Snap Inc. v. Muhammad Mustafa / Perfect Grower
Claim Number: FA2001001877795
Complainant is Snap Inc. (“Complainant”), represented by Dennis L. Wilson of Kilpatrick Townsend & Stockton LLP, California, United States. Respondent is Muhammad Mustafa / Perfect Grower (“Respondent”), Pakistan.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <snapchats.us>, 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.
Charles A. Kuechenmeister, Panelist.
Complainant submitted a Complaint to the Forum electronically on January 6, 2020; the Forum received payment on January 6, 2020.
On January 9, 2020, NameCheap, Inc. confirmed by e-mail to the Forum that the <snapchats.us> domain name (the 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 the U.S. Department of Commerce’s usTLD Dispute Resolution Policy (the “Policy”).
On January 13, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint setting a deadline of February 3, 2020 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@snapchats.us. Also on January 13, 2020, 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 February 7, 2020, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Charles A. Kuechenmeister 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 to the usTLD Dispute Resolution Policy (“Rules”). Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the usTLD Policy, usTLD Rules, the National Arbitration 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 owns and distributes the enormously popular SNAPCHAT camera and messaging application and storytelling platform that allows users to share photographs, videos, and messages called “Snaps” with others via mobile devices. Complainant has rights in the SNAPCHAT mark through its registration with the Canadian Intellectual Property Office (“CIPO”) (Reg. No. TMA954,928, registered November 10, 2016) and the trademark authorities of many other countries. Respondent’s <snapchats.us> Domain Name is identical or confusingly similar to Complainant’s SNAPCHAT mark in that it incorporates the mark in its entirety, merely adding the letter “s” and the “.us” generic top-level domain (“gTLD”).
Respondent has no rights or legitimate interests in the Domain Name as Respondent is not commonly known by the disputed domain name. Respondent also fails to use the Domain Name in connection with a bona fide offering of goods or services or for a legitimate noncommercial or fair use. Instead, Respondent uses the Domain Name to divert Internet traffic to a commercial website where he sells goods and engages in a phishing scheme in an attempt to gain personal or confidential information.
Respondent registered and is using the Domain Name in bad faith by directing Internet users to a commercial website where he sells goods and engages in a phishing scheme. Also, Respondent had actual knowledge of Complainant’s rights in the SNAPCHAT mark when he registered the Domain Name.
B. Respondent
Respondent did not submit a Response in this proceeding.
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 Complainant to prove each of the following three elements to obtain an order cancelling or transferring the Domain Name:
(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 or is being used in bad faith.
Given the similarity between the Uniform Domain Name Dispute Resolution Policy
(“UDRP”) and the usTLD Policy, the Panel will draw upon UDRP precedent as
applicable in rendering its decision, except where differences in the two
policies require a different analysis.
In view of Respondent's failure to submit a response, pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules the Panel will decide this administrative proceeding on the basis of Complainant's undisputed representations 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. Nevertheless, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. 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”), WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (WIPO Overview 3.0), at ¶ 4.3 (“In cases involving wholly unsupported and conclusory allegations advanced by the complainant, . . . panels may find that—despite a respondent’s default—a complainant has failed to prove its case.”).
The Panel finds as follows with respect to the matters at issue in this proceeding:
The SNAPCHAT mark was registered to Complainant with the CIPO (Reg. No. TMA954,928) on November 10, 2016 and with many other governmental trademark authorities (Complaint Annex Q). Complainant’s registration of its mark with the CIPO and other governmental trademark authorities is sufficient to establish its rights in that mark for the purposes of Policy ¶ 4(a)(i). Alibaba 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.”), Lilly A/S v. yiyi chen, FA 1704586 (Forum Jan 5, 2017) (“Until March 23, 2016, the EUIPO was known as the Office for Harmonization in the Internal Market. Registration of a mark with the EUIPO (or any other similar governmental authority) is sufficient to establish rights in the mark.”).
Respondent’s <snapchats.us> Domain Name is identical or confusingly similar to Complainant’s SNAPCHAT mark. It incorporates that mark in its entirety, merely adding the letter “s” at the end of the mark, and the country code top level domain “.us.” These changes are not sufficient to distinguish the Domain Name from Complainant’s mark for the purposes of Policy ¶ 4(a)(i). PathAdvantage Associated v. VistaPrint Technologies Ltd, FA 1625731 (Forum July 23, 2015) (holding that the <pathadvantages.com> domain name was confusingly similar to the PATHADVANTAGE trademark because the domain name “merely adds the letter ‘s’ to Complainant’s mark”), Philip Morris USA Inc. v. Naveen Patnayak, FA 1731422 (Forum June 12, 2017) (“First, the addition of “.us” is inconsequential to the claim of confusing similarity.”). The WIPO Overview 3.0 at ¶ 1.7, states that the test for confusing similarity “typically involves a side-by-side comparison of the domain name and the textual components of the relevant trademark to assess whether the mark is recognizable within the domain name.” Notwithstanding the changes described above, Complainant’s mark is clearly recognizable within the Domain Name.
