Snap Inc. v. Yao Tao / YaoTao
Claim Number: FA1805001785419
Complainant is Snap Inc. (“Complainant”), represented by Peter Kidd of Kilpatrick Townsend & Stockton LLP, California, USA. Respondent is Yao Tao / YaoTao (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <snapchatleaked.com> and <leakedsnapchat.com> (“the Domain Names”), registered with NameCheap, Inc.
The undersigned certifies that she has acted independently and impartially and to the best of her knowledge has no known conflict in serving as Panelist in this proceeding.
Dawn Osborne as Panelist.
Complainant submitted a Complaint to the Forum electronically on May 7, 2018; the Forum received payment on May 7, 2018.
On May 11, 2018, NameCheap, Inc. confirmed by e-mail to the Forum that the <snapchatleaked.com> and <leakedsnapchat.com> domain names are registered with NameCheap, Inc. and that Respondent is the current registrant of the names. NameCheap, Inc. has verified that Respondent is bound by the NameCheap, Inc. 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 14, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 4, 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@snapchatleaked.com, postmaster@leakedsnapchat.com. Also on May 14, 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.
A timely Response was received and determined to be complete on May 16, 2018.
On May 17, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Dawn Osborne 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.
Complainant requests that the domain names be transferred from Respondent to Complainant.
A. Complainant
Complainant is the owner of the SNAPCHAT mark registered, inter alia in the USA filed December 12, 2012, registered 30 July 2013, with first use evidenced from 2011. It also owns <snapchat.com>. The mark is well known.
The Domain Names registered in May 2013 were registered after the SNAPCHAT mark had become well known and have been used for pornographic web sites.
The Domain Names include the entirety of Complainant’s SNAPCHAT mark and are thus likely to confuse consumers as to a connection with Complainant. The addition of the generic word ‘leaked’ in the Domain Names and the gTLD .com is not sufficient to distinguish them from Complainant’s trade mark to which they are confusingly similar.
There is no relationship between Respondent and Complainant and Respondent is not commonly known by the Domain Names. Use of a domain name that is confusingly similar to another’s trade mark to divert traffic to a commercial web site, in particular pornography, is not a bona fide or legitimate fair use under the Policy.
That Respondent refers to Complainant’s SNAPCHAT service on the websites attached to the Domain Names shows Respondent was aware of Complainant’s mark when it registered the Domain Names.
Respondent’s use of the Domain Names to divert Internet traffic for Respondent’s financial gain also constitutes bad faith under the Policy.
B. Respondent
Respondent’s contentions can be summarised as follows:
The Domain Names were registered two months before Complainant’s trade marks were registered and, therefore the Domain Names do not infringe Complainant’s trade mark.
The web sites attached to the Domain Names are totally different in appearance and purpose from Complainant’s web site. Respondent’s web site does not disrupt or compete with Respondent’s web site. The footer says Respondent’s site is not associated with any business or website. It has different web site design, colour and layout to Complainant. Images on Respondent’s site were uploaded by users and some are from social media other than Complainant’s Snapchat. Users of the sites attached to the Domain Names are not confused. Respondent does not have control over what users upload and the users can request removal of images which Respondent does without question. The Websites have been established since 2013 and are managed and updated daily. Respondent works hard to keep the websites running, updated and meaningful to grow. Respondent is known by the Domain Names and pays all the outgoing relating to the web sites attached to them.
C. Additional Submissions
The Additional Submissions of Complainant can be summarised as follows:
Respondent appears to believe mistakenly that because a certificate of registration had not been issued for Complainant’s mark at the time the Domain Names were registered that Complainant did not have trade mark rights under the Policy. Complainant’s registered rights date back to the application date not the registration date once the trade mark is granted. Moreover common law rights are sufficient to establish rights under the Policy and Complainant’s common law rights in the Policy were well established before the Domain Names were registered.
