Snap, Inc. v. View Bird
Claim Number: FA1709001749823
Complainant is Snap, Inc. (“Complainant”), represented by Peter E. Kidd of Kilpatrick Townsend & Stockton LLP, California, USA. Respondent is View Bird (“Respondent”), Switzerland.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <hiddensnapchat.org>, registered with EuroDNS S.A.
The undersigned certifies that she acted independently and impartially and that to the best of her knowledge she has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits here as Panelist.
Complainant submitted a Complaint to the Forum electronically September 19, 2017; the Forum received payment September 19, 2017.
On September 21, 2017, EuroDNS S.A. confirmed by e-mail to the Forum that the <hiddensnapchat.org> domain name is registered with EuroDNS S.A. and that Respondent is the current registrant of the name. EuroDNS S.A. verified that Respondent is bound by the EuroDNS S.A. registration agreement and thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On September 22, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 12, 2017, 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@hiddensnapchat.org. Also on September 22, 2017, 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 17, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Hon. Carolyn Marks Johnson to sit as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum 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’s Contentions in this Proceeding:
Complainant, Snap, Inc., is a designer and distributor of the SNAPCHAT messaging application. In connection with this business, Complainant uses the SNAPCHAT mark to promote its goods and services. Complainant has 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). Respondent’s <hiddensnapchat.org> is confusingly similar as it adds the generic term “hidden” and the generic top-level-domain (“gTLD”) “.org” to Complainant’s wholly incorporated mark.
Respondent lacks rights and legitimate interests in the disputed domain name. Respondent is not commonly known by the disputed domain name. Complainant has not authorized Respondent to use the SNAPCHAT marks. Further, Respondent failed to use <hiddensnapchat.org> in connection with a bona fide offering of goods or services or for a legitimate noncommercial or fair use. Instead, Respondent arranged the resolving website to display and promote pornography. See Compl., Attached Annex P.
Respondent registered and used <hiddensnapchat.org> in bad faith. Respondent’s arrangement of adult-oriented material represents bad faith attraction for commercial gain under Policy ¶ 4(b)(iv). Respondent also clearly registered and used <hiddensnapchat.org> with actual knowledge of Complainant and its SNAPCHAT marks, as evidenced by resolving content referencing the SNAPCHAT app and Ghost Logo, coupled with the fame associated with Complainant and its mark.
B. Respondent’s Contentions in this Proceeding:
Respondent did not submit a Response. The Panel notes that Respondent registered the <hiddensnapchat.org> domain name April 15, 2016.
Complainant established rights and legitimate interests in the protected mark contained in its entirety within the disputed domain name.
Respondent has no such rights or legitimate interests in the mark or the
disputed domain name.
Respondent registered a disputed domain name containing in its entirety Complainant protected mark and the domain name is confusingly similar to Complainant’s protected mark.
Respondent registered and used the disputed domain name containing in its entirety the Complainant’s protected mark 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 Complainant to 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.
Given 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 will draw such inferences as the Panel considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
Identical or Confusingly Similar:
Complainant has rights in the SNAPCHAT mark based upon registration with the USPTO (e.g., Reg. No. 4,375,712, registered July 30, 2013). See Compl., Attached Annex N. Registrations of a mark with the USPTO confer rights. See T-Mobile USA, Inc. dba MetroPCS v. Ryan G Foo / PPA Media Services, FA 1627542 (Forum Aug. 9, 2015) (finding that Complainant has rights in the METROPCS mark through its registration with the United States Patent and Trademark Office). While Complainant submitted evidence of a USPTO registration for the SNAPCHAT mark, the Panel also finds rights under Policy ¶ 4(a)(i).
Next, Complainant asserts that Respondent’s <hiddensnapchat.org> is confusingly similar as it adds the generic term “hidden” and the gTLD “.org” to Complainant’s wholly incorporated mark. Adding a generic or descriptive term and a gTLD does not distinguish a confusingly similar domain name. See AOL LLC v. AIM Profiles, FA 964479 (Forum May 20, 2007) (finding that the respondent failed to differentiate the <aimprofiles.com> domain name from the complainant’s AIM mark by merely adding the term “profiles”); see also ADESA, Inc. v. James Louis, FA 1736761 (Forum July 19, 2017) (“[T]he Panel finds that Respondent’s <adesa.org> domain name is identical to Complainant’s ADESA mark.”). The Panel may find the changes in the instant case similar to those in the foregoing case precedent, and therefore may conclude <hiddensnapchat.org> is confusingly similar to the SNAPCHAT mark under Policy ¶ 4(a)(i).