For the reasons set forth above, the Panel finds that the Domain Name is identical or confusingly similar to the SNAPCHAT mark, in which Complainant has substantial and demonstrated rights.
If a complainant makes a prima facie case that the respondent lacks rights or legitimate interests in the domain name under Policy ¶ 4(a)(ii), the burden of production shifts to respondent to come forward with evidence that it has rights or legitimate interests in it. 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”). If a respondent fails to come forward with such evidence, the complainant’s prima facie evidence will be sufficient to establish that respondent lacks such rights or legitimate interests. If the respondent does come forward with such evidence, the Panel must assess the evidence in its entirety. At all times, the burden of proof remains on the complainant. WIPO Overview 3.0, at ¶ 2.1.
Policy ¶ 4(c) lists the following four nonexclusive circumstances, any one of which if proven can demonstrate a respondent’s rights or legitimate interests in a domain name for the purposes of Policy ¶ 4(a)(ii):
(i) The respondent is the owner or beneficiary of a trade or service mark that is identical to the domain name;
(ii) Before any notice to the respondent of the dispute, the respondent’s use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services;
(iii) The respondent (as an individual, business or other organization) has been commonly known by the domain name, even if the respondent has acquired no trademark or service mark rights; or
(iv) The respondent is making a legitimate noncommercial or fair use of the domain name, without intent or commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
Complainant asserts that Respondent has no rights or legitimate interests in the Domain Name because (i) Respondent is not the owner or beneficiary of a trademark or service mark that is identical to the Domain Name, (ii) Respondent is not commonly known by the Domain Name, and (iii) Respondent is not using the Domain Name in connection with a bona fide offering of goods or services or for a legitimate noncommercial or fail use because the Domain Name resolves to commercial web sites which offer goods for sale and engage in phishing schemes. These allegations are addressed as follows:
Complainant states that it undertook a worldwide trademark search of jurisdictions with publicly available trademark information which revealed that Respondent owns no trademark registrations. Additionally, because of the close similarity between Complainant’s SNAPCHAT mark and the <snapchats.us> Domain Name, it is unlikely that any competent trademark authority would have registered SNAPCHATS or SNAPCHATS.US as a trademark. Finally, Respondent has defaulted and there is no evidence in the record that Respondent is the owner or beneficiary of a trademark that is identical to the Domain Name. The Panel therefore finds that he is not.
The WHOIS report submitted as Complaint Annex A lists the registrant of the Domain Name as “Muhammad Mustafa / Perfect Grower.” Neither of these names bears any resemblance to the Domain Name. Evidence could, of course, in a given case demonstrate that the respondent is commonly known by a domain name different from the name in which it registered the domain name, e.g., the case of a domain name incorporating the brand name of a specific product offered by and associated with the respondent. In the absence of any such evidence, however, UDRP panels have consistently held that WHOIS evidence of a registrant name which does not correspond with the domain name is sufficient to prove that the respondent is not commonly known by the domain name. Amazon Technologies, Inc. v. Suzen Khan / Nancy Jain / Andrew Stanzy, FA 1741129 (Forum Aug. 16, 2017) (finding that respondent had no rights or legitimate interests in the disputed domain names when the identifying information provided by WHOIS was unrelated to the domain names or respondent’s use of the same), 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). The Panel is satisfied that Respondent has not been commonly known by the Domain Name for the purposes of Policy ¶ 4(c)(iii).
Complaint Annex S consists of screenshots of the web pages resolving from the Domain Name. The URLs for these sites are <shoppingsurveyclub.com> and <customorder1.com>. They offer various products, e.g., watches, weight loss products, CBD oil and the like, for sale at discounted prices, solicit feedback from site visitors, and display purported testimonials from satisfied customers. Using a confusingly similar domain name to divert Internet users to a commercial web page where a respondent may be profiting is not a bona fide offering of goods or services for the purposes of Policy ¶ 4(c)(ii) or a legitimate noncommercial or fair use for the purposes of Policy ¶ 4(c)(iv). 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)).[i]
The web sites resolving from the Domain Name solicit the name, email address and, in the case of the web site at <shoppingsurveyclub.com> web site, the gender of the visitor. They also purport to solicit feedback from site visitors. Complainant alleges that this amounts to phishing. The Panel disagrees. Phishing is a fraudulent attempt to obtain sensitive information such as usernames, passwords and credit card details by disguising oneself as a trustworthy entity in an electronic communication (Wikipedia). Neither web site resolving from the Domain Name appears to impersonate or pass itself off as Complainant, nor does either site solicit any information apart from name, email address and gender—it does not ask for sensitive, private information, such as passcodes or credit card or bank account numbers. For these reasons the Panel finds that phishing is not proven in this case.
