Snap Inc. v. Okan Demir
Complainant is Snap Inc. (“Complainant”), represented by Dennis L. Wilson of Kilpatrick Townsend & Stockton LLP, United States. Respondent is Okan Demir (“Respondent”), Turkey.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <snapyfox.com>, <snapcode.net>, and <somesnapcode.com> ("the Domain Names'), registered with IHS Telekom, Inc. and GoDaddy.com, LLC.
The undersigned certifies that she has acted independently and impartially and to the best of her knowledge has no known conflict in serving as Panelist in this proceeding.
Dawn Osborne as Panelist.
Complainant submitted a Complaint to the Forum electronically on September 22, 2020; the Forum received payment on September 22, 2020.
On September 23, 2020 GoDaddy.com, LLC confirmed by e-mail to the Forum that the <somesnapcode.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name; On October 1, 2020, IHS Telekom, Inc confirmed by e-mail to the Forum that the <snapyfox.com> and <snapcode.net> domain names are registered with IHS Telekom, Inc. and that Respondent is the current registrant of the names. IHS Telekom, Inc. and GoDaddy.com, LLC have verified that Respondent is bound by the IHS Telekom, Inc. and GoDaddy.com, LLC registration agreements 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 October 1, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 21, 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@snapyfox.com, postmaster@snapcode.net, postmaster@somesnapcode.com. Also on October 1, 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 November 10, 2020 pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Dawn Osborne 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: Language of Proceeding
Pursuant to UDRP Rule 11(a), the Panel finds that persuasive evidence has been adduced by Complainant to suggest the likely possibility that the Respondent is conversant and proficient in the English language. After considering the circumstance of the present case, the Panel decides that the proceeding should be in English.
A. Complainant
The Complainant’s contentions can be summarised as follows:
The Complainant owns, inter alia, the SNAP and SNAPCHAT trademarks used since 2011, the SNAPCODE trade mark used since 2015 and a trade mark for its ghost logo for software used since 2011 all registered in, inter alia, the USA.
Complainant uses its registered SNAPCODE mark as the name of a digital QR code assigned to a specific user’s account on the Snapchat App, that may be scanned by others to add the user as a friend on Snapchat.
The <snapyfox.com>, <snapcode.net>, and <somesnapcode.com> domain names were registered on August 27, 2019, June 10, 2016, July 25, 2018, respectively, all well after Complainant registered its marks and after they had become internationally recognized and well-known.
<snapyfox.com> is attached to a site displaying a number of profile pages for Snapchat users, which use the Complainant’s ghost logo. Once a user clicks on a profile, the user’s “latest Snaps” or Instagram posts are reproduced on the profile page as well as links to the profile page holder’s other social media pages. This includes the display of Snapcodes for Snapchat users. Several profile pages also contain pay-per-click advertisements. The Respondent uses the Complainant’s SNAP and SNAPCODE marks in the Domain Names and uses the Complainant’s marks and logo throughout the Infringing Website. The Respondent includes an ineffective disclaimer at the bottom of the site attached to <snapyfox.com> stating in small letters, “snapyfox.com is a tagged based snapchat username and Somesnaps catalog. We are not affiliated any service related to snapchat.” There do not appear to be websites currently attached to the other two domain names the subject of this Complaint.
<snapyfox.com> is confusingly similar to the Complainant’s SNAP mark adding only the letter "y", the generic word "fox" and the gTLD ".com". <snapcode.net> is, inter alia, identical for the purposes of the Policy to the Complainant’s SNAPCODE mark adding only a gTLD ".com". <somesnapcode.com> is confusingly similar, inter alia, to the Complainant’s SNAPCODE mark adding only the generic word "some" and the gTLD ".com".
