Snap Inc. v. destiny overturf / 1999
Claim Number: FA2005001896185
Complainant is Snap Inc. (“Complainant”), represented by Emily A. DeBow of Kilpatrick Townsend & Stockton LLP, California, USA. Respondent is destiny overturf / 1999 (“Respondent”), Illinois, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <premiumsnapchatgirls.com>, 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.
James Bridgeman SC as Panelist.
Complainant submitted a Complaint to the Forum electronically on May 13, 2020; the Forum received payment on May 13, 2020.
On May 14, 2020, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <premiumsnapchatgirls.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 15, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 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@premiumsnapchatgirls.com. Also on May 15, 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 June 9, 2020, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed James Bridgeman SC 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 name be transferred from Respondent to Complainant.
A. Complainant
Complainant claims rights in the SNAPCHAT service mark and trademark acquired through its ownership of its portfolio of trademark registrations described below and the extensive international reputation which it has acquired through the promotion, marketing and use of its Internet platform by the public.
Complainant submits that the disputed domain name is confusingly similar to the SNAPCHAT mark in which it has rights as it incorporates the entirety of the SNAPCHAT mark and is thus likely to confuse consumers as to Respondent’s connection with Complainant. Numerous courts and prior UDRP panels have recognized that the incorporation of a trademark in its entirety may be sufficient to establish that a domain name is identical or confusingly similar to a complainant’s registered mark. See, e.g., Snap Inc. v. Malkam Dior, FA1707001741274 (Forum Aug. 28, 2017) (<snapchatdrones.com> found confusingly similar to the wholly incorporated SNAPCHAT mark).
Complainant adds that the inclusion of the generic or descriptive terms “premium” and “girls” does not distinguish the disputed domain name from the SNAPCHAT mark. Panels established under the Policy have consistently held that the addition of a generic or descriptive term – including “premium” – is not sufficient to distinguish a disputed domain name from a complainant’s mark. Complainant further argues that the inclusion of the gTLD <.com> extension in the disputed domain name also does not change the conclusion that it is confusingly similar to the SNAPCHAT mark. See, e.g., Snap Inc. v. Nestor Hernandez, F1709001749325 (Forum Oct. 25, 2017) (“gTLDs are insufficient to defeat a test of confusingly similar”).
Complainant alleges that Respondent has no rights or legitimate interests in the disputed domain name arguing that Respondent is not commonly known by the disputed domain name and there is nothing in the Registrars WHOIS to suggest otherwise. Complainant also asserts that no relationship exists between Complainant and Respondent. See Yahoo! Inc. v. Junlong Zheng c/o OnlineNIC FA 1142567 (Forum Mar. 25, 2008) (holding respondent has no rights or legitimate interests because there is no evidence in the record or WHOIS information indicating respondent is commonly known by the disputed domain name and because Complainant did not authorize respondent to use its YAHOO mark).
Complainant adds that Respondent has no right to own or use any domain name incorporating Complainant’s SNAPCHAT mark.
Complainant refers to a screenshot of the website to which the disputed domain name resolves which is adduced in evidence as an annex to the Complaint which it submits illustrates that Respondent is using the disputed domain name as the address of a website to promote a membership platform where models can sell access to pornographic content via social media accounts, including Snapchat. Complainant argues that this illustrates that Respondent is not using the disputed domain name for any bona fide offerings of goods or services or making a legitimate noncommercial or fair use of the disputed domain name.
Complainant adds that such use of the disputed domain name in connection with activity that violates Complainant’s Terms of Service.
Complainant alleges that the disputed domain name was registered and has been used in bad faith.
Complainant asserts that it first made use of its SNAPCHAT mark in September 2011 and its platform has since grown to be widely recognized by consumers throughout the world. The disputed domain name was not registered until December 18, 2019. Complainant submits that it must follow that the registrant of the disputed domain name had actual knowledge of its SNAPCHAT mark when the disputed domain name was registered. See Snap Inc. v. Daisy Ducharme / baby & belly photography, FA1911001872261 (Forum Dec. 28, 2019) (finding Respondent had actual knowledge of Complainant’s rights in the SNAPCHAT and SNAP marks due to notoriety of Complainant’s marks).
Complainant adds that Respondent’s use of the disputed domain name as the address of a website purporting to promote and facilitate activity that violates Complainant’s Terms of Service, which prohibits both purchase and/or sale of access to Snapchat accounts as well as using the Snapchat App to distribute pornography, is further evidence of bad faith. See Snap Inc. v. Nabil EL, FA2002001882878 (Forum Feb. 22, 2019) (finding that respondent’s use of the domain <snapchattpremium.com> 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, supported a finding of bad faith).
