Snap Inc. v. Daisy Ducharme / baby & belly photography
Claim Number: FA1911001872261
Complainant is Snap Inc. (“Complainant”), represented by Dennis L Wilson of Kilpatrick Townsend & Stockton LLP, United States. Respondent is Daisy Ducharme / baby & belly photography (“Respondent”), Canada.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <snapchatprints.co>, <snapcemetery.com>, <snapchatstore.com> and <snapchatprints.app>, 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 November 20, 2019; the Forum received payment on November 20, 2019.
On November 21, 2019, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <snapchatprints.co>, <snapcemetery.com>, <snapchatstore.com> and <snapchatprints.app> domain names are registered with GoDaddy.com, LLC and that Respondent is the current registrant of the names. 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 November 25, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 16, 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.co, postmaster@snapcemetery.com, postmaster@snapchatstore.com, postmaster@snapchatprints.app. Also on November 25, 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.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On December 20, 2019, 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 names be transferred from Respondent to Complainant.
A. Complainant
i) Complainant, Snap Inc., owns and operates a camera and messaging application. Complainant has rights in the SNAP and SNAPCHAT marks based upon registration with the United States Patent and Trademark Office (“USPTO”) (e.g., SNAP-Reg. No. 3,345,533, registered June 4, 2013; SNAPCHAT-Reg. No. 4,375,712, registered July, 30, 2013). Respondent’s <snapchatprints.co>, <snapcemetery.com>, <snapchatstore.com>, and <snapchatprints.app> domain names (“disputed domain names”) are confusingly similar to Complainant’s marks because they wholly incorporate Complainant’s SNAP or SNAPCHAT marks, simply adding the descriptive terms “cemetery,” or “prints,” or “store” and either the “.com,” “.app” or “.co” generic top-level domain (“gTLD”).
ii) Respondent has no rights or legitimate interests in the disputed domain names. Respondent is not licensed or authorized to use Complainant’s SNAP or SNAPCHAT marks and is not commonly known by the disputed domain names. Additionally, Respondent doesn’t use the disputed domain names for any bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, Respondent uses the disputed domain names to redirect users to Respondent’s own website to offer competing services and promote the sale of infringing goods.
iii) Respondent registered and uses the disputed domain names in bad faith. Respondent attempts to divert users to its competing website for commercial gain. In addition, Respondent failed to respond to Complainant’s cease and desist letter. Further, Respondent had actual knowledge of Complainant’s rights in the SNAP and SNAPCHAT marks prior to the registration of the disputed domain names.
B. Respondent
Respondent did not submit a response.
1. The disputed domain names were registered on the following dates:
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<snapchatprints.co> |
December 26, 2018 |
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<snapcemetery.com> |
July 30, 2019 |
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<snapchatstore.com> |
October 18, 2019 |
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<snapchatprints.app> |
December 20, 2018 |
2. Complainant has established rights in the SNAP and SNAPCHAT marks based upon registration with the United States Patent and Trademark Office (“USPTO”) (e.g., SNAP-Reg. No. 3,345,533, registered June 4, 2013; SNAPCHAT-Reg. No. 4,375,712, registered July, 30, 2013).
3. Respondent makes unauthorized use of Complainant’s marks and logos throughout, and offers competing printing services and unauthorized merchandise for sale.
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 set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).
Complainant asserts rights in the SNAP and SNAPCHAT marks based upon registration with the USPTO. Registration of a mark with the USPTO can serve as a valid showing of rights in a mark under Policy ¶ 4(a)(i). See DIRECTV, LLC v. The Pearline Group, FA 1818749 (Forum Dec. 30, 2018) (“Complainant’s ownership of a USPTO registration for DIRECTV demonstrate its rights in such mark for the purposes of Policy ¶ 4(a)(i).”). Complainant provides evidence of its USPTO registrations for the SNAP and SNAPCHAT marks (e.g., SNAP- Reg. No. 3,345,533, registered June 4, 2013; SNAPCHAT- Reg. No. 4,375,712, registered July, 30, 2013). Therefore, the Panel finds that Complainant has rights in the marks under Policy ¶ 4(a)(i).
