Snap Inc. v. Akira Tanaka / Tanaka Akira
Claim Number: FA2203001988801
Complainant is Snap Inc. (“Complainant”), represented by Dennis L. Wilson of Kilpatrick Townsend & Stockton LLP, California, USA. Respondent is Akira Tanaka / Tanaka Akira (“Respondent”), Japan.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <snapchatforpcdownload.com>, registered with GMO Internet, Inc. d/b/a Onamae.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.
The Honorable Neil Anthony Brown QC as Panelist.
Complainant submitted a Complaint to the Forum electronically on March 17, 2022; the Forum received payment on March 17, 2022.
On March 21, 2022, GMO Internet, Inc. d/b/a Onamae.com confirmed by e-mail to the Forum that the <snapchatforpcdownload.com> domain name is registered with GMO Internet, Inc. d/b/a Onamae.com and that Respondent is the current registrant of the name. GMO Internet, Inc. d/b/a Onamae.com has verified that Respondent is bound by the GMO Internet, Inc. d/b/a Onamae.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 March 23, 2022, the Forum served the Complaint and all Annexes, including a Japanese and English language Written Notice of the Complaint, setting a deadline of April 12, 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@snapchatforpcdownload.com. Also on March 23, 2022, the Japanese 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 April 18, 2022, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed The Honorable 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: LANGUAGE OF PROCEEDING
The Panel notes that the Registration Agreement relating to the disputed domain name is written in the Japanese language, thereby making the language of the proceedings Japanese.
However, the Panel has the discretion under UDRP Rule 11(a) to determine that another language is a more appropriate language in which to conduct the proceeding, taking into consideration the particular circumstances of the administrative proceeding. 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).
Complainant has submitted that because Respondent is conversant and proficient in English, the proceeding should be conducted in English. Complainant contends and has verified that the disputed domain name has been redirected to the website at <press-crew.com/adarutosaito/xcity> and that this website, although mainly populated in the Japanese language, uses several words in English that must have been chosen by those responsible for the site and which also shows that the site and hence the disputed domain name are aimed at English speaking users as well as Japanese users. Those words include X City, enter, Tokyo hot, U next, Peeping WIKI, H Anime, H Next, Ura Lesbian, DX Live and debut. This evidence shows that Respondent is proficient in using the English language to attract business. It would be naive in the extreme to think that those responsible for the domain name and the site to which it resolves were anything other than an enterprise created by those with knowledge of the English language and aimed at potential customers interested in pornography who also had facility with the English language. The very words used in the domain name show that this is a domain name prepared and used by persons who have a facility with that language.
Further, even if the proceeding were conducted in Japanese, Complainant is not conversant nor proficient in the Japanese language and it would therefore require delay and unnecessary costs to translate the documents into English.
Accordingly, pursuant to UDRP Rule 11(a), the Panel finds that persuasive evidence has been adduced by Complainant to show that the Respondent is conversant and proficient in the English language. After considering that evidence and all the circumstance of the present case, the Panel decides that the proceeding should be conducted in the English language.
A. Complainant
Complainant made the following contentions.
Complainant is a digital media technology company. Complainant submits that it has rights in the SNAPCHAT mark through its registrations of the mark with various trademark agencies throughout the world (e.g. Antigua and Barbados Intellectual Property Office (“ABIPCO”) Reg. 8221, registered Jan. 12, 2015; Intellectual Property Australia (“IPA”) Reg. 1,558,022, registered May 20, 2013). See Compl. Ex. Q. Respondent’s <snapchatforpcdownload.com> domain name is identical or confusingly similar to Complainant’s mark as it incorporates the mark in its entirety and adds the words “for pc download” along with the “.com” generic top-level domain (“gTLD”).
Respondent lacks rights and legitimate interests in the <snapchatforpcdownload.com> domain name. Respondent is not commonly known by the disputed domain name, nor has Complainant authorized or licensed Respondent to use its SNAPCHAT mark in the disputed domain name. Respondent does not use the disputed domain name for any bona fide offering of goods or services, nor a legitimate noncommercial or fair use, but instead hosts adult material on the disputed domain name’s resolving website.
Respondent registered and uses the <snapchatforpcdownload.com> domain name in bad faith. Respondent hosts adult material on the disputed domain name’s resolving website. Respondent registered the disputed domain name with actual knowledge of Complainant’s rights in the SNAPCHAT 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 digital media technology industry and the provision of related goods and services.
2. Complainant has established its rights in the SNAPCHAT trademark through its registration of the mark with various trademark agencies throughout the world (e.g. Antigua and Barbados Intellectual Property Office (“ABIPCO”) Reg. 8221, registered Jan. 12, 2015; Intellectual Property Australia (“IPA”) Reg. 1,558,022, registered May 20, 2013).
3. Respondent registered the <snapchatforpcdownload.com> domain name on April 15, 2021.
4. Respondent has used the disputed domain name to host adult material on a website to which the disputed domain name resolves, showing that Respondent does not have a right or legitimate interest in the domain name and that it has been registered and used 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”).
