Snap Inc. v. Ahmad Flemming
Claim Number: FA1809001809794
Complainant is Snap Inc. (“Complainant”), represented by Peter Kidd of Kilpatrick Townsend & Stockton LLP, California, USA. Respondent is Ahmad Flemming (“Respondent”), South Africa.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <newsnapspy.pw>, registered with NameCheap, Inc.
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.
Bruce E. Meyerson as Panelist.
Complainant submitted a Complaint to the Forum electronically on September 28, 2018; the Forum received payment on September 28, 2018.
On October 1, 2018, NameCheap, Inc. confirmed by e-mail to the Forum that the <newsnapspy.pw> domain name is registered with NameCheap, Inc. and that Respondent is the current registrant of the name. 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 October 2, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 22, 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@newsnapspy.pw. Also on October 2, 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 26, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Bruce E. Meyerson 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
1. Complainant owns and distributes the enormously popular “Snapchat” camera and messaging application and storytelling platform. Complainant has rights in the SNAPCHAT mark through its trademark registrations with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 4,111,564, registered Mar. 13, 2012). Respondent’s <newsnapspy.pw>[i] domain name is confusingly similar to Complainant’s SNAP mark as it incorporates the mark in its entirety, adds the generic terms “new” and “spy,” and the “.pw” country code top-level domain (“ccTLD”).
2. Respondent has no rights or legitimate interests in the <newsnapspy.pw> domain name. Respondent is not authorized to use Complainant’s SNAP mark and is not commonly known by the domain name.
3. Additionally, Respondent is not using the domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. Instead, Respondent’s domain name features a link promoting an online hacking tool to conduct phishing scams for Complainant’s services. Furthermore, Respondent’s domain name’s resolving website features pay-per-click links.
4. Respondent registered and uses the <newsnapspy.pw> domain name in bad faith. Respondent attempts to disrupt Complainant’s business by providing users a link for a hacking tool for Complainant’s services. Additionally, Respondent diverts users to the domain name’s website where it profits from commercial, pay-per-click links. Respondent also uses the domain name to conduct a phishing scheme.
5. Finally, Respondent had actual knowledge of Complainant’s rights in the SNAP mark prior to registering the domain name.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant holds trademark rights for the SNAP mark. Respondent’s domain name is confusingly similar to Complainant’s SNAP mark. Complainant has established that Respondent lacks rights or legitimate interests in the use of the <newsnapspy.pw> domain name and that Respondent registered and uses the domain name 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:
(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 has rights in the SNAP mark based upon registration of the mark with the USPTO (e.g., Reg. No. 4,111,564, registered Mar. 13, 2012). Registration of a mark with the USPTO is sufficient to establish rights in that mark. See Home Depot Product Authority, LLC v. Samy Yosef / Express Transporting, FA 1738124 (Forum July 28, 2017). The Panel therefore holds that Complainant’s registration of the SNAP mark with the USPTO is sufficient to establish rights in the mark under Policy ¶ 4(a)(i).
Next, Complainant argues Respondent’s <newsnapspy.pw> domain name is confusingly similar to the SNAP mark, as the name incorporates the mark in its entirety, adds generic terms “new” and “spy,” and a “.pw” ccTLD. Adding a generic term and a ccTLD to a complainant’s mark does not sufficiently mitigate any confusing similarity between the domain name and mark in a Policy ¶ 4(a)(i) analysis. See Morgan Stanley v. Eugene Sykorsky / private person, FA 1651901 (Forum Jan. 19, 2016) (concluding that the addition of a generic term and top level domain to a trademark is inconsequential under a Policy ¶ 4(a)(i) analysis); see also Transamerica Corporation v. Whois Foundation, FA 1700616 (Forum Dec. 5, 2016) (“For the purposes of comparison of the domain name and the trademark, it is agreed by panelists that ccTLDs can generally be disregarded”). The Panel holds that the <newsnapspy.pw> domain name is confusingly similar to the SNAP mark per Policy ¶ 4(a)(i).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).
Complainant alleges that Respondent holds no rights or legitimate interests in the <newsnapspy.pw> domain name. This allegation must be supported with a prima facie showing by Complainant under Policy ¶ 4(a)(ii). After a complainant successfully makes a prima facie case, a respondent is faced with the burden of proving it does have rights or legitimate interests in the domain name. In Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Forum Feb. 13, 2007), the panel held that when a complainant produces a prima facie case, the burden of proof then shifts to the respondent to demonstrate its rights or legitimate interests in the domain name under Policy ¶ 4(c); see also Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent. In those circumstances, the common approach is for respondents to seek to bring themselves within one of the examples of paragraph 4(c) or put forward some other reason why they can fairly be said to have a relevant right or legitimate interests in respect of the domain name in question.”). The Panel holds that Complainant has made a prima facie case.
Complainant argues that Respondent has no rights or legitimate interests in the <newsnapspy.pw> domain name, as Respondent is not commonly known by the domain name, nor has Complainant authorized Respondent to use the SNAP mark in any way. Where a response is lacking, WHOIS information can support a finding that the respondent is not commonly known by a domain name. See Philip Morris USA Inc. v. Usama Ramzan, FA 1737750 (Forum July 26, 2017) (“Moreover, the pertinent WHOIS information identifies the registrant of the domain name only as “Usama Ramzan,” which does not resemble the domain name. On this record, we conclude that Respondent has not been commonly known by the challenged domain name so as to have acquired rights to or legitimate interests in it within the purview of Policy ¶ 4(c)(ii).”). The WHOIS information of record identifies the registrant of the <newsnapspy.pw> domain name as “Ahmad Flemming,” and no information in the record indicates Respondent was authorized to register a domain name incorporating Complainant’s mark. The Panel therefore finds under Policy ¶ 4(c)(ii) that Respondent has not been commonly known by the <newsnapspy.pw> domain name.
