Snap Inc. v. Daisy Ducharme / Hangman Prints Inc.
Claim Number: FA1905001845221
Complainant is Snap Inc. (“Complainant”), represented by Peter E. Kidd of Kilpatrick Townsend & Stockton LLP, California, USA. Respondent is Daisy Ducharme (“Respondent”), represented by Ari Goldberger and Jason Schaeffer of ESQwire.com, P.C., New Jersey, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <snapchatprints.com> registered with GoDaddy.com, LLC.
The undersigned certify that they have acted independently and impartially and to the best of their knowledge have no known conflict in serving as Panelists in this proceeding.
M. Kelly Tillery, Chair and Panelist.
The Honorable Neil Anthony Brown, QC, Panelist.
Luz Helena Villamil Jimenez, Panelist.
Complainant submitted a Complaint to the Forum electronically on May 28, 2019; the Forum received payment on May 28, 2019.
On May 29, 2019, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <snapchatprints.com> 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 30, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 24, 2019 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@snapchatprints.com. Also on May 30, 2019, 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 June 21, 2019.
Additional Submissions were received from Complainant on June 26, 2019 and from Respondent on July 2, 2019. These Additional Submissions of Complainant was timely but that of Respondent untimely. Supplemental Rule 7. However, the Panel exercises its discretion and will consider same. Authorize.net LLC v. Cardservice High Sierra, D2008-0760 (WIPO June 30, 2008) (Aib-Vincotte Belgium ASBL et al v. Corporation Texas, D2005-0485 (WIPO Aug. 29, 2005); Tom Stoppard et al. v. Texas International Property, D2007-1404 (WIPO Nov. 26, 2007); United Pet Group, Inc. v. Texas International Property, D2007-1039 (WIPO Sept. 25, 2007).
On June 27, 2019, pursuant to Complainant's request to have the dispute decided by a three-member Panel, the Forum appointed:
M. Kelly Tillery, as Chair and Panelist.
The Honorable Neil Anthony Brown, QC as Panelist.
Luz Helena Villamil Jimenez, as Panelist.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant operates a “camera and messaging application.” Complainant has rights in the SNAPCHAT® mark based upon its registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 4,375,712, registered July 30, 2013). Respondent’s <snapchatprints.com> domain name is identical or confusingly similar to Complainant’s SNAPCHAT® mark because it wholly incorporates Complainant’s SNAPCHAT® mark, and merely adds the generic term “prints” and the “.com” generic top-level domain (“gTLD”).
Respondent lacks rights or legitimate interests in the <snapchatprints.com> domain name as Respondent is not authorized to use Complainant’s SNAPCHAT mark, is not commonly known by the disputed domain name, and fails to use the disputed domain name in connection with a bona fide offering of goods and services or for a legitimate noncommercial or fair use.
Respondent registered and uses the <snapchatprints.com> domain name in bad faith because Respondent attempts to attract, for commercial gain, users to the disputed domain name where Respondent offers a service for profit based on Complainant’s goods. Finally, Respondent had actual knowledge of Complainant’s SNAPCHAT mark prior to registering the disputed domain name.
B. Respondent
Respondent registered the disputed domain name on December 20, 2018.
Respondent contends that the <snapchatprints.com> domain name makes a legitimate fair use of the SNAPCHAT mark because Respondent offers a printing service based upon the service of Complainant which is not competitive with Complainant and Respondent has not registered and used the disputed domain name in bad faith because there is no evidence of bad faith registration and use.
1) Complainant has met its burden to prove by a preponderance of the relevant, credible, admissible evidence that Respondent’s Domain Name is confusingly similar to a Trademark in which Complainant has rights.
2) Complainant has met its burden to prove by a preponderance of the relevant, credible, admissible evidence that Respondent has no rights or legitimate interests in respect of the Domain Name.
3) Complainant has met its burden to prove by a preponderance of the relevant, admissible evidence that Respondent's domain name has been registered and is being used 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.
Complainant claims rights in the SNAPCHAT® mark through its registration of the mark with the USPTO (Reg. No. 4,375,712, Registered July 30, 2013). Registration of a mark with the USPTO sufficiently confers a complainant’s rights in a mark for the purposes of Policy ¶ 4(a)(i). DIRECTV, LLC v. The Pearline Group, FA 1818749 (Forum Dec. 30, 2018) (complainant’s ownership of a USPTO registration demonstrate its rights in mark for the purposes of Policy ¶ 4(a)(i).). Respondent acknowledges and does not dispute these rights. Accordingly, the Panel finds that Complainant has established rights in the SNAPCHAT® mark for the purposes of Policy ¶ 4(a)(i).
