Snap Inc. v. Kazi Raihan / Rashel Hossain / refath kanta / MOIN UDDIN
Claim Number: FA2004001890945
Complainant is Snap Inc. (“Complainant”), represented by Emily A. DeBow of Kilpatrick Townsend & Stockton LLP, California, USA. Respondent is Kazi Raihan / Rashel Hossain / refath kanta / MOIN UDDIN (“Respondent”), Bangladesh.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <snapschatpremium.com>, <snapschatlive.com>, <prosnapchat.xyz>, and <prosnapchat.com>, 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 April 3, 2020; the Forum received payment on April 3, 2020.
On April 6, 2020, NameCheap, Inc. confirmed by e-mail to the Forum that the <snapschatpremium.com>, <snapschatlive.com>, <prosnapchat.xyz>, and <prosnapchat.com> domain names (the Domain Names) are registered with NameCheap, Inc. and that Respondent is the current registrant of the names. 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 April 14, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint setting a deadline of May 4, 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@snapschatpremium.com, postmaster@snapschatlive.com, postmaster@prosnapchat.xyz, postmaster@prosnapchat.com. Also on April 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.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On May 8, 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 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.
PRELIMINARY ISSUE: Multiple Domain Names and Respondents
Paragraph 3(c) of the Rules provides that a “complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name holder.” The WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) at par. 4.11.2 states “Where a complaint is filed against multiple respondents, panels look at whether (i) the domain names are subject to common control, . . . .” UDRP Panels have looked to a variety of factors in determining whether multiple domains are, in fact, registered by the same holder. Such factors as similar website content and similarities in the Whois information, etc. may lead to the conclusion that domains with differing Whois information are, nevertheless, owned by a single entity. Complainant argues that consolidation of these Respondents and all four Domain Names is appropriate here because circumstances indicate that common control is exercised over all of the Domain Names and the web sites to which they resolve. Complainant notes that the registrant of all of the Domain Names used the same privacy service (Complaint Annex B), and that the web sites to which all the Domain Names resolve all use the same color scheme, font, graphics and the same “free verification process” log in display (Complaint Annex A). All purport in the same language and style to offer access to the Snapchat accounts of models who offer sexually-oriented photos and verbal interaction (Id). All of the Domain Names contain Complainant’s SNAPCHAT mark, two of them with that mark spelled correctly and two with the letter “s” added between the words “snap” and “chat,” along with related descriptive terms such as “premium,” “live” and “pro.” All four of the Respondent’s web sites are virtually identical to one another in appearance, style and message. Under these circumstances it is inconceivable that the Domain Names are not owned or controlled by the same person or entity and that the named Respondents are not, or are not in fact controlled by, a single entity. The Panel finds that all four Domain Names are registered to the same person or entity and will proceed as to all of them. Except where the context requires otherwise, references to “Respondent” in this Decision, even though in the singular, refer to all four named Respondents.
A. Complainant
Complainant owns and distributes the SNAPCHAT camera and messaging application. It has rights in the SNAPCHAT mark through its registration of that mark with multiple national trademark authorities, such as the Canadian Registrar of Trademarks (Reg. No. TMA954,928, registered November 10, 2016). Respondent’s <snapschatpremium.com>, <snapschatlive.com>, <prosnapchat.xyz>, and <prosnapchat.com> Domain Names are identical or confusingly similar to Complainant’s mark as they incorporate the famous SNAPCHAT mark and include the generic or descriptive terms “premium” “live” and “pro” as well as the generic top-level domains “.com” or “.xyz.”
Respondent has no rights or legitimate interests in the Domain Names. There is no relationship between Complainant and Respondent, and Respondent is not commonly known by the Domain Names. Respondent is not using the Domain Names in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, Respondent uses them to offer a platform for models to monetize their private Snapchat accounts by connecting them with potential subscribers whose payments entitle them to receive sexually-oriented and pornographic photos from the model. Respondent is also using the Domain Names to divert Internet traffic to its commercial websites and to induce Complainant’s account holders to violate Complainant’s terms of service.
Respondent registered and uses the Domain Names in bad faith. It registered them with actual knowledge of Complainant’s SNAP mark, uses them to divert Internet traffic to adult-oriented websites for Respondent’s financial gain, and promotes violation of Complainant’s terms of service.
