Snap Inc. v. Theo
Claim Number: FA1812001819273
Complainant is Snap Inc. (“Complainant”), represented by Peter Kidd of Kilpatrick Townsend & Stockton LLP, California, USA. Respondent is Theo (“Respondent”), Georgia, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <snapchat.management>, registered with Google 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.
Bruce E. Meyerson as Panelist.
Complainant submitted a Complaint to the Forum electronically on December 3, 2018; the Forum received payment on December 3, 2018.
On December 3, 2018, Google LLC confirmed by e-mail to the Forum that the <snapchat.management> domain name is registered with Google LLC and that Respondent is the current registrant of the name. Google LLC has verified that Respondent is bound by the Google 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 December 4, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 24, 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@snapchat.management. Also on December 4, 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 December 27, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Bruce E. Meyerson 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
1. Complainant registered the SNAPCHAT mark with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 4,375,712, registered July 30, 2013). Respondent’s <snapchat.management>[i] domain name is confusingly similar to Complainant’s mark as it wholly incorporates the SNAPCHAT mark prior to the addition of the “.management” generic top-level-domain (“gTLD”).
2. Respondent has no rights or legitimate interests in the <snapchat.management> domain name. Respondent is not commonly known by the disputed domain name, nor has Complainant authorized, licensed, or otherwise permitted Respondent to use the mark.
3. Respondent also does not use the disputed domain name in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use. Rather, Respondent passes off as Complainant and offers social networking services that compete with those offered by Complainant.
4. Respondent further uses the disputed domain name to phish for personally identifying information from Internet users otherwise seeking Complainant.
5. Respondent registered and uses the <snapchat.management> domain name in bad faith. Respondent competes with and disrupts Complainant’s business through the offer of competing social networking services.
6. Respondent registered the disputed domain name with actual knowledge of Complainant’s rights in the SNAPCHAT mark. Respondent uses the disputed domain to phish for user data.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant holds trademark rights for the SNAPCHAT mark. Respondent’s domain name is confusingly similar to Complainant’s SNAPCHAT mark. Complainant has established that Respondent lacks rights or legitimate interests in the use of the <snapchat.management> domain name and that Respondent registered and uses 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 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 asserts rights in the SNAPCHAT marks based upon registration with the USPTO. Registration of a mark with the USPTO sufficiently confers a complainant’s rights in a mark for the purposes of Policy ¶ 4(a)(i). Complainant submits a schedule of trademark registrations for the SNAPCHAT mark (e.g. Reg. No. 4,375,712, registered July 30, 2013). Accordingly, the Panel holds that Complainant has established rights in the SNAPCHAT mark.
Next, Complainant argues that Respondent’s <snapchat.management> domain name is confusingly similar to Complainant’s mark as wholly incorporates the SNAPCHAT mark with the addition of the “.management” gTLD. Similar changes in a registered mark have failed to sufficiently distinguish a domain name for the purposes of 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. Likewise, the absence of spaces must be disregarded under a Policy ¶ 4(a)(i) analysis because domain name syntax prohibits them.”). The Panel finds that the <snapchat.management> domain name is confusingly similar to the SNAPCHAT mark under Policy ¶4(a)(i).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).
Complainant alleges that Respondent holds no rights or legitimate interests in the <snapchat.management> domain name. This allegation must be supported with a prima facie showing by Complainant under Policy ¶ 4(a)(ii). After a complainant successfully makes a prima facie case, a respondent is faced with the burden of proving it does have rights or legitimate interests in the domain name. In Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Forum Feb. 13, 2007), the panel held that when a complainant produces a prima facie case, the burden of proof then shifts to the respondent to demonstrate its rights or legitimate interests in the domain name under Policy ¶ 4(c); see also Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent. In those circumstances, the common approach is for respondents to seek to bring themselves within one of the examples of paragraph 4(c) or put forward some other reason why they can fairly be said to have a relevant right or legitimate interests in respect of the domain name in question.”). The Panel holds that Complainant has made a prima facie case.
