A domain investor from Canada scored a decisive victory against Snap! Mobile, an American fundraising services provider that targeted their domain, SnapMobile.com, via the UDRP process.
Despite the Complainant’s claim to the SNAP MOBILE mark they provided no evidence of such early use, other than it being the company’s name. Such use, however, does not establish rights automatically, as the Forum (NAF) panelist pointed out:
Here, although Complainant has provided a number of articles, business profiles, press releases and social media posts, as well as a certificate of liability insurance, all referring to “Snap! Mobile,” “Snap Mobile” or “Snap Mobile LLC,” these documents do not sufficiently establish common law trademark rights. Although Complainant states that it was founded in 2014, the documents that it provided do not show usage of the SNAP MOBILE trademark that might qualify as trademark usage until much more recently.
The Respondent acquired the domain SnapMobile.com in 2016, for the sum of $1,025 dollars. Source: NameBio. The Respondent “flat out” stated that they invest in domain names for profit and this is a business that does not infringe on the Complainant’s rights who is based in the US, all while they are in Canada. They also noted that the domain consists of two generic words, much like many other domain names in their portfolio.
Due to the lack of evidence of the Complainant’s claims, the panelist pointed out that the UDRP was brought in bad faith and ordered the domain to remain with the Respondent; the Complainant was found guilty of engaging in Reverse Domain Name Hijacking:
“Complainant (which is represented by an attorney) has failed to establish even one of the three elements of the Policy. Complainant (via its attorney) knew or should have known that it could not succeed in this proceeding – at least not based on the arguments and evidence submitted. As a result, the Panel finds that the complaint was brought in bad faith, in an attempt at RDNH.”
Snap! Mobile, Inc. v. Domain Manager / WEBWORKS A1 Domain Name Development and Management
Claim Number: FA2308002059177
PARTIES
Complainant is Snap! Mobile, Inc. (“Complainant”), represented by Richard Alaniz of Lowe Graham Jones PLLC, Washington, USA. Respondent is Domain Manager / WEBWORKS A1 Domain Name Development and Management (“Respondent”), Ontario, Canada.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is snapmobile.com (the “Disputed Domain Name”), 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.
Douglas M. Isenberg (chair), Martin Schwimmer and Honorable Charles Kuechenmeister as Panelists.
PROCEDURAL HISTORY
Complainant submitted a Complaint to Forum electronically on August 28, 2023; Forum received payment on August 28, 2023.
On August 29, 2023, GoDaddy.com, LLC confirmed by e-mail to Forum that the snapmobile.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 September 6, 2023, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 26, 2023 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@snapmobile.com. Also on September 6, 2023, 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.
On September 29, 2023, Respondent requested an extension of time to file a response, which Forum granted on October 1, 2023, extending the due date until October 23, 2023.
A timely Response was received and determined to be complete on October 23, 2023.
On November 1, 2023, pursuant to Complainant’s request to have the dispute decided by a three-member Panel, Forum appointed Douglas M. Isenberg (chair), Martin Schwimmer and Honorable Charles Kuechenmeister 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
Complainant states that it is “a multimillion dollar business entity located in the United States” that was founded in 2014 and operates a “group-based digital fundraising platform… which has led to over 100,000 teams, clubs, and organizations across the United States raise over $700 million.”
Complainant states that it “has common law rights throughout the United States since at least as early as 2014 to its trademark SNAP! MOBILE.” In support thereof, Complainant provides a number of articles, business profiles, press releases and social media posts, as well as a certificate of liability insurance, all referring to “Snap! Mobile,” “Snap Mobile” or “Snap Mobile LLC.”
Complainant argues that the Disputed Domain Name is identical or confusingly similar to a trademark in which it has rights because “its common law mark has since 2014 accrued substantial commercial and consumer goodwill on use of its Snap! Mobile mark” and the Disputed Domain Name “incorporates wholly the Complainant’s Snap! Mobile trademark” (with the exclamation point “mak[ing] only a slight visual difference”).