Next, Complainant argues that Respondent’s <snapchatprints.com> domain name is identical or confusingly similar to Complainant’s mark as it incorporates the mark in its entirety adding only a descriptive term along with a gTLD. Similar changes in a registered mark have failed to sufficiently distinguish a domain name for the purposes of Policy ¶ 4(a)(i). The Toronto-Dominion Bank v. George Whitehead, FA 1784412 (Forum June 11, 2018) (“[S]light differences between domain names and registered marks, such as the addition of words that describe the goods or services in connection with the mark and gTLDs, do not distinguish the domain name from the mark incorporated therein per Policy ¶ 4(a)(i).”). Here, Complainant argues that Respondent incorporates the SNAPCHAT® mark in its entirety, adding only the term “prints,” which is merely descriptive of Respondent’s business, and the “.com” gTLD. Respondent makes no contentions with regards to Policy ¶ 4(a)(i). The Panel finds that the <snapchatprints.com> domain name is confusingly similar to the SNAPCHAT mark under 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. Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (complainant must offer some evidence to make its prima facie case to satisfy Policy ¶ 4(a)(ii)); Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (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 the <snapchatprints.com> domain name as Respondent 1) is not commonly known by the disputed domain name and 2) is not authorized by Complainant to use the SNAPCHAT® mark. Respondent does not dispute either point.
WHOIS information evidences that the Respondent is not commonly known by the disputed domain name. Amazon Technologies, Inc. v. LY Ta, FA 1789106 (Forum June 21, 2018) (respondent has no rights or legitimate interests in a disputed domain name where complainant asserted it did not authorize respondent to use the mark, and the relevant WHOIS information indicated respondent is not commonly known by the domain name). Additionally, lack of authorization to use a complainant’s mark supports a finding that the respondent is not commonly known by the disputed domain name per Policy ¶ 4(c)(ii). 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.”).
WHOIS information for Respondent indicates that Respondent is known as “Daisy Ducharme / baby & belly photography” and no evidence of record indicates that Respondent is or has ever been authorized to use Complainant’s SNAPCHAT® mark. Therefore, the Panel finds that Respondent lacks rights or legitimate interests in the disputed domain name under Policy ¶ 4(c)(ii).
Complainant further argues Respondent fails to use the <snapchatprints.com> domain name in connection with a bona fide offering of goods and services or for a legitimate noncommercial or fair use because the resolving webpages offers a printing service which references Complainant, Complainant’s services and those of its competitors. A respondent’s use of a disputed domain name to divert customers looking for a complainant, or for goods or services unrelated to the mark, is not a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor does it represent a noncommercial or fair use under Policy ¶ 4(c)(iii). See Seiko Kabushiki Kaisha v. CS into Tech, FA 198795 (Forum Dec. 6, 2003) (“Diverting customers, who are looking for products relating to the famous SEIKO mark, to a website unrelated to the mark is not a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor does it represent a noncommercial or fair use under Policy ¶ 4(c)(iii)”). Thus, the Panel finds Respondent fails to use the <snapchatprints.com> domain name in connection with a bona fide offering of goods and services or for a legitimate noncommercial or fair use because the resolving webpages offers a printing service which references Complainant, Complainant’s services, and its competitors. Respondent’s “Fair Use” Defense shall be addressed separately herein below.
Complainant argues Respondent registered and uses the <snapchatprints.com> domain name in bad faith because Respondent attempts to attract, for commercial gain, users to the disputed domain name where Respondent offers a competitive service for profit based on Complainant’s goods. Some panels have defined “competitor” as one who acts in opposition to another and the context does not imply or demand any restricted meaning such as a direct commercial or business competitor. Mission KwaSizabantu v. Rost, D2000-0279 (WIPO June 7, 2000) (defining “competitor” as “one who acts in opposition to another and the context does not imply or demand any restricted meaning such as commercial or business competitor”). Thus, the Panel agrees that Respondent’s service is, generally speaking, a “competitor” to Complainant’s service, and the Panel finds Respondent registered and uses the <snapchatprints.com> domain name in bad faith.