Complainant argues that Respondent’s disputed domain names are confusingly similar to Complainant’s marks because they wholly incorporate Complainant’s SNAP or SNAPCHAT marks, simply adding descriptive terms and a gTLD. Addition of generic and/or descriptive terms and a gTLD to a mark is insufficient to overcome confusing similarity between a disputed domain name and a mark per Policy ¶ 4(a)(i). See Bloomberg Finance L.P. v. Nexperian Holding Limited, FA 1782013 (Forum June 4, 2018) (“Where a relevant trademark is recognizable within a disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) does not prevent a finding of confusing similarity under the first element.”); see also Bittrex, Inc. v. HOUSNTA BENSLEM, FA 1760232 (Forum Jan. 3, 2018) (“[S]ince the disputed domain name differs from the trademark only by the addition of the gTLD “.cam” the Panel finds the domain name to be legally identical to the trademark.”). The Panel notes that the disputed domain names each add one descriptive term (“prints,” “cemetery,” and “store”) as well as either the “.com,” “.app,” or “.co” gTLD to one of Complainant’s marks to create each domain name. Thus, the Panel finds that the disputed domain names are confusingly similar to the SNAP and SNAPCHAT marks 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. 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 the disputed domain names. Specifically, Complainant argues Respondent is not licensed or authorized to use the SNAP or SNAPCHAT marks and is not commonly known by the disputed domain names. 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 authorization to use a complainant’s mark may demonstrate the respondent is not commonly known by the disputed domain name. 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 notes “Daisy Ducharme” as the registrant and no information suggests that Complainant has authorized Respondent to use the SNAP or SNAPCHAT marks in any way. Therefore, the Panel finds that Respondent is not commonly known by the domain names under Policy ¶ 4(c)(ii).
Additionally, Complainant argues that Respondent does not use the disputed domain names for any bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, Complainant argues that Respondent uses the disputed domain names to redirect users to Respondent’s own website to offer competing services and promote the sale of infringing goods. Use of a confusingly similar domain name to divert internet traffic to a commercial website is not a bona fide offering of goods or services or legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and (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)). Further, the sale of counterfeit products through a disputed domain name is further evidence that a respondent does not make a bona fide offering of goods or services or a legitimate noncommercial or fair use of a disputed domain name. See Wolverine World Wide, Inc. v. Fergus Knox, FA 1627751 (Forum Aug. 19, 2015) (finding no bona fide offering of goods or legitimate noncommercial or fair use existed where Respondent used the resolving website to sell products branded with Complainant’s MERRELL mark, and were either counterfeit products or legitimate products of Complainant being resold without authorization). Here, Complainant contends that Respondent is using the disputed domain names to divert users to Respondent’s website which among other things, makes unauthorized use of Complainant’s marks and logos throughout, and offers competing printing services and unauthorized merchandise for sale. Complainant provides screenshots from Respondent’s website and app to support its allegations. The Panel agrees with Complainant and finds that Respondent is not using the domain names for a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(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 names.
Complainant argues that Respondent registered and uses the disputed domain names in bad faith by attempting to divert users to its competing website for financial gain. Use of a domain name that is confusingly similar to a registered mark to attract users for commercial gain can be evidence of bad faith, especially when the commercial nature of the webpage relates to sale of unlicensed or counterfeit products under Policy ¶ 4(b)(iv). See G.D. Searle & Co. v. Celebrex Drugstore, FA 123933 (Forum Nov. 21, 2002) (finding that the 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); see also H-D Michigan, LLC v. Ross, FA 1250712 (Forum Apr. 23, 2009) (determining that the respondent’s selling of counterfeit products creates the likelihood of confusion as to the complainant’s affiliation with the disputed domain name and allows the respondent to profit from that confusion and thus demonstrates bad faith per Policy ¶ 4(b)(iv)). Complainant claims Respondent is using the resolving webpages to mimic Complainant and sell unauthorized goods related to Complainant. Complainant provides screenshots of those webpages to support its allegations. Thus, the Panel finds bad faith registration and use under Policy ¶ 4(b)(iv).
Complainant also argues that Respondent had actual knowledge of Complainant’s rights in the SNAP and SNAPCHAT marks as shown through use of Complainant’s marks and logos on Respondent’s website. While constructive knowledge is insufficient to support a finding of bad faith, actual knowledge can be used to demonstrate a respondent’s bad faith registration and use. 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.”). Additionally, actual knowledge can be shown through use of a complainant’s mark and other identifying information in connection with a disputed domain name. See Am. Online, Inc. v. Miles, FA 105890 (Forum May 31, 2002) (“Respondent is using the domain name at issue to resolve to a website at which Complainant’s trademarks and logos are prominently displayed. Respondent has done this with full knowledge of Complainant’s business and trademarks. The Panel finds that this conduct is that which is prohibited by Paragraph 4(b)(iv) of the Policy.”). Here, Complainant argues that Respondent’s knowledge of Complainant’s marks prior to registering the disputed domain names is apparent from the notoriety of Complainant’s trademarks and from Respondent’s use of Complainant’s logos, marks, and color scheme on its webpage. The Panel infers, due to the notoriety of Complainant's marks and the manner of use of the disputed domain names by Respondent that Respondent had actual knowledge of Complainant’s rights in the SNAP and SNAPCHAT marks. Thus, the Panel finds bad faith registration and use 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 <snapchatprints.co>, <snapcemetery.com>, <snapchatstore.com> and <snapchatprints.app> domain names be TRANSFERRED from Respondent to Complainant.
Ho Hyun Nahm, Esq., Panelist
Dated: December 28, 2019
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