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 a Complainant to prove each of the following three elements to obtain an order cancelling or transferring a domain name:
(1) the domain name registered by the respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) the 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, 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 multiple national trademark authorities, including the Canadian Registrar of Trademarks (Reg. No. TMA954,928, registered November 10, 2016) (Complaint Annex R). Complainant’s registration of its mark with that agency is sufficient to establish its rights in the SNAPCHAT 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 <snapschatpremium.com>, <snapschatlive.com>, <prosnapchat.xyz>, and <prosnapchat.com> Domain Names are identical or confusingly similar to Complainant’s SNAPCHAT mark as they fully incorporate the mark, albeit with a subtle misspelling in two of them, merely adding the generic or descriptive terms “premium” “live” and “pro” and the generic top-level domains “.com” or “.xyz.” These changes are not sufficient to distinguish the Domain Names from Complainant’s mark for the purposes of Policy ¶ 4(a)(i). Microsoft Corporation v. Thong Tran Thanh, FA 1653187 (Forum Jan. 21, 2016) (determining that confusing similarity exists where [a disputed domain name] contains Complainant’s entire mark and differs only by the addition of a generic or descriptive phrase and top-level domain, the differences between the domain name and its contained trademark are insufficient to differentiate one from the other for the purposes of the Policy), Am. Online, Inc. v. David, FA 104980 (Forum Apr. 10, 2002) (“The misspelling of a famous mark does not diminish the confusingly similar nature between the marks and the disputed domain names.”). 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 Names.
For the reasons set forth above, the Panel finds that the Domain Names are identical or confusingly similar to the SNAPCHAT mark, in which Complainant has substantial and demonstrated rights.
Rights or Legitimate Interests
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 three 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) before any notice to the respondent of the dispute, the respondent has used or has made 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) 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
(iii) 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.
Complainant asserts that Respondent has no rights or legitimate interests in the Domain Names for a number of reasons: (i) Respondent has no relationship with Complainant and Complainant has not authorized, licensed, or otherwise permitted Respondent to use its mark, (ii) Respondent is not commonly known by the Domain Names, and (iii) Respondent is not using the Domain Names in connection with a bona fide offering of goods or services or for a legitimate noncommercial or fair use because the web sites resolving from them display adult-oriented content and facilitate the exchange of pornography, the Domain Names drive traffic to Respondent’s web sites for commercial gain, and Respondent induces Complainant’s account holders to violate Complainant’s term of service. These allegations are addressed as follows:
Complainant states that Respondent has no relationship with it and that it has never licensed or authorized Respondent to use its mark in any way. Complainant has specific competence to make this statement, and it is unchallenged by any evidence before the Panel. In the absence of evidence that a respondent is authorized to use a complainant’s mark in a domain name or that a respondent is commonly known by the disputed domain name, the respondent may be presumed to lack rights or legitimate interests in the domain name. IndyMac Bank F.S.B. v. Eshback, FA 830934 (Forum Dec. 7, 2006) (finding that the respondent failed to establish rights and legitimate interests in the <emitmortgage.com> domain name as the respondent was not authorized to register domain names featuring the complainant’s mark and failed to submit evidence that it is commonly known by the domain name), 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.”).
The WHOIS information furnished to the Forum by the registrar lists the registrants of the Domain Names as follows: <snapschatpremium.com>: Kazi Raihan, <snapschatlive.com>: Rashel Hossain, <prosnapchat.xyz>: Refath Kanta and <prosnapchat.com>: Moin Udda. None of these names bears any resemblance to any of the Domain Names. 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. Guardair Corporation v. Pablo Palermo, FA1407001571060 (Forum Aug. 28, 2014) (holding that the respondent was not commonly known by the <guardair.com> domain name according to Policy ¶ 4(c)(ii), as the WHOIS information lists “Pablo Palermo” as registrant of the disputed domain name), 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 Names.