Complainant further argues Respondent’s lack of rights or legitimate interests in the <newsnapspy.pw> domain name is demonstrated by its failure to use the name to make a bona fide offering of goods or services or for a legitimate noncommercial or fair use. Complainant has provided evidence that the domain name resolves to a website which is being used to obtain click-through revenue by linking to third-party websites. This use does not establish rights or legitimate interests per Policy ¶¶ 4(c)(i) or (iii). See Danbyg Ejendomme A/S v. lb Hansen / guerciotti, FA1504001613867 (Forum June 2, 2015) (finding that the respondent had failed to provide a bona fide offering of goods or services, or a legitimate noncommercial or fair use of the disputed domain name where the disputed domain name resolved to a website that offered both competing hyperlinks and hyperlinks unrelated to the complainant’s business). The Panel thus holds that Respondent does not have rights or legitimate interests in the <newsnapspy.pw> domain name.
Additionally, Complainant has shown that Respondent’s <newsnapspy.pw> domain name resolving website also purports to offer a hacking tool for Complainant’s “Snapchat” services which may be used in furtherance of a phishing scheme. This use is not indicative of rights or legitimate interests per Policy ¶¶ 4(c)(i) or (iii). See Amazon Technologies, Inc. v. Suzen Khan / Nancy Jain / Andrew Stanzy, FA 1741129 (Forum Aug. 16, 2017) (finding that respondent lacked rights and legitimate interests in a domain name with which it conducted a phishing scheme to procure “Internet users’ personal information”). For this further reason, Respondent does not have rights or legitimate interests in the <newsnapspy.pw> domain name.
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant claims Respondent registered and uses <newsnapspy.pw> domain name in bad faith. Specifically, Complainant has shown that Respondent uses the domain name to disrupt Complainant’s business by offering hacking tools for Complainant’s services that may compete with Complainant. Using a domain name that incorporates the mark of another to disrupt and compete with a complainant’s business constitutes bad faith under Policy ¶ 4(b)(iii). See Ripple Labs Inc. v. Jessie McKoy / Ripple Reserve Fund, FA 1790949 (Forum July 9, 2018) (finding bad faith per Policy ¶¶ 4(b)(iii) and (iv) where the respondent used the disputed domain name to resolve to a website upon which the respondent passes off as the complainant and offers online cryptocurrency services in direct competition with the complainant’s business); see also PopSockets LLC v. san mao, FA 1740903 (Forum Aug. 27, 2017) (finding disruption of a complainant’s business which was not directly commercial competitive behavior was nonetheless sufficient to establish bad faith registration and use per Policy ¶ 4(b)(iii)). Therefore, the Panel holds that Respondent’s use of the resolving website disrupts Complainant’s business, thus constituting bad faith per Policy ¶ 4(b)(iii).
Additionally, Complainant argues Respondent attempts to attract, for commercial gain, users to the <newsnapspy.pw> domain name where it features pay-per-click links to third party websites. Use of a domain name that is confusingly similar to the mark of another to generate revenue via pay-per-click links demonstrates bad faith under Policy ¶ 4(b)(iv). See 3M Company v. Nguyen Hoang Son / Bussiness and Marketing, FA1408001575815 (Forum Sept. 18, 2014) (finding that the respondent’s use of the disputed domain name to host sponsored advertisements for Amazon, through which the respondent presumably profited, indicated that the respondent had used the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iv)); see also Dovetail Ventures, LLC v. Klayton Thorpe, FA1506001625786 (Forum Aug. 2, 2015) (holding that the respondent had acted in bad faith under Policy ¶ 4(b)(iv), where it used the disputed domain name to host a variety of hyperlinks, unrelated to the complainant’s business, through which the respondent presumably commercially gained). The Panel finds that Respondent registered and uses the <newsnapspy.pw> domain name in bad faith per Policy ¶ 4(b)(iv).
Finally, Complainant also contends that in light of the fame and notoriety of Complainant's SNAP mark, it is inconceivable that Respondent could have registered the <newsnapspy.pw> domain name without actual knowledge of Complainant's rights in the mark. The Panel agrees that it is apparent that Respondent had actual knowledge of Complainant's rights in the mark prior to registering the <newsnapspy.pw> domain name; actual knowledge is adequate evidence of bad faith under Policy ¶ 4(a)(iii). This is shown as Respondent prominently displays Complainant’s SNAP mark and ghost logo on the resolving website. See Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum Feb. 6, 2014) (“The Panel notes that although the UDRP does not recognize ‘constructive notice’ as sufficient grounds for finding Policy ¶ 4(a)(iii) bad faith, the Panel here finds actual knowledge through the name used for the domain and the use made of it.”). The Panel may agree and find Respondent had actual knowledge of Complainant’s rights in the mark and thus registered the <newsnapspy.pw> name in bad faith.
The Panel finds Complainant has satisfied 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 <newsnapspy.pw> domain name be TRANSFERRED from Respondent to Complainant.
Bruce E. Meyerson, Panelist
Dated: November 8, 2018
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