Snap Inc. v. Grzegorz Bałtyk
Claim Number: FA1902001830852
Complainant is Snap Inc. (“Complainant”), represented by Peter Kidd of Kilpatrick Townsend & Stockton LLP, California, USA. Respondent is Grzegorz Bałtyk (“Respondent”), Poland.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <pornsnapchat.net>, registered with OpenTLD B.V.
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.
Charles A. Kuechenmeister
Complainant submitted a Complaint to the Forum electronically on February 21, 2019; the Forum received payment on February 21, 2019.
On February 27, 2019, OpenTLD B.V. confirmed by e-mail to the Forum that the <pornsnapchat.net> domain name (the Domain Name) is registered with OpenTLD B.V. and that Respondent is the current registrant of the name. OpenTLD B.V. has verified that Respondent is bound by the OpenTLD B.V. 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 February 28, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint setting a deadline of March 20, 2019 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@pornsnapchat.net. Also on February 28, 2019, 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 March 22, 2019, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Charles A. Kuechenmeister 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 owns and distributes the enormously popular SNAPCHAT camera and messaging application that, among other things, allows users to share photographs, videos, and messages called “Snaps” with others via mobile devices. Complainant has rights in the SNAPCHAT mark through its registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 4,375,712, registered July 30, 2013), and with the trademark authorities of many other countries. Respondent’s Domain Name is confusingly similar to Complainant’s mark as it incorporates the mark in its entirety, merely adding the generic/descriptive term “porn” and the “.com” generic top-level domain (“gTLD”).
Respondent has no rights or legitimate interests in the Domain Name. There is no relationship between Complainant and Respondent, nor has Complainant authorized, licensed, or otherwise permitted Respondent to use its SNAPCHAT mark, (ii) Respondent is not commonly known by the Domain Name, and (iii) Respondent is not using the Domain Name in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, he uses it to divert Internet users to his own commercial website promoting adult content and pornography.
Respondent registered and uses the Domain Name in bad faith. Respondent had actual knowledge of Complainant’s mark when he registered the Domain Name. Additionally, he is using the Domain Name to take advantage of Complainant’s SNAPCHAT mark and drive traffic to his own commercial website. Further, Respondent uses the Domain Name in connection with a website which offers access to other sites which display pornography.
B. Respondent
Respondent did not submit a Response in this proceeding.
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 provides that in order to obtain an order cancelling or transferring a domain name, Complainant must prove each of the following three elements:
(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, pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules the Panel will decide this administrative proceeding on the basis of Complainant's undisputed representations 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.”).
The Panel finds as follows with respect to the matters at issue in this proceeding:
Complainant’s SNAPCHAT mark was registered with the office of the Registrar of Trademarks of the Government of Australia (Reg. No. 1,558,022) on May 20, 2013. See, Complaint Annex P. Registration of a trademark with a governmental trademark authority is sufficient to establish a complainant’s rights in that mark for the purposes of Policy ¶ 4(a)(i). Alibaba Group Holding Limited v. YINGFENG WANG, FA 1568531 (Forum Aug. 21, 2014) (“Complainant has rights in the ALIBABA mark under the Policy through registration with trademark authorities in numerous countries around the world.”), Lilly A/S v. yiyi chen, FA 1704586 (Forum Jan. 5, 2017) (“Until March 23, 2016, the EUIPO was known as the Office for Harmonization in the Internal Market. Registration of a mark with the EUIPO (or any other similar governmental authority) is sufficient to establish rights in the mark.”). The Australian registration certificate for the SNACHAT mark lists the owner of that mark as Snapchat, Inc., but the record of change of corporate name submitted as Complaint Exhibit Q demonstrates that Complainant is the owner of that mark.