Even if, however, Respondent is technically not a “competitor,” the Panel would still find registration and use in bad faith for the reasons stated herein below in the discussion of Respondent’s “Fair Use” Defense.
Finally, Complainant asserts that Respondent had actual and/or constructive knowledge of Complainant’s rights in the SNAPCHAT® mark as the result of Complainant’s extensive use of the mark predating the date on which Respondent registered the <snapchatprints.com> domain name and Respondent’s use of the mark on the resolving webpage. Respondent does not deny either actual knowledge or such use. Actual knowledge of Complainant’s mark prior to registering is sufficient to find bad faith under Policy ¶ 4(a)(iii). See Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum Feb. 6, 2014) Use of a mark on a resolving webpage demonstrates that a respondent had actual knowledge of a complainant’s rights in a mark at the time of registration, thus constituting bad faith. Finex Inc. v. xu shuaiwei, FA 1760249 (Forum Jan. 1, 2018) (“Respondent’s prior knowledge is evident from the notoriety of Complainant’s BITFINEX trademark as well as from Respondent’s use of its trademark laden domain name to direct internet traffic to a website which is a direct competitor of Complainant”). Thus, the Panel finds that Respondent had actual notice of Complainant’s rights in the SNAPCHAT® mark under Policy ¶ 4(a)(iii).
Respondent argues that the <snapchatprints.com> domain name makes a legitimate fair use of the SNAPCHAT® mark because Respondent offers a service based upon the service of Complainant. Some panels have found that a respondent’s such a use of a disputed domain name is a legitimate use where the respondent provided services designed to be subsidiary to the Complainant’s service. Secondary Sch. Admission Test Bd., Inc. v. Severino & Hosko, FA 408094 (Forum Mar. 24, 2005) (respondent’s use of the <prepssat.com> was a legitimate use because respondent provided services designed to help students prepare for the SSAT, also the complainant’s mark). See also, Steinway, Inc. v. Simon, FA 1318229 (6/2/10); Chicago Board of Options Exchange, Inc. v. Private, No. 804703 (NAF 11/29/06); ETS v. Morrison Media, LLC, D2006-1010 (WIPO 5/12/06); Morgan Stanley v. Woods, No. 604103 (NAF 1/16/06); Oki Data American, Inc. v. ASD, Inc., D2001-6903 (WIPO 11/6/01); Yeti Coolers v. Lyon, FA 1675141 (NAF 7/11/16).
Thus, Respondent’s sole defense is “nominative fair use.” She admits Prong #1 (domain name identical or confusingly similar to a trademark in which Complainant has rights), but claims she has rights in the disputed domain name (Prong #2) and did not register and does not use it in bad faith (Prong #3) solely due to the claimed “nominative fair use.”
Respondent explains her use of Complainant’s Federally-Registered SNAPCHAT® Trademark in its disputed domain name in a variety of ways, including that:
1) it is a mobile application that specifically integrates with Snapchat and designed to help users of Complainant’s Snapchat, to among other things, enjoy, use and print their photographs;
2) it communicates to Snap users that they can print and enjoy their Snapchat photos using Respondent’s products and services;
3) it is a great addition to enable users of social media platforms, such as Snapchat the ease and convenience of printing the photos they share on the Snap platform;
4) users of Snapchat would desire access to Respondent’s application to enhance their experience and print their Snap photos;
5) it helps people remember and best use the photographs they post online;
6) it is to assist users of Snapchat in finding a solution to a looming problem and allowing them an easy method to print their Snapchat photo library;
7) it promotes the opportunity to print photos from Snapchat using Respondent’s platform;
8) it conveys that those looking to print Snapchat photographs may use the Respondent’s Mobile App to print such photos;
9) it communicates to Snap users that Respondent’s Mobile App works with Snap or Snapchat (Complainant’s “products”) and can print those photographs;
10) it communicates that her service supports and is designed for use with Snapchat;
11) it is using the trademark to honestly describe the services she offers (to describe to and alert users of Snapchat that she has a service to print Snapchat photos or “chats”).
Respondent claims that this use constitutes permissible “fair use” and thus the domain name was not registered in or being used in bad faith. Yet, Respondent’s own words make clear that her use of the Trademark SNAPCHAT® is not “fair use” under UDRP rule and/or existing United States Trademark Law.[i] To the extent that any of the UDRP decisions Respondent cites support Respondent’s claimed “fair use” defense, they were, with all due respect to those panelists, wrongly decided.