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 through its registration of the mark with various trademark agencies throughout the world (e.g. ABIPCO Reg. 8221, registered Jan. 12, 2015; IPA Reg. 1,558,022, registered May 20, 2013).The evidence shows that such trademarks for SNAPCHAT have been registered by Complainant in many jurisdictions including the United States and the European Union and that they were registered many years prior to the date on which the disputed domain name was registrered. See Compl. Ex. Q. Registration with multiple trademark agencies is generally sufficient in demonstrating rights in a mark under Policy ¶ 4(a)(i). See Red Hat, Inc. v. Muhammad Shahzad, FA 1787738 (Forum June 19, 2018) (“Registration of a mark with multiple trademark agencies is sufficient to demonstrate rights to a mark per Policy ¶ 4(a)(i).”). Therefore, the Panel finds that Complainant has established its rights in the SNAPCHAT 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 argues that Respondent’s <snapchatforpcdownload.com> domain name is confusingly similar to Complainant’s SNAPCHAT mark as it incorporates the mark in its entirety and adds the words “for pc download” and the “.com” gTLD. Adding generic and descriptive words along with the “.com” gTLD is generally insufficient in differentiating a disputed domain name from the mark it incorporates under Policy ¶ 4(a)(i). See MTD Products Inc. v. J Randall Shank, FA 1783050 (Forum June 27, 2018) (“The disputed domain name is confusingly similar to Complainant’s mark as it wholly incorporates the CUB CADET mark before appending the generic terms ‘genuine’ and ‘parts’ as well as the ‘.com’ gTLD.”). In the present case, the domain name can mean only that it deals with the legitimate downloading of SNAPCHAT products for personal computers, which is clearly false. Therefore, the Panel finds that Respondent’s domain name is 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”).
(a) Respondent has chosen to take Complainant’s SNAPCHAT mark and to use it in its domain name adding only the generic words “for pc download” , which does not negate the confusing similarity that exists between the domain name and the SNAPCHAT mark;
(b) Respondent registered the domain name on April 15, 2021;
(c) Respondent has used the disputed domain name to host adult material on a website to which the disputed domain name resolves;
(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 <snapchatforpcdownload.com> domain name, nor has Complainant authorized or licensed Respondent to use its SNAPCHAT 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, while a lack of evidence demonstrating otherwise may affirm a Complainant’s assertion that it never authorized or licensed Respondent to use its mark in the disputed domain name. See Deutsche Lufthansa AG v. Mohamed elkassaby, FA 1801815 (Forum Sept. 17, 2018) (“The WHOIS lists “Mohamed elkassaby” as registrant of record. Coupled with Complainant’s unrebutted assertions as to absence of any affiliation between the parties, the Panel finds that Respondent is not commonly known by the Domain Name in accordance with Policy ¶ 4(c)(ii).”). The WHOIS of record identifies Respondent as “Akira Tanaka”, and nothing in the record rebuts Complainant’s submission that it never authorized or licensed Respondent to use its SNAPCHAT 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 <snapchatforpcdownload.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 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.”). Complainant provides screenshots of the website to which the disputed domain name resolves, which features adult images. See Compl. Ex. R. 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 <snapchatforpcdownload.com> domain name in bad faith because hosting adult material on a disputed domain name’s resolving website is demonstrative of bad faith registration and use under Policy ¶ 4(b)(iv). See Google Inc. v. Bassano, FA 232958 (Forum Mar. 8, 2004) (holding that the respondent’s use of the <googlesex.info> domain name to intentionally attract Internet users to a website featuring adult-oriented content constituted bad faith registration and use under Policy ¶ 4(b)(iv)). The Panel notes Complainant’s screenshots of the website to which the disputed domain name resolves, which feature adult images and text. They show that Respondent is using the SNAPCHAT trademark to promote Respondent’s own interests by soliciting business for a pornography site. See Compl. Ex. R. Therefore, the Panel finds Respondent registered and uses the disputed domain name in bad faith under Policy ¶ 4(b)(iv).
Secondly, Complainant argues that Respondent registered the <snapchatforpcdownload.com> domain name with bad faith actual knowledge of Complainant’s rights in the SNAPCHAT mark. Under Policy ¶ 4(a)(iii), actual knowledge is generally sufficient in demonstrating bad faith, and may be demonstrated through Complainant’s incorporation of a mark into the disputed domain name. See AutoZone Parts, Inc. v. Ken Belden, FA 1815011 (Forum Dec. 24, 2018) (“Complainant contends that Respondent’s knowledge can be presumed in light of the substantial fame and notoriety of the AUTOZONE mark, as well as the fact that Complainant is the largest retailer in the field. The Panel here finds that Respondent did have actual knowledge of Complainant’s mark, demonstrating bad faith registration and use under Policy ¶ 4(a)(iii).”). The Panel notes that the SNAPCHAT mark is fully incorporated into the disputed domain name. Therefore, the Panel finds Respondent registered the disputed domain name with actual knowledge of Complainant’s rights in the mark under Policy ¶ 4(a)(iii).
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 <snapchatforpcdownload.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Neil Anthony Brown QC
Panelist
Dated: April 19, 2022
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