Snap Inc. v. Nabil EL
Claim Number: FA2002001882878
Complainant is Snap Inc. (“Complainant”), represented by David K. Caplan of Kilpatrick Townsend & Stockton LLP, California, USA. Respondent is Nabil EL (“Respondent”), MA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <snapchattpremium.com>, registered with Porkbun 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 the panelist in this proceeding.
Debrett G. Lyons as panelist (the “Panel”).
Complainant submitted a Complaint to the Forum electronically on February 11, 2020; the Forum received payment on February 11, 2020.
On February 12, 2020, Porkbun LLC confirmed by e-mail to the Forum that the <snapchattpremium.com> domain name is registered with Porkbun LLC and that Respondent is the current registrant of the name. Porkbun LLC has verified that Respondent is bound by the Porkbun 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 February 14, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 5, 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@snapchattpremium.com. Also on February 14, 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.
A timely Response was received and determined to be complete on February 17, 2020 and on February 19, 2020, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Debrett G. Lyons as the Panel.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant asserts trademark rights in SNAP CHAT and alleges that the disputed domain name is confusingly similar to its trademark.
Complainant alleges that Respondent has no rights or legitimate interests in the disputed domain name. In particular, Complainant alleges that the domain name resolves to a website called “Hannah Premium model, escort” which purports to offer a platform for an adult model to monetize her Snapchat account by connecting her with potential subscribers. A subscriber pays a monthly fee to be added and maintained as a follower to the adult model’s private Snapchat account, which would allow the subscriber to receive adult and pornographic photos from the model. The “packages” offered include what are called “Basic Premium” and “Premium Meetup”.
Complainant alleges that Respondent registered and used the disputed domain name in bad faith for obvious reasons.
B. Respondent
Respondent does not address the Policy in any detail but simply states that the disputed domain name has been deactivated and is now suspended. In addition, rudimentary, “WhoIs” – stylized, information regarding the registrant of the disputed domain name is provided.
The factual findings pertinent to the decision in this case are that:
1. Complainant owns and distributes a popular image and messaging application under the trademark SNAPCHAT;
2. the trademark is the subject of United States Patent and Trademark Office (“USPTO”) Reg. No. 4,375,712, registered July 30, 2013;
3. further, Complainant uses the term “premium” with the trademark in reference to its premium made-for-mobile entertainment content;
4. the disputed domain name was registered on December 27, 2019 and resolves to a webpage which is as described by Complainant in its Contentions (above); and
5. there is no commercial agreement between the parties and Complainant has not authorized Respondent to use its trademark or to register any domain name incorporating its trademark.
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.
Paragraph 4(a)(i) of the Policy requires a two-fold enquiry—a threshold investigation into whether a complainant has rights in a trademark, followed by an assessment of whether the disputed domain name is identical or confusingly similar to that trademark.
Paragraph 4(a)(i) of the Policy does not distinguish between registered and unregistered trademark rights. It is well established by decisions under this Policy that a trademark registered with a national authority is evidence of trademark rights.[i] Complainant provides evidence of a USPTO registration for the trademark and so the Panel finds that Complainant has rights in the trademark.
The domain name combines a commonplace misspelling of the trademark with non-distinctive matter in the form of the descriptive term, “premium”, and the “.com” gTLD, both of which can be essentially excluded for the purposes of comparison of the terms.[ii]
The Panel finds the disputed domain name to be confusingly similar to the trademark for the purposes of paragraph 4(a)(i) of the Policy. Accordingly, Complainant has established the first element of the Policy.
Paragraph 4(c) of the Policy states that any of the following circumstances, in particular but without limitation, if found by the Panel to be proved, based on its evaluation of all evidence presented, shall demonstrate rights or legitimate interests to a domain name for purposes of paragraph 4(a)(ii) of the Policy:
(i) before any notice to you of the dispute, your 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; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are 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.
Complainant need only make out a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name, after which the onus shifts to Respondent to rebut that case by demonstrating those rights or interests.[iii]
The name of the domain name owner was shielded by a privacy service. When the actual name of the underlying registrant, “Nabil EL”, was provided by the Registrar in consequence of these administrative proceedings, it did not provide any prima facie evidence that Respondent might be commonly known by the disputed domain name.
There is no evidence that Respondent has any trademark rights and Complainant states that it has not given Respondent permission to use the trademark for any purpose. The use of the domain name (as distinct from the purported use of the referenced “Snap” account) is clearly not such as to establish a right or a legitimate interest in the domain name under the Policy.[iv]
The onus shifts to Respondent to rebut the prima facie case which the Panel finds the Complaint to have established. The Response does not address the elements of the Policy with any specificity. The assertions that the disputed domain name has been deactivated and its use suspended are of no consequence in terms of these proceedings and the matters for determination under the Policy. The prima facie case has not been rebutted and the Panel finds that Respondent has no rights or interests in the domain name and so finds that Complainant has satisfied this second limb of the Policy.
Complainant must prove on the balance of probabilities both that the disputed domain name was registered and used in bad faith.
Guidance is found in paragraph 4(b) of the Policy which sets out four circumstances, any one of which is taken to be evidence of the registration and use of a domain name in bad faith if established.
The four specified circumstances are:
(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 who 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, provided that Respondent has engaged in a pattern of such conduct; 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, respondent has intentionally attempted to attract, for commercial gain, Internet users to respondent’s website 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 website or location or of a product or service on the site or location.
The Panel finds that paragraph 4(b)(iv) has direct application. Clearly the resolving website exists for commercial gain. The Panel has already found the compared terms to be confusingly similar. In terms of how the Policy has been applied, the Panel finds that Respondent intended to create the requisite confusion described by paragraph 4(b)(iv).
The Panel finds registration and use in bad faith and so finds that Complainant has satisfied the third and final element of the Policy.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <snapchattpremium.com> domain name be TRANSFERRED from Respondent to Complainant.
Debrett G. Lyons, Panelist
Date: February 22, 2020
[i] See, for example, State Farm Mut. Auto. Ins. Co. v. Periasami Malain, FA 705262 (Forum Jun. 19, 2006) (“Complainant’s registrations with the United States Patent and Trademark Office of the trademark, STATE FARM, establishes its rights in the STATE FARM mark pursuant to Policy, paragraph 4(a)(i).”)
[ii] See, for example, Am. Int’l Group, Inc. v. Domain Admin. Ltd., FA 1106369 (Forum Dec. 31, 2007); Hot Topic, Inc. v. Xiao Liu, FA 2001001877504 (Forum Jan 30, 2020).
[iii] See, for example, Do The Hustle, LLC v. Tropic Web, D2000‑0624 (WIPO Aug. 21, 2000).
[iv] See, for example, Twitter, Inc. v. Kiribati Media / Kiribati 200 Media Limited-, FA 1603444 (Forum Mar. 19, 2015) holding that, generally, a disputed domain which hosts adult-oriented material is not a bona fide offering of goods or services or a legitimate noncommercial or fair use; Tumblr, Inc. v. Srivathsan GK, FA1409001582401 (Forum Oct. 30, 2014) (“Consequently, the Panel finds that Respondent’s use of the disputed domain name for adult-oriented images also does not provide a bona fide offering of goods or services, or make a legitimate noncommercial or fair use of the disputed domain name pursuant to Policy ¶ 4(c)(i) and Policy ¶ 4(c)(iii).”).
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