Snap and Snapchat are two registered trademarks of Snap Inc. that operates Snap.com and SnapChat.com for separate services.
The Snap mark is being abused by domain registrants hoping to ride the popular app’s coattails, and the UDRP for SnapFuck.co points that out.
The Respondent in this case argued through their Ukraine-based lawyer about the legitimacy of the SNAP mark, and sought a declaration of Reverse Domain Name Hijacking. Instead, they lost the UDRP and SnapFuck.co was ordered to be transferred to the Complainant.
“Here, Complainant’s Annexes U and V are compelling evidence that Respondent uses the SNAP mark to divert Internet users to the disputed domain name which features adult-oriented content and advertisements. Respondent’s bad faith usage of the disputed domain name consists of the diversion of Internet traffic to an adult-oriented website that displays pay-per-click links and also facilitates the sale and distribution of pornography. Therefore, the Panel finds bad faith registration and use per Policy “
Full details on the decision follow:
DECISION
Snap Inc. v. Cheap Suits Media
Claim Number: FA2007001904395
PARTIES
Complainant is Snap Inc. (“Complainant”), represented by Caroline Barbee of Kilpatrick Townsend & Stockton LLP, California, USA. Respondent is Cheap Suits Media (“Respondent”), represented by Dmitriy Chyrkin of Law Office of Dmitriy Chyrkin, Ukraine.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <snapfuck.co>, registered with Name.com, Inc..
PANEL
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.
Carol Stoner, Esq., as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the Forum electronically on July 15, 2020; the Forum received payment on July 15, 2020.
On July 16, 2020, Name.com, Inc. confirmed by e-mail to the Forum that the <snapfuck.co> domain name is registered with Name.com, Inc. and that Respondent is the current registrant of the name. Name.com, Inc. has verified that Respondent is bound by the Name.com, Inc. 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 22, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 11, 2020 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@snapfuck.co. Also on July 22, 2020, 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 July 30, 2020.
Complainant’s Additional Submission was received on August 01, 2020, and was timely, in compliance with Supplemental Rule 7.
Respondent’s Additional Submission was received on August 03, 2020, and was timely, in compliance with Supplemental Rule 7.
On August 04, 2020, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Carol Stoner, Esq., 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.
RELIEF SOUGHT
Complainant requests that the domain name <snapfuck.co> be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
Complainant owns and distributes the SNAPCHAT camera and messaging application. Complainant has rights in the SNAP mark through its registration of the mark with multiple trademark agencies, such as the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 4,345,533, registered June 4, 2013). See Amend. Compl. Ex. R. Respondent’s <snapfuck.co> domain name is identical or confusingly similar to Complainant’s mark as it includes the dominant portion of Complainant’s mark and adds the generic or descriptive term “fuck” and the “.co” top-level domain (“TLD”).
Respondent lacks rights or legitimate interests in the <snapfuck.co> domain name. Respondent is not commonly known by the disputed domain name and Respondent has no right to own or use any domain name incorporating Complainant’s marks. Respondent fails to use the disputed domain name in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, Respondent uses the disputed domain names to display adult-oriented content and facilitate the exchange of pornography via Complainant’s platform. Respondent diverts Internet traffic to Respondent’s commercial website. Respondent incorporates Complainant’s mark and references Complainant’s marks on the resolving webpage in an attempt to trade off the goodwill of Complainant’s marks. The changes Respondent made after notice from Complainant do not confer rights or legitimate interests to Complainant.
Respondent registered and uses the <snapfuck.co> domain name in bad faith. Respondent uses the disputed domain name to divert Internet traffic to an adult-oriented website which facilitates the sale and distribution of pornography and displays pay-per-click links. Respondent registered the disputed domain name with actual knowledge of Complainant’s SNAP mark given the worldwide recognition of the mark and use of the mark on the resolving webpage.
B. Respondent
Complainant is engaged in reverse domain name hijacking as the domain name contains the generic word “snap,” which has many meanings and Respondent registered the domain name prior to Complainant’s rights in numerous marks and thus Complainant cannot establish bad faith. Almost every case in which Complainant has been granted transfer of a domain name did not have a response from a respondent and involved the mark SNAPCHAT and not SNAP.
Respondent registered the <snapfuck.co> domain name as it contained the generic word “snap,” meant to be descriptive and communicate some aspect of Respondent’s services. The domain name is not similar to Complainant’s mark as Complainant does not have rights in the mark “snapfuck,” the domain name is not similar to Complainant’s SNAPCHAT mark, and the domain name contains the generic word “snap.”
