Snap Inc. v. Deepika Priyadarshinie / entsl
Claim Number: FA1805001788600
Complainant is Snap Inc. (“Complainant”), represented by Peter Kidd of Kilpatrick Townsend & Stockton LLP, California, USA. Respondent is Deepika Priyadarshinie / entsl (“Respondent”), Sri Lanka.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <snapchatapk.com>, 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.
Hon. Karl v. Fink (Ret.) as Panelist.
Complainant submitted a Complaint to the Forum electronically on May 24, 2018; the Forum received payment on May 24, 2018.
On May 25, 2018, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <snapchatapk.com> 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 May 29, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 18, 2018 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@snapchatapk.com. Also on May 29, 2018, 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 June 20, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Hon. Karl V. Fink (Ret.) 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 its camera and messaging application, Snapchat. Complainant has rights in the SNAPCHAT mark through its trademark registrations with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 4,375,712, registered Jul. 30, 2013). Respondent’s <snapchatapk.com> domain name is confusingly similar to Complainant’s SNAPCHAT mark because it merely adds the descriptive term “apk” and the “.com” generic top-level domain (“gTLD”).
Respondent does not have rights or legitimate interests in the <snapchatapk.com> domain name. Complainant has not licensed or otherwise authorized Respondent to use its SNAPCHAT mark in any fashion. Respondent is also not commonly known by the disputed domain name as the WHOIS information of record lists “Deepika Priyadarshinie / entsl” as the registrant. Respondent is not using the <snapchatapk.com> domain name in connection with any bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, Respondent uses the <snapchatapk.com> domain name to host pay-per-click advertisements. In addition, Respondent is using the disputed domain name to pass itself off as Complainant to offer unauthorized versions of Complainant’s products.
Respondent registered and is using the <snapchatapk.com> domain name in bad faith. Respondent attempts to disrupt Complainant’s business by offering counterfeit versions of Complainant’s products at the domain name’s resolving website. Further, Respondent is using the domain name to create confusion with Complainant’s mark for Respondent’s commercial gain by diverting Internet users to a website featuring pay-per-click advertisements. Moreover, Respondent had actual knowledge and constructive notice of Complainant’s rights in the SNAPCHAT mark prior to the disputed domain name’s registration.
B. Respondent
Respondent failed to submit a Response in this proceeding.
For the reasons set forth below, the Panel finds Complainant is entitled to the requested relief of transfer of the <snapchatapk.com> domain name.
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 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.”).
Complainant claims rights in the SNAPCHAT mark based upon its registration with the USPTO (e.g. Reg. No. 4,375,712, registered on July 30, 2013). Registering a mark with the USPTO is sufficient to establish rights pursuant to 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)). The Panel finds that Complainant has rights in the SNAPCHAT mark per Policy ¶ 4(a)(i).
Complainant asserts that the <snapchatapk.com> domain name is confusingly similar to the SNAPCHAT mark because it merely adds the descriptive term “apk”, as well as the “.com” gTLD. Such changes to a complainant’s mark does not negate any confusing similarity between a disputed domain name and mark under Policy ¶ 4(a)(i). See Traditional Medicinals, Inc. v. Flippa Chick, FA1006001328702 (Forum July 15, 2010) (“Respondent’s disputed domain name contains Complainant’s SMOOTH MOVE mark in its entirety after removing the space separating the terms of the mark, adds the descriptive terms “herbal tea” and adds the generic top-level domain (“gTLD”) “.com.” The Panel finds that the addition of descriptive terms creates a confusing similarity between the disputed domain name and Complainant’s mark.”). Similarly, the addition of a gTLD is irrelevant in determining whether the disputed domain name is confusingly similar. See Trip Network Inc. v. Alviera, FA 914943 (Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis). The Panel finds that the <snapchatapk.com> domain name is confusingly similar to Complainant’s SNAPCHAT mark per Policy ¶ 4(a)(i).
Complainant has proved this element.
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”).
Complainant alleges that Respondent does not have rights or legitimate interests in the disputed domain name, as Respondent is not commonly known by the domain name and Complainant has not licensed or otherwise authorized Respondent to use its SNAPCHAT mark in any fashion. Absent contradicting evidence in the record that a respondent was authorized to use a complainant’s mark in a domain name or that a respondent is commonly known by the disputed domain name, the respondent may be presumed to lack rights and legitimate interests in the domain name. See IndyMac Bank F.S.B. v. Eshback, FA 830934 (Forum Dec. 7, 2006) (finding that the respondent failed to establish rights and legitimate interests in the <emitmortgage.com> domain name as the respondent was not authorized to register domain names featuring the complainant’s mark and failed to submit evidence that it is commonly known by the domain name). Under Policy ¶ 4(c)(ii), WHOIS information can be used to support a finding that a respondent is not commonly known by a disputed domain name. 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)). The WHOIS information of record for the <snapchatapk.com> domain name lists “Deepika Priyadarshinie / entsl” as the registrant. The Panel finds that Respondent is not commonly known by the <snapchatapk.com> domain name.