Finally despite Respondent’s implication that his selection and registration of the Domain Names were coincidental and not with reference to Complainant, an early archived screenshot of Respondent’s web site shows prominent use of Complainant’s Ghost logo. Complainant had been using its Ghost logo for over a year before Respondent registered the Domain Names and the use of it by Respondent shows he was aware of Complainant and Complainant’s business. Complainant’s logos are still visible and referenced at Respondent’s web sites.
Respondent uses the Domain Names for his financial benefit to distribute adult content and pornography. Respondent admits in his Response that his web sites are a business and does not dispute that he distributes pornography.
Respondent’s arguments that his sites look different from Complainant’s are irrelevant where he has used Complainant’s mark to drive traffic to his pornographic web sites for financial benefit.
Complainant is the owner of the SNAPCHAT mark registered, inter alia in the USA filed December 12, 2012, registered 30 July 2013, with first use evidenced from 2011. It also owns Snapchat.com. The mark is well known.
The Domain Names registered in May 2013 were registered after the SNAPCHAT mark had become well known and have been used for pornographic web sites.
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.
Identical and/or Confusingly Similar
The Domain Names in this Complaint combine Complainant’s SNAPCHAT mark (registered in the USA for services relating to software for distribution of information via a global communication network and with first use in commerce recorded as 2011), the generic term ‘leaked ’ and the gTLD .com. Use in 2011 was substantial and therefore Complainant in the opinion of the Panelist had enforceable common law rights prior to the registration of the Domain Names even though the formal trade mark registrations were not granted until later.
The addition of the generic word ‘leaked’ does not serve to distinguish the Domain Names from Complainant’s SNAPCHAT mark. See Abbott Laboratories v Miles White, FA 1646590 (Forum Dec. 10, 2015) (holding that the addition of generic terms do not adequately distinguish a disputed domain name from complainant’s mark under Policy 4(a)(i)).
The gTLD “.com” does not serve to distinguish the Domain Names from the SNAPCHAT mark, which is the distinctive component of the Domain Names. See Red Hat Inc v Haecke FA 726010 (Forum July 24, 2006) (concluding that the <redhat.org> domain name is identical to the complainant's red hat mark because the mere addition of the gTLD was insufficient to differentiate the disputed domain name from the mark).
Accordingly, the Panel finds that the Domain Names are confusingly similar to a mark in which Complainant has rights for the purposes of the Policy.
Rights or Legitimate Interests
Respondent has not provided any evidence that it is commonly known by the Domain Names. Complainant has not authorised Respondent to use its SNAPCHAT mark. The use of the Domain Names is commercial and so cannot be legitimate non commercial use.
The use of a domain name containing a well known mark to resolve to adult orientated material cannot constitute a bona fide use. See Altria Group, Inc. and Altria Group Distribution Company v xiazihong, FA 1732665 (Forum July 7, 2017). The Respondent admits that it manages the content on its site and therefore must take responsibility for it.
As such the Panelist finds that Respondent does not have rights or a legitimate interest in the Domain Names and that Complainant has satisfied the second limb of the Policy.
Registration and Use in Bad Faith
The use by Respondent of Complainant’s ghost logo shows that Respondent was aware of Complainant and Complainant’s business at the time of registration of the Domain Names. Use of a domain name containing a trade mark in relation to a web page hosting adult material is evidence of bad faith registration and use under Policy ¶ 4(b)(iii). See Molson Canada 2005 v JEAN LUCAS/DOMCHARME GROUP, FA 1412001596702 (Forum Feb 10, 2015). There is, therefore, no need to consider any additional grounds of bad faith. The Panelist agrees with Complainant that the fact that Respondent’s web sites look different to Complainant is not relevant where a complainant’s trade mark has been used for adult content.
As such, the Panelist believes that Complainant has made out its case that the Domain Names were registered and used in bad faith and has satisfied the third limb of the Policy.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <snapchatleaked.com> and <leakedsnapchat.com> domain names be TRANSFERRED from Respondent to Complainant.
Dawn Osborne, Panelist
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