Complainant argues that Respondent has no rights or legitimate interests in the Disputed Domain Name because, inter alia, “the current owner of the disputed domain acquired the domain sometime around 2017, but surely after Complainant established its common laws rights in the Snap! Mobile mark”; “[t]he WHOIS information for the snapmobile.com domain name provides no personal name which would indicate that Respondent likely is commonly known by the disputed domain name”; “Complainant has never licensed, affiliated with, or otherwise authorized any person or entity in any jurisdiction worldwide to use its Snap! Mobile trademark in the form of the disputed domain name”; and “Respondent is not using the domain name to provide a bona fide offering of goods or services, or a legitimate non-commercial or fair use” and instead has “attempt[ed] to sell the domain for nearly $400,000 since at least as early as 2018.”
Complainant argues that the Respondent has registered and is using the Disputed Domain Name in bad faith under the passive holding doctrine set forth in Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003. Further, Complainant argues that bad faith exists pursuant to paragraph 4(b)(i) of the Policy (“circumstances indicating that you have registered or you have 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 your documented out-of-pocket costs directly related to the domain name”) and paragraph 4(b)(ii) of the Policy (“you have 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 you have engaged in a pattern of such conduct”). In particular, Complainant argues: “According to information and belief, Respondent acquired the disputed domain after the Complainant had begun to use its Snap! Mobile mark and after Complainant established its common law rights in its Snap! Mobile mark for its industry leading goods and services…. The domain name wholly incorporates such trademark in its entirety and is clearly intended to make an enormous profit on the sale of the domain to the Complainant or otherwise prevent Complainant controlling its intellectual property, which the latter is essentially akin to holding the domain hostage. Even a cursory Internet search from at least the date of the current registration would have made clear to the Respondent that the Complainant had achieved substantial tech industry recognition for its Snap! Mobile goods and services. Surely, that search would have displayed the Complainant’s own snaprise.com website. Additionally, as noted in the other the facts asserted herein, such facts strongly demonstrate by at least as early as 2017 Complainant had gained national attention and recognition from well-known technology and related business websites including, that it had become a well-regarded, growing tech company. It is notable too that the Respondent or its predecessor owner has, since at least 2018, offered for sale the disputed domain and now it is reasonable to conclude that Complainant has been Respondent’s most likely buyer of the disputed domain at a cost nearing $400,000. Further supporting the excessive profit-motive of Respondent, a recent review on August 21, 2023 demonstrates that the price being offered is an extreme outlier for other domains on the market incorporating the term ‘mobile.'”
B. Respondent
Respondent states that “[w]e are domain investors” that “lawfully acquired the Disputed Domain Name through Godaddy auction, in May 2016”; that “[w]e have many names listed for sale, development or [m]anagement”; that “[i]nvesting in common-word domain names or phrases is a perfectly legitimate business and can qualify as a bona fide offering of goods or services”; and that “[w]e do not target a specific complainant or protected mark with a particular domain name.”
Respondent argues that “‘SNAP MOBILE’ is a commonly used combination of two generic words”; that “Google search shows that approximately 12,000 results, mostly in the United States, have various uses and numerous other websites utilizing ‘snapmobile’ in the domain name”; and that “Complainant did not provide any proof of common law rights prior to the registration of the Disputed Domain Name.”
Respondent argues that it has rights or legitimate interests in the Disputed Domain Name because, inter alia, “there is no evidence of us using the Domain Name to compete with Complainant, of impersonation, or of the parties operating in the same market segment or geographic location. According to unsupported allegations in the Complaint, Complainant is a fundraising company operating in the USA, for only a specific class. It shows no evidence of the nature or extent of its operations, however, and shows no evidence of any presence in Canada, (the country of Respondent’s domicile). In short, there were no ways for us to be aware of Complainant or its various variations of company names and marks (if there were any at that time), when we acquired the Domain Name, and thus no evidence of targeting. Even today there are no marks registered under ‘snapmobile’ for its generic meaning.”
Respondent argues that it did not register or use the Disputed Domain Name in bad faith because, inter alia, “I never knew about this company because they never even used a ‘snap mobile’ name anywhere, [w]hen I have a[c]quired [the Disputed Domain Name]”; “[w]e are in the business of selling, developing and [m]anaging domain names” and “[i]t is well settled that a general offer to sell a domain name in and of itself does not constitute bad faith”; “offering it for sale as part of our stock in trade under the circumstances present in this case is entirely within our rights, regardless of Complainant’s claims to the Domain Name.”