Complainant further argues Respondent’s lack of rights or legitimate interests in the <snapchatapk.com> domain name is evinced by its failure to use the name for bona fide offering of goods or services, or legitimate noncommercial or fair use. Rather, Complainant alleges that Respondent is using the disputed domain name to host pay-per-click advertisements. Use of a domain name to host pay-per-click advertisements does not constitute a bona fide offering of goods or services under Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Insomniac Holdings, LLC v. Mark Daniels, FA 1735969 (Forum July 15, 2017) (“Respondent’s use of <edcorlando.xyz> also does not qualify as a bona fide offering… the <edcorlando.xyz> domain name resolves to a site containing pay-per-click hyperlinks and advertisements… Since these kinds of advertisements generate revenue for the holder of a domain name, they cannot be noncommercial; further, they do not qualify as a bona fide offering.”). Here, Complainant provided screenshots of the <snapchatapk.com> domain name, which show that the site offers unauthorized app software of Complainant for download and includes deceptive pay-per-click ads made to look like download links. The Panel finds that Respondent failed to use the domain name for a bona fide offering or fair use under Policy ¶¶ 4(c)(i) or (iii).
Complainant contends that Respondent offers Complainant’s counterfeit goods and services at the disputed domain name’s resolving website. Using a confusingly similar domain name to offer counterfeit versions of a complainant’s goods and services is not considered a bona fide offering of goods or services or a legitimate noncommercial or fair use. See Wolverine World Wide, Inc. v. Fergus Knox, FA 1627751 (Forum Aug. 19, 2015) (finding no bona fide offering of goods or legitimate noncommercial or fair use existed where Respondent used the resolving website to sell products branded with Complainant’s MERRELL mark, and were either counterfeit products or legitimate products of Complainant being resold without authorization). Complainant provided screenshots of Respondent’s infringing website, which features links for unauthorized downloads of counterfeit versions of Complainant’s Snapchat application. The Panel finds that Respondent failed to use the domain name for a bona fide offering or fair use under the Policy and that Respondent has no rights or legitimate interests in respect of the domain name.
Complainant has proved this element.
Complainant claims that Respondent is using the disputed domain name to disrupt Complainant’s business. Use of a domain name to disrupt a complainant’s business by offering counterfeit versions of a complainant’s products is bad faith per Policy ¶ 4(b)(iii). See Ontel Products Corporation v. waweru njoroge, FA1762229 (Forum December 22, 2017) (“Respondent’s primary offering seem to be counterfeits of Complainant’s toy car products. Respondent’s use of the <magictrackscars.com> domain name is thus disruptive to Complainant’s business per Policy ¶ 4(b)(iii)”). Here, Complainant claims screenshots of the <snapchatapk.com> website indicate that the site features Complainant’s SNAPCHAT mark and offers counterfeit versions of Complainant’s software application. The Panel finds from Complainant’s uncontested allegations and evidence that Respondent registered and used the disputed domain name in bad faith per Policy ¶ 4(b)(iv).
Complainant also claims that Respondent is using the domain name to create confusion with Complainant’s mark for Respondent’s commercial gain by diverting Internet users to a website featuring pay-per-click advertisements. Use of a domain name to attract Internet users and create confusion as to the source, sponsorship, affiliation or endorsement of the content therein may evidence bad faith. See Google Inc. v. James Lucas / FireStudio / Jameschee / FIRESTUDIO / SEONG YONG, FA1502001605757 (Forum Apr. 7, 2015) (“This Panel agrees that Respondent’s inclusion of advertisements to likely reap click-through fees is an example of bad faith pursuant Policy ¶ 4(b)(iv).”). Complainant provided screenshots of the <snapchatapk.com> website, which indicate that the site features pay-per-click advertisements and download links for unauthorized app software of Complainant. The Panel finds that Respondent attempted to create confusion with Complainant’s SNAPCHAT mark for commercial gain and registered and uses the domain name in bad faith per Policy ¶ 4(b)(iv).
Complainant argues that Respondent registered the disputed domain name with actual knowledge of Complainant’s mark. Actual knowledge of a complainant's rights in the mark prior to registering the disputed domain name is adequate evidence of bad faith under Policy ¶ 4(a)(iii). See Univision Comm'cns Inc. v. Norte, FA 1000079 (Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering the disputed domain name). A respondent may have actual knowledge of a complainant’s rights in a mark when a complainant’s mark is famous. See Victoria’s Secret Stores Brand Mgmt., Inc. v. Michael Bach, FA 1426668 (Forum March 2, 2012) (“Although Complainant has not submitted evidence indicating actual knowledge by Respondent of its rights in the trademark, the Panel finds that, due to the fame of Complainant’s [VICTORIA’S SECRET] mark, Respondent had actual notice at the time of the domain name registration and therefore registered the domain name in bad faith under Policy ¶ 4(a)(iii).”). Complainant contends that its SNAPCHAT mark is famous and provided numerous articles regarding the success of Complainant’s Snapchat application. The Panel finds that Respondent had actual knowledge of Complainant’s rights in the SNAPCHAT mark and registered and uses the <snapchatapk.com> domain name which amounts to bad faith under Policy ¶ 4(a)(iii).
Complainant has proved this element.
DECISION
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is ORDERED that the <snapchatapk.com> domain name be TRANSFERRED from Respondent to Complainant.
__________________________________________________________________
Hon. Karl V. Fink (Ret.) Panelist
Dated: June 21, 2018
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