The Complainant is Snapchat, Inc. of Venice, California, United States of America, represented by Kilpatrick Townsend & Stockton LLP, United States of America.
The Respondent is Whois Agent, Whois Privacy Protection Service, Inc. of Kirkland, Washington, United States of America / CheapSuits Media of Los Angeles, California, United States of America.
The disputed domain name <snapchatselfies.com> is registered with Name.com LLC (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 1, 2016. On April 1, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 1, 2016, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on April 7, 2016 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on April 12, 2016.
The Center verified that the Complaint together with the amended Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on April 15, 2016. In accordance with the Rules, paragraph 5, the due date for Response was May 5, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 9, 2016.
The Center appointed Evan D. Brown as the sole panelist in this matter on May 19, 2016. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
The following facts, relevant to the Panel’s determination, are set forth in the Complaint and are not disputed by the Respondent.
The Complainant designs and distributes the enormously popular SNAPCHAT messaging application—available for both the iOS and Android operating systems—that, among other things, allows users to share photographs, videos, and messages with others via mobile devices (the “SNAPCHAT App”). Since its launch in 2011, the SNAPCHAT App has met with resounding success in the marketplace and has quickly gained a substantial share of the mobile application market. The SNAPCHAT App has won many awards and is the subject of widespread media attention and cultural awareness.
According to the WhoIs database, the Respondent registered the disputed domain name <snapchatselfies.com> on September 29, 2014. As of the filing of the Complaint, the disputed domain name redirects to the domain name “www.fuckswipe.com”, which displays numerous pornographic photos. The website also sells “Gold” and “VIP” memberships to users. The Complainant asserts that the Respondent is either associated with the operator of “www.fuckswipe.com”, or earns affiliate revenue from the operator of “www.fuckswipe.com”.
The Complainant contends that the disputed domain name is identical or confusingly similar to the Complainant’s registered trademarks; that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and that the disputed domain name was registered and is being used in bad faith.
The Respondent did not reply to the Complainant’s contentions.
According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the disputed domain name, the Complainant must prove each of the following, namely that:
(i) The disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) The Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) The disputed domain name has been registered and is being used in bad faith.
The Complainant has provided evidence of its registrations of the mark SNAPCHAT in several countries, including registrations which predate the registration of the disputed domain name, such as the United States of America Trademark no. 4,375,712, registered on July 30, 2013 and with September 30, 2011 as “first use” date. On the basis of these registrations, the Panel is satisfied that the Complainant has rights in the SNAPCHAT mark.
The Panel also finds that the disputed domain name is confusingly similar to the Complainant’s mark. “The incorporation of a trademark in its entirety is sufficient to establish that a domain name is identical or confusingly similar to the Complainant’s registered mark”. See Britannia Building Society v. Britannia Fraud Prevention, WIPO Case No. D2001-0505. In this case, the disputed domain name contains the Complainant’s trademark SNAPCHAT in its entirety. The addition of the word “selfies” does nothing to diminish this confusing similarity. As the Panel held in Microsoft Corporation v. J. Holiday Co., WIPO Case No. D2000-1493, a respondent “may not avoid likely confusion by appropriating another’s entire mark and adding descriptive or non-distinctive matter to it”. In the present case, the dominant element in the disputed domain name is the SNAPCHAT mark. The word “selfies” is, in light of the nature of the use of the Complainant’s mark, entirely generic.
Accordingly, the Panel finds that the Complainant has shown that the disputed domain name is identical or confusingly similar to a trademark in which the Complainant has rights.
The Panel evaluates this element of the Policy by first looking to see whether the Complainant has made a prima facie showing that the Respondent lacks rights or legitimate interests in respect of the disputed domain name. If the Complainant makes that showing, the burden of demonstrating rights or legitimate interests shifts to the Respondent. See Canon U.S.A., Inc. v. Miniatures Town, WIPO Case No. D2014-0948, citing WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 2.1 (after the complainant makes a prima facie case, the burden of showing rights or legitimate interests in the domain name shifts to the respondent).
The Complainant has made a prima facie showing that the Respondent lacks rights or legitimate interests in respect of the disputed domain name. By failing to respond to the Complaint, the Respondent did not overcome its burden of demonstrating rights or legitimate interests, and no other facts in the record tip the balance in the Respondent’s favor.
Paragraph 4(c) of the Policy instructs respondents on a number of ways they could demonstrate rights or legitimate interests (“you” and “your” in the following refers to the particular respondent):
“(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.”
In this case, the Panel credits the Complainant’s assertion that to its knowledge, the Respondent is not using and has not used, or made demonstrable preparations to use, the disputed domain name in connection with a bona fide offering of goods or services. Further, the Complainant asserts, and the Panel accepts, that the Respondent is not now, nor has been known in the past by the disputed domain name. Further, based on the record, the Respondent is not making and has never made any legitimate noncommercial use of the disputed domain name.
Accordingly, the Respondent does not have any rights or legitimate interests in regard to the disputed domain name, and the Complainant has prevailed on this element of the UDRP.
The Respondent undoubtedly registered the disputed domain name in bad faith with actual knowledge of the Complainant’s rights in its SNAPCHAT mark, because the SNAPCHAT mark is internationally recognized and is registered in the United States of America, Europe, China and elsewhere throughout the world. Respondent did not register the disputed domain name until September 29, 2014. Respondent’s registration of the disputed domain name years after the Complainant had first used its mark is sufficient to satisfy the bad faith requirement. See Tumblr, Inc. v. Privacy Protect.org/Jiangchunyuan, WIPO Case No. D2013-0243 (bad faith where panel “finds it difficult to believe that Respondent was unaware of the TUMBLR mark and of the Complainant prior to registering the disputed domain name” and “draws the inference that the disputed domain name must have had its value to the Respondent because of the confusing similarity to the Complainant’s TUMBLR mark and <tumblr.com> domain name.”).
The Respondent’s bad faith use of the disputed domain name is further evidenced by the fact that the Respondent is using the disputed domain name to redirect to “www.fuckswipe.com”, which displays adult-oriented material. See Victoria Beckham v. Viktor Pavlenko, WIPO Case No. D2015-0840 (“A user who seeks to access the web site(s) to which the disputed domain name resolves would expect to be taken to a web site at which Complainant’s goods are offered for sale. Instead, the user is taken to various web sites at which adult and/or pornographic services are offered. This is a perfect example of registration and use in bad faith as described in paragraph 4(b)(iv) of the Policy”). Moreover, the Complainant asserts – and the Panel believes – that the Respondent is using the disputed domain name to divert Internet traffic for the Respondent’s financial gain, based on the Respondent’s alleged association with the operator of “www.fuckswipe.com” – which sells “Gold” and “VIP” membership subscriptions – or the Respondent’s acquisition of affiliate revenue from the operator of “www.fuckswipe.com”. This is additional evidence of the Respondent’s bad faith use of the disputed domain name.
Given the allegedly commercial purpose of the disputed domain name, the Panel finds that the Respondent is acting in bad faith. Accordingly, the Panel finds in favor of the Complainant on this factor.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name <snapchatselfies.com> be transferred to the Complainant.
Evan D. Brown
Sole Panelist
Date: June 2, 2016