Snap, Inc. v. Peter Vagin / Chubbs Media
Claim Number: FA1805001788597
Complainant is Snap, Inc. (“Complainant”), represented by Peter Kidd of Kilpatrick Townsend & Stockton LLP, California, USA. Respondent is Peter Vagin / Chubbs Media (“Respondent”), Portugal.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <snapfuck.me>, 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.
Ho Hyun Nahm, Esq. as Panelist.
Complainant submitted a Complaint to the Forum electronically on May 24, 2018; the Forum received payment on May 24, 2018.
On May 29, 2018, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <snapfuck.me> 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 31, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 20, 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@snapfuck.me. Also on May 31, 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 25, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Ho Hyun Nahm, Esq. 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
i) Complainant, Snap, Inc., owns and distributes an enormously popular camera and messaging application, and storytelling platform. 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.) See Amend. Compl. Annex O. Respondent’s <snapfuck.me> is confusingly similar to the mark as the disputed domain name contains the dominant portion “SNAP” of Complainant’s mark and merely adds the generic term “fuck” and the “.me” country code top-level domain (“ccTLD”) to the mark.
ii) Respondent does not have rights or legitimate interests in the <snapfuck.me> domain name. Respondent is not commonly known by the disputed domain name and Complainant has not granted Respondent permission or license to use the SNAPCHAT mark for any purpose. Respondent is not using the disputed domain name to make a bona fide offering of goods or services or for a legitimate non-commercial or fair use. Rather, Respondent is using the disputed domain to offer a commercial online dating platform for trading pornographic pictures and personal information. See Amend. Compl. Annex S. In addition, Respondent is using the disputed domain name to divert traffic to Respondent’s website for commercial gain. Id.
iii) Respondent registered and is using the <snapfuck.me> domain name in bad faith because Respondent is using the disputed domain to divert Internet traffic for Respondent’s financial gain. Finally, Respondent had actual knowledge of Complainant’s SNAPCHAT mark and business prior to registration and during subsequent use.
B. Respondent
Respondent failed to submit a response.
1. Respondent registered the disputed domain name on February 21, 2015.
2. Complainant has established rights in the SNAPCHAT mark based upon its registration with the USPTO (e.g., Reg. No. 4,375,712, registered July 30, 2013).
3. The disputed domain name resolves to an adult dating website offering and promoting adult-oriented content and the exchange of pornography.
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 July 30, 2013.) See Amend. Compl. Annex. O. Registration of a mark with the USPTO is sufficient to establish rights in the mark pursuant to Policy ¶ 4(a)(i). See Haas Automation, Inc. v. Jim Fraser, FA 1627211 (Forum Aug. 4, 2015) (finding that the complainant’s USPTO registrations for the HAAS mark sufficiently demonstrate its rights in the mark under Policy ¶ 4(a)(i)). Therefore, the Panel finds that Complainant has rights in the SNAPCHAT mark per Policy ¶ 4(a)(i).
Next, Complainant asserts that the <snapfuck.me> domain name is confusingly similar to the SNAPCHAT mark as it contains the dominant portion of the SNAPCHAT mark in and adds the generic term “fuck” along with the “.me” ccTLD. Previous Panels have found that the incorporation of a mark in its entirety, or the dominant portion of a mark, may be sufficient to establish that a domain name is identical or confusingly similar to a complainant’s registered mark under Policy ¶ 4(a)(i). See SNAP Inc. v. Contact Privacy Inc. Customer, 0146764045, et al., D2017-0635 (WIPO May 29, 2017) (finding <snaphack.co> and <snaphacker.org> confusingly similar to complainant’s SNAP and SNAPCHAT marks because “[t]he Panel finds that “snap” and “snapchat” are the distinctive elements of the Disputed Domain Names”). Further, Panels have consistently found that slight differences between domain names and registered marks, such as the addition of generic words or a ccTLD do not distinguish the domain name from the mark incorporated therein. 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.”); see also TMason Companies, Inc. v. Monet c/o Shame Sad, FA1004001319688 (Forum June 2, 2010) (finding addition of .me ccTLD did not affect confusing similarity of disputed domain); Wiluna Holdings, LLC v. Edna Sherman, FA 1652781 (Forum Jan. 22, 2016) (finding the addition of a generic term and gTLD is insufficient in distinguishing a disputed domain name from a mark under Policy ¶ 4(a)(i)). The Panel agrees with Complainant and finds that the <snapfuck.me> domain name is confusingly similar to the SNAPCHAT mark per Policy ¶ 4(a)(i).
