Snap Inc., operators of Snapchat lost a UDRP they filed against the domains SnapchatPlanets.org and .net.
The Forum panelist determined that the domains were used in good faith, providing educational information and not intending to exploit the Complainant’s mark, or confuse consumers and denied the domains’ transfer, adding a finding of Reverse Domain Name Hijacking as well.
In the interest of maintaining the integrity of the UDRP, the panel finds that the Complaint was brought in bad faith in an attempt at Reverse Domain Name Hijacking or primarily to harass the domain-name holder.
It’s a rare decision indeed!
Copyright © 2024 DomainGang.com · All Rights Reserved.DECISION
Snap Inc. v. Anuj Anuj
Claim Number: FA2411002125296
PARTIES
Complainant is Snap Inc. (“Complainant” and “Snapchat”), represented by Dennis L. Wilson of Kilpatrick Townsend & Stockton LLP, California, USA. Respondent is Anuj Anuj (“Respondent”), India.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are snapchatplanets.org and snapchatplanets.net, registered with Spaceship, Inc.
PANEL
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.
The Honorable Neil Anthony Brown KC as Panelist.
`PROCEDURAL HISTORY
Complainant submitted a Complaint to Forum electronically on November 15, 2024; Forum received payment on November 15, 2024.
On November 19, 2024, Spaceship, Inc. confirmed by e-mail to Forum that the snapchatplanets.org and snapchatplanets.net domain names are registered with Spaceship, Inc. and that Respondent is the current registrant of the names. Spaceship, Inc. has verified that Respondent is bound by the Spaceship, 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” or “the UDRP”) and the Rules made under it (” the Rules” and ” the UDRP Rules”).
On November 19, 2024, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 9, 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@snapchatplanets.org and postmaster@snapchatplanets.net. Also on November 19, 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 November 19, 2024.
On November 20, 2024, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, Forum appointed The Honorable Neil Anthony Brown KC 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 names be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
Complainant made the following contentions.
1. The Complainant is a United States company engaged in the provision of services through its popular and famous SNAPCHAT camera and messaging application and related goods and services and it has been so engaged since the year 2011.
2. The Complainant provides its goods and services under the trademark for SNAPCHAT and related trademarks. In particular, the evidence will establish that the Complainant has acquired registered trademark rights in the SNAPCHAT trademark by virtue of registering it with the United States Patent and Trademark Office (“USPTO”) registration Number 4,375,712, registered on July 30, 2013, together with numerous other trademark registrations for SNAPCHAT and SNAPCHAT and derivatives, registered domestically and internationally (collectively “the SNAPCHAT trademark”). The Complainant has used that trademark continuously since its registration to offer its goods and services.
3. In further particular, the evidence will establish that the Complainant has acquired registered trademark rights in its GHOST LOGO service mark, described on the certificate of registration as “The mark consists of the shape of a ghost”, by registering it with the USPTO, registration Number 5,100,318, registered on December 13, 2016 and other national and international registrations for the ghost and derivatives (collectively “the GHOST LOGO trademark”). The Complainant has used that trademark since its registration to offer its goods and services.
4. In further particular, the evidence will establish that the Complainant has acquired registered trademark rights in its SNAPCHAT YELLOW trademark, described on the certificate of registration as “(t)he mark consists of the color yellow on a square carrier with rounded corners designating an icon for a mobile application.”. Those rights have been established by registering the trademark with the USPTO, registration Number 5357726 registered on December 19, 2017 (“the SNAPCHAT YELLOW trademark”). The Complainant has used that trademark continuously since its registration to offer its goods and services.
5. The SNAPCHAT, GHOST LOGO and SNAPCHAT YELLOW trademarks are famous, have attracted substantial goodwill, are very popular and are uniquely associated with the Complainant’s goods and services.
6. As well as its trademarks, the Complainant has registered the domain name snapchat.com which it uses in its business and in particular for its website at www.snapchat.com to provide its Snapchat services and where it markets its products under the SNAPCHAT trademark including its Snapchat Planets facility.
7. The Respondent registered the snapchatplanets.org domain name on March 8, 2024 and the snapchatplanets.net domain name on March 9, 2024 (“the disputed domain names”).
8. The disputed domain names embody, without the consent of the Complainant, the SNAPCHAT trademark, and in the course of registering them, the Respondent has added the generic word “planets” to both domain names, and the Top Level Domains “.org” and “.net” respectively.