Nevertheless, on the basis of the evidence discussed earlier, Complainant has made its prima facie case. On that evidence, and in the absence of any evidence from Respondent, the Panel finds that Respondent has no rights or legitimate interests in the Domain Name.
Registration or Use in Bad Faith
Policy ¶ 4(b) sets forth a nonexclusive list of four circumstances, any one of which if proven would be evidence of bad faith use and registration of a domain name. They are as follows:
(i) circumstances indicating that the respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant which is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) the respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name; or
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to the respondent’s web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation or endorsement of the respondent’s web site or location or of a product of service on the respondent ‘s web site or location.
The evidence of Respondent’s conduct discussed above in the rights or legitimate interests analysis also supports a finding of bad faith registration and use, based upon one or more of the foregoing grounds articulated in the Policy and upon additional grounds adopted by UDRP and usTLD panels over the years. First, Respondent is clearly using the Domain Name to attract, for commercial gain, Internet users to its web site by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of its web site. This fits squarely within the circumstances articulated by Policy ¶ 4(b)(iv) and is clear evidence of bad faith registration and use. Microsoft Corporation v. Story Remix / Inofficial, FA 1734934 (Forum July 10, 2017) (finding bad faith registration and use under Policy ¶ 4(b)(iv) where the respondent was diverting Internet users searching for the complainant to its own website and likely profiting).
Although not argued by Complainant in the context of bad faith registration and use, by simply adding an “s” at the end of Complainant’s mark in the Domain Name, Respondent is guilty of typosquatting, which is the intentional misspelling of a protected trademark to take advantage of typing errors made by Internet users seeking the web sites of the owners of the mark. Policy ¶ 4(b) recognizes that mischief can manifest in many different forms and takes an open-ended approach to bad faith, listing some examples without attempting to enumerate all its varieties. Worldcom Exchange, Inc. v. Wei.com, Inc., WIPO Case No. D-2004-0955 (January 5, 2005). The non-exclusive nature of Policy ¶ 4(b) allows for consideration of additional factors in an analysis for bad faith, and typosquatting has, in and of itself, been held to be evidence of bad faith registration and use. Vanguard Trademark Holdings USA LLC v. Shuai Wei Xu / Xu Shuai Wei, FA 1784238 (Forum June 1, 2018) (finding the respondent engaged in typosquatting—and thus registered and used the at-issue domain names in bad faith—where the names consisted of the complainant’s mark with small typographical errors introduced therein).
Finally, typosquatting necessarily implicates another factor which has also, by itself, been held to constitute bad faith. It is evident that Respondent had actual knowledge of Complainant and its mark when it registered the Domain Name in May 2018 (Complaint Annex A). By that time Complainant had been using its SNAPCHAT mark since 2012 (Complaint Annex Q), the number of active daily users of the Snapchat app numbered approximately 187 million (Complaint Annex M), and a number of UDRP panels had found that the SNAPCHAT mark was famous. Snap Inc. v. View Bird, FA1709001749823 (Forum Oct. 30, 2017) (finding the SNAPCHAT mark famous), Snapchat, Inc. v. Whois Agent, Whois Privacy Protection Service, Inc. / CheapSuits Media, D2016-0629 (WIPO June 2, 2016) (SNAPCHAT mark is internationally recognized), Snapchat, Inc. v. Macy Wrhel, D2016-0558 (WIPO April 28, 2016) (“The Panel finds … the mark SNAPCHAT is clearly well known.”), SNAP Inc. v. Contact Privacy Inc. Customer 0146764045, et al., D2017-0635 (WIPO May 29, 2017) (“[Snap Inc.] has been using the Snapchat Trade Marks [namely, ‘the SNAPCHAT trade mark, and other trade marks incorporating the word ‘snap’, including the SNAP trade mark, SNAPMOBILE trade mark and SNAPTIME trade mark’] for many years … and is well known worldwide”). With a subtle misspelling, Respondent copied that mark verbatim into the Domain Name. Given the nonexclusive nature of Policy ¶ 4(b), registering a confusingly similar domain name with actual knowledge of a complainant’s rights in its mark has often been held to be evidence of bad faith registration and use for the purposes of Policy ¶ 4(a)(iii). Univision Comm'cns Inc. v. Norte, FA 1000079 (Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering the disputed domain name).
For the reasons set forth above, the Panel finds that Respondent registered and is using the Domain Name in bad faith within the meaning of Policy ¶ 4(a)(iii).
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <snapchats.us> Domain Name be TRANSFERRED from Respondent to Complainant
Charles A. Kuechenmeister, Panelist
February 10, 2020
[i] The cases cited in this section were decided under the Uniform Dispute Resolution Policy (UDRP), which does not include usTLD Policy ¶ 4(c)(i). The usTLD Policy ¶¶ 4(c)(ii), (iii) and (iv) are identical to UDRP Policy ¶¶ 4(c)(i)(ii) and (iii).
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