Respondent’s Domain Name is confusingly similar to Complainant’s mark as it incorporates the mark in its entirety, merely adding the generic/descriptive term “porn” and the “.com” gTLD. These changes are not sufficient to distinguish the Domain Name from Complainant’s mark for the purposes of Policy ¶ 4(a)(i). Google Inc. v. Will Maluk, FA 1725065 (Forum May 15, 2017) (“The inclusion of the descriptive word ‘porn’… [is] insufficient to distinguish the domain name from the mark GOOGLE under Policy ¶ 4(a)(i) analysis for confusing similarity.”), Blue Cross and Blue Shield Association v. Shi Lei aka Shilei, FA 1784643 (Forum June 18, 2018) (“A TLD (whether a gTLD, sTLD or ccTLD) is disregarded under a Policy ¶, (a)(i) analysis because domain name syntax requires TLDs.”). Notwithstanding the changes described above, Complainant’s mark is clearly recognizable within the Domain Name, and this resolves the issue. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) at ¶ 1.7 (The test for confusing similarity “typically involves a side-by-side comparison of the domain name to assess whether the mark is recognizable within the domain name.”).
For the reasons set forth above, the Panel finds that the Domain Name is identical or confusingly similar to the SNAPCHAT mark, in which Complainant has substantial and demonstrated rights.
Rights or Legitimate Interests
If a complainant makes a prima facie case that the respondent lacks rights or legitimate interests in the domain name under Policy ¶ 4(a)(ii), the burden of production shifts to respondent to come forward with evidence that it has rights or legitimate interests in it. 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”). If a respondent fails to come forward with such evidence, the complainant’s prima facie evidence will be sufficient to establish that respondent lacks such rights or legitimate interests. If the respondent does come forward with such evidence, the Panel must assess the evidence in its entirety. At all times, the burden of proof remains on the complainant. WIPO Overview 3.0, at ¶ 2.1.
Policy ¶ 4(c) lists the following three nonexclusive circumstances, any one of which if proven can demonstrate a respondent’s rights or legitimate interests in a domain name for the purposes of Policy ¶ 4(a)(ii):
(i) before any notice to respondent of the dispute, respondent has used or has made demonstrable preparations to use the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) respondent (as an individual, business or other organization) has been commonly known by the domain name, even if respondent has acquired no trademark or service mark rights; or
(iii) respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
Complainant asserts that Respondent has no rights or legitimate interests in the Domain Name because (i) there is no relationship between Complainant and Respondent and Complainant has not authorized or licensed Respondent to use its SNAPCHAT mark, (ii) Respondent is not commonly known by the Domain Name, and (iii) he is not using the Domain Name in connection with a bona fide offering of goods and services or for a legitimate noncommercial or other fair use. Instead, he is using it to host a web site which features pay-per-click links to web sites which feature pornography. These allegations are supported by competent evidence.
Complainant states that there is no relationship between it and Respondent and that it has never licensed or authorized Respondent to use its mark in any way. Complainant has specific competence to make this statement, and it is unchallenged by any evidence before the Panel. In the absence of evidence that a respondent is 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 or legitimate interests in the domain name. 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), Indeed, Inc. v. Ankit Bhardwaj / Recruiter, FA 1739470 (Forum Aug. 3, 2017) (”Respondent lacks both rights and legitimate interests in respect of the at-issue domain name. Respondent is not authorized to use Complainant’s trademark in any capacity and, as discussed below, there are no Policy ¶ 4(c) circumstances from which the Panel might find that Respondent has rights or interests in respect of the at-issue domain name.”).
The information furnished to the Forum by the registrar lists the registrant of the Domain Name as “Grzegorz Baltyk.” This name bears no resemblance to the Domain Name. UDRP panels have consistently held that, in the absence of evidence to the contrary, a registrant name that is materially different from the domain name at issue is competent evidence that the respondent is not commonly known by the domain name. Guardair Corporation v. Pablo Palermo, FA1407001571060 (Forum Aug. 28, 2014) (holding that the respondent was not commonly known by the <guardair.com> domain name according to Policy ¶ 4(c)(ii), as the WHOIS information lists “Pablo Palermo” as registrant of the disputed domain name). The Panel is satisfied that Respondent has not been commonly known by the Domain Names within the meaning of Policy ¶ 4(c)(ii).
