Snap Inc. v. Alexandre Decaudain / webgear
Claim Number: FA2105001945395
Complainant is Snap Inc. (“Complainant”), represented by Dennis L. Wilson of Kilpatrick Townsend & Stockton LLP, California, USA. Respondent is Alexandre Decaudain / webgear (“Respondent”), France.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <snapchatdestar.com> (the “disputed domain name”), registered with OVH sas (the “Registrar”).
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.
Lynda M. Braun as Panelist.
Complainant submitted a Complaint to the Forum electronically on May 17, 2021; the Forum received payment on May 17, 2021.
On May 18, 2021, the Registrar confirmed by e-mail to the Forum that the <snapchatdestar.com> disputed domain name is registered with OVH sas and that Respondent is the current registrant of the name. The Registrar has verified that Respondent is bound by the OVH sas 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 25, 2021, the Forum served the Complaint and all Annexes, including a French Written Notice of the Complaint, setting a deadline of June 14, 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@snapchatdestar.com. Also on May 25, 2021, the French 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 timely, formal response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default. Email correspondence from Respondent to the Forum was received on May 26 and 28, 2021, which stated that Respondent did not believe it was infringing Complainant’s mark.
On June 16, 2021, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Lynda M. Braun 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 disputed domain name be transferred from Respondent to Complainant.
Under the Rules, the language of the proceedings is the language of the registration agreement, unless otherwise agreed upon by the parties, or unless the Panel determines that a different language should be used under Rule 11. Here, the registration agreement for the disputed domain name is French. Pursuant to UDRP Rule 11(a), the Panel finds that Respondent should be considered to understand English, as the disputed domain name incorporates an English language trademark, the content on the website is in English, and although Respondent did not submit a response, it submitted two emails to the Forum in English, all suggesting that Respondent is able to converse in and understand English. In addition, the Panel determines that the language requirement has been satisfied through the French language Commencement Notification. Therefore, after considering the circumstances of the present case, the Panel has decided that the remainder of the proceeding should be in English.
A. Complainant
Complainant is an online social media platform. Complainant claims rights in the SNAPCHAT trademark through its registrations with numerous trademark agencies throughout the world (e.g. European Office of Harmonisation in the Internal Market (“OHIM”) Registration No. 12,925,971, registered Oct. 22, 2014; Canadian Intellectual Property Office (“CIPO”) Registration. No. 16,130,890, registered Mar. 14, 2016) (hereinafter collectively referred to as the “SNAPCHAT Mark”). Complainant contends that Respondent’s <snapchatdestar.com> disputed domain name is identical or confusingly similar to Complainant’s mark as it incorporates the mark in its entirety and adds the words “de” and “star”, along with the “.com” generic top-level domain (“gTLD”). Further, Complainant claims that Respondent has no rights or legitimate interests in the disputed domain name and that Respondent registered and is using the dispute domain in bad faith.
B. Respondent
Respondent failed to submit a timely, formal Response in this proceeding. Email correspondences were received from Respondent on May 26 and 28, 2021.
The Panel finds that Complainant holds valid trademark rights in the SNAPCHAT Mark. The Panel further finds that the disputed domain name is confusingly similar to Complainant’s SNAPCHAT Mark, that Respondent lacks rights or legitimate interests in respect of the disputed domain name, and that Respondent registered and is using the disputed domain name 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 disputed domain name should be cancelled or transferred:
(1) the disputed 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 disputed domain name; and
(3) the disputed domain name has been registered and is being used in bad faith.
In view of Respondent's failure to submit a timely, formal 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 Panel finds that Complainant has rights in the SNAPCHAT Mark based on registration with the numerous trademark agencies throughout the world (e.g. OHIM Reg. 12,925,971, registered Oct. 22, 2014; CIPO Reg. 16,130,890, registered Mar. 14, 2016). Registration with multiple trademark agencies is generally sufficient to establish rights in a mark under Policy ¶ 4(a)(i). See Astute, Inc. v. Raviprasath C / Astute Solution Pvt Ltd, FA 1546283 (Forum Apr. 9, 2014) (finding that registrations with two major trademark agencies is evidence enough of Policy ¶ 4(a)(i) rights in the ASTUTE SOLUTIONS mark.) trademark registration for the NINTENDO mark evidences Complainant’s rights in such mark for the purposes of Policy ¶ 4(a)(i).”).
In addition to the SNAPCHAT Mark, Complainant owns numerous United States and foreign trademark registrations for its [IMAGE OF MARK OMITTED] (“Ghost Logo”), which has been in use since its app was launched in 2011. Moreover, Complainant is also the owner of the United States trademark for the color yellow [IMAGE OF MARK OMITTED] (“Snapchat Yellow”), in connection with software for, inter alia, sending and receiving photographs and video.
