Snap Inc. v. REGISTRATION PRIVATE / DOMAIN SHIELD
Claim Number: FA1809001806647
Complainant is Snap Inc. (“Complainant”), represented by Peter Kidd of Kilpatrick Townsend & Stockton LLP, California, USA. Respondent is REGISTRATION PRIVATE / DOMAIN SHIELD (“Respondent”), British Columbia, Canada.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <snapchat-exchange.com>, registered with eNom, 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.
The Honourable Neil Anthony Brown QC as Panelist.
Complainant submitted a Complaint to the Forum electronically on September 18, 2018; the Forum received payment on September 18, 2018.
On September 20, 2018, eNom, LLC confirmed by e-mail to the Forum that the <snapchat-exchange.com> domain name is registered with eNom, LLC and that Respondent is the current registrant of the name. eNom, LLC has verified that Respondent is bound by the eNom, 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 September 20, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 10, 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-exchange.com. Also on September 20, 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 October 18, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed The Honourable Neil Anthony Brown QC 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 made the following contentions.
Complainant, Snap Inc., owns and distributes the popular Snapchat application. Complainant has rights in the SNAPCHAT mark based upon its registration with numerous trademark agencies around the world (e.g., Reg. No. 4,933,187, registered Apr. 5, 2016). See Compl. Annex P. Respondent’s <snapchat-exchange.com> domain name is confusingly similar to Complainant’s mark because Respondent includes the entire SNAPCHAT mark in the domain name plus the generic term “exchange” and the ”.com” generic top-level domain (“gTLD”).
Respondent lacks rights and legitimate interests in the <snapchat-exchange.com> domain name because Respondent is not commonly known by the disputed domain name and is not authorized or permitted to use Complainant’s mark in any fashion. Additionally, Respondent fails to use the disputed domain name in connection with a bona fide offering of goods and services or a legitimate noncommercial or fair use. Rather, Respondent uses the disputed domain name to divert users to a website that offers competing services and hosts pay-per-click advertising links.
Respondent registered and uses the <snapchat-exchange.com> domain name in bad faith. Respondent attempts attract, for commercial gain, users to the disputed domain name’s website where it offers competing services and advertisements for third-party websites. Further, Respondent had actual knowledge of Complainant’s rights in the SNAPCHAT mark prior to registering the disputed domain name.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant is a United States company that owns and distributes the famous SNAPCHAT camera and messaging application and story-telling platform.
2. Complainant has rights in the SNAPCHAT mark based upon its registration with numerous trademark agencies around the world (e.g., Reg. No. 4,933,187, registered Apr. 5, 2016).
3. Respondent registered the <snapchat-exchange.com> domain name on November 17, 2017.
4. Respondent uses the disputed domain name to divert users to a website that offers competing services and hosts pay-per-click advertising links.
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.”).
The first question that arises is whether Complainant has rights in a trademark or service mark on which it may rely. Complainant has rights in the SNAPCHAT mark based upon its registration with numerous trademark agencies around the world. Registration with multiple trademark agencies around the world generally establishes rights in a mark under Policy ¶ 4(a)(i). See Alabama 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.”). Here, Complainant provides a list of all of its registered trademarks, one of which was with the USPTO (e.g., Reg. No. 4,933,187, registered Apr. 5, 2016). See Compl. Annex P. Therefore, the Panel finds that Complainant has established rights in the SNAPCHAT mark under Policy ¶ 4(a)(i).
