Snap Inc. v. Alex Storgion
Claim Number: FA2208002007802
Complainant is Snap Inc. (“Complainant”), represented by Dennis L. Wilson of Kilpatrick Townsend & Stockton LLP, California, USA. Respondent is Alex Storgion (“Respondent”), Florida, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <snapchat.earth> (“Domain Name”), 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.
Nicholas J.T. Smith as Panelist.
Complainant submitted a Complaint to the Forum electronically on August 9, 2022; the Forum received payment on August 9, 2022.
On August 11, 2022, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <snapchat.earth> 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 August 16, 2022, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 6, 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@snapchat.earth. Also on August 16, 2022, 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 formal response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On September 12, 2022, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Nicholas J.T. Smith 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, Snap Inc., distributes the “Snapchat” camera and messaging application, available for Android and iOS users. Complainant asserts rights in the SNAPCHAT mark based upon registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 4,375,712, registered July 30, 2013) and other trademark agencies worldwide. Respondent’s <snapchat.earth> domain name is confusingly similar to Complainant’s mark because it contains the SNAPCHAT mark in its entirety, merely adding the generic top-level domain (“gTLD”) “.earth” to form the Domain Name.
Respondent does not have rights or legitimate interests in the <snapchat.earth> domain name. Respondent is not licensed or authorized to use Complainant’s SNAPCHAT mark and is not commonly known by the Domain Name. Additionally, Respondent does not use the Domain Name for any bona fide offering of goods or services or legitimate non-commercial or fair use. Instead, Respondent previously used the Domain Name to redirect internet users to a third-party website unrelated to Complainant’s services. Currently, the Domain Name resolves to a blank page. In addition, Respondent has offered to sell the domain to Complainant for a price of $2,000,000 USD.
Respondent registered and uses the <snapchat.earth> domain name in bad faith. Respondent has offered to sell the Domain Name to Complainant for an amount far in excess of the costs to register it. Additionally, Respondent previously used the Domain Name to divert internet traffic for financial gain. Currently, Respondent fails to make active use of the Domain Name. Respondent had actual knowledge of Complainant’s rights in the SNAPCHAT mark due to the longstanding use and fame of the mark at the time it registered the Domain Name.
B. Respondent
Respondent failed to submit a formal Response in this proceeding. On 17 August 2022, the Respondent sent an e-mail to the Forum stating “Take the name”.
In certain cases where the Respondent has clearly consented to the transfer of the Domain Name to the Complainant, the Panel is authorized to forgo traditional UDRP analysis. In the present case, while Respondent is clearly seeking a resolution of the proceeding, it is not certain that they are prepared to consent to the transfer of the Domain Name to the Complainant without consideration of the elements and as such it is not appropriate to issue an order for relief without being satisfied that the elements of the UDRP are satisfied.
Complainant holds trademark rights for the SNAPCHAT mark. The Domain Name is identical to Complainant’s SNAPCHAT mark. Complainant has established that Respondent lacks rights or legitimate interests in the use of the Domain Name and that Respondent registered and has used of 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”).
Complainant has rights in the SNAPCHAT mark based upon its registration with the USPTO (e.g., Reg. No. 4,375,712, registered July 30, 2013). 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 finds that the <snapchat.earth> domain name is identical to the SNAPCHAT mark as it consists of the SNAPCHAT Mark and the “.earth” gTLD. The addition of a gTLD does not distinguish the Domain Name from the SNAPCHAT mark under Policy ¶ 4(a)(i). See Dell Inc. v. Protection of Private Person / Privacy Protection, FA 1681432 (Forum Aug. 1, 2016) (“A TLD (whether a gTLD, sTLD or ccTLD) is disregarded under a Policy ¶ 4(a)(i) analysis because domain name syntax requires TLDs.”).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).
Complainant alleges that Respondent holds no rights or legitimate interests in the Domain Name. In order for Complainant to succeed under this element, it must first make a prima facie case that Respondent lacks rights and legitimate interests in the Domain Name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006) and AOL LLC v. Gerberg, FA 780200 (Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”). The Panel holds that Complainant has made out a prima facie case.
Complainant asserts that Respondent has no rights or legitimate interests in the Domain Name as Respondent is not commonly known by the Domain Name, nor has Complainant authorized Respondent to use the SNAPCHAT mark. Respondent has no relationship, affiliation, connection, endorsement or association with Complainant. WHOIS information can help support a finding that a respondent is not commonly known by the disputed domain name, especially where a privacy service has been engaged. See State Farm Mutual Automobile Insurance Company v. Dale Anderson, FA1504001613011 (Forum May 21, 2015) (concluding that because the WHOIS record lists “Dale Anderson” as the registrant of the disputed domain name, the respondent was not commonly known by the <statefarmforum.com> domain name pursuant to Policy ¶ 4(c)(ii)); see also Kohler Co. v. Privacy Service, FA1505001621573 (Forum July 2, 2015) (holding that the respondent was not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii) where “Privacy Service” was listed as the registrant of the disputed domain name). The WHOIS lists “Alex Storgion” as registrant of record. Coupled with Complainant’s unrebutted assertions as to absence of any affiliation or authorization between the parties, the Panel finds that Respondent is not commonly known by the Domain Name in accordance with Policy ¶ 4(c)(ii).
The Domain Name is inactive but prior to the commencement of this proceeding the Domain Name has been used to divert users to a website containing unrelated commercial content (namely a watersports company operating in Tennessee). The use of a domain name to divert users, for commercial gain, to a website containing unrelated content is not a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii). See Spike's Holding, LLC v. Nexperian Holding Limited, FA 1736008 (Forum July 21, 2017) (“Using a confusingly similar domain to display unrelated content can evince a lack of a bona fide offering of goods or services or legitimate noncommercial or fair use… The Panel therefore finds that Respondent’s unrelated use of the <finishnline.com> domain name evinces a lack of rights and legitimate interests under Policy ¶ 4(c)(i) & (iii).”).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
The Panel finds on the balance of probabilities that, at the time of registration of the Domain Name, February 24, 2017, Respondent had actual knowledge of the Complainant and its SNAPCHAT mark. Given the significant reputation of the SNAPCHAT mark and the fact that it is a coined word with no inherent meaning, there is no obvious explanation, nor has one been provided, for an entity to register the Domain Name other than to take advantage of Complainant’s reputation in the SNAPCHAT mark. In the absence of rights or legitimate interests of its own this demonstrates registration in bad faith under Policy ¶ 4(a)(iii).
Complainant argues that Respondent registered and uses the Domain Name in bad faith to create a likelihood of confusion with Complainant’s SNAPCHAT mark in order to attract Internet users for commercial gain. In the absence of any alternative reasonable explanation and on the balance of probability, the Panel considers that the most likely explanation for Respondent’s actions is that the Domain Name was registered as part of a scheme to trade off the goodwill of Complainant’s SNAPCHAT mark for Respondent’s commercial gain, to divert users interested in Complainant’s Snapchat service to a commercial website of the Respondent’s choosing. 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)(iii) and/or (iv). 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 Metro. Life Ins. Co. v. Bonds, FA 873143 (Forum Feb. 16, 2007) (“The Panel finds such use to constitute bad faith registration and use pursuant to Policy ¶ 4(b)(iv), because [r]espondent is taking advantage of the confusing similarity between the <metropolitanlife.us> domain name and Complainant’s METLIFE mark in order to profit from the goodwill associated with the mark.”).
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 <snapchat.earth> domain name be TRANSFERRED from Respondent to Complainant.
Nicholas J.T. Smith, Panelist
Dated: September 13, 2022
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