Snap Inc. v. Sol Ayal / Southern telecom
Claim Number: FA2104001942258
Complainant is Snap Inc. (“Complainant”), represented by Emily A. DeBow of Kilpatrick, Townsend & Stockton LLP, California, USA. Respondent is Sol Ayal / Southern telecom (“Respondent”), New York, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <facebooksnapchat.com>, <snapchatfacebook.com>, <instagramsnapchat.com>, <snapchatinstagram.com>, <tiktoksnapchat.com> and <snapchattiktok.com>, all 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.
Debrett G. Lyons as Panelist.
Complainant submitted a Complaint to the Forum electronically on April 20, 2021; the Forum received payment on April 20, 2021.
On April 21, 2021, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <facebooksnapchat.com>, <snapchatfacebook.com>, <instagramsnapchat.com>, <snapchatinstagram.com>, <tiktoksnapchat.com> and <snapchattiktok.com> domain names are registered with GoDaddy.com, LLC and that Respondent is the current registrant of the names. 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 4, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 24, 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@facebooksnapchat.com, postmaster@snapchatfacebook.com, postmaster@instagramsnapchat.com, postmaster@snapchatinstagram.com, postmaster@tiktoksnapchat.com, postmaster@snapchattiktok.com. Also on May 4, 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.
After receipt of the Complaint, Respondent made some limited attempt to engage Complainant in a settlement discussion, indicating at one point that it would accept USD20,000,000 to transfer the disputed domain names to Complainant. Complainant subsequently advised all parties that it had no interest in negotiation or in stay of these administrative proceedings.
Having received no formal Response to the Complaint, the Forum transmitted to the parties a Notification of Respondent Default.
On May 25, 2021, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Debrett G. Lyons 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 a Response from Respondent.
Complainant requests that the domain names be transferred from Respondent to Complainant.
PRELIMINARY ISSUE: MULTIPLE RESPONDENTS
The disputed domain names are not owned by one party. 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.”
Complainant alleges that the domain names are effectively controlled by a single person or entity, operating under several aliases. The approach taken to this issue by the majority of UDRP panelists is to allow a single administrative proceeding in respect of several domain names not commonly held if there is reasonable evidence of a claim to actual control by one person or entity.
That common control is said to be shown by the WHOIS information which lists the same name, organization, registrant City and State, and phone number for all the disputed domain names. The Panel considers that this is adequate evidence of Complainant’s assertion of a single controlling entity and so allows these proceedings to continue against the named respondents, referring to them together as “Respondent”.
A. Complainant
Complainant asserts trademark rights in SNAPCHAT. Complainant holds a national registration for that trademark. Complainant submits that the disputed domain names are confusingly similar to its trademark.
Complainant alleges that Respondent has no rights or legitimate interests in the disputed domain names.
Complainant alleges that Respondent registered and used the disputed domain names in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The factual findings pertinent to the decision in this case are that:
1. Complainant develops and licenses the use of smartphone applications and is best known for its camera and messaging application promoted by reference to the trademark SNAPCHAT;
2. the trademark, SNAPCHAT, is registered with the United States Patent and Trademark Office (“USPTO”) as Reg. No. 4,375,712, registered July 30, 2013;
3. there is no relationship between the parties and Complainant has not authorized Respondent to use its trademark or to register any domain name incorporating the trademark;
4. the disputed domain names <facebooksnapchat.com>, <instagramsnapchat.com>, <snapchatinstagram.com> and <snapchatfacebook.com> were registered on January 22, 2020 and the domain names, <tiktoksnapchat.com> and <snapchattiktok.com> were registered on January 6, 2021;
5. two of the disputed domain names, <facebooksnapchat.com> and <instagramsnapchat.com>, redirected to <audiorepublic.nyc> where audio devices were offered for sale; the other disputed domain names resolve to parked websites lacking substantive content; and
6. prior to initiation of the Complaint, Respondent offered to sell the <facebooksnapchat.com>, <instagramsnapchat.com>, <snapchattiktok.com> and <tiktoksnapchat.com> domain names to Complainant for USD10,000,000 worth of advertising.
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.
Paragraph 4(a)(i) of the Policy requires a two-fold enquiry—a threshold investigation into whether a complainant has rights in a trademark, followed by an assessment of whether the disputed domain name is identical or confusingly similar to that trademark.
It is well established by decisions under this Policy that a trademark registered with a national authority is evidence of trademark rights (see, for example, Mothers Against Drunk Driving v. phix, FA 174052 (Forum Sept. 25, 2003)). Complainant therefore has rights as it provides proof of its registration of the trademark SNAPCHAT with the USPTO, a national trademark authority.
For the purposes of comparison of the disputed domain names with the trademark, the gTLD, “.com”, can in each case be disregarded. The disputed domain names then differ from Complainant’s trademark by addition of a trademark of a competing social media application, either TIKTOK, INSTAGRAM, or FACEBOOK.