The Panel also concludes that the disputed domain name is confusingly similar to the SNAPCHAT Mark under the Policy ¶ 4(a)(i). The disputed domain name incorporates Complainant’s SNAPCHAT Mark in its entirety, followed by the terms “de” and “star”, and then followed by the gTLD “.com”.
The inclusion of descriptive terms such as “de” and “star” does not distinguish the disputed domain name from the SNAPCHAT Mark. UDRP panels have consistently held that the addition of descriptive terms is not sufficient to distinguish a disputed domain name from a complainant’s mark. See Compagnie Générale des Etablissements Michelin v. Shabbir Hussain, D2021-0726 (WIPO, Apr. 22, 2021) (finding the addition of the French word “de” to complainant’s MICHELIN mark in <demichelin.com> was not sufficient to distinguish the domain name).
Finally, the inclusion of the “gTLD “.com” in the disputed domain name also does not change the conclusion that the disputed domain name is confusingly similar to the SNAPCHAT Mark. See, e.g., Snap Inc. v. Nestor Hernandez, F1709001749325 (Forum Oct. 25, 2017) (use of a gTLD is insufficient to defeat a test of confusingly similarity).
Accordingly, the Panel finds that Policy ¶ 4(a)(i) has been established by Complainant.
To establish rights and legitimate interests, a complainant must first make a prima facie case that respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to respondent to show it does have rights or legitimate interests. See 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”).
As Respondent did not respond to the Complaint, Respondent cannot have carried its burden to come forward with evidence of its rights or legitimate interests in the disputed domain name. The Panel notes that, given the facts here, Respondent would have been hard-pressed to furnish availing arguments, had it chosen to respond:
Specifically, Respondent is not commonly known by the disputed domain name, nor has Complainant authorized, licensed, or otherwise permitted Respondent to use the SNAPCHAT Mark. Respondent has no relationship, affiliation, connection, endorsement or association with Complainant.
Accordingly, the Panel finds that Policy ¶ 4(a)(ii) has been established by Complainant.
The Panel concludes that Respondent registered and is using the disputed domain name in bad faith.
The Panel finds that Respondent registered and is using the disputed domain name in bad faith because Respondent is attempting to attract, for commercial gain, Internet users to Respondent’s own website by creating a likelihood of confusion with Complainant's SNAPSHOT Mark as to the source, sponsorship, affiliation, or endorsement of the content thereon. Bad faith under Policy ¶ 4(b)(iv) can be found where a respondent uses a confusingly similar domain name to falsely indicate an association with a complainant. See AOL LLC v. iTech Ent, LLC, FA 726227 (Forum July 21, 2006) (finding that the respondent took advantage of the confusing similarity between the <theotheraol.com> and <theotheraol.net> domain names and the complainant’s AOL mark, which indicates bad faith registration and use pursuant to Policy ¶ 4(b)(iv)).
In addition, the Panel finds that Respondent registered the disputed domain name in bad faith with actual knowledge of Complainant’s rights in the SNAPCHAT Mark. Complainant first made use of the SNAPCHAT Mark in September 2011, and subsequently the SNAPCHAT Mark has been widely recognized and relied upon by online consumers throughout the world. Respondent did not register the disputed domain name until September 12, 2020, well after Complainant’s SNAPCHAT Mark became internationally recognized and registered. Respondent’s registration of the Infringing Domain Name years after Complainant had first used its marks is sufficient to satisfy the bad faith requirement.
Other examples demonstrating that Respondent had actual knowledge of the SNAPCHAT Mark prior to registration of the disputed domain name include Respondent’s use of the “Snapchat Yellow” and “Ghost Logo” on the website to which the disputed domain name resolves. See Snap Inc. v. View Bird, FA1709001749823 (Forum Oct. 30, 2017) (Where Respondent included “content mirroring Complainant’s on the resolving site” the Panel found “the SNAPCHAT mark’s fame, coupled with Respondent’s use of the Ghost Logo, indicates Respondent had actual knowledge of Complainant when registering and using the domain name under Policy ¶ 4(a)(iii).”).
Finally, Respondent also exhibited bad faith because it is using the disputed domain name in bad faith to divert Internet traffic to Respondent’s website for financial gain. The Respondent’s website offers search services and includes pay-per-click advertisements, and the disputed domain name is used to generate advertising revenue to benefit Respondent financially, another indication of bad faith. See, e.g., Snap Inc. v. ALI ALSHUMRANI / ALI ALERYANI, FA1805001788602 (Forum June 14, 2018) (finding bad faith where the respondent used Snap’s Ghost Logo and SNAP Marks to attract Internet users and generate advertising revenue for financial gain).
Accordingly, the Panel finds that Policy ¶ 4(a)(iii) has been established by Complainant.
Accordingly, it is Ordered that the <snapchatdestar.com> disputed domain name be TRANSFERRED from Respondent to Complainant.
Lynda M. Braun, Panelist
Dated: June 22, 2021
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