In support of this defense, Respondent relies upon the seminal U.S. “nominative fair use case” – The New Kids On The Block v. News Am. Publ’g, Inc.,971 F.2d 302 (9th Cir. 1991) and the aforementioned seven UDRP Decisions. This Panel is, of course, not bound by any or all of these decisions, even if any had been correctly reasoned and decided.
What Respondent, and to some extent the panelists in those UDRP cases cited above, do/did not seem to appreciate is that this use of Complainant’s Trademark is likely to cause (1) affiliation, association, and/or sponsorship confusion and/or (2) initial interest confusion, either of which would constitute evidence of bad faith registration and use.
Respondent is clearly attempting to ‘reap where she has not sown.’ International News Service v. Associated Press, 248 U.S. 215 (1918); Luke 19:21 and 22; Matthew 25:24; Matthew 25:26; John 4:38. Her app, by her own admission, can be used with other photo sites, similar to and competing SNAPCHAT®, such as Facebook®, Instagram®, and Flickr®. A simple Google® search reveals hundreds, if not thousands of other such photo apps and sites.
Respondent does not meet the requirements for nominative fair use set forth in New Kids as her service is readily identifiable without the use of Complainant’s Trademark. As Complainant points out, Respondent’s app is not specific to SNAPCHAT®; in fact, it is useable with at least five other such photo sites which compete with SNAPCHAT®. With 171,476 English language words available to her, Oxford English Dictionary, (Oxford Univ. Press, 20 Vols.) 1989 Respondent surely could have selected a domain name which described her app’s features without using another’s Federally-Registered Trademark.
The very case law that Respondent quotes defeats her proffered defense. For example, nominative fair use is “where the only word reasonably available to describe a particular thing is pressed into service” New Kids, supra “… it would be difficult if not impossible, for Respondent to adequately identify the services it is offering without making reference to [mark].” Id. That is simply not the case here.
Here, Respondent readily acknowledges that her app can be used with other photo sites, similar to and competitive with that of Respondent. It is not only a SNAPCHAT® app. In addition, there are, in fact, hundreds, if not thousands of similar sites, not one of which found it “difficult, if not impossible” to select and use monikers and domain names which do not include Complainant’s Federally-Registered Trademark.
This Panel is not the first to have identified this misunderstanding of this defense. See, e.g., Ford Motor Company v. Greg Lane, FA1210001467377 (Forum Dec. 14, 2012) (rejecting the New Kids concept of nominative fair use as directly applicable to domain names). In Ford Motor Company v. Greg Lane, the Panel cited a number of UDRP decisions rejecting the nominative fair use defense, explaining that the defense is generally not well adapted to domain names consisting of nothing more than another party’s trademark and a descriptive or generic word. See, e.g., Caterpillar Inc. v. Greg Poole d/b/a Industrial Tests, Inc., FA 1303230 (Forum Mar. 12, 2010) (rejecting nominative fair use, finding use of the <caterpillarservices.com> domain name unnecessary to inform consumers that respondent offered services in connection with the CATERPILLAR brand products); Takeda Pharmaceutical Co. Ltd. v. Terry Kester, FA 823235 (Forum Dec. 1, 2006) (“I find that nominative fair use does allow Respondent to use Complainant’s ROZEREM mark to indicate in advertising or informational material that Respondent sells ROZEREM; however, fair use does not go so far as to allow Respondent to use Complainant’s mark in its domain name.”); EPSON Europe BV v. M31 Internet Palma, S.L., D2005-0604 (WIPO Oct. 7, 2005) (“EPSON”) (“Respondent can certainly make a nominative fair use of the trademark EPSON when selling EPSON projectors. However, the Panel finds that it does not constitute nominative fair use to make Respondent’s Web site resolve to a domain name that does not reflect the name of Respondent, i.e. M31 internet Palma S.L., but the trademark over which Complainant holds exclusive rights, and the name with which Complainant has been commonly known in the
market.”); YETI Coolers, LLC v. Bearden, FA1606001680755 (Forum Aug. 10, 2016) (nominative fair use defense did not exist here; domain <yetipowdercoating.com> for a website that provided services of powder coating Yeti products. “The theory of nominative fair use exists, but it does not extend to the right to include a trademark in a registration of any kind, and definitely not in a domain name.”)