Respondent has requested that the Panel find that the Complaint was brought in an attempt at Reverse Domain Name Hijacking.
FINDINGS
For the reasons set out below, the Panel finds for Respondent and orders that the Disputed Domain Name remain with Respondent.
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 has not provided evidence of, and apparently does not own, any registrations for trademarks that contain SNAPMOBILE or both of the words SNAP and MOBILE. Instead, Complainant has relied solely on what it claims to be common law trademark rights in the SNAPMOBILE name.
As set forth in section 1.3 of WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”):
To establish unregistered or common law trademark rights for purposes of the UDRP, the complainant must show that its mark has become a distinctive identifier which consumers associate with the complainant’s goods and/or services.
Relevant evidence demonstrating such acquired distinctiveness (also referred to as secondary meaning) includes a range of factors such as (i) the duration and nature of use of the mark, (ii) the amount of sales under the mark, (iii) the nature and extent of advertising using the mark, (iv) the degree of actual public (e.g., consumer, industry, media) recognition, and (v) consumer surveys.
Here, although Complainant has provided a number of articles, business profiles, press releases and social media posts, as well as a certificate of liability insurance, all referring to “Snap! Mobile,” “Snap Mobile” or “Snap Mobile LLC,” these documents do not sufficiently establish common law trademark rights. Although Complainant states that it was founded in 2014, the documents that it provided do not show usage of the SNAP MOBILE trademark that might qualify as trademark usage until much more recently. (Those documents showing use of the SNAP MOBILE name as Complainant’s corporate name are irrelevant here because “proof of mere registration of the company, without more, is not enough to demonstrate that the Respondent was commonly known by the domain name.” Royal Bank of Canada v. RBC Bank, WIPO Case No. D2002-0672.) Further, although Complainant has provided some information about the scope and size of its business, it is unclear whether this business is associated with the alleged SNAP MOBILE name or with something else, such as what Complainant has called “its first product — Snap! Raise.” Finally, although not required, Complainant has provided no evidence of the degree of actual public recognition of the alleged SNAP MOBILE name or consumer surveys.
Interestingly, although “[a] pending trademark application would not by itself establish trademark rights within the meaning of UDRP paragraph 4(a)(i),” WIPO Overview 3.0, section 1.14, Complainant has not cited any such applications, and the Panel (exercising its authority to “undertake limited factual research into matters of public record if it would consider such information useful to assessing the case merits and reaching a decision,” WIPO Overview 3.0, section 4.8), has found no such applications in the United States, where Complainant is located.
Accordingly, the Panel has no basis on which to conclude that Complainant has rights in the SNAP MOBILE name as a trademark and, therefore, must conclude that Complainant has failed to prove the first element of the Policy.
Rights or Legitimate Interests
A respondent may establish rights or legitimate interests in a disputed domain name by proving that “before any notice to [respondent] of the dispute, [respondent has made] 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.”
The question here, then, is whether Respondent’s status as a self-described “domain investor” that acquired the Disputed Domain Name without any knowledge of Complainant or the alleged SNAP MOBILE trademark and then offered it for sale, including to Complainant, constitutes a bona fide offering of goods or services. Numerous previous decisions under the Policy have addressed this issue, although it is essential to focus on the specific facts of this case, which differ from many others in which a complainant’s trademark rights were well-established, well-protected and well-known, and in which a respondent used the disputed domain name in connection with its trademark meaning. Here, no such circumstances exist. Instead, as set forth in section 2.1 of WIPO Overview 3.0, this appears to be a case in which, “generally speaking, panels have accepted that aggregating and holding domain names (usually for resale) consisting of acronyms, dictionary words, or common phrases can be bona fide and is not per se illegitimate under the UDRP.” See also, e.g., The Landmark Group v. DigiMedia.com, L.P., Forum Claim No. 0285459: “As long as the domain names have been registered because of their attraction as dictionary words, and not because of their value as trademarks, this is a business model that is permitted under the Policy.”