Respondent’s website is not similar to Complainant’s as Respondent uses other colors apart from the yellow claimed by Complainant and is not similar to Complainant’s website. The services offered by Respondent are not illegal in Colombia, where the services are offered.
Respondent registered the <snapfuck.co> domain name on January 31, 2016.
C. Additional Submissions
Complainant
Complainant does not engage in reverse domain name hijacking as Complainant has rights in the SNAP mark and numerous Panels have found as much. Complainant’s rights in the SNAP mark precede Respondent’s registration of the domain name, and the domain name was not registered for its generic or descriptive value, as evidenced by Respondent’s reference to Complainant’s marks on the resolving webpage. The case on which Respondent relies is distinguished from the case at hand, as Respondent does not provide any explanation for why it chose the term “snap” for the domain name or what aspect of the services it describes.
Complainant reiterates that Respondent registered the domain name <snapfuck.co> in bad faith and with actual knowledge of Complainant’s marks.
Respondent
Complainant’s Additional Submission does not make clear that the additional submission fee was paid. Moreover, the purpose of Complainant’s Additional Submission was to amend the Complaint and to introduce new arguments and evidence that it should have raised in its original Complaint.
The decisions to which Complainant points, finding that Complainant has rights in the SNAP mark, are default decisions, or cases in which Respondent agreed to transfer the domain name. Therefore, these decisions are not persuasive.
Respondent reiterates that the term “snap” is generic and therefore, Complainant does not have exclusive rights to the use of the term.
FINDINGS
(1) the domain name <snapfuck.co> 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 <snapfuck.co>, and
(3) the domain name <snapfuck.co> has been registered and is being used in bad faith.
DISCUSSION
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.
Identical and/or Confusingly Similar
Complainant asserts rights in the SNAP mark based on registration of the mark with multiple trademark agencies, such as the USPTO (e.g. Reg. No. 4,345,533, registered June 4, 2013). See Compl. Ex. R. Registration of a mark with the USPTO sufficiently confers a complainant’s rights in a mark for the purposes of Policy ¶ 4(a)(i). See Liberty Global Logistics, LLC v. damilola emmanuel / tovary services limited, FA 1738536 (Forum Aug. 4, 2017) (“Registration of a mark with the USPTO sufficiently establishes the required rights in the mark for purposes of the Policy.”). Accordingly, the Panel finds that Complainant has established rights in the SNAP mark for the purposes of Policy ¶ 4(a)(i).
Respondent’s <snapfuck.co> domain name is identical or confusingly similar to Complainant’s mark as it includes the dominant portion of Complainant’s mark and adds the generic or descriptive term “fuck” and the “.co” top-level domain (“TLD”). The addition of a generic or descriptive term and a TLD does not sufficiently distinguish a domain name for the purposes of Policy ¶ 4(a)(i). See Microsoft Corporation v. Thong Tran Thanh, FA 1653187 (Forum Jan. 21, 2016) (determining that confusing similarity exists where [a disputed domain name] contains Complainant’s entire mark and differs only by the addition of a generic or descriptive phrase and top-level domain, the differences between the domain name and its contained trademark are insufficient to differentiate one from the other for the purposes of the Policy). The Panel therefore finds that the <snapfuck.co> domain name is confusingly similar to the SNAP mark under Policy ¶ 4(a)(i).
The Panel also notes, that not only is Respondent’s domain name of <snapfuck.co> identical or confusingly similar to Complainant’s well-known mark of SNAPCHAT, but also that the category of services of both parties, effects a confusing similarity. That is, the purpose and the platform of the web pages of both Complainant and Respondent are to view and to exchange photographic images. This double bar similarity of purpose increases the promise and the profitability of diverting customers to a counterfeit website for commercial gain, as will be discussed in the subsequent section on rights or legitimate interests.
Rights or Legitimate Interests
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), then the burden shifts to Respondent to show it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200
(Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also 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”).