In 1989, the U.S. Lanham Act was amended to make clear that not only confusion as to source was actionable, but also as to “affiliation, connection, sponsorship, association and/or approval. 15 U.S.C. §1125(a). This amendment merely codified a body of law that had developed in U.S. courts over the years. The statute now provides in pertinent part:
(a) Civil Action
(1) Any person who, on or in connection with any goods or services, or any container of goods, uses in commerce any word, term, name, symbol or device, or any combination thereof, or any false designation of origin, false or misleading description of fact, or false or misleading representation of fact, which
(A) is likely to cause confusion, or to cause mistake, or to deceive as to the affiliation, connection, or association of such person, with another person, or as to origin, sponsorship, or approval of his or her goods or services, or commercial activities by another person, or … .
* * *
shall be liable in a civil action by any person who believes that he or she is or is likely to be damaged by such act.
The UDRP also specifically, similarly provides for “affiliation” confusion, as a basis for registration and use in bad faith.
Further, Respondent’s domain name is akin to a roadway sign using another trademark directing a consumer by attracting him/her to the well-known Federally-Registered Trademark, SNAPCHAT® and then directing the consumer to another site with a wholly-unrelated domain name (hangmanprints.com) which features services, not identical to, but clearly and intentionally related to those of the Trademark Owner, but not at all affiliated with, associated with, connected with or sponsored by that Trademark Owner. That is precisely both Initial Interest Confusion (See, Brookfield v. West Coast Ent’t., 174 F.3d 1056 (9th Cir. 1999); Playboy Enterprises, Inc. v. Netscape Comm. Corp., 354 F.3d 1020 (9th Cir. 2004), Promatek v. Equitrac, 300 F.3d 808 (7th Cir. 2002)) and “association, affiliation, sponsorship” confusion.
Complainant raised the “association/sponsorship” argument, but Respondent ignored it. Whether Respondent is engaging in a “bait and switch” scheme as Complainant also argues is a question beyond this Panel’s purview and unnecessary to address as the “association” likelihood of confusion is manifest.
Many UDRP decisions find that such redirection/association is registration and use in bad faith and not fair use. Use of a domain name that is confusingly similar to another’s trademark to divert internet traffic to a commercial website is not a legitimate noncommercial or fair use under the Policy. See, e.g., Snap Inc. v. Gerald Washington / Snapchat Premium Members, FA1807001798538 (Forum Aug. 27, 2018) (use of disputed domain name <snapchatpremium.net> to divert users to a website offering personal training services for respondent’s commercial gain not a legitimate or fair use); Snap Inc. v. Aarushi Jha. FA1807001798542 (Forum Aug. 22, 2018) (no rights or legitimate interests in use of a confusingly similar domain to divert users to third party advertisements for respondent’s financial gain); Wachovia Cor. V. Carrington, WIPO Case No. D2002-0775 (Oct. 2, 2002) (“Although Respondent has provided users with access to… purported surveys about users online experiences, these services are not ‘bona fide’ because Respondent is using the domain name in bad faith for the purpose of diverting users to its own site [for his own commercial gain] through confusion.”); Black & Decker Corp. v. Clinical Evaluations, FA 112629 (Forum June 24, 2002) (respondent’s use of the disputed domain name to redirect internet users to commercial websites, unrelated to the complainant did not evidence rights or legitimate interests in the domain name); Victoria’s Secret Stores Brand Mgmt., Inc. v. Above.com Domain Privacy, FA 1393078 (Forum July 23, 2011) (“Respondent is not using the domain name for a bona fide offering of goods or services under Policy Paragraph 4(c)(i) or a legitimate noncommercial or fair use under policy Paragraph 4(c)(iii), where Respondent is directing internet users to a survey website for its own commercial gain.”); Snap Inc. v. Gerald Washington / Snapchat Premium Members, FA1807001798538 (Forum Aug. 27, 2018) (finding bad faith registration and use where respondent used the disputed domain name to redirect users to respondent’s website for commercial gain through the sale of products unrelated to complainant); Snap Inc. v. Ricardo Nunez, FA1807001798539 (Forum Aug. 22, 2018) (“use of a domain name to attract Internet users and create confusion as to the source, sponsorship, affiliation or endorsement of the content therein for commercial gain is evidence of bad faith”); Kmart v. Khan, FA 127708 (Forum Nov. 22, 2002) (if respondent profits from diversionary use of a complainant's mark when the domain name resolves to commercial websites that respondent was using the domain name in bad faith); G.D. Searle & Co. v. Celebrex Drugstore, FA 123933 (Forum Nov. 21, 2002) (respondent registered and used the domain name in bad faith pursuant to Policy ¶ 4(b)(iv) because the respondent was using the confusingly similar domain name to attract internet users to its commercial website); Black & Decker Corp. v. Clinical Evaluations, FA 112629 (Forum June 24, 2002) (finding bad faith where respondent registered and used a confusingly similar domain name to divert internet users to pay-per-click websites for respondent’s financial gain).