The next question that arises is whether the disputed domain name is identical or confusingly similar to Complainant’s SNAPCHAT mark. Complainant contends Respondent’s <snapchat-exchange.com> domain name is confusingly similar to Complainant’s mark because Respondent includes the entire SNAPCHAT mark in the domain name plus the generic word “exchange” and the gTLD “.com.” The addition of generic words may be insufficient to distinguish a disputed domain name from a complainant’s mark under Policy ¶ 4(a)(i). See Starbucks Corporation d/b/a Starbucks Coffee Company v. Waseem A Ali / Micron Web Services, FA 1785616 (Forum June 8, 2018) (finding the <starbucksreal.com> domain name to be confusingly similar to the STARBUCKS mark, as “the addition of the generic term ‘real’ to Complainant's mark does not distinguish the Domain Name from Complainant's trade mark pursuant to the Policy.”). Additionally, the addition of a gTLD is irrelevant to Policy ¶ 4(a)(i) analysis. See Longo Brothers Fruit Markets Inc. v. John Obeye / DOMAIN MAY BE FOR SALE, CHECK AFTERNIC.COM, FA 1734634 (Forum July 17, 2017) (“[O]f course it is well established in prior UDRP cases that the addition of a ‘.com’ suffix is irrelevant when determining if a disputed domain name is identical or confusingly similar to a trademark.”). The addition of a hyphen is also irrelevant. See Blizzard Entertainment, Inc. v. XINXIU ZENG / haimin liang, FA 1736365 (Forum July 19, 2017) (finding that the addition of punctuation—specifically, a hyphen—did not sufficiently distinguish the disputed domain name from complainant’s registered mark). Here, Respondent includes the SNAPCHAT mark in its entirety in the domain name and adds a hyphen, the generic word “exchange,” and the gTLD “.com.” Therefore, the Panel finds that Respondent’s <snapchat-exchange.com> domain name is confusingly similar to Complainant’s SNAPCHAT mark under Policy ¶ 4(a)(i).
Complainant has thus made out the first of the three elements that it must establish.
It is now well established that 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”).
The Panel finds that Complainant has made out a prima facie case that arises from the following considerations:
(a) Respondent has chosen to take Complainant’s SNAPCHAT trademark and to use it in its domain name, adding the generic word “exchange” that does not negate the confusing similarity with Complainant’s trademark;
(b) Respondent registered the <snapchat-exchange.com> domain name on November 17, 2017;
(c) Respondent uses the disputed domain name to divert users to a website that offers competing services and hosts pay-per-click advertising links;
(d) Respondent has engaged in these activities without the consent or approval of Complainant;
(e) Complainant submits that Respondent lacks rights and legitimate interests in the <snapchat-exchange.com> domain name because Respondent is not authorized or permitted to use Complainant’s SNAPCHAT mark and is not commonly known by the disputed domain name. Where a response is lacking, relevant WHOIS information may be used to identify the respondent per Policy ¶ 4(c)(ii). See State Farm Mutual Automobile Insurance Company v. Dale Anderson, FA1504001613011 (Forum May 21, 2015) (concluding that because the WHOIS record lists “Dale Anderson” as the registrant of the disputed domain name, the respondent was not commonly known by the <statefarmforum.com> domain name pursuant to Policy ¶ 4(c)(ii)). Additionally, lack of authorization from complainant to use its marks may be further evidence that a respondent is not commonly known by a disputed domain name. See 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 Panel notes that the WHOIS of record identifies Respondent as “REGISTRATION PRIVATE / DOMAIN SHIELD,” and no information in the record shows that Respondent was authorized to use Complainant’s mark or that Respondent was commonly known by the disputed domain. Accordingly, the Panel finds that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(c)(ii);
(f) Complainant submits that Respondent fails to use the <snapchat-exchange.com> domain name for a bona fide offering of goods and services or for a legitimate noncommercial or fair use because Respondent uses the disputed domain name to promote a competing social network. Use of a disputed domain name to compete with a complainant may not be considered a bona fide offering of goods and services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii). See Alcon, Inc. v. ARanked, FA 1306493 (Forum Mar. 18, 2010) (“The Panel finds that capitalizing on the well-known marks of Complainant by attracting internet users to its disputed domain names where Respondent sells competing products of Complainant is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).”) Here, Complainant provides screenshots of the disputed domain name’s resolving webpage, which features Complainant’s SNAPCHAT mark and fields for users to enter login information. See Compl. Annex S. Complainant claims Respondent uses this to promote a competing social network, presumably for commercial gain. Id. Therefore, the Panel finds that Respondent attempts to compete commercially with Complainant, and thus fails to use the <snapchat-exchange.com> domain for a bona fide offering or legitimate or fair use under Policy ¶¶ 4(c)(i) or (iii);
(g) Complainant submits that Respondent fails to use the <snapchat-exchange.com> domain name for a bona fide offering of goods and services or for a legitimate noncommercial or fair use because Respondent uses the domain to host pay-per-click advertising links. Hosting pay-per-click advertisements may not be a bona fide offering or legitimate or fair use under Policy ¶¶ 4(c)(i) or (iii). See Insomniac Holdings, LLC v. Mark Daniels, FA 1735969 (Forum July 15, 2017) (”Respondent’s use of <edcorlando.xyz> also does not qualify as a bona fide offering… the <edcorlando.xyz> domain name resolves to a site containing pay-per-click hyperlinks and advertisements… Since these kinds of advertisements generate revenue for the holder of a domain name, they cannot be noncommercial; further, they do not qualify as a bona fide offering.”). Complainant’s screenshot of the disputed domain name’s resolving website shows that it features advertisements. See Compl. Annex S. Therefore, the Panel finds that Respondent attempts to generate revenue from pay-per-click advertisements, and thus fails to use the <snapchat-exchange.com> domain for a bona fide offering or legitimate or fair use under Policy ¶¶ 4(c)(i) or (iii).