Amended Complaint Annex A consists of screenshots of the web sites resolving from the Domain Names. As described above, all four of them purport to offer access to the Snapchat accounts of models who offer sexually-oriented photos and verbal interaction. All of the web sites feature a “free verification process” log-in display, and offer the visitor an opportunity to select and pay for access to the account of the model he or she prefers. As “Membership Perks” they offer “live sex shows, “requests” and “messaging” and other items. While the content on these sites may not fit within the definitions of pornography articulated by United States appellate courts, they are unquestionably commercial in nature, offering sexually-oriented material in exchange for money. Using a confusingly similar domain name to displaying sexually-oriented content is neither a bona fide offering of goods or services within the meaning of Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). Altria Group, Inc. and Altria Group Distribution Company v. xiazihong, FA1732665 (Forum July 7, 2017) (holding that “[u]se of a domain name to display adult-oriented images is not considered a bona fide offering of goods or services or a legitimate noncommercial or fair use under the Policy.”).
Complaint Annex T is a copy of Complainant’s Terms of Service. Section 9 of this document prohibits the account holder from, among other things, selling access to his or her account. Complainant argues that, while Respondent is not an account holder and is thus not bound by its Terms of Service, its actions constitute an inducement for account holders to violate the same, and that this is not a bona fide offering of goods or services or a legitimate noncommercial or fair use. Prior UDRP panels have accepted this argument. Snap Inc. v. Nabil EL, FA2002001882878 (Forum Feb. 22, 2019) (finding that respondent’s use of the domain to resolve to a website for an adult model to monetize her Snapchat account by connecting her with subscribers who paid a monthly fee to be added as a follower to the adult model’s private Snapchat account, in violation of the Snapchat terms of service, did not constitute either a bona fide offering of goods or services or a legitimate noncommercial or fair use); Google Inc. v. Onur Koycegiz, FA1741705 (Forum Aug. 25, 2017) (finding that respondent’s use of the disputed domain name in association with a website that enabled internet users to violate complainant’s terms of service did not constitute either 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)). Inducing a person to violate the terms of contractual arrangements with a third party is wrongful in many jurisdictions and cannot serve to provide a respondent with rights or legitimate interests in a domain name.
Complainant has made its prima facie case. On the evidence presented, and in the absence of any evidence from Respondent, the Panel finds that Respondent has no rights or legitimate interests in the Domain Names.
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, provided that the 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, 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 panels over the years. First, Respondent is clearly using the Domain Names to attract, for commercial gain, Internet users to its web sites by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of its web site. Its commercial gain arises from the money site visitors pay for access to the Snapchat accounts of the models who participate in this scheme. Respondent’s conduct fits squarely within the circumstances described in Policy ¶ 4(b)(iv) and is manifest evidence of bad faith registration and use. Snap Inc. v. Nabil EL, FA2002001882878 (Forum Feb. 22, 2019) (finding that respondent’s use of the domain to resolve to a website for an adult KILPATRICK TOWNSEND 73098811 3 model to monetize her Snapchat account by connecting her with subscribers who paid a monthly fee to be added as a follower to the adult model’s private Snapchat account supported a finding of bad faith); Snap, Inc. v. Nestor Hernandez, F1709001749325 (Forum Oct. 25, 2017) (“Use of an infringing domain name to redirect Internet users to adult-oriented material for commercial gain supports a finding that a respondent uses the domain name in bad faith under Policy ¶ 4(b)(iv).”).
Second, Respondent registered and is using the Domain Names to promote and facilitate activity that violates Complainant’s terms of service. 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 using a confusingly similar domain name to induce others to violate a complainant’s terms of service has been held to be evidence of bad faith registration and use for the purposes of Policy ¶ 4(a)(iii). Google Inc. v. Onur Koycegiz, FA1741705 (Forum Aug. 25, 2017) (finding use of a domain name for activity that violated the complainant’s terms of service to constitute bad faith use and registration under the Policy).
Finally, it is evident that evident that Respondent had actual knowledge of Complainant’s mark in January and February of 2020, when it registered the Domain Names (the WHOIS report submitted as Complaint Annex B shows the creation dates). Complainant’s mark is famous and recognized throughout the world, and Respondent’s use of the Domain Names affirmatively depends upon Complainant’s Snapchat App. There is no question that Respondent knew of Complainant and its mark when it registered the Domain Names. Given the non-exclusive nature of Policy ¶ 4(b), actual knowledge of a complainant’s rights in a mark prior to registering an identical or confusingly similar domain name 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 Names 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 <snapschatpremium.com>, <snapschatlive.com>, <prosnapchat.xyz>, and <prosnapchat.com> Domain Names be TRANSFERRED from Respondent to Complainant.
Charles A. Kuechenmeister, Panelist
May 11, 2020
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