Snap Inc. v. Mohamed Adel / Your Host / Ur-h.com.eg
Claim Number: FA1805001788601
Complainant is Snap Inc. (“Complainant”), represented by Peter Kidd of Kilpatrick Townsend & Stockton LLP, California, USA. Respondent is Mohamed Adel / Your Host / Ur-h.com.eg (“Respondent”), Egypt.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <snap-chat.net> and <snap-chat.info>, registered with Domain.com, LLC.
The undersigned certifies that he has acted independently and impartially, and, to the best of his knowledge, has no conflict of interests in serving as Panelist in this proceeding.
Terry F. Peppard 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, Domain.com, LLC confirmed by e-mail to the Forum that the <snap-chat.net> and <snap-chat.info> domain names are registered with Domain.com, LLC and that Respondent is the current registrant of the names. Domain.com, LLC has verified that Respondent is bound by the Domain.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@snap-chat.net, postmaster@snap-chat.info. 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 21, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
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 a response from Respondent.
Complainant requests that the domain names be transferred from Respondent to Complainant.
Preliminary Issue: Multiple Respondents
Paragraph 3(c) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) provides that a “complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name holder.” Complainant alleges that the entities controlling the two domain names here at issue are the same person or entity, which is operating under several aliases. In support of this contention, Complainant alleges that:
(1) both of the domain names incorporate Complainant’s SNAPCHAT mark in its entirety, and in the same way, as “snap-chat”;
(2) the registrants of the two domain names identify themselves by the same phone number, email address, postal code, and country of origin in their WHOIS contact information; and,
(3) the domain names were registered on the same day and with the same registrar.
Complainant’s contentions are supported in the record and Respondent does not deny them. Accordingly, this proceeding will be conducted for all purposes as though the assertions of the Complaint were made against the single party denominated as Respondent.
The essential contentions of the Complaint may therefore be summarized as follows:
A. Complainant
Complainant owns and distributes the SNAPCHAT camera and messaging application and storytelling online platform that, among other things, allows Internet users to share photographs, videos and messages, called “Snaps,” with others via their mobile devices.
Complainant holds a registration for the SNAPCHAT trademark, which is on file with the United States Patent and Trademark Office (“USPTO”) as Registry No. 4,375,712, registered July 30, 2013).
Respondent registered the domain names <snap-chat.net> and <snap-chat.info> on July 17, 2015.
The domain names are confusingly similar to Complainant’s SNAPCHAT mark.
Respondent has not been commonly known by the domain names.
Complainant licensed or otherwise authorized Respondent to use the SNAPCHAT mark.
Respondent does not use the domain names in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use.
Rather, Respondent uses the <snap-chat.net> domain name to drive traffic to Respondent’s website for Respondent’s commercial gain.
Respondent has failed to make demonstrable preparations to make any active use of the <snap-chat.info> domain name.
Respondent has no rights to or legitimate interests in the domain names.
Respondent uses the <snap-chat.net> domain name to disrupt Complainant’s business by offering services at a resolving website that compete with the business of Complainant.
Respondent uses the <snap-chat.net> domain name to profit from the operation of pay-per-click links on its resolving website.
Respondent knew of Complainant’s rights in the SNAPCHAT mark prior to the registration of the disputed domain names.
Respondent registered and uses the domain names in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
(1) the domain names registered by Respondent are confusingly similar to a trademark in which Complainant has rights; and
(2) Respondent has no rights to or legitimate interests in respect of the domain names; and
(3) the same domain names were registered and are being used by Respondent 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:
ii. Respondent has no rights to or legitimate interests in respect of the domain name; and
iii. the domain name has been registered and is being used by Respondent in bad faith.