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 has thus made out the second of the three elements that it must establish.
It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain name was registered in bad faith and has been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.
Having regard to those principles, the Panel finds that the disputed domain name was registered and used in bad faith. That is so for the following reasons.
First, Complainant argues Respondent registered and uses the <snapchat-exchange.com> domain name in bad faith because Respondent uses the domain to attract users for commercial gain through pay-per-click advertisements. Use of a disputed domain name to attract users and commercially gain via pay-per-click hyperlinks may evince a finding of bad faith under Policy ¶ 4(b)(iv). See Ass’n of Junior Leagues Int’l Inc. v. This Domain Name My Be For Sale, FA 857581 (Forum Jan. 4, 2007) (holding that the respondent’s use of the disputed domain name to maintain a pay-per-click site displaying links unrelated to the complainant and to generate click-through revenue suggested bad faith registration and use under Policy ¶ 4(b)(iv)). The Panel notes that Complainant provides screenshots of the disputed domain name’s resolving website, which features Complainant’s SNAPCHAT mark along with pay-per-click advertisements. See Compl. Annex S. Therefore, the Panel concludes that Respondent attempts to attract, for commercial gain, users to the <snapchat-exchange.com> domain name’s resolving website, thereby supporting a finding of bad faith per Policy ¶ 4(b)(iv).
Secondly, Complainant submits that Respondent had actual knowledge of Complainant’s rights in the SNAPCHAT mark prior to registering the <snapchat-exchange.com> domain name. Actual knowledge of a complainant’s rights in a mark prior to registration of a disputed domain name evinces bad faith under Policy ¶ 4(a)(iii), and can be shown through the fame of the mark and the respondent’s use of it. See Coachella Music Festival, LLC v. ALEXANDER DE ALMEIDA LOPES, FA 1705267 (Forum Jan. 9, 2017) (finding the respondent had actual knowledge of the complainant’s COACHELLA mark when it registered and used the <coachellastuff.com> domain name—and thus did so in bad faith—because the complainant presented adequate evidence that its mark was well-known and famous); see also WordPress Foundation v. mich delorme / mich d dots tlds, FA1410001584295 (Forum Nov. 25, 2014) (“Because Respondent here relies on the WORDPRESS mark in the disputed domain name and also makes use of Complainant’s services at the resolving page, the Panel finds that Respondent had actual knowledge of Complainant’s mark, and that such knowledge evidences Policy ¶ 4(a)(iii) bad faith.”). To show the fame of its mark, Complainant offers evidence of awards it has won, statistics on usage, financial reports, and news articles. See Annexes D-Q. The Panel notes that the disputed domain name’s resolving website features Complainant’s SNAPCHAT mark and requests login information for Complainant’s social network. See Compl. Annex S. Therefore, the Panel finds that, due to the fame and Respondent’s use of the mark, Respondent had actual knowledge of Complainant’s rights in the SNAPCHAT mark prior to registering the <snapchat-exchange.com> domain name, thereby supporting a finding of bad faith under Policy ¶ 4(a)(iii).
Thirdly, in addition and having regard to the totality of the evidence, the Panel finds that, in view of Respondent’s registration of the disputed domain name using the SNAPCHAT mark and in view of the conduct that Respondent has engaged in when using the disputed domain name, Respondent registered and used it in bad faith within the generally accepted meaning of that expression.
Complainant has thus made out the third of the three elements that it must establish.
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-exchange.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC
Panelist
Dated: October 19, 2018
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