In August of 2019, Complainant’s attorneys sent Respondent a cease-and-desist letter informing Respondent of Complainant’s rights and asking Respondent to abandon and transfer <somesnapcode.com> and another now expired, SNAP-formative domain name to Complainant. At that time, <somesnapcode.com> resolved to the Snapchat username categorization website to which the <snapyfox.com> domain currently resolves. In response to this letter, the domains were redirected to Complainant’s website. After the Complainant followed up with the Respondent several times regarding <somesnapcode.com>, he stated he was unwilling to transfer the domain name to Complainant without payment. Respondent gave the reason that he had paid $4K for <snapcode.net> (which was not until then a domain name that was being discussed between the parties) from an individual he could no longer reach for proof of such payment. He stated, “Id be happy to transfer all of the domains I have to Snap for half of what I’ve invested which is $2005. If we can deal on this, we can just prepare a documentation showing you will give thw amount after I transfer the domains to you, we can sign and do the rest.” [sic]. After this exchange, Complainant’s attorneys ran a reverse domain search for the Respondent and offered him $10 for each of <snapyfox.com>, <snapcode.net>, and <somesnapcode.com> and the other SNAP-formative domains Complainant had initially contacted the Respondent about. The Respondent did not reply and on October 28, 2019, Complainant withdrew its offer. The Respondent replied he would not have agreed to the offer, but would be willing to transfer all the Domain Names to Complainant for $2000.
The Respondent is not commonly known by the Domain Names and is not authorised by the Complainant. Using a trade mark to drive traffic to a competing web site for commercial gain including pay per click advertisements is not a bona fide offering of goods or services or a legitimate noncommercial fair use. Respondent’s offer to sell the Domain Names to Complainant for far more than the registration cost is evidence of a lack of rights and legitimate interests under Policy ¶ 4(a)(ii). Respondent’s use of the Domain Names is also not bona fide within the meaning of Paragraph 4(c)(i) because Respondent does not accurately and prominently disclose its relationship with Complainant. Respondent’s website is replete with misleading uses of Complainant’s Marks and references to Complainant’s Snapchat App. And although
Respondent includes a disclaimer at the bottom of Respondent’s webpages, the disclaimer is wholly inadequate to dispel the confusion created by the Domain Names and the extensive more prominent content above the disclaimer. Moreover, the disclaimer fails to unequivocally disclaim a relationship or affiliation with Complainant. The Respondent does not have a right or legitimate interest in the Domain Names.
The use of the Complainant’s trademarks and ghost logo on the web sites shows that the Respondent is aware of the Complainant and its services, rights and business. The Respondent’s conduct is registration and use in bad faith as it used confusingly similar domain names to attract internet users to its competing commercial web site for commercial gain. Respondent’s offer to sell the Domain Names to Complainant for an amount far in excess of the out-of-pocket costs to register the Domain Names is further evidence of Respondent’s bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The Complainant owns, inter alia, the SNAP and SNAPCHAT trademarks used since 2011, the SNAPCODE trade mark used since 2015 and a trade mark for its ghost logo for software used since 2011 all registered in, inter alia, the USA.
Complainant uses its registered SNAPCODE mark as the name of a digital QR code assigned to a specific user’s account on the Snapchat App, that may be scanned by others to add the user as a friend on Snapchat.
The <snapyfox.com>, <snapcode.net>, and <somesnapcode.com> domain names were registered on August 27, 2019, June 10, 2016, July 25, 2018, respectively, all well after Complainant registered its marks and after they had become internationally recognized and well-known. <snapyfox.com> has been pointed to a commercial site using the Complainant’s trademarks and its logo. The Respondent has offered the Domain Names for sale to the Complainant for $2000.
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”).
<snapyfox.com> consists of the Complainant’s SNAP mark adding only the letter "y", the generic word "fox" and the gTLD ".com'. <somesnapcode.com> consists of the Complainant’s SNAPCODE mark adding only the generic word "some" and the gTLD ".com". <snapcode.net> consists of the Complainant’s SNAPCODE mark adding only a gTLD ".com".
The addition of a generic term and a gTLD does not negate confusing similarity between a domain name and a trade mark contained within it. See Wiluna Holdings LLC v Edna Sherman, FA 1652781 (Forum Jan 22, 2016) (Finding the addition of a generic term and gTLD insufficient to distinguish a disputed domain name from a mark under Policy 4(a)(i).) As such the addition of the generic word "fox" and the gTLD ".com" to the Complainant’s SNAP trade mark in <snapyfox.com> and the addition of the generic word "some" and the gTLD ".com" to the Complainant’s trade mark SNAPCODE does not prevent confusing similarity in these cases. Nor does the addition of the single letter "y" in <snapyfox.com> prevent said confusing similarity. See Twitch Interactive Inc. v Antonio Teggi, FA 1626528 (Forum Aug 3, 2015) (where an additional ‘c’ was added).