Complaint Exhibit R is a screenshot of the web pages resolving from the Domain Name. The site as a whole is clearly sexually-oriented, featuring opportunity for the visitor to “register” to enter several different sites, all of which are sexually oriented and pornographic. Using a confusingly similar domain name in connection with sexually-oriented material has often been held not to qualify as a bona fide offering of goods and services within the meaning of Policy ¶ 4(b)(i) or a legitimate noncommercial or fair use within the meaning of Policy ¶ 4(b)(i). 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.”), Snap, Inc. v. Peter Vagin / Chubbs Media, FA1805001788597 (Forum June 28, 2018) (“The use of a domain name to link Internet traffic to an adult oriented website does not constitute a bona fide offering of goods or services or a noncommercial fair use.”), Snap Inc. v. Dima Rogov, D2017-0017 (WIPO Feb. 27, 2017) (finding use of the disputed domain names in connection with pornographic dating sites is not a bona fide offering of goods or services within the meaning of the Policy), Snap, Inc. v. View Bird, FA1709001749823 (Forum Oct. 30, 2017) (finding use of <hiddensnapchat.org> in connection with pornography is not a bona fide offering of goods or services or a legitimate noncommercial or fair use), Snap, Inc. v. Nestor Hernandez, F1709001749325 (Forum Oct. 25, 2017) (finding use of <adult-snapchat.com> to resolve to adult-oriented content as lacking bona fide offering of goods or services or a legitimate noncommercial or fair use).
Complainant has made its prima facie case. On the evidence presented, and in the absence of any evidence from Respondent, the Panel finds that Respondent has no rights or legitimate interests in the Domain Name.
(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant which is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation or endorsement of your web site or location or of a product of service on your web site or location.
The evidence of Respondent’s use of the Domain Name set forth above in the rights or legitimate interests analysis also supports a finding of bad faith use and registration of that domain, based upon the foregoing grounds articulated in the Policy and upon additional grounds adopted by UDRP panels over the years. First, Respondent is clearly using the Domain Name to attract, for commercial gain, Internet users to its web site by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of its web site, as described in Policy ¶ 4(b)(iv). Respondent is obtaining commercial gain from its use of the Domain Name and the resolving web site. When a visitor to this web site logs on to one of the other sites which appear there, Respondent receives compensation from the various web site owners who are accessed from Respondent’s site. Most likely, Respondent receives compensation based upon the number of visits the web site owners get from being linked to Respondent’s web site. AllianceBernstein LP v. Texas International Property Associates - NA NA, Case No. D2008-1230 (WIPO, 2008), and Brownells, Inc. v. Texas International Property Associates, Case No. D2007-1211 (WIPO, 2007), (finding in similar cases that a respondent intentionally attempted to attract internet searchers for commercial gain). Respondent’s use of the Domain Name is commercial also because the various companies forwarded from the web sites benefit from the subsequent interest and purchases of those who visit the sites. UDRP panels have held that there only needs to be commercial gain sought by some party for the use to be commercial. Focus Do It All Group v. Athanasios Sermbizis, Case No. D2000-0923 (WIPO,2000) (finding that “[I]t is enough that commercial gain is being sought for someone” for a use to be commercial).
Second, it is evident from the extent to which Complainant’s mark is known and recognized throughout the world, and from the close similarity between Complainant’s mark on the one hand and Respondent’s Domain Name on the other that Respondent had actual knowledge of Complainant’s mark on July 23, 2018, when he registered the Domain Name. See, WHOIS report submitted as Complaint Exhibit A registration date. The Policy recognizes that mischief can assume many different forms and takes an open-ended approach to bad faith, listing some examples without attempting to enumerate all its varieties. Worldcom Exchange, Inc. v. Wei.com, Inc., WIPO Case No. D-2004-0955 (January 5, 2005). The non-exclusive nature of Policy ¶ 4(b) allows for consideration of additional factors in an analysis for bad faith, and actual knowledge of a complainant’s rights in a mark prior to registering an identical or confusingly similar domain name has often been held to be evidence of bad faith registration and use for the purposes of Policy ¶ 4(a)(iii). 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).
For the reasons set forth above, the Panel finds that Respondent registered and is using the Domain Name in bad faith within the meaning of Policy ¶ 4(a)(iii).
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 <pornsnapchat.net> Domain Name be TRANSFERRED from Respondent to Complainant.
Charles A. Kuechenmeister, Panelist
March 25, 2019
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