DECISION

 

Snap Inc. v. Ashod Der Khatchadourian

Claim Number: FA2407002108266

 

PARTIES

Complainant is Snap Inc. ("Complainant"), represented by Ginger Mimier of KILPATRICK TOWNSEND & STOCKTON LLP, New York, USA. Respondent is Ashod Der Khatchadourian ("Respondent"), represented by Lory Zakarian, Canada.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <snapchatporn.com>, registered with GoDaddy.com, LLC.

 

PANEL

The undersigned certifies that they have acted independently and impartially and to the best of their knowledge have no known conflict in serving as Panelist in this proceeding.

 

Nathalie Dreyfus as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to Forum electronically on July 26, 2024; Forum received payment on July 26, 2024.

 

On July 26, 2024, GoDaddy.com, LLC confirmed by e-mail to Forum that the <snapchatporn.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").

 

On July 30, 2024, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 19, 2024 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@snapchatporn.com. Also on July 30, 2024, 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 August 19, 2024.

 

On August 19, 2024, pursuant to the Parties' requests to have the dispute decided by a single-member Panel, Forum appointed Nathalie Dreyfus as Panelist.

 

Having reviewed the communications records, the Administrative Panel (the "Panel") finds that 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.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A. Complainant

The Complainant is Snap Inc., formerly SnapChat Inc., and owns the SNAPCHAT camera and messaging application and storytelling platform, available for both the iOS and Android operating systems. This application launched in 2011 grew to be very popular and has been among the world's top ten most downloaded iOS apps for the last six consecutive years, from 2016-2021, including being the world's most downloaded iOS app in 2016.

 

The Complainant asserts that the Disputed Domain Name <snapchatporn.com> is confusingly similar to the Complainant's trademarks. Indeed, the Disputed Domain Name fully incorporates Complainant's SNAPCHAT trademark, with the mere addition of the non-distinctive top-level domain ".com". The Complainant also argues that he Infringing Domain Name's inclusion of the generic or descriptive term "porn" does not distinguish the Domain Name from the SNAPCHAT trademarks.

 

The Complainant asserts that the Respondent has no right or legitimate interests in respect of the domain name. Complainant asserts that there is no relationship between Complainant and Respondent. Respondent has no right to own or use any domain name incorporating Complainant's SNAPCHAT trademark. Complainant also argues that the inactive page the Disputed Domain Name resolve to does not establish a bona fide offering of goods or services or a legitimate non-commercial fair use of the domain by Respondent. Complainant alleges that the combination of a confusingly similar domain name and offering the domain name for sale shows Respondent's intent to profit from Complainant's well-established trademark rights. Finally, Complainant brings up the reputation of the SNAPCHAT trademark, and that Respondent did not register the Infringing Domain Name for any legitimate or fair use purpose but to attempt to obtain monetary payment far in excess of the registration costs.

 

The Complainant alleges the Respondent's Domain Name has been registered and used in bad faith. Complainant argues that, considering its reputation worldwide, Respondent had actual knowledge of complainant's rights on the SNAPCHAT trademark. Complainant also purports that Respondent is passively holding the Disputed Domain Name while offering the it for sale for $50,000, an amount that is almost certainly far greater than Respondent's out-of-pocket costs.

 

B. Respondent

The Respondent asserts that the domain name <snapchatporn.com> is not confusingly similar to the Complainant's trademark, SNAPCHAT. The domain name is a combination of three common English words: "snap," "chat," and "porn." Each of these words has a distinct meaning and usage in the English language, and their combination in the disputed domain name does not inherently create confusion with the Complainant's

trademark.

 

The Respondent argues that it has a legitimate interest in the domain name <snapchatporn.com>, and explains that the domain was registered for a legitimate business purpose within the adult entertainment industry, which was never realized, and is currently not being used to host any content. While Respondent registered the domain name in 2014, after the SNAPCHAT mark became famous, it was done with the intention of targeting a different market. Respondent claims that an inactive website does not necessarily imply a lack of legitimate interests.

 

Finally, Respondent argues that the registration of the Disputed Domain Name was not done in bad faith since the website is inactive and that Respondent did not seek to exploit the SNAPCHAT trademark or mislead the public. Respondent also claims that offering a domain name for sale, even at a high price, does not inherently demonstrate bad faith, especially when the domain name comprises generic terms.

 

C. Complainant's Additional Submission

Complainant notes that Respondent acknowledges Snap's rights in its SNAPCHAT trademark, admits the trademark is famous, and argues that SNAPCHAT cannot be considered generic since it is a registered trademark.

 

Even if Respondent did use the Infringing Domain Name as allegedly intended, i.e. to offer adult-oriented and/or pornographic content and for which Respondent submits no proof, that would not be a bona fide offering of goods or services, such use would neither be legitimate noncommercial nor fair use, and would constitute bad faith use and registration.

 

FINDINGS

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 provides that in order to obtain an order cancelling or transferring a domain name, Complainant must prove each of the following three elements:

 

(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.

 

The Panel finds as follows with respect to the matters at issue in this proceeding:

 

DISCUSSION

Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted and 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.

