Snap Inc. v. Deacon Chisholm
Claim Number: FA2110001969754
Complainant is Snap Inc. (“Complainant”), represented by Dennis L. Wilson, Caroline Y. Barbee, and Emily A. DeBow of Kilpatrick, Townsend & Stockton LLP, California, USA Respondent is Deacon Chisholm (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <jenniferwhitesnapchat.com> (the “Disputed Domain Name”), 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.
Douglas M. Isenberg as Panelist.
Complainant submitted a Complaint to the Forum electronically on October 19, 2021; the Forum received payment on October 19, 2021.
On October 21, 2021, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <jenniferwhitesnapchat.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. 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”). Complainant filed an amended complaint (hereafter, the “Complaint”) with the Forum on October 22, 2021.
On October 25, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 15, 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@jenniferwhitesnapchat.com. Also on October 25, 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.
A timely Response was received and determined to be complete on October 26, 2021.
On November 1, 2021, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Douglas M. Isenberg 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant states that it “owns and distributes the enormously popular SNAPCHAT camera and messaging application, and storytelling platform – available for both the iOS and Android operating systems – that, among other things, allows users to share photographs, videos, and messages called ‘Snaps’ with others via mobile devices (the ‘Snapchat App’)”; that the Snapchat App was launched in 2011 and “has been one of the fastest growing and most popular smartphone applications in the world”; and that “[a]s of the end of the second quarter of 2021, 293 million daily users opened Snapchat, on average, thirty times each day.”
Complainant further states, and provides evidence in support thereof, that it is the owner of numerous registrations for trademarks that consist of SNAPCHAT, including U.S. Reg. No. 4,375,712 for SNAPCHAT (registered July 30, 2013) for use in connection with “Computer application software for mobile phones, portable media players, and handheld computers, namely, software for sending digital photos, videos, images, and text to others via the global computer network.” These registrations are referred to hereafter as the “SNAPCHAT Trademark.”
Complainant asserts that the Disputed Domain Name is confusingly similar to the SNAPCHAT Trademark because it “includes the entirety of” the SNAPCHAT Trademark; and “inclusion of the personal name ‘Jennifer White’ does not sufficiently distinguish the [Disputed] Domain Name from Complainant’s SNAPCHAT [Tradem]ark.”
Complainant asserts that Respondent has no rights or legitimate interests in the Disputed Domain Name because, inter alia, “there is no relationship between Complainant and Respondent”; “Respondent is using the Infringing Domain Name to redirect to a website displaying adult-oriented content to promote the distribution of pornography via multiple platforms including a private Snapchat account”; “Respondent is using the Infringing Domain Name to drive traffic to an adult-oriented website for commercial gain”; and “Respondent uses the Infringing Domain Name to promote and facilitate the use of a Snapchat account to distribute adult-oriented content for a subscription fee, which violates the Complainant’s Terms of Service prohibiting such conduct.”
Complainant asserts that the Disputed Domain Name was registered and is being used in bad faith because, inter alia, “Respondent is taking advantage of Complainant’s SNAPCHAT [Tradem]ark in the [Disputed] Domain Name to drive traffic to the adult-oriented website for its financial”; and “Respondent’s use of the [Disputed] Domain Name… promote[s] and facilitate[s] activity that violates Complainant’s Terms of Service.”
B. Respondent
Respondent states: “I don’t believe we have used the domain in a [sic] bad faith. Especially, as it has been created to associate with FanCentro to promote a public Snapchat account, and never to mislead anyone for a personal gain. That said, we would like to cooperate, and would gladly transfer or cancel the domain in question.”
Complainant is the owner of numerous registrations worldwide for the SNAPCHAT Trademark, which was registered as early as July 30, 2013. The Disputed Domain Name was created on December 4, 2019, and has been used to redirect visitors to a website using the domain name <fancentro.com> that features pornographic photos of someone described on the website as “your favorite little superslut Jennifer White” offering “behind the scenes footage from all my porn sets.”
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.