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 argues that Respondent has no rights or legitimate interests in <snapfuck.me> as Respondent is not commonly known by the disputed domain name, nor has Complainant authorized Respondent to use the SNAPCHAT mark in any way. Where a response is lacking, WHOIS information can support a finding that a respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Alaska Air Group, Inc. and its subsidiary, Alaska Airlines v. Song Bin, FA1408001574905 (Forum Sept. 17, 2014) (holding that the respondent was not commonly known by the disputed domain name as demonstrated by the WHOIS information and based on the fact that the complainant had not licensed or authorized the respondent to use its ALASKA AIRLINES mark.). Additionally, lack of evidence in the record to indicate a respondent is authorized to use complainant’s mark may support a finding that Respondent does not have rights or legitimate interests in the disputed domain name per Policy ¶ 4(c)(ii). 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). The WHOIS information of record identifies Respondent as “Peter Vagin / Chubbs Media” See Amend. Compl. Annex A. The Panel therefore finds under Policy ¶ 4(c)(ii) that Respondent has not been commonly known by the disputed domain name.
Complainant further argues Respondent fails to use the <snapfuck.me> domain name in connection to a bona fide offering of goods or services or a legitimate noncommercial or fair use. Instead, Complainant contends Respondent’s <snapfuck.me> domain name resolves to an adult dating website offering and promoting adult-oriented content and the exchange of pornography. 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. See Snap, Inc. v. View Bird, FA1709001749823 (Forum Oct. 30, 2017) (finding use of <hiddensnapchat.org> in connection with pornography not a bona fide offering of goods or services or a legitimate noncommercial or fair use). Here, Complainant provides screenshots of Respondent website which promotes and offers a commercial online dating platform for trading pornographic pictures and personal information. See Amend. Compl. Annex S. Therefore, the Panel agrees that Respondent failed to use <snapfuck.me> in connection with a bona fide offering of goods or services or for a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii).
Further, Complainant asserts that Respondent is attempting to divert Internet traffic to Respondent’s website. Use of a complainant’s mark to redirect Internet users to respondent’s own website for commercial gain does not constitute either a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See Summit Group, LLC v. LSO, Ltd., FA 758981 (Forum Sept. 14, 2006) (finding that the respondent’s use of the complainant’s LIFESTYLE LOUNGE mark to redirect Internet users to respondent’s own website for commercial gain does not constitute either a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)). Here, Complainant contends that Respondent is using the <snapfuck.me> domain name in connection with a commercial online adult dating network for commercial gain. See Amend. Compl. Annex S. Therefore, the Panel agrees that Respondent failed to use <snapfuck.me> in connection with a bona fide offering of goods or services or for a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii).
The Panel finds that Complainant has made out a prima facie case that arises from the considerations above. All of these matters go to make out the prima facie case against Respondent. As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant argues Respondent registered and uses the <snapfuck.me> domain name in bad faith because Respondent is intentionally attempting to attract—for commercial gain—Internet users to Respondent’s website by creating a likelihood of confusion with Complainant’s SNAPCHAT mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website. Using a confusingly similar domain name to mislead users can evince bad faith registration and use per Policy ¶ 4(b)(iv). See Snap, Inc. v. Nestor Hernandez, F1709001749325 (Forum Oct. 25, 2017) (“Use of an infringing domain name to redirect internet users to adult-oriented material for commercial gain supports a finding that a respondent uses the domain name in bad faith under Policy ¶ 4(b)(iv)”). Complainant claims Respondent is using the fame of Complainant’s trademarks to improperly increase traffic to the disputed domain name in order to promote and offer a commercial online dating platform for trading pornographic pictures and personal information. See Amend. Compl. Annex S. Therefore, the Panel finds that Respondent registered and uses the disputed domain name in bad faith pursuant Policy ¶ 4(b)(iv).
Finally, Complainant argues that Respondent registered the disputed domain name with actual knowledge of Complainant’s mark. Actual knowledge may be proven through a totality of circumstances surrounding the registration of the disputed domain name. See Google Inc. v. Ahmed Humood, FA1411001591796 (Forum Jan. 7, 2015) (“This Panel makes that inference; Respondent has actual knowledge of Complainant’s mark at the time of domain name registration based on the fame of Complainant’s GOOGLE mark and Respondent’s use of one of the disputed domain names to detail Internet domain name registration and maintenance services related to an in competition with Complainant.”). Complainant asserts that Respondent offers services that are purportedly related to Complainant’s App, and prominently displays Complainant’s SNAPCHAT marks and logo. The Panel infers due to the manner of use of the disputed domain name that Respondent had actual knowledge of Complainant’s rights in the SNAPCHAT mark when it registered and subsequently used <snapfuck.me>, thereby supporting a finding of bad faith under 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 <snapfuck.me> domain name be TRANSFERRED from Respondent to Complainant.
Ho Hyun Nahm, Esq., Panelist
Dated: June 28, 2018
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