In view of Respondent's failure to submit a response, the Panel will, pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules, decide this proceeding on the basis of Complainant's undisputed representations, and, pursuant to paragraph 14(b) of the Rules, draw such inferences as it deems appropriate. The Panel is entitled to accept as true all reasonable allegations and inferences set out in the Complaint unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Forum July 31, 2000) (finding that a respondent’s failure to respond allows all reasonable inferences of fact in the allegations of a UDRP complaint to be deemed true). See also Talk City, Inc. v. Robertson, D2000-0009 (WIPO February 29, 2000): “In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”
Complainant has rights in the SNAPCHAT mark sufficient for purposes of Policy ¶ 4(a)(i) by virtue of its registration of the mark with a national trademark authority, the USPTO. See Humor Rainbow, Inc. v. James Lee, FA 1626154 (Forum August 11, 2015):
There exists an overwhelming consensus amongst UDRP panels that USPTO registrations are sufficient in demonstrating a [UDRP] complainant’s rights under Policy ¶ 4(a)(i) .... Due to Complainant’s … USPTO registration on the principal register …, the Panel agrees that it has sufficiently demonstrated its rights per Policy ¶ 4(a)(i).
This is true without regard to whether Complainant’s rights in its mark arise from registration of the mark in a jurisdiction (here the United States) other than that in which Respondent resides or does business (here Egypt). See, for example, W.W. Grainger, Inc. v. Above.com Domain Privacy, FA 1334458 (Forum August 24, 2010):
[T]he Panel finds that USPTO registration is sufficient to establish these [Policy ¶ 4(a)(i)] rights even when Respondent lives or operates in a different country.
Turning to the central question posed by Policy ¶ 4(a)(i), we conclude from a review of the record that Respondent’s <snap-chat.net> and <snap-chat.info> domain names are confusingly similar to Complainant’s SNAPCHAT mark. The domain names wholly incorporate the mark, with only the addition of a hyphen and a generic Top Level Domain (“gTLD”), in one case “.net” and in the other “.info.” These alterations of the mark, made in forming the domain names, do not save them from the realm of confusing similarity under the standards of the Policy. See ADP, LLC. v. Ella Magal, FA 1773958 (Forum August 2, 2017):
Respondent’s … domain name appropriates the dominant portion of Complainant’s … mark and adds a hyphen and the gTLD “.com.” These changes do not sufficiently distinguish the disputed domain name from the … mark.
See also Dell Inc. v. Protection of Private Person / Privacy Protection, FA 1681432 (Forum August 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.
Under Policy 4(a)(ii), Complainant must make a prima facie showing that Respondent lacks rights to and legitimate interests in the <snap-chat.net> and <snap-chat.info> domain names, whereupon the burden shifts to Respondent to show that it does have such rights or interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum August 18, 2006) (finding that a UDRP complainant must make a prima facie case that a respondent lacks rights to or legitimate interests in a disputed domain name under UDRP¶ 4(a)(ii) before the burden shifts to that respondent to show that it does have such rights or interests). See also AOL LLC v. Gerberg, FA 780200 (Forum September 25, 2006):
Complainant must … make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, … the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.
Complainant has made out a sufficient prima facie showing under this head of the Policy. Respondent’s failure to respond to the Complaint therefore permits us to infer that Respondent does not have rights to or legitimate interests in the disputed domain names. See Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO December 21, 2000) (finding that a respondent’s failure to respond to a UDRP complaint allows a presumption that a complainant’s allegations are true unless they are clearly contradicted by the evidence). Nonetheless, we will examine the record before us, in light of the several considerations set out in Policy ¶ 4(c) (i)-(iii), to determine whether there is in it any basis for concluding that Respondent has rights to or legitimate interests in the contested domain names that are cognizable under the Policy.
We begin by noting that Complainant contends, and Respondent does not deny, that Respondent has not been commonly known by the <snap-chat.net> and <snap-chat.info> domain names, and that Complainant has not licensed or otherwise authorized Respondent to use the SNAPCHAT mark. Moreover, the pertinent WHOIS information identifies the registrant of the <snap-chat.net> domain name only as “Mohamed Adel / Mohamed Adel,” while the WHOIS information for the <snap-chat.info> domain name identifies its registrant only as “Ur-h.com.eg.” Neither of these names resembles the associated domain name. For all of these reasons, we conclude that Respondent has not been commonly known by the disputed domain names so as to have acquired rights to or legitimate interests in them within the ambit of Policy ¶ 4(c)(ii). See Chevron Intellectual Property LLC v. Fred Wallace, FA626022 (Forum July 27, 2015) (finding, under Policy ¶ 4(c)(ii), that a respondent was not commonly known by the <chevron-europe.com> domain name where the relevant WHOIS information identified its registrant only as “Fred Wallace.”); see also Navistar International Corporation v. N Rahmany, FA620789 (Forum June 8, 2015) (finding, under Policy ¶ 4(c)(ii), that a respondent was not commonly known by a disputed domain name where a UDRP complainant had not authorized that respondent to incorporate its mark in a domain name).