Complainant cited prior UDRP decisions where “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.” So, for example, in Snap Inc. v. Malkam Dior, FA 1707001741274 (Forum Aug. 28, 2017) the disputed domain name, <snapchatdrones.com>, was found to be confusingly similar to the wholly incorporated SNAPCHAT trademark.
The Panel is in agreement with that general principle where the added matter is descriptive, generic or otherwise leaves Complainant’s trademark as the recognizable and distinctive part of the whole.
Complainant goes on to assert that “[t]he inclusion of the third-party trademarks, INSTAGRAM, FACEBOOK, and TIKTOK, respectively (Complainant’s competitors), fail to distinguish the domain names from the SNAPCHAT Mark”, citing in support the case of Snap Inc. v. John Smith, FA 2006001898876 (Jul. 1, 2020) where the domain name at issue, <snapkiksexting.com>, comprised Complainant’s SNAP trademark (USPTO Regn. No. 4,345,533), the descriptive term “sexting” and, notably, addition of the third-party trademark, KIK. The panelist in that case held:
“Complainant’s mark is a prominent, if not dominant element of the disputed domain name. The third-party trademark KIK does not distinguish the disputed domain name from complainant’s mark so as to avoid the potential for confusion and in the circumstances of this Complaint the <.com> domain extension would be regarded by Internet users as merely a technical necessity without any distinguishing character.
Furthermore, the disputed domain name adopts the dominant element of Complainant’s SNAPCHAT mark as its initial and prominent element.”
The Panel is not so readily convinced that this same reasoning can be applied here. The disputed domain names prominently include well-known marks in combination with Complainant’s trademark, those other marks positioned in several instances as the formative component of the combination. Moreover, the case of Snap Inc. v. John Smith resulted in an order for transfer of the composite mark to Complainant without apparent regard for the transfer of a third-party trademark thereby entailed.
Both these matters require closer consideration and the Panel notes that the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Jurisprudential Overview 3.0”) poses at #1.12 the question: Is a domain name consisting of the complainant’s mark plus a third-party trademark confusingly similar to the complainant’s trademark? The consensus answer is that:
“Where the complainant’s trademark is recognizable within the disputed domain name, the addition of other third-party marks (i.e., <mark1+mark2.tld>), is insufficient in itself to avoid a finding of confusing similarity to the complainant’s mark under the first element.”
Accordingly, the first and primary issue – confusing similarity – appears to have been answered in most cases in favour of a complainant and this Panel finds that this is the appropriate finding here. Although the prominent addition of other trademarks to Complainant’s mark may in judicial proceedings invite a different assessment of the likelihood of confusion, so far as paragraph 4(a)(i) of the Policy is concerned, confusing similarity has consistently been found in, for example, so-called “sucks” cases where actual confusion was very unlikely. So, too, in those more closely allied cases where the disputed domain name has been the combination of two or more of a complainant’s own trademarks, a finding of confusing similarity is common, albeit that in many cases the compared terms lack objective similarity.
The Panel finds that Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy by demonstrating that the domain names are confusingly similar to a trademark or service mark in which it has rights.
From the perspective of this aspect of the Policy, it matters none that the owners of the INSTAGRAM, FACEBOOK and TIKTOK trademarks are not parties to the proceedings (see, for example, Chevron Corporation v. Young Wook Kim, WIPO Case No. D2001-1142). On the other hand, the third-party rights have direct relevance to this disposition of this matter as discussed under “Decision”, below.
Paragraph 4(c) of the Policy states that any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate rights or legitimate interests to a domain name for purposes of paragraph 4(a)(ii) of the Policy:
(i) before any notice to you of the dispute, your use of, or 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) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are 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 need only make out a prima facie case that Respondent has no rights or legitimate interests in the disputed domain names, after which the onus shifts to Respondent to rebut that case by demonstrating those rights or interests (see, for example, Do The Hustle, LLC v. Tropic Web, D2000‑0624 (WIPO Aug. 21, 2000)).
The domain name registrant / registrant organisation is “Sol Ayal / Southern telecom” which does not suggest that Respondent might be commonly known by any of the domain names. There is no evidence that Respondent has any relevant trademark rights and no information on the record indicates Respondent was authorised to register a domain name incorporating Complainant’s mark.
As noted above, the <facebooksnapchat.com> and <instagramsnapchat.com> domain names redirect to a website where headphones, speakers, and other audio equipment are for sale. Such use, directing internet users away from Complainant’s business to an online location promoting unrelated goods, is clearly not a bona fide offering of goods or services or legitimate non-commercial or fair use under the Policy.
Likewise, the <snapchatfacebook.com>, <instagramsnapchat.com>, <snapchatinstagram.com>, <tiktoksnapchat.com> and <snapchattiktok.com> domain names resolve to parked or inactive websites of no substance and so there is nothing to support a finding of rights or legitimate interest in those domain names under this aspect of the Policy (see, for example, Dell Inc. v. link growth / Digital Marketing, FA 1785283 (Forum June 7, 2018) (“Respondent’s domain names currently display template websites lacking any substantive content. The Panel finds that Respondent has does not have rights or legitimate interests with respect of the domain name per Policy ¶¶ 4(c)(i) or (iii).”)).