9. The disputed domain names are confusingly similar to the SNAPCHAT trademark as such additions cannot negate a finding that a domain name is confusingly similar to a trademark.
10. The Respondent has no rights or legitimate interests in the disputed domain names. That is so because:
(a) the Respondent registered the disputed domain names after the Complainant acquired its aforesaid trademark rights;
(b) the Complainant has never given any licence, permission or authority to the Respondent to use the SNAPCHAT trademark or any similar mark and there has never been any affiliation or relationship between the Complainant and the Respondent;
(c) the Respondent is not commonly known by the domain names within the meaning of Policy ¶ 4(c)(ii);
(d) the Respondent has caused the disputed domain names to resolve to a website that displays “pay-per-click banner advertisements” and “commercial pay-per-click advertisements” used to drive traffic to the Respondent’s website;
(e) the Respondent also uses the domain names for the same purpose and has thereby generated confusion within the meaning of Policy ¶ 4(b)(iv);
(f) the use by the Respondent of a “commercial website” shows that the Respondent has not used the domain names for a legitimate noncommercial or fair use under the Policy;
(g) reason of the matters aforesaid the Respondent has not used the domain names for a bona fide offering of goods or services within the meaning of Policy ¶ 4(c)(i).
11. The Respondent has registered and used the disputed domain names in bad faith. That is so because:
(a) the Respondent had actual knowledge of the Complainant, its aforesaid business and its SNAPCHAT trademark at the time the Respondent registered the domain names;
(b) the Respondent has registered and used the domain names to disrupt the Complainant’s business within the meaning of Policy ¶ 4(b)(iii);
(c) the Respondent has registered and used the domain names to cause confusion with the Complainant, its trademark and brand and its genuine products offered under the SCAPCHAT trademark, on the one hand, and the content of the Respondent’s website, on the other, within the meaning of Policy ¶ 4(b)(iv);
(d) the Respondent’s use of the domain name snapchatplanets.org to resolve to a website that contains pay-per-click advertisements used to generate advertising revenue for the Respondent constitutes bad faith;
(e) all of the acts, facts, matters and circumstances to be shown by the evidence will establish that the Respondent registered and used the disputed domain names in bad faith.
B. Respondent
Respondent made the following contentions.
In the Response dated November 20, 2024 the Respondent contends:
“I am responding to the UDRP complaint filed against the domain name snapchatplanets.org, which I currently own and manage. I respectfully request that the panel consider the following points in my defense:
1. Legitimate Use and Good Faith:
The domain snapchatplanets.org is used in good faith. The purpose of the website is to provide educational content to its users, which aligns with a legitimate interest under the UDRP framework.
2. No Intention to Infringe:
The website does not seek to profit by infringing upon any company’s intellectual property rights, including those of the complainant. Any advertising present on the website is intended solely to cover operational expenses such as hosting, domain registration, and content creation.
3. Educational and Informative Nature:
The website serves an educational purpose, offering valuable insights and resources to its visitors. The content is crafted to inform and educate the audience without misleading them or exploiting the complainant’s brand in any way.
4. Lack of Bad Faith Registration and Use:
The domain was not registered with the intent to sell, lease, or otherwise exploit the complainant’s trademark. There is no evidence of bad faith in the registration or ongoing use of the domain name.
5. Non-Confusing Use:
The website does not purport to be affiliated with the complainant, nor does it aim to confuse users into believing it is the official website of the complainant. Clear disclaimers have already been added, if necessary, to further prevent any potential misunderstanding.Conclusion:
I respectfully request the panel to dismiss the complaint and allow me to continue operating the domain snapchatplanets.org in good faith and for its intended educational purposes.Should the panel have any questions or require further information, I remain available to provide additional clarifications.
Thank you for your time and consideration.”
OWNERSHIP OF THE DOMAIN NAMES
The Respondent has also submitted several times that although it owns and manages the website for snapchatplanets.org, it does not own or manage the website for snapchatplanets.net which he previously owned but which he transferred to another party on May 23, 2024. However, the Respondent remains the domain name holder on the WHOIS record and must remain responsible in this proceeding for both domain names.
COMPLAINANT’S ADDITIONAL SUBMISSION AND FURTHER COMMUNICATIONS FROM THE RESPONDENT
On November 22, 2024 the Complainant filed An Additional Submission in which it amplified its submissions in the Complaint and responded to the Respondent’s submissions.
