Snap Inc. v. One Time / ONE TIME SARL
Claim Number: FA2104001941556
Complainant is Snap Inc. (“Complainant”), represented by Dennis L Wilson of Kilpatrick Townsend & Stockton LLP, California, USA. Respondent is One Time / ONE TIME SARL (“Respondent”), Afghanistan.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <snapcoquin.com>, (‘the Domain Name’) registered with NameCheap, Inc..
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 April 14, 2021; the Forum received payment on April 14, 2021.
On April 15, 2021, NameCheap, Inc. confirmed by e-mail to the Forum that the <snapcoquin.com> domain name is registered with NameCheap, Inc. and that Respondent is the current registrant of the name. 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 21, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 11, 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 postmaster@snapcoquin.com. Also on April 21, 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 May 15, 2021 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 Name be transferred from Respondent to Complainant.
A. Complainant
The Complainant owns the SNAP and SNAPCHAT trademarks registered in, inter alia, the USA for computer services and used since at least 2012.
The Domain Name registered in 2015 was registered after the Complainant’s marks had become well known and the Domain Name has been used to link to an adult web site of a sexual nature and pay per click links.
The Domain Name includes the entirety of the Complainant’s SNAP mark and is thus likely to confuse consumers as to a connection with the Complainant. The addition of the generic word ‘coquin’ which is French for ‘naughty’ and the gTLD “.com” to the Complainant’s mark in the Domain Name is not sufficient to distinguish the latter from the Complainant’s SNAP trade mark to which it is confusingly similar.
There is no relationship between the Complainant and the Respondent who is not commonly known by the Domain Name. Use of a domain name that is confusingly similar to another’s trade mark to divert traffic to a commercial web site, in particular offering pornography and/or using such a domain name for pay per click links is not a bona fide or legitimate fair use under the Policy.
Respondent’s site displayed the legend ‘Inspired by Snapchat’ until the Respondent received a cease and desist letter from the Complainant. Accordingly the Respondent had actual knowledge of the Complainant’s rights, business and services.
Respondent’s use of the Domain Name to divert Internet traffic to a commercial pornographic site and/or pay per click links for Respondent’s financial gain constitutes bad faith under the Policy.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The Complainant owns the SNAP and SNAPCHAT trademarks registered in, inter alia, the USA for computer related services and used since at least 2012.
The Domain Name registered in 2015 has been used for a commercial site offering material of an adult sexual nature and commercial pay per click links to third party pornography commercial sites.
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”).
The Domain Name consists of the Complainant’s SNAP mark (registered, inter alia in the USA for computer related services and used since at least 2012), the generic French word ‘coquin’ meaning naughty and the gTLD “.com”.
Previous panels have found confusing similarity when a respondent merely adds a generic term to a Complainant's mark. See PG&E Corp. v Anderson, D2000-1264 (WIPO Nov. 22, 2000) (finding that respondent does not by adding common descriptive or generic terms create new or different marks nor does it alter the underlying mark held by the Complainant). The Panel agrees that the addition of the generic French word ‘coquin’ to the Complainant's SNAP mark does not distinguish the Domain Name from the Complainant's registered SNAP trade mark pursuant to the Policy.
The gTLD “.com” does not serve to distinguish the Domain Name from the Complainant’s SNAP 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).
Accordingly, the Panel holds that the Domain Name is confusingly similar for the purpose to a mark in which the Complainant has rights.
Rights or Legitimate Interests
The Complainant has not authorised the Respondent to use its SNAP mark. 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 Name. See 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 use of the Domain Name is commercial and so cannot be legitimate non-commercial fair use.
The Domain Name has been used for a commercial site offering material of a pornographic nature and for commercial pay per click links to third party commercial pornography sites.
The use of a domain name containing a third party trade mark to resolve to material of an adult sexual nature is not a bona fide use. See Altria Group, Inc. and Altria Group Distribution Company v. xiazihong, FA 1732665 (Forum July 7, 2017).
Use for a commercial site which also offers pay per click links does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use. See Insomniac Holdings, LLC v. Mark Daniels, FA 1735969 (Forum July 15, 2017) (”Respondent’s use of .. domain name resolves to a site containing pay-per-click hyperlinks and advertisements… Since these kinds of advertisements generate revenue for the holder of a domain name, they cannot be noncommercial; further, they do not qualify as a bona fide offering.”).
As such the Panelist finds that the Respondent does not have rights or a legitimate interest in the Domain Name and that the Complainant has satisfied the second limb of the Policy.
Registration and Use in Bad Faith
Use of the Domain Name which contains the Complainant’s SNAP trade mark in relation to a web page hosting pornographic material is 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).
The former use of the legend ‘Inspired by Snapchat’ on the Respondent’s web site shows that the Respondent had actual knowledge of the Complainant, its rights, business and services.
In addition the use made of the Domain Name in relation to a commercial site featuring pay per click links is confusing and disruptive. Accordingly, the Panel holds that the Respondent intentionally attempted to attract for commercial gain Internet users to its website by creating a likelihood of confusion with the Complainant's trade mark as to the source, sponsorship, affiliation or endorsement of the web site or services offered on it likely to disrupt the business of the Complainant. See MySpace, Inc. v. Myspace Bot, FA 672161 (Forum May 19, 2006) (holding that the respondent registered and used the <myspacebot.com> domain name in bad faith by diverting Internet users seeking the complainant’s website to its own website for commercial gain because the respondent likely profited from this diversion scheme); see also Danbyg Ejendomme A/S v. lb Hansen / guerciotti, FA1504001613867 (Forum June 2, 2015) (finding that the respondent registered and used the domain name in bad faith under Policy ¶ 4(b)(iv) where the disputed domain name resolved to a website that offered hyperlinks).
As such, the Panelist believes that the Complainant has made out its case that the Domain Name was 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 <snapcoquin.com> domain name be TRANSFERRED from Respondent to Complainant.
Dawn Osborne, Panelist
Dated: May 17, 2021
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