We next observe that Complainant asserts, without objection from Respondent, that Respondent uses the <snap-chat.net> domain name to drive traffic to Respondent’s website, which offers services that compete with the business of Complainant for Respondent’s commercial gain. This employment of the domain name is neither a bona fide offering of goods or services by means of the domain name under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use of it under Policy ¶ 4(c)(iii) such as would confirm in Respondent rights to or legitimate interests in the domain name as provided in those subsections of the Policy. See, for example, Upwork Global Inc. v. Shoaib Malik, FA 1654759 (Forum February 3, 2016) (finding that for a respondent to provide services online under the banner of a domain name that was confusingly similar to the mark of a UDRP complainant, which services competed with the business of that complainant, was neither a bona fide offering of goods or services by means of that domain name nor a legitimate noncommercial or fair use of it within the ambit of Policy ¶¶ 4(c)(i) or (iii)).
Complainant further contends that the <snap-chat.info> domain name redirects Internet users to a website that lacks any content. Having in mind that this domain name has been registered to Respondent for approximately three years, such an extended failure to make active use of a domain name confusingly similar that is confusingly similar to Complainant’s SNAPCHAT mark evinces a lack of a bona fide offering of goods or services as well as the absence of a legitimate noncommercial or fair use under Policy ¶ 4(c)(i) or (iii). See Kohler Co. v xi long chen, FA 1737910 (Forum August 4, 2017):
Respondent has not made a bona fide offering of goods or services, or a legitimate non-commercial or fair use of the domain [name]. Respondent’s … [domain name]… resolves to an inactive webpage displaying the message “website coming soon!”
The Panel therefore finds that Complainant has satisfied the proof requirements of Policy ¶ 4(a)(ii).
We are persuaded by the evidence that Respondent’s use of the <snap-chat.net> domain name as alleged in the Complaint disrupts Complainant’s business. Under Policy ¶ 4(b)(iii), this stands as proof of Respondent’s bad faith in registering and using the domain name. See LoanDepot.com, LLC v. Kaolee (Kay) Vang-Thao, FA1762308 (Forum January 9, 2018) (finding, under Policy ¶ 4(b)(iii), that a respondent’s use of a disputed domain name to offer services competing with the business of a UDRP complainant disrupted that complainant’s business and therefore constituted evidence of bad faith registration and use of that domain name).
The evidence is also convincing that Respondent has failed, apparently throughout the life of its registration, to make any active use of the <snap-chat.info> domain name. Such an extended passive holding, in the circumstances described in the Complaint, demonstrates Respondent’s bad faith registration and use of it under Policy ¶ 4(a)(iii). See, for example, VideoLink, Inc. v. Xantech Corporation, FA608735 (Forum May 12, 2015):
Failure to actively use a domain name is evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii).
Finally, under this head of the Policy, it is plain from the record that Respondent knew of Complainant and its rights in the SNAPCHAT mark when Respondent registered the disputed <snap-chat.net> and <snap-chat.info> domain names. This further evidences Respondent’s bad faith in registering them. See Univision Comm'cns Inc. v. Norte, FA 1000079 (Forum August 16, 2007) (rejecting a respondent's contention that it did not register a disputed domain name in bad faith where a panel found that that respondent knew of a UDRP complainant's rights in a mark when registering that domain name). See also Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum February 6, 2014):
The Panel … here finds actual knowledge through the name used for the domain and the use made of it.
The Panel thus finds that Complainant has met its obligations of proof under Policy ¶ 4(a)(iii).
Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be, and it is hereby, GRANTED.
Accordingly, it is Ordered that the <snap-chat.net> and <snap-chat.info> domain names be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: June 25, 2018
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