Respondent makes no contentions relative to Policy ¶ 4(a)(i).
The Panel finds that Respondent registered a disputed domain name containing Complainant’s protected mark in its entirety; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(i).
Rights or Legitimate Interests:
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), and then the burden of proof shifts to Respondent to show it does have such rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also 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.”).
Complainant asserts that Respondent lacks rights and legitimate interests in the disputed domain name. Specifically, Complainant contends Respondent is not commonly known by the disputed domain name. Complainant also alleges it has not authorized Respondent to use the SNAPCHAT marks. Where there is no response, WHOIS information is considered dispositive of Policy ¶ 4(c)(ii). See Chevron Intellectual Property LLC v. Fred Wallace, FA 1626022 (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); see also Navistar International Corporation v. N Rahmany, FA 1620789 (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). The WHOIS lists “View Bird” as registrant. Accordingly, the Panel agrees that Respondent is not commonly known by the domain name under Policy ¶ 4(c)(ii).
Further, Complainant claims Respondent failed to use <hiddensnapchat.org> in connection with a bona fide offering of goods or services or for a legitimate noncommercial or fair use. Instead, Respondent arranged the resolving website to display and promote pornography. See Compl., Attached Annex P. Displays of adult-oriented material does not support findings of any rights or legitimate interests. 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.”). The Panel agrees that the resolving website clearly displays adult-oriented content or pornography, and therefore does not constitute a bona fide offering of goods or services or any legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii).
Respondent makes no contentions relative to Policy ¶ 4(a)(ii).
The Panel finds that Respondent has no rights to or legitimate interests in the disputed domain name; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(ii).
Registration and Use in Bad Faith:
Complainant argues that Respondent registered and used <hiddensnapchat.org> in bad faith. First, Complainant contends Respondent’s arrangement of adult-oriented material represents bad faith attraction for commercial gain under Policy ¶ 4(b)(iv). Arrangement of pornographic content is highly likely to be geared toward commercial profit and a finding of bad faith may naturally follow such use under the language of 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)). Adult oriented content also supports findings of nonexclusive bad faith under Policy ¶ 4(a)(iii), eliminating a need for a presumption of commercial gain. 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).”). Given Annex P, the Panel agrees that Respondent clearly engaged in bad faith registration and use of the domain name under Policy ¶¶ 4(b)(iv) and/or (a)(iii).
Last, Complainant urges that Respondent registered and used <hiddensnapchat.org> with actual knowledge of Complainant and its SNAPCHAT marks. Actual knowledge is gleaned through a totality of circumstances. See Twentieth Century Fox Film Corporation and Fox International Channels (US), Inc. v. Daniel Pizlo / HS, FA1412001596020 (Forum Jan. 27, 2015) (finding that the respondent must have had actual knowledge of the complainant and its rights in the FOX LIFE mark, where the respondent was using the disputed domain name to feature one of the complainant’s videos on its website, indicating that the respondent had acted in bad faith under Policy ¶ 4(a)(iii)). Like Twentieth Century Fox Film Corporation, Respondent allegedly included content mirroring Complainant’s on the resolving site. Compare Compl., Attached Annex D (Ghost Logo), with Compl., Attached Annex P (displaying Ghost Logo). The Panel also notes the following decision, which found the SNAPCHAT mark famous: Snapchat, Inc. v. Macy Wrhel, D2016-0558 (WIPO April 28, 2016) (“The Panel finds … the mark SNAPCHAT is clearly well known.”). Therefore, the Panel agrees the SNAPCHAT mark’s fame, coupled with Respondent’s use of the Ghost Logo, indicates Respondent had actual knowledge of Complainant when registering and using the domain name under Policy ¶ 4(a)(iii).
Respondent makes no contentions relative to Policy ¶ 4(a)(iii).
The Panel finds that Respondent registered and used the disputed domain name in bad faith; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that requested relief shall be GRANTED.
Accordingly, it is Ordered that the <hiddensnapchat.org> domain name be TRANSFERRED from Respondent to Complainant..
Hon. Carolyn Marks Johnson, Panelist
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