A gTLD does not serve to distinguish a domain name from a Complainant’s mark. See Red Hat Inc v Haecke FA 726010 (Forum July 24, 2006) (concluding that the redhat.org domain name is identical to the complainant's red hat mark because the mere addition of the gTLD was insufficient to differentiate the disputed domain name from the mark). So the addition of the gTLD ".net" to the Complainant’s SNAPCODE mark does not prevent <snapcode.net> from being identical for the purposes of the Policy to the Complainant’s SNAPCODE mark
Accordingly the Panel finds that <snapyfox.com> is confusingly similar to the Complainant’s SNAP mark, <somesnapcode.com> is confusingly similar to the Complainant’s SNAPCODE mark and <snapcode.net> is identical for the purposes of the Policy to the Complainant’s SNAPCODE mark.
The Complainant has not authorised the use of its marks. The Respondent has not answered this Complaint and there is no evidence or reason to suggest the Respondent is, in fact, commonly known by the Domain Names. See Alaska Air Group, Inc. and its subsidiary, Alaska Airlines v. Song Bin, FA1408001574905 (Forum September 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 Respondent’s web site is commercial and so cannot be legitimate noncommercial fair use.
The Respondent has used the site attached to <snapyfox.com> for a commercial site not connected with the Complainant, but using the Complainant’s marks and logo. The Panel finds this use is confusing. The use of a small disclaimer at the bottom of the web site does not prevent this confusion. As such it cannot amount to the bona fide offering of goods and services. See Ripple Labs Inc. v. NGYEN NGOC PHUONG THAO, FA 1741737 (Forum Aug. 21, 2017) (“Respondent uses the [disputed] domain name to divert Internet users to Respondent’s website… confusing them into believing that some sort of affiliation exists between it and Complainant… [which] is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”).
Respondent offered to sell the Domain Names to Complainant for an amount in excess of proven out-of-pocket expenses. Offering a confusingly similar domain name for sale can evince a lack of rights and legitimate interests under Policy 4(a)(i). See 3M Company v. Kabir S Rawat, FA 1725052 (Forum May 9, 2017) (holding that “offer for sale… provides additional evidence that Respondent lacks rights and legitimate interests” in a disputed domain name).
As such the Panel finds that the Respondent does not have rights or a legitimate interest in the Domain Names and that the Complainant has satisfied the second limb of the Policy.
The Respondent's use of the site connected to <snapyfox.com> is commercial and he is using that domain name to profit in a confusing manner. The use of the Complainant’s marks and logo shows that the Respondent is aware of the Complainant and its business, The Panel holds that the Respondent has intentionally attempted to attract for commercial gain Internet users to his website attached to <snapyfox.com> by creating a likelihood of confusion with the Complainant's trade marks as to the source, sponsorship, affiliation or endorsement of the web site and services offered on it likely to disrupt the Complainant’s business. See Asbury Auto Group Inc v Tex. Int'l Prop Assocs FA 958542 (Forum May 29, 2007) (finding that the respondent's use of the disputed domain name to advertise car dealerships that competed with the complainant's business would likely lead to confusion amongst Internet users as to the sponsorship or affiliation of those competing dealerships and was therefore evidence of bad faith and use). See also Allianz of AM. Corp v Bond, FA 680624 (Forum June 2, 2006) (finding bad faith registration and use where the respondent was diverting Internet users searching for the complainant to its own website).
The Domain Names have been offered for sale generally to the Complainant for a sum in excess of proven costs of registration in bad faith contrary to Policy ¶ 4(b)(i). See DIRECTTV, LLC v michal restl c/o Dynadot, FA 1788826 (Forum July 5, 2018).
As such, the Panel holds that the Complainant has made out its case that the Domain Names were registered and used in bad faith and has satisfied the third limb 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 <snapyfox.com>, <snapcode.net>, and <somesnapcode.com> domain name be TRANSFERRED from Respondent to Complainant.
Dawn Osborne, Panelist
Dated: November 10, 2020
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