Complainant contends that Respondent has no rights or legitimate interests in the <snapchat.management> domain name. Where a response is lacking, relevant information includes the WHOIS and any other assertions by a complainant regarding the nature of its relationship with a respondent. See Amazon Technologies, Inc. v. Suzen Khan / Nancy Jain / Andrew Stanzy, FA 1741129 (Forum Aug. 16, 2017) (finding that respondent had no rights or legitimate interests in the disputed domain names when the identifying information provided by WHOIS was unrelated to the domain names or respondent’s use of the same). The WHOIS information of record identifies “Theo” as the registrant. Complainant asserts that no evidence exists to show that Respondent has ever been legitimately known by the SNAPCHAT mark. See Navistar International Corporation v. N Rahmany, FA1505001620789 (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). Complainant alleges that Respondent has never been legitimately affiliated with Complainant, has never been known by the <snapchat.management> domain name prior to its registration, and Complainant has not given Respondent permission to use the disputed domain name. Because the Complainant’s assertions are not contradicted, the Panel holds that Respondent is not commonly known by the <snapchat.management> domain name under Policy ¶ 4(c)(ii).
Next, Complainant asserts Respondent fails to use the <snapchat.management> domain name in connection with a bona fide offer of goods and services per Policy ¶ 4(c)(i) or a noncommercial or otherwise fair use per Policy ¶ 4(c)(iii) as Respondent passes off as Complainant and offers social networking services that compete with those offered by Complainant. Use of a domain name incorporating the mark of another to pass off as and compete with a complainant does not constitute rights and legitimate interests per Policy ¶¶ 4(c)(i) or (iii). See Netflix, Inc. v. Irpan Panjul / 3corp.inc, FA 1741976 (Forum Aug. 22, 2017) (“The usage of Complainant’s NETFLIX mark which has a significant reputation in relation to audio visual services for unauthorised audio visual material is not fair as the site does not make it clear that there is no commercial connection with Complainant and this amounts to passing off . . . As such the Panelist finds that Respondent does not have rights or a legitimate interest in the Domain Name.”). Here, Complainant provides screenshot evidence of the resolving website for the <snapchat.management> domain name, in which Respondent has appropriated Complainant’s mark and designs to host a competing social network. The Panel agrees with Complainant and finds Respondent does not use the <snapchat.management> domain name in connection with a bona fide offer or for a non-commercial or otherwise fair use.
Third, Complainant alleges Respondent further fails to use the <snapchat.management> domain name in connection with a bona fide offer or for a noncommercial or otherwise fair use as Respondent uses the domain name to phish for personally identifying information from Internet users otherwise seeking Complainant. This use does not constitute a bona fide offer per Policy ¶ 4(c)(i) or a noncommercial or otherwise fair use per Policy ¶ 4(c)(iii). See Bittrex, Inc. v. Caroline Alves Maia, FA 1796113 (Forum Aug. 6, 2018) (finding the respondent lacked rights and legitimate interests in the domain name because it used the name to resolve to a website virtually identical to the complainant’s to prompt users to enter their login information so that the respondent may gain access to that customer’s cryptocurrency account). The Panel agrees with Complainant and finds Respondent lacks rights and legitimate interests in the <snapchat.management> domain name.
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant contends that Respondent competes with and disrupts Complainant’s business through the offer of competing social networking services. Using the mark of another to offer services that compete with a complainant amounts to bad faith per Policy ¶ 4(b)(iii). See LoanDepot.com, LLC v. Kaolee (Kay) Vang-Thao, FA1762308 (Forum Jan. 9, 2018) (finding that the respondent’s use of the disputed domain name to offer competing loan services disrupts Complainant’s business under Policy ¶ 4(b)(iii)). Complainant has provided evidence that Respondent attempts to pass off as the Complainant and hosts competing social networking services on the resolving webpage of the <snapchat.management> domain name. The Panel agrees and finds that Respondent registered and uses the domain name in bad faith per Policy ¶ 4(b)(iii).
Next, Complainant claims that Respondent had actual knowledge of Complainant’s rights in the SNAPCHAT mark prior to registration of the <snapchat.management> domain name. Actual knowledge is sufficient for a finding of bad faith pursuant to 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). Complainant contends that Respondent must have had actual knowledge of Complainant’s rights in the SNAPCHAT mark prior to registration of the <snapchat.management> domain name based upon the notoriety of the mark and Respondent’s use of the domain name to pass off as and compete with Complainant. The Panel agrees and finds that Respondent did have actual knowledge of Complainant’s mark, demonstrating bad faith under Policy ¶ 4(a)(iii).
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.management> domain name be TRANSFERRED from Respondent to Complainant.
Bruce E. Meyerson, Panelist
Dated: January 3, 2019
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page