RESPONDENT’S ADMISSIONS
Respondent freely admits that its app, found via the disputed domain name “works with SNAP or SNAPCHAT (Complainant’s products,”) “helps SNAP users print their photographs,” “is used in connection with the trademark holder’s service or offering,” is a “social media related service,” “supports and is designed for use with SnapChat,” (Respondent’s “Reply to Complainant’s Additional Submission”). What Respondent does not seem to appreciate is that these admissions support and confirm her bad faith registration and use, as it is substantial evidence that she has intentionally attempted to attract users for commercial gain by creating a likelihood of confusion as to source or affiliation.
DISCLAIMER
Respondent’s belated addition of a “disclaimer” to her website disclosed in her untimely “Reply to Additional Submission” may be well intended, but is of no avail to her. If they see or read this disclaimer at all, consumers cannot do so until and unless they have already been improperly directed to her site, by her misuse of Complainant’s Trademark in the disputed domain name. By then, it is too little, too late. Further, such disclaimers most often constitute more legal legerdemain, are notoriously ineffective and are often counterproductive. (See, e.g., Alta Vista Co. v. Alta Visa, No. FA 0008000095480 (2000), Weight Watchers Int’l v. Stouffer Corp., 744 F.Supp. 1259, 1277 (S.D.N.Y. 1990); Freeway Ford, Inc. v. Freeway Motors, Inc., 512 F.Supp. 2d 1253, 1359 (M.D. GA. 2007); Toho Co. v. Wm. Morrow Co., 33 F.Supp. 2d 1206 (C.D.Ca. 1998); Cartier, Inc. v. Deziner Wholesale, LLC, No. 98 Civ. 4947 (S.D.N.Y. 2000)).
Panelist Brown agrees with the majority in the conclusion reached in the decision and the overall result of the proceeding, but wishes to say in his own words why he has reached that conclusion.
In particular, his opinion is that the Respondent’s defense, based as it is on nominative fair use, cannot be sustained because of the facts that have emerged from the evidence. In other words, the defense fails not because there can be no circumstances where the defense of nominative fair use could apply to domain names, but because the facts in the present case do not measure up to making out such a defense.
The Respondent, via its counsel, has advanced a persuasive argument that in an appropriate case, nominative fair use is applicable in cases of domain names and may give rise to a right or legitimate interest in the disputed domain name and may also negate an argument of bad faith registration and use. In support of that argument, the Respondent relies on the New Kids decision and rightly draws attention to the fact that the principle has been applied in several domain name cases under the Policy.
The majority in the present case rejects the general application of such a principle. Panelist Brown would not go that far and, as presently advised, is of the view that the principle contended for by the Respondent may well apply in some cases, depending on the facts of the proceeding before the Panel. As the majority of the Panel point out, UDRP decisions are not precedents and no panel is obligated to apply nominative fair use simply because a prior panel has applied it. Rule 15(a) of the applicable rules shows that those who drew the UDRP were alive to this issue and resolved it by declaring that a panel has discretion to apply “any rules and principles of law that it deems applicable.” Panelist Brown would therefore be opposed to any decision that excluded the proper exercise of that discretion that might allow the nominative fair use defense.
Accordingly, in some cases the application of nominative fair use may well be appropriate. The facts that are proven in some cases may well show that the Respondent is “… making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.” If so, that would bring the Respondent within the meaning of paragraph 4 (c)(iii) of the Policy and create a defense.