In addition to its Response, the Respondent sent further communications to Forum on November 20, 2024, again on November 20, 2024, November 23, 2024, and November 27, 2024 in which it amplified its submissions in the Response.
The Panel has formed the opinion that the parties’ contentions in the Complaint and the Response have adequately raised the essential issues in this proceeding but will consider these further communications when they arise for consideration in the course of the Panel’s decision.
The Panel has considered all of those submissions and has taken them into account in reaching its decision.
SUMMARY OF THE PANEL’S FINDINGS
IDENTICAL OR CONFUSINGLY SIMILAR
For reasons set out in detail below, the Panel finds that Complainant has satisfied the formal standing requirement that it owns the SNAPCHAT, GHOST LOGO and SNAPCHAT YELLOW trademarks as defined, that the Respondent registered the two domain names on March 8, 2024 and March 9, 2024 respectively and that the disputed domain names are confusingly similar to the SNAPCHAT trademark. The Complainant has also established that it provides a service or facility known as Snapchat Planets.
RIGHTS AND LEGITIMATE INTERESTS
This must be decided on the evidence, which means on the balance of probabilities. The Complainant submits that the two domain names are used for websites that are commercial, that the Respondent is using them to “drive” traffic to commercial websites, that it is doing this is by “pay-per-click advertisements” and “pay-per-click banner advertisements”, that the Respondent’s objective is to make “profit” and that the result is that the websites are not making a legitimate noncommercial or fair use of the domain names and that the Respondent has no right or legitimate interest in them. The onus of proof is on the Complainant to make out a prima facie case to that effect and that if it does, the onus is on the Respondent to rebut it. The Panel has serious misgivings about the evidence adduced by the Complainant and also about the propriety of making many of its allegations on the evidence as it has been adduced.
The snapchatplanets.net domain name
In the first place, the website for snapchatplanets.net has no commercial content and no advertisements on it at all and it is purely informational and educational. None of its content can conceivably be said to “drive” internet traffic anywhere, or to commercial websites, or that it is doing this by “pay-per-click advertisements” of which there are none, or by “pay-per-click banner advertisements”, of which there are also none, or that this sustained exercise in information and education could possibly have the objective of making a “profit” of any practical sort. Its only remotely commercial aspect is that it asserts that the Snapchat Planets facility is a good feature, that it has endless possibilities that 99.9% of users like it and that what internet users should do is take out a Snapchat Plus subscription to the service and presumably pay Snapchat for it. Thus, the website for snapchatplanets.net is therefore, on the evidence, legitimate, noncommercial and fair, giving the Respondent a right or legitimate interest in the domain name. It also clearly does not divert consumers anywhere, misleadingly or otherwise, and does not tarnish the SNAPCHAT trademark, but enhances it by remarkably laudatory commentary.
As the detailed decision will make plain, the other grounds relied on by the Complainant cannot succeed, it has not made out a prima facie case, it has therefore not proved one of the three elements under the UDRP and it cannot succeed in this proceeding so far as the snapchatplanets.net domain name is concerned.
The snapchatplanets.org domain name
The website to which this domain name relates carries several illustrations and it is these illustrations that the Complainant presumably maintains are commercial, “commercial websites”, “pay-per-click advertisements” and/or “pay-per-click banner advertisements”, for there are no others on the website.
The obligation on the Panel, as is made clear by the mandatory direction in Rule 10(d) of the Rules, is to determine the weight of the evidence. The Panel has assessed the evidence and determines that no weight should be given to the Complainant’s evidence of these alleged advertisements as they are only doubtfully advertisements at all, they are neither “pay-per-click advertisements” or “pay-per-click banner advertisements” and the weight that should be given to them does not negate or outweigh the weight that should be given to the Respondent’s evidence that they are merely incidental and that the websites are essentially informational and educational and, hence, legitimate.
Thus, the website for snapchatplanets.org is therefore legitimate, noncommercial and fair, giving the Respondent a right or legitimate interest in the domain name. It also clearly does not divert consumers anywhere, misleadingly or otherwise, and does not tarnish the SNAPCHAT trademark, but enhances it by remarkably laudatory commentary.
As the detailed decision will make plain, the other grounds relied on by the Complainant cannot succeed, it has not made out a prima facie case, it has therefore not proved one of the three elements under the UDRP and it cannot succeed in this proceeding so far as the snapchatplanets.org domain name is concerned.