Respondent has put forth no evidence that it is commonly known by the disputed domain name <snapfuck.co> or that it otherwise has any right to own or to use any domain name incorporating Complainant’s marks. WHOIS information can be used to determine whether a respondent is commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Amazon Technologies, Inc. v. LY Ta, FA 1789106 (Forum June 21, 2018) (concluding a respondent has no rights or legitimate interests in a disputed domain name where the complainant asserted it did not authorize the respondent to use the mark, and the relevant WHOIS information indicated the respondent is not commonly known by the domain name). Additionally, lack of authorization to use a complainant’s mark indicates that the respondent is not commonly known by the disputed domain name. See Emerson Electric Co. v. golden humble / golden globals, FA 1787128 (Forum June 11, 2018) (“lack of evidence in the record to indicate a respondent is authorized to use [the] complainant’s mark may support a finding that [the] respondent does not have rights or legitimate interests in the disputed domain name per Policy ¶ 4(c)(ii)”). Here, the WHOIS information for the disputed domain name lists the registrant as “Cheap Suits Media,” and there is no other evidence to suggest that Respondent was authorized to use the SNAP mark. Therefore, the Panel finds that Respondent is not commonly known by the disputed domain name per Policy ¶ 4(c)(ii).
Respondent fails to use the <snapfuck.co> domain name in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use because Respondent uses the disputed domain name to display adult-oriented content and to facilitate the exchange of pornography. Panel has viewed screenshots of the resolving webpage of the disputed domain, via Complainant’s Annexes U and V, which displays adult-oriented content. Such usage by Respondent does not constitute a bona fide offering of goods or services or legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii). See Altria Group, Inc. and Altria Group Distribution Company v. xiazihong, FA1732665 (Forum July 7, 2017) (holding that “[u]se of a domain name to display adult-oriented images is not considered a bona fide offering of goods or services or a legitimate noncommercial or fair use under the Policy.”).
Respondent does not use the <snapfuck.co> domain name for a bona fide offering of goods or services or legitimate noncommercial or fair use as Respondent diverts Internet traffic to Respondent’s commercial website. Panel has viewed Complainant’s Annexes U and V, which evidence that Respondent offers a monthly subscription and displays pay-per-click links on the resolving webpage, which redirect Internet users to Respondent’s website.
The use of a domain name to divert Internet users to a commercial website is not a bona fide offering of goods or services or legitimate noncommercial or fair use. See Summit Group, LLC v. LSO, Ltd., FA 758981 (Forum Sept. 14, 2006) (finding that the respondent’s use of the complainant’s LIFESTYLE LOUNGE mark to redirect Internet users to respondent’s own website for commercial gain does not constitute either a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)).
Complainant provides screenshots of the resolving webpage of the disputed domain name which references Complainant’s SNAP marks and utilizes a color similar to Complainant’s trademarked SNAPCHAT YELLOW color. See Compl. Annexes U and V. The Panel scores these screenshots as convincing evidence that Respondent incorporates Complainant’s marks on the resolving webpage in an attempt to trade off of Complainant’s goodwill, as a result of an assumed affiliation with Complainant. Respondent’s conduct in these regards, is not a bona fide offering of goods or services or a legitimate noncommercial or fair use. Using a Complainant’s mark to give the impression of affiliation with a complainant in an effort to trade off the goodwill of the same does not constitute a bona fide offering of goods or services or legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii). See Ripple Labs Inc. v. Jessie McKoy / Ripple Reserve Fund, FA 1790949 (Forum July 9, 2018) (finding the respondent did not use the domain name to make a bona fide offering of goods or services per Policy ¶ 4(c)(i) or for a legitimate noncommercial or fair use per Policy ¶ 4(c)(iii) where the website resolving from the disputed domain name featured the complainant’s mark and various photographs related to the complainant’s business).
Panel gives no credence to Respondent’s argument that it has rights and legitimate interests in the disputed domain name, because the word “Snap,” (as they registered and use it) is generic and /or descriptive. Respondent’s argument holds no water because Respondent does not divulge any concrete association between the word “Snap” and his adult-centered website. Further, the content on Respondent’s website belies his assertions that the mark is generic. This is because, prior to receiving Complainant’s’ Cease and Desist letter in February 2020, the infringing website contained numerous references to “Snapchat” and used Complainant’s registered Snapchat Yellow color.
This Panel therefore finds, that Respondent’s use of <snapfuck.co> does not amount to a bona fide offering of goods or services or legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii).
The totality of Complainant’s evidence, adduced above, constitutes a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii).
Concomitantly, Respondent has not shouldered its shifted burden to evidence that Respondent does indeed have rights or legitimate interests, so as to satisfy Policy ¶ 4(c)(i).
Registration and Use in Bad Faith
Complainant has pro-offered credible evidence that Respondent registered and used the <snapfuck.co> domain name in bad faith.