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant owns and distributes the enormously popular SNAPCHAT camera and messaging application.
Complainant owns a large portfolio or registered trademarks in the United States, which is the jurisdiction where Respondent is established, as well as other jurisdictions around the world. Complainant’s registrations include:
· United States registered trademark SNAPCHAT, registration number 4,933,18, registered on May 4, 2016 for goods in international class 9;
· United States registered trademark SNAPCHAT, registration number 4375712, registered on July 30, 2013 for goods in international class 9; and
· United States registered trademark SNAPCHAT, registration number 4375712 registered on July 6, 2016 for goods and services in international class 9; 38, 41, 42 and 45.
The disputed domain name was registered on December 18, 2019 and resolves to a website called “PREMIUM GIRLS” which purports to offer a membership platform on which models can sell access to pornographic content via social media accounts, including Snapchat
There is no information available about Respondent except for that which is provided in the Complaint, the Registrar’s WHOIS, and the information provided by the Registrar in response to the Forum’s request for verification of the registration details of the disputed domain name. Respondent availed of a proxy service to conceal its identity on the published WHOIS and the name adopted by Respondent was disclosed by the Registrar in the response to the Registrar’s request for verification of the registration information for the disputed domain name in the course of 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 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 has adduced convincing evidence that it has rights in the SNAPCHAT trademark and service mark acquired through its ownership of the abovementioned trademark and service mark registrations and the goodwill and reputation it has established in the mark through its extensive use of the mark on, and in relation to, its online platform.
The disputed domain name consists of Complainant’s SNAPCHAT mark in its entirety in combination with the words “premium” and “girls” and the generic Top Level Domain (gTLD) extension <.com>.
Complainant’s SNAPCHAT mark is the dominant and only distinctive element in the disputed domain name. The elements “premium” and “girls” are generic and descriptive and have no distinguishing characteristic. In the circumstances of this present Complaint, the inclusion of the gTLD <.com> extension would be regarded as a technical necessity for a domain name and serves no other purpose or meaning.
This Panel finds that the disputed domain name is confusingly similar to the SNAPCHAT mark in which Complainant has rights and Complainant has therefore succeeded in the first element of the test in Policy ¶ 4(a)(i).
Complainant has made out a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name arguing that Respondent is not commonly known by the disputed domain name; that there is nothing in the Registrar’s WHOIS to suggest that Complainant is known by the disputed domain name; that no relationship exists between Complainant and Respondent; that Respondent has no right to own or use any domain name incorporating Complainant’s SNAPCHAT mark; that Respondent is not using the disputed domain name for any bona fide offerings of goods or services or making a legitimate non-commercial or fair use of the disputed domain name because it is using Complainant’s mark divert Internet users to Respondent’s website that hosts sexually provocative content, promoting and selling access to pornography via social media accounts; and that such use is in breach of Complainant’s terms and conditions of use of its SNAPCHAT platform.
It is well established that if Complainant makes out a prima facie case, the burden of production shifts to Respondent to prove its rights or legitimate interests in the disputed domain name.
Respondent has failed to file any Response to the Complaint or provide any defense to Complainant’s allegations and so has not discharged the burden. In the circumstances this Panel must find that on the balance of probabilities Respondent has no rights or legitimate interests in the disputed domain name. Complainant has therefore succeeded in the second element of the test in Policy ¶ 4(a)(ii).
Complainant first made use of its SNAPCHAT mark in September 2011, long before the disputed domain name was registered on December 18, 2019. By that time Complainant’s SNAPCHAT platform had grown to be widely recognized by consumers throughout the world. Because of the distinctive character of Complainant’s mark it is improbable that the disputed domain name was registered for any reason other than to take predatory advantage of Complainant, its name and mark in order to lure consumer traffic away from Complainant’s website.
This is confirmed by the use to which the disputed domain name is being put, diverting Internet traffic away from Complainant’s website, to Respondent’s website that purports to offer models a membership platform on which they can sell access to pornographic content via social media accounts, including the SNAPCHAT platform.
In these circumstances this Panel must conclude that on the balance of probabilities, Respondent is using Complainant’s name and reputation and trademark without license or consent, in bad faith, in an intentional attempt to attract, for commercial gain, Internet users to its web site by creating a likelihood of confusion with Complainant's mark as to the source, sponsorship ,affiliation, or endorsement of Respondent’s web site,
As this Panel has found that the disputed domain name was registered and is being used in bad faith, Complainant has therefore succeeded in the third element of the test in Policy ¶ 4(a)(iii) and is entitled to the remedy requested in the Complaint.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <premiumsnapchatgirls.com> domain name be TRANSFERRED from Respondent to Complainant.
James Bridgeman SC
Panelist
Dated: June 9, 2020
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