Finally, some of the disputed domain names have been offered for sale and in Reese v. Morgan, FA 917029 (Forum Apr. 5, 2007) the panel found that the respondent’s willingness to sell a contested domain name for more than its out-of-pocket acquisitional costs provided additional evidence that the respondent had no rights or legitimate interests in the contested domain name).
The onus shifts to Respondent and in the absence of a Response, the Panel finds that Respondent has not discharged the onus and so finds that Complainant has satisfied the second limb of the Policy.
Complainant must prove on the balance of probabilities both that the disputed domain names were registered and used in bad faith.
Further guidance on that requirement is found in paragraph 4(b) of the Policy, which sets out four circumstances, any one of which is taken to be evidence of the registration and use of a domain name in bad faith if established.
The four specified circumstances are:
‘(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 who 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 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, respondent has intentionally attempted to attract, for commercial gain, internet users to respondent’s website 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 website or location or of a product or service on the site or location.’
The Panel finds that Respondent’s conduct with respect to the <facebooksnapchat.com> and <instagramsnapchat.com> domain names falls squarely under paragraph 4(b)(iv) above. The Panel found those domain names to be confusingly similar to the trademark. The Panel finds that Respondent has targeted Complainant and its trademark. The Panel also finds that the use of the domain names is for commercial gain since audio products are promoted for sale at the resolving website. All the elements of paragraph 4(b)(iv) are met (see, for example, Allianz of Am. Corp. v. Bond, FA 680624 (Forum June 2, 2006) finding bad faith registration and use under Policy ¶ 4(b)(iv) where the respondent was diverting Internet users searching for the complainant to its own website and likely profiting).
The evidence also shows that Respondent offered the <facebooksnapchat.com>, <instagramsnapchat.com>, <snapchattiktok.com> and <tiktoksnapchat.com> domain names to Complainant in exchange for USD10,000,000 worth of advertising. Further, after Complaint was filed, Respondent attempted to sell all the domain names to Complainant for USD20,000,000. The Panel finds that such conduct amounted to bad faith use and registration under paragraph 4(b)(i) of the Policy (see, for example, Airbnb, Inc. v. Super Privacy Service LTD c/o Dynadot, FA 1821386 (Forum Jan. 10, 2019) (“Complainant argues that Respondent registered and uses the <airbnbb.com> domain name in bad faith by offering it for sale. The Panel agrees and finds that Respondent registered and uses the disputed domain name in bad faith under Policy ¶ 4(b)(i).”)).
Accordingly, the Panel finds that the third and final element of the Policy is satisfied.
Complainant has established all three elements required under the ICANN Policy. However, an issue arises as to the proper form of relief to be ordered by the Panel. The Panel observes that #1.12 of the WIPO Jurisprudential Overview 3.0, considered already, goes on to state that in a case like this:
The complaint may include evidence of the third-party mark holder’s consent to file the case, and request that any transfer order be issued in favor of the filing complainant only. Absent such consent (and, where this was considered appropriate, having failed to reach the concerned third party by Procedural Order via the complainant), some panels have ordered transfer of the domain name without prejudice to the concerned third-party’s rights. In certain highly exceptional circumstances, panels have ordered the cancellation of the disputed domain name.”
Several options are open to the Panel. First, it might unconditionally order transfer of the disputed domain names to Complainant, but to do so would merely replace Respondent by Complainant in terms of the rights of the owners of the INSTAGRAM, FACEBOOK and TIKTOK trademarks. Whilst the Panel is in no doubt that Complainant conducts itself honestly, the problem with this option is that, in principle, the order does no more than change the ownership of what are instruments of confusion.
A second option is to order cancellation, rather than transfer, of the disputed domain names (see, for example, Bayerische Motoren Werke AG v. Gary Portillo, WIPO Case D2012-1937). Complaint had to elect transfer or cancellation of the disputed domain names. It elected transfer and so in this scenario the Panel would make an order in direct conflict with Complainant’s request.
The third option would be for the Panel to issue a Procedural Order requiring Complainant, within a finite time, to provide evidence of the third-party trademark holders’ consents to the transfer order in favour of Complainant. The Panel considers this option to be slow, unwieldly and potentially capable of setting future complainants on a wild goose chase at the hands of abusive domain name registrants.
The final option, and the one favoured by this Panel for reasons of both practicality and harmony with the spirit of the UDRP as a quick and cost-effective procedure, is to order transfer of the domain names without prejudice to the concerned third-parties’ rights.
Accordingly, the Panel concludes that relief shall be GRANTED and it is ORDERED that the <facebooksnapchat.com>, <snapchatfacebook.com>, <instagramsnapchat.com>, <snapchatinstagram.com>, <tiktoksnapchat.com> and <snapchattiktok.com> domain names be TRANSFERRED from Respondent to Complainant without prejudice to the rights of the third-party owners of the INSTAGRAM, FACEBOOK and TIKTOK trademarks.
Debrett G. Lyons, Panelist
Dated: June 1, 2021
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