Snap Inc. v. Dan Premium
Claim Number: FA2102001931133
Complainant is Snap Inc. (“Complainant”), represented by Dennis L. Wilson of Kilpatrick Townsend & Stockton LLP, California, USA. Respondent is Dan Premium (“Respondent”), International.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <premiumsnap.org> and <premiumsnap.biz>, registered with 1&1 IONOS SE.
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.
Jeffrey J. Neuman as Panelist.
Complainant submitted a Complaint to the Forum electronically on February 5, 2021; the Forum received payment on February 5, 2021.
On February 9, 2021, 1&1 IONOS SE confirmed by e-mail to the Forum that the <premiumsnap.org> and <premiumsnap.biz> domain names are registered with 1&1 IONOS SE and that Respondent is the current registrant of the names. 1&1 IONOS SE has verified that Respondent is bound by the 1&1 IONOS SE 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 16, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 8, 2021 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 firstname.lastname@example.org, email@example.com. Also on February 16, 2021, 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 March 10, 2021, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Jeffrey J. Neuman 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.
Complainant owns and distributes the popular SNAPCHAT camera and messaging application and storytelling platform. Complainant has rights in the Complainant asserts rights in the SNAP mark based upon the registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 4,345,533, registered June 4, 2013). See Annex R. It also has rights in the SNAPCHAT mark through its registration of the mark with the USPTO (e.g., Reg. No. 4,943,051, registered April 19, 2016). See Annex Q. Respondent’s <premiumsnap.org> and <premiumsnap.biz> domain names are virtually identical and confusingly similar to Complainant’s mark because it incorporates the dominant portion of the SNAPCHAT mark merely adding the term “premium” and adding the “.org” and “.biz” generic top-level domains (“gTLDs”).
Respondent has no legitimate interests in the <premiumsnap.org> and <premiumsnap.biz> domain name. Respondent is not commonly known by the disputed domain name and Complainant has not authorized or licensed Respondent any rights in the SNAPCHAT mark. Additionally, Respondent does not use the disputed domain name for any bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, the disputed domain name resolves a page that facilitates the purchase of access to private accounts.
Respondent registered and uses the <premiumsnap.org> and <premiumsnap.biz> domain name in bad faith. Respondent attempts to divert internet users to an adult-oriented website for financial gain. Finally, Respondent registered the disputed domain name with actual knowledge of Complainant’s rights in the SNAP and SNAPCHAT marks.
Respondent registered the <premiumsnap.org> and <premiumsnap.biz> domain names on April 26, 2020. See Compl. Annex A. Respondent, however, failed to submit a response in this matter.
1. Complainant owns registered trademarks for the marks SNAP, SNAPCHAT and a variety of other SNAP-formative marks dating back to at least 2011. It has trademark registrations in the United States and numerous countries across the globe, each of which are valid and in full force and effect. See Compl. Annexes Q and R.
2. Complaint’s SNAP marks are well known and are used globally in connection with its camera and messaging application. Its’ fame pre-dates the registration of the disputed domain names, <premiumsnap.org> and <premiumsnap.biz>, both registered by Respondent on August 26, 2020.
3. The disputed domain names are identical or confusingly similar to the SNAP mark.
4. Complainant has not licensed or otherwise authorized Respondent to use its marks, nor is Respondent commonly known by the marks.
5. Complainant has established that the disputed domain names have been registered and used in bad faith.
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 asserts rights in the SNAP mark based upon the registration with the USPTO (e.g., Reg. No. 4,345,533, registered June 4, 2013). See Annex R. Registration of a mark with the USPTO is a valid showing of rights in a mark. See Nintendo of America Inc. v. lin amy, FA 1818485 (Forum Dec. 24, 2018) ("Complainant’s ownership a USPTO trademark registration for the NINTENDO mark evidences Complainant’s rights in such mark for the purposes of Policy ¶ 4(a)(i).”). Complainant also provides evidence of a number of trademark registrations for the SNAP, SNAPCHAT and other SNAP-formative marks globally. See Compl. Annexes Q and R.
