel recalls Complainant’s screenshots of the disputed domain name’s resolving website, which feature advertisements and media for adult content. See Compl. Ex. V. Therefore, as the Panel agrees, it finds Respondent registered the disputed domain name in bad faith under 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 name using the SNAP mark and in view of the conduct that Respondent has engaged in when using the 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 <snap-fap.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC
Panelist
Dated: January 25, 2022
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