        

Identical and/or Confusingly Similar

Complainant owns, among many others around the world, the following trademarks :

 

·       Canadian trademark SNAPCHAT No. 1627517 dated May 21, 2013

·       United States trademark SNAPCHAT No. 4375712 dated July 30, 2013

 

Respondent registered the Infringing Domain Name <snapchatporn.com> on May 30, 2014, which resolves to an inactive page.

 

The Complainant has established that it owns registered trademarks on the SNAPCHAT sign. The Panel holds that the Disputed Domain Name is confusingly similar to the SNAPCHAT trademark, since it incorporates the trademark in its entirety, merely adding the generic/descriptive term "porn" and the ".com" gTLD.  

 

It is well established that the ".com" extension does not affect the domain name for the purpose of determining whether it is identical or confusingly similar – (see Rollerblade, Inc. v. Chris McCrady, WIPO Case No. D2000-0429).

 

Similarly, the addition of the term "porn" is not sufficient to distinguish the Disputed Domaine Na e from Complainant's trademark for the purposes of the Policy (see Alibaba Group Holding Limited v. YINGFENG WANG, FA 1568531 (Forum Aug. 21, 2014).

 

Accordingly, the Complainant has established the first element of paragraph 4(a) of the Policy.

 

Rights or Legitimate Interests

Although 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 difficult 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 (although the burden of proof always remains on the complainant).

 

Having reviewed the available record, the Panel finds that the Complainant has made out a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name. The Respondent has not rebutted the Complainant's prima facie showing and has not come forward with any relevant evidence demonstrating rights or legitimate interests in the disputed domain name such as those enumerated in the Policy or otherwise.

 

Respondent does not own any rights to the SNAPCHAT trademarks, and Complainant has never authorized or permitted the Respondent to use the SNAPCHAT trademark or use it to register any domain name consisting of the SNAPCHAT trademark (J Barbour & Sons LTD v. Whois Privacy Pty Ltd./Quantec, LLC. Novo Point, LLC, WIPO Case No. D2013-0283).

 

The Disputed Domain Name is not used, as it simply leads to an inactive page that lacks content. Therefore, there is no evidence of any use of, or preparations to use, the Disputed Domain Name in connection with a bona fide offering of goods or services, nor of any legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

 

Registration and Use in Bad Faith

Complainant has established that the registered SNAPCHAT trademarks long predated the registration of the Disputed Domain Name. Respondent reproduced in its entirety the Complainant's trademark SNAPCHAT in the Disputed Domain Name. The confusing similarity in this choice, as well as the established worldwide reputation of the Complainant (which the Respondent acknowledges) demonstrate that Respondent was fully aware of the fact that the Disputed Domain Name incorporated a well-recognized trademark.

 

The Panel is of the opinion that Respondent registered the disputed domain name in bad faith.

 

Panels have found that the non-use of a domain name would not prevent a finding of bad faith under the doctrine of passive holding. Having reviewed the available record, the Panel finds the non-use of the disputed domain name does not prevent a finding of bad faith in the circumstances of this proceeding. Although panelists will look at the totality of the circumstances in each case, factors that have been considered relevant in applying the passive holding doctrine include: (i) the degree of distinctiveness or reputation of the complainant's mark, (ii) the failure of the respondent to submit a response or to provide any evidence of actual or contemplated good-faith use, and (iii) the respondent's concealing its identity or use of false contact details (noted to be in breach of its registration agreement). WIPO Overview 3.0, section 3.3. Having reviewed the available record, the Panel notes reputation of the Complainant's trademark, and the composition of the disputed domain name, and finds that in the circumstances of this case the passive holding of the disputed domain name does not prevent a finding of bad faith under the Policy.

 

Indeed, the Disputed Domain Name resolves to an inactive page that lacks content; one that could cause confusion among internet users as to the source and purpose of the domain name. From the inception of the UDRP, panelists have found that the non-use of a domain name would not prevent a finding of bad faith under the doctrine of passive holding (Bouygues v. Eric Bouret, WIPO Case No. D20200-3393 ; Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003).

 

Besides, Respondent's offer to sell the domain name for a sum of US $ 50000 which is in excess of the Respondent's out of pocket expenses in registering the domain name. Respondent, conscious of the exaggerated amount of money asked, has since reiterated his offer to sell the domain name for another excessive sum of US $ 50000.

 

This behavior is a strong indication that the Respondent hoped to sell the domain name to the Complainant or to a competitor of Complainant which is a clear evidence of registration and use in bad faith.

 

It is well established that the offer to sell a domain name in excess of the out of pocket expenses of the respondent in registering the domain name can be compelling evidence of bad faith registration and use (WIPO Case No. D2012-2183, Imara Trade Marks BVI Limited v. Direct Privacy ID 1078D, Domain Name Proxy Service, Inc., WIPO Case No. D2000-0282, Massachusetts Medical Society v. Michael Karle, WIPO Case No. D99-0001, World Wrestling Federation Entertainment, Inc. v. Michael Bosman).

 

Accordingly, the Complainant has established the first element of paragraph 4(c) of the Policy.

 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED

 

Accordingly, it is Ordered that the <snapchatporn.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

 

Nathalie Dreyfus, Panelist

Dated: August 30, 2024