Complainant argues Respondent’s <premiumsnap.org> and <premiumsnap.biz> domain names are confusingly similar to Complainant’s SNAPCHAT mark as they contain a dominant portion of Complainant’s mark and merely add the term “premium” and the “.org” and “.biz” gTLDs. The addition of a generic or descriptive phrase and gTLD fails to sufficiently distinguish a disputed domain name from a mark per Policy ¶ 4(a)(i). See Huron Consulting Group Inc. v. David White, FA 1701395 (Forum Dec. 6, 2016) (finding that Respondent’s <huroninc.net> domain name is confusingly similar to the HURON CONSULTING GROUP and HURON HEALTHCARE marks under Policy ¶ 4(a)(i) because in creating the domain name, the respondent contains the dominant portion of the marks and appends the term “inc” and a gTLD).
In addition, previous panels have found with respect to this very Complainant that adding the term “premium” was not sufficient to distinguish the domain name from an incorporated mark in a Policy ¶ 4(a)(i) analysis. See Snap Inc. v. Kester Pettitt, FA 1909001864819 (Forum Oct. 11, 2019). This Panel agrees and finds that the disputed domain names in this case are indeed confusingly similar to Complainant’s mark per Policy ¶ 4(a)(i).
In addition to demonstrating that that the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights, the Complainant must make a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii). Once that prima facie case is made, the burden shifts to Respondent to show it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also 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”).
Complainant contends Respondent lacks rights or legitimate interests in the <premiumsnap.org> and <premiumsnap.biz> domain names since Respondent is not commonly known by the disputed domain names and Complainant has not authorized or licensed to Respondent any rights in the SNAPCHAT mark. WHOIS information may be used to determine whether a respondent is commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Amazon Technologies, Inc. v. LY Ta, FA 1789106 (Forum June 21, 2018) (concluding a respondent has no rights or legitimate interests in a disputed domain name where the complainant asserted it did not authorize the respondent to use the mark, and the relevant WHOIS information indicated the respondent is not commonly known by the domain name). Additionally, lack of authorization to use a complainant’s mark may indicate that the respondent is not commonly known by the disputed domain name. See Emerson Electric Co. v. golden humble / golden globals, FA 1787128 (Forum June 11, 2018) (“lack of evidence in the record to indicate a respondent is authorized to use [the] complainant’s mark may support a finding that [the] respondent does not have rights or legitimate interests in the disputed domain name per Policy ¶ 4(c)(ii)”). The WHOIS information for the disputed domain names in this matter lists the registrant as “Dan Premium,” and there is no other evidence to suggest that Respondent was authorized to use any of the SNAP-formative marks. Therefore, the Panel finds Respondent is not commonly known by the disputed domain name per Policy ¶ 4(c)(ii).
Further, Complainant argues Respondent’s <premiumsnap.org> and <premiumsnap.biz> domain names resolve and are used to distribute adult oriented “packages” that allow users to access pictures with different “sexual factors”. Compl. at ¶ 13. The website operator then requires users to enter their “Snapchat Username” to access a Private SNAPCHAT account where the website visitor pays for additional “services”. Id. Complainant alleges that the sale and/or purchase of access to Snapchat accounts violates the Snapchat App Terms of Service, as is using the Snapchat App to share pornography. Previous Panels have held that using an infringing domain to violate the Terms of Service of a complainant does not constitute a bona fide offer of goods or services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii). See Google LLC v. Domain Manager, FA1755084 (Forum Jan. 18, 2018) (no rights or legitimate interests created by the respondent’s use of the domain name in connection with a website that enabled Internet users to download and save content from Google’s YouTube service in violation of Google’s YouTube Terms of Services). See also Google Inc. v. Onur Koycegiz, FA1741705 (Forum Aug. 25, 2017) (“the disputed domain name resolves to a website featuring “10YOUTUBE” in a brand-like manner, and purports to enable Internet users to download and save video clips from Complainant’s website, in direct violation of Complainant’s Terms of Service.”). This Panel agrees that there cannot be a bona fide use of an infringing domain name where that use is in violation of the Terms of Service.
The Panel therefore finds that Complainant has met its prima facie burden of establishing that Respondent lacks rights or legitimate interest in the disputed domain names.