Based upon the trademark registrations cited by Complainant, it is apparent that Complainant has rights in and to the SNAPCHAT Trademark.
As to whether the Disputed Domain Name is identical or confusingly similar to the SNAPCHAT Trademark, the relevant comparison to be made is with the second-level portion of the Disputed Domain Name only (i.e., “jenniferwhitesnapchat”) because “[t]he applicable Top-Level Domain (‘TLD’) in a domain name (e.g., ‘.com’, ‘.club’, ‘.nyc’) is viewed as a standard registration requirement and as such is disregarded under the first element confusing similarity test”. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.11.1.
The Disputed Domain Name contains the SNAPCHAT Trademark in its entirety. As set forth in section 1.7 of WIPO Overview 3.0, “in cases where a domain name incorporates the entirety of a trademark, or where at least a dominant feature of the relevant mark is recognizable in the domain name, the domain name will normally be considered confusingly similar to that mark for purposes of UDRP standing.” The fact that the Disputed Domain Name also contains “jenniferwhite” is irrelevant because, as set forth in section 1.8 of WIPO Overview 3.0, “[w]here the relevant trademark is recognizable within the disputed domain name, the addition of other terms…would not prevent a finding of confusing similarity under the first element.”
Accordingly, the Panel finds that Complainant has proven the first element of the Policy.
Complainant has argued that Respondent has no rights or legitimate interests in respect of the Disputed Domain Name for the reasons set forth above.
WIPO Overview 3.0, section 2.1, states: “[w]hile the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the often impossible task of ‘proving a negative’, requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element.”
Here, Respondent has provided no evidence to support the existence of rights or legitimate interests and instead has simply stated that the Disputed Domain Name was created “to promote a public Snapchat account.”
Accordingly, the Panel finds that Complainant has established its prima facie case and without any relevant evidence from Respondent to the contrary, the Panel is satisfied that Complainant has satisfied the second element of the Policy.
Whether a domain name is registered and used in bad faith for purposes of the Policy may be determined by evaluating four (non-exhaustive) factors set forth in the Policy: (i) circumstances indicating that the registrant 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 registrant’s documented out-of-pocket costs directly related to the domain name; or (ii) the registrant 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 the registrant has engaged in a pattern of such conduct; or (iii) the registrant has registered the domain name primarily for the purpose of disrupting the business of a competitor; or (iv) by using the domain name, the registrant has intentionally attempted to attract, for commercial gain, Internet users to the registrant’s website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the registrant’s website or location or of a product or service on the registrant’s website or location. Policy, paragraph 4(b).
“Panels have consistently found that the mere registration of a domain name that is identical or confusingly similar (particularly domain names comprising typos or incorporating the mark plus a descriptive term) to a famous or widely-known trademark by an unaffiliated entity can by itself create a presumption of bad faith.” WIPO Overview 3.0, section 3.1.4. Here, it is obvious that the SNAPCHAT Trademark is famous or widely known given Complainant’s long usage of the mark and multiple registrations therefore, as well as the size of Complainant’s business using the mark.
Further, this Panel agrees with the decisions in disputes previously filed by Complainant under similar circumstances, including Snap Inc. v. tokunbo ramos / Toks, Forum Claim No. 1899017 (“[u]se of a domain name containing a trade mark in relation to a web page hosting adult material is evidence of bad faith registration and use); Snap Inc. v. Kazi Raihan / Rashel Hossain / refath kanta / MOIN UDDIN, Forum Claim No. 1890945 (finding bad faith where “commercial gain arises from the money site visitors pay for access to the Snapchat accounts of the models who participate in this scheme”); and Snap, Inc. v. Nestor Hernandez, Forum Claim No. 1749325 (“[u]se of an infringing domain name to redirect Internet users to adult-oriented material for commercial gain supports a finding that a respondent uses the domain name in bad faith”).
Accordingly, the Panel finds that Complainant has proven the third element 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 <jenniferwhitesnapchat.com> domain name be TRANSFERRED from Respondent to Complainant.
Douglas M. Isenberg, Panelist
Dated: November 15, 2021
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page