Complainant presents a compelling case that Respondent registered the <snapfuck.co> domain name with actual knowledge of Complainant’s SNAP mark, given the worldwide recognition of the mark and use of the mark on the resolving webpage. Complainant provides credible articles evidencing the fame and notoriety of Complainant’s mark. See Compl. Annexes D through P.
Actual knowledge of a complainant’s trademark rights at the time of registration of a domain name can show bad faith registration per Policy ¶ 4(a)(iii). see Snap Inc. v. Deepika Priyadarshinie / entsl, FA 1788600 (Forum June 21, 2018) (finding the respondent had actual knowledge of the complainant and its rights in the claimed mark due to the fame of the mark, established by the complainant’s submission of numerous articles regarding the success of the complainant’s product); see also Ripple Labs Inc. v. Jessie McKoy / Ripple Reserve Fund, FA 1790949 (Forum July 9, 2018) (“Complainant contends Respondent’s appropriation of Complainant’s trademark was a clear intent to trade upon Complainant’s reputation and goodwill in order to confuse Internet users. Therefore, the Panel finds Respondent did have actual knowledge of Complainant’s mark prior to registration and this constitutes bad faith per Policy ¶ 4(a)(iii).”).
Panel has also been persuaded of Respondent’s bad faith registration through Complainant’s detailed timeline, laid out in its Additional Submission. This timeline shows that Complainant’s date of first use of the SNAPCHAT mark is 2011; that Complainant obtained its first USPTO registration for the SNAPCHAT mark in 2013; and that Respondent first registered the infringing domain name several years later , on January 31, 2016. So contrary to Respondent’s assertions, Complainant’s trademark rights in the SNAPCHAT mark preceded Respondent’s registration and use of the infringing domain name of <snapfuck.co>. The Panel therefore finds, that Respondent had actual knowledge of Complainant’s rights in the SNAP mark and registered the disputed domain name in bad faith per Policy ¶ 4(a)(iii).
Bad faith registration and use under Policy ¶ 4(b)(iii) is found where a respondent uses a disputed domain name to divert Internet users to a pornographic website. PopSockets LLC v. san mao, FA 1740903 (Forum Aug. 27, 2017) (finding disruption of a complainant’s business which was not directly commercial competitive behavior was nonetheless sufficient to establish bad faith registration and use per Policy ¶ 4(b)(iii)); see also Andrey Ternovskiy dba Chatroulette v. Abdelbasset Selmi, FA 1638963 (Forum Oct. 28, 2015) (finding the respondent’s use of the at-issue domain name to resolve to pornographic content indicated the respondent registered and used the <chatroulette.us> domain name in bad faith per Policy ¶ 4(b)(iv)). The use of a domain name to divert Internet traffic to a webpage featuring pay-per-click links also shows bad faith registration and use. See Danbyg Ejendomme A/S v. lb Hansen / guerciotti, FA1504001613867 (Forum June 2, 2015) (finding that the respondent registered and used the domain name in bad faith under Policy ¶ 4(b)(iv) where the disputed domain name resolved to a website that offered both competing hyperlinks and hyperlinks unrelated to the complainant’s business).
Here, Complainant’s Annexes U and V are compelling evidence that Respondent uses the SNAP mark to divert Internet users to the disputed domain name which features adult-oriented content and advertisements. Respondent’s bad faith usage of the disputed domain name consists of the diversion of Internet traffic to an adult-oriented website that displays pay-per-click links and also facilitates the sale and distribution of pornography. Therefore, the Panel finds bad faith registration and use per Policy ¶ 4(b)(iv).
Reverse Domain Name Hijacking
As the Panel has determined that Complainant has satisfied all of the elements of Policy ¶ 4(a), the Panel also finds that Complainant has not engaged in reverse domain name hijacking. See World Wrestling Fed’n Entm’t, Inc. v. Ringside Collectibles, D2000-1306 (WIPO Jan. 24, 2001) (“Because Complainant has satisfied [all of] the elements of the Policy, Respondent’s allegation of reverse domain name hijacking must fail”); see also Gallup, Inc. v. PC+s.p.r.l., FA 190461 (Forum Dec. 2, 2003) (finding no reverse domain name hijacking where complainant prevailed on the “identical/confusingly similar” prong 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 <snapfuck.co> domain name be TRANSFERRED from Respondent to Complainant.
Carol Stoner, Esq., Panelist
Dated: August 19, 2020