Complainant argues that Respondent registered and uses the <premiumsnap.org> and <premiumsnap.biz> domain names in bad faith based essentially on three grounds: (a) Respondent had actual and/or constructive knowledge of Complainant’s rights in the SNAP, SNAPCHAT and SNAP-formative marks at the time Respondent registered and subsequently used the disputed domain names, (b) Respondent’s bad faith use of the disputed domain names are used to divert internet traffic to an adult-oriented website for Respondent’s financial gain, and (c) Respondent uses the disputed domain names to enable Internet users to violate Complainant’s Terms of Service.
Although constructive knowledge is insufficient for a finding of bad faith, Panels have found actual knowledge based on the fame and notoriety of a mark. See The Am. Auto. Assoc., Inc. v. Zag Media Corp., FA 1226952 (Forum Nov. 13, 2008) ("Mere constructive knowledge is insufficient to support a finding of bad faith."); see also AutoZone Parts, Inc. v. Ken Belden, FA 1815011 (Forum Dec. 24, 2018) (“Complainant contends that Respondent’s knowledge can be presumed in light of the substantial fame and notoriety of the AUTOZONE mark, as well as the fact that Complainant is the largest retailer in the field. The Panel here finds that Respondent did have actual knowledge of Complainant’s mark, demonstrating bad faith registration and use under Policy ¶ 4(a)(iii).”). Complainant’s marks have become internationally recognized and well-known. This fame has been recognized by a number of other Panels. See, for example, Snap Inc. v. Daisy Ducharme / baby & belly photography, FA1911001872261 (Forum Dec. 28, 2019) (finding Respondent had actual knowledge of Complainant’s rights in the SNAP mark due to the notoriety of Complainant’s mark).
Complainant also alleges that the activity being promoted on the disputed domain names “depend on the use of the Snapchat App”. The fact that the services being offered by Respondent relies on the use of Complainant’s app further demonstrates that Respondent had actual knowledge of Complainant’s rights at the time he registered the domain names. See Snap Inc. v. Domain Admin / WHois Privacy Corp, FAA2008001907704 (Forum Sept. 4, 2020) (finding respondent had actual knowledge of the complainant, its app, mark and reputation, based on inter alia, respondent’s offer of services facilitating internet users to use Complainant’s Snapchat App).
Additionally, as stated above, Respondent uses the disputed domain names to offer Internet users the ability to purchase adult oriented packages with access to pornographic materials See Compl. ¶ 13. It is well settled that a respondent using disputed domain names to divert users to purchase its own goods and services constitutes bad faith under the Policy. See Snap Inc. v. micheal smith FA2004001894441 (Forum May 27, 2020) (finding bad faith where “Respondent has used the Domain Name to divert and mislead Internet users for commercial gain”). See also Andrey Ternovskiy dba Chatroulette v. Abdelbasset Selmi, FA 1638963 (Forum Oct. 28, 2015) (finding the respondent’s use of the at-issue domain name to resolve to pornographic content indicated the respondent registered and used the <chatroulette.us> domain name in bad faith per Policy ¶ 4(b)(iv)). Moreover, use of a domain name containing a trade mark in relation to a web page hosting adult material can also be evidence of bad faith registration and use under Policy 4 (b)(iii). See Molson Canada 2005 v. JEAN LUCAS/DOMCHARME GROUP, FA 1412001596702 (Forum Feb. 10, 2015).
Finally, Complaint has shown that the services offered by Respondent through the disputed domain names encourage Internet users to violate Complainant’s Terms of Service for the services it provides under the SNAP and SNAPCHAT marks. Use of a disputed domain name to violate or induce others to violate a complainant’s terms of service can indicate bad faith registration per Policy ¶ 4(a)(iii). See Snap Inc. v. micheal smith FA2004001894441 (Forum May 27, 2020) (finding bad faith where Respondent used an infringing domain name to monetize their private Snapchat accounts to receive adult and pornographic photos and/or video in violation of Snapchat’s terns of service). See also 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).
For all of the reasons above, the Panel finds Respondent registered and uses the disputed domain names in bad faith under 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 <premiumsnap.org> and <premiumsnap.biz> domain names be TRANSFERRED from Respondent to Complainant.
Jeffrey J. Neuman Panelist
Dated: March 25, 2021
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