In this case, there is no evidence that Respondent was (or should have been) aware of Complainant and the alleged SNAP MOBILE trademark or that Respondent registered or used the Disputed Domain Name because of its possible value as a trademark. Indeed, the only use of the Disputed Domain Name contained in the record is Respondent’s attempt to sell it, which, as set forth above, can be bona fide under appropriate circumstances.
Accordingly, the Panel finds that Complainant has not established that Respondent lacks rights or legitimate interests in the Disputed Domain Name and, therefore, must conclude that Complainant has failed to prove the second element of the Policy.
Registration and Use in Bad Faith
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).
Here, Complainant has cited bad faith specifically under paragraphs 4(b)(i) and 4(b)(ii) of the Policy.
With respect to paragraph 4(b)(i): Complainant has provided as an annex a printout of a web page advertising the Disputed Domain Name for sale for US $399,888, an allegation that Respondent does not appear to materially dispute, although Respondent states that during discussions with Complainant, it lowered its price to $120,000. In any event, Respondent has not disputed that even this lower amount is for valuable consideration in excess of its documented out-of-pocket costs directly related to the Disputed Domain Name. Therefore, the question under paragraph 4(b)(i) of the Policy is whether Respondent registered the Disputed Domain Name “primarily for the purpose of” selling it to Complainant or to a competitor of Complainant. Here, there is no such evidence, given that Respondent has denied knowing of Complainant or the alleged SNAP MOBILE trademark, a denial that seems plausible under the facts of this case, including especially because Complainant has failed to establish trademark rights, as discussed above.
With respect to paragraph 4(b)(ii): Although Respondent has admitted that it has registered many domain names, Complainant has not alleged, nor is there any evidence in the record, that Respondent has engaged in a “pattern of… conduct” targeting trademark owners, as the paragraph requires. Had Complainant identified previous decisions under the Policy against Respondent or other relevant domain names registered by Respondent, the Panel might be able to conclude that such a pattern exists. Instead, however, the only evidence of relevance is Respondent’s denial that it has done so, such as its uncontradicted statements that, “We do not target a specific complainant or protected mark with a particular domain name” and “we always make sure to respect others interest, trademark or other valuable rights.”
Accordingly, the Panel finds that Complainant has not established that Respondent registered and is using the Disputed Domain Name in bad faith and, therefore, must conclude that Complainant has failed to prove the third element of the Policy.
REVERSE DOMAIN NAME HIJACKING
Paragraph 1 of the Rules defines Reverse Domain Name Hijacking (“RDNH”) as “using the Policy in bad faith to attempt to deprive a registered domain-name holder of a domain name”. Paragraph 15(e) of the Rules provides, in relevant part: “If after considering the submissions the Panel finds that the complaint was brought in bad faith, for example in an attempt at Reverse Domain Name Hijacking or was brought primarily to harass the domain-name holder, the Panel shall declare in its decision that the complaint was brought in bad faith and constitutes an abuse of the administrative proceeding.”
As set forth in section 4.16 of WIPO Overview 3.0:
Reasons articulated by panels for finding RDNH include: (i) facts which demonstrate that the complainant knew it could not succeed as to any of the required three elements – such as the complainant’s lack of relevant trademark rights, clear knowledge of respondent rights or legitimate interests, or clear knowledge of a lack of respondent bad faith…, (ii) facts which demonstrate that the complainant clearly ought to have known it could not succeed under any fair interpretation of facts reasonably available prior to the filing of the complaint, including relevant facts on the website at the disputed domain name or readily available public sources such as the WhoIs database, [or] (iii) unreasonably ignoring established Policy precedent notably as captured in this WIPO Overview – except in limited circumstances which prima facie justify advancing an alternative legal argument.
Given the undertakings in paragraphs 3(b)(xiii) and (xiv) of the UDRP Rules, some panels have held that a represented complainant should be held to a higher standard.
Here, as set forth above, Complainant (which is represented by an attorney) has failed to establish even one of the three elements of the Policy. Complainant (via its attorney) knew or should have known that it could not succeed in this proceeding – at least not based on the arguments and evidence submitted.
As a result, the Panel finds that the complaint was brought in bad faith, in an attempt at RDNH.
DECISION
Having not established all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the snapmobile.com domain name REMAIN WITH Respondent.