In the present case, for example, and future cases like it, it may be particularly appropriate, if both parties are United States entities, as nominative fair use is substantially a United States concept. In other cases, such as cases emanating from other jurisdictions where the concept may not be known, the application of the principle may not be appropriate.
The Respondent in the present case has made out a case why nominative fair use should be considered. However, the Respondent’s real problem in this case is not whether the concept should be applied but rather, when it is applied, whether the facts make out the case? It is here that the facts the Respondent needs to succeed are simply not present. The Respondent in arguing for the defense to be applied is asking her counsel in effect to make bricks without straw, as the unchallenged evidence is that a case for nominative fair use cannot be made out on the evidence. As Panelist Brown sees it, the following are the deficiencies in the evidence in support of the Respondent’s case.
First, nominative fair use requires the Respondent to show that there was no reasonably available language to describe her printing service other than by using the Complainant’s trademark in her domain name. That is not so. The Respondent describes her service on her website as “Print your photos on the coolest DIY global print shop app.” Any combination of those words would describe the service without mentioning the Complainant’s trademark. The Respondent again describes the service on her website as “The leading printing app for iOS and Android.” Again, any combination of those words and conceivably including the Respondent’s own name or the name of her business, Hangman Prints, could be used without falling foul of the Complainant’s trademark and yet would adequately describe the Respondent’s business.
Secondly, Panelist Brown would probably go further than the majority and the Complainant itself, as not only is the domain name not the only way of describing the Respondent’s service, it is not even, in any practical sense, a way of doing so, at least accurately. That is because the wording of the domain name does not describe the service. The service is not one for printing Snapchat photos, but one for printing all photos no matter from what platform they emanate, including of course Snapchat, although Snapchat is not mentioned by name. Indeed, the domain name claims that it is for printing Snapchat photos and that is clearly the sales pitch and the inducement being made to internet users to follow the domain name, but the reality on arrival at the site is that Snapchat is not mentioned by name at all, (although its logo is on the site), whereas other services and presumably including rival services are specified: Facebook, Flickr, Dropbox and Twitter (by logo). Indeed, when the site actually specifies the source of photos the Respondent is offering to print, by including them under the heading “Print Sources”, it specifies only Instagram, Facebook and Google Photos and not Snapchat. How, then, can it be said that this is a service for printing Snapchat photos? In fact, the net being cast by the Respondent in describing the trade she wants to attract is a very wide one, but it is not accurately described as “snapchatprints”.
Thirdly, that leads to the real obstacle facing the Respondent. The issue here is whether the facts show a nominative fair use as that expression is generally understood. The Respondent has used a domain name incorporating the Complainant’s SNAPCHAT trademark, so it is clearly proposing to use and trade on the Complainant’s trademark to ply its trade; the domain name resolves to a website that does not use the word Snapchat, but uses the names of other services at least some of which must be in competition with Snapchat; it also extensively uses the name of the Respondent’s own business, at www.hangmanprints.com. In fact, the domain name is not used to resolve to a website in its own right as it is diverted directly to www.hangmanprints.com. Accordingly, what the Respondent has done is use the Complainant’s trademark to attract business for itself as Hangman Prints by inducing internet users to believe that this is the place where Snapchat photos are printed, presumably with the imprimatur of the Complainant, then to cease any use of the Snapchat name, promote the Complainant’s competitors by name and solicit further business by offering to print photos taken on the competitors’ platforms. That it turn, may even generate new business for the competitors. When all of this is done under the imprimatur of the Complainant’s trademark, and using that trademark without permission, it is clear that it is an improper use of the Complainant’s trademark, unfair and outside the parameters of paragraph 4(c) (iii) of the Policy.
Being outside those parameters means that it does not amount to a right or legitimate interest in the domain name. It also means that the domain name has been registered and used in bad faith.
Having established all three elements required under the ICANN Policy, the Panel unanimously concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <snapchatprints.com> domain name be TRANSFERRED from Respondent to Complainant.
M. Kelly Tillery, as Chair and Panelist
The Honorable Neil Anthony Brown, QC as Panelist
Luz Helena Villamil Jimenez, as Panelist
Dated: July 11, 2019
[i] Rule 15(a) provides that the Panel should decide this proceeding on the basis, inter alia, of “any rules and principles of law that it deems applicable.” The record shows that both the Complainant and the Respondent are domiciled in the United States. The Panel therefore decides that it is appropriate to have regard to United States trademark law.
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