DISCUSSION OF THE ISSUES IN DETAIL
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 the 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 names registered by Respondent are 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 names; and
(3) the domain names have been registered and are being used in bad faith.
Identical and/or Confusingly Similar
The first question that arises is whether the Complainant has rights in a trademark or service mark on which it may rely. The evidence is that the Complainant provides its goods and services under the trademarks for SNAPCHAT, GHOST LOGO and SNAPCHAT YELLOW. The evidence has established that the Complainant has acquired registered trademark rights in the SNAPCHAT, GHOST LOGO and SNAPCHAT YELLOW trademarks by virtue of their registration with the USPTO (“the SNAPCHAT, GHOST LOGO and SNAPCHAT YELLOW trademarks”). Details of those registrations have been set out in the Contentions section of this decision and it is not necessary to repeat them here.
The evidence is also that the Complainant has used the SNAPCHAT, GHOST LOGO and SNAPCHAT YELLOW trademarks continuously since their registration to offer its goods and services including its Snapchat Planets facility.
The foregoing facts have been established by documentary evidence that the Panel has examined and finds to be in order.
It has also been shown that the Complainant’s trademarks are famous.
In addition to the aforesaid trademarks, the Complainant owns and uses certain graphics known as Snap planet graphics in the provision of its Snapchat Planets facility.
The Complainant has thus established its trademark rights in the SNAPCHAT, GHOST LOGO and SNAPCHAT YELLOW trademarks and hence its standing to bring this proceeding.
The next question that arises is whether the disputed domain names are identical or confusingly similar to any of the Complainant’s aforesaid trademarks. They are obviously not identical to the trademarks as they both contain the word “planets” which is not part of any the trademarks, so the question is whether they are confusingly similar to the trademarks or any of them.
In answering this question, the Panel may have regard only to the precise terms of the domain names and the trademarks and not to any extraneous matters or surrounding circumstances such as how the domain names have been used. This is a matter of substance as the terms of the UDRP require it by virtue of Policy ¶4(a) (i). Other circumstances are to be considered when the second and third elements under the Policy are considered.
The Panel finds that the domain names are confusingly similar to the SNAPCHAT trademark and that this is so for the following reasons.
The evidence has shown that the disputed domain names embody the whole of the SNAPCHAT trademark.
The general approach followed in arbitrated domain name disputes is that if a domain name includes the whole of a trademark, then it will probably be held that the domain name is confusingly similar to the relevant trademark. That is so in the present case.
Internet users would undoubtedly read the domain names in this case as referring to or invoking the SNAPCHAT trademark of the Complainant and therefore that they are similar to it and probably confusingly so, because they raise a question mark as to whether they are official and genuine domain names of the Complainant or not.
The domain names also include the word “planets”. Here again, the general approach in these proceedings has been that it will be unlikely that a generic word attached to a trademark will negate the dominant effect of the trademark. Thus, in the present case, internet users would see the domain names as invoking the planets in some way connected with Snapchat. Snapchat afficionados would have no trouble in making the connection and understanding it, as in Snapchat circles the word “planet” clearly means and is used in the context of the popular Snapchat Friend Solar System feature which enables users to place their friends in relative positions in a notional solar system depending on how frequently they communicate with each other. As the community most likely to come into contact with the disputed domain names are likely to be Snapchat users, and in view of the fame of SNAPCHAT in the general community, the Panel concludes that the presence of the word “planets” would not negate any suggestion that the domain names are confusingly similar to the trademark but would rather enhance and strengthen that conclusion.
The addition of Top Level Domains such as “.org” and “.net” is also ignored in the interpretation of a domain name and cannot negate a finding of confusing similarity between a domain name and a trademark, as all domain names require such an extension.
Internet users would therefore see the domain names as similar to the trademark because they all deal with Snapchat’s planet universe, and confusingly so, the confusion being that it raises a question mark as to whether the domain names are official and genuine domain names of the Complainant or not.
The Panel therefore finds that the disputed domain names are confusingly similar to the Complainant’s SNAPCHAT trademark under Policy ¶ 4(a)(i).
The Complainant has thus made out the first of the three elements that it must establish and has established its standing to bring this proceeding.
Rights or Legitimate Interests
It is now well established that the onus of proof is on the Complainant, first, to make out a prima facie case that the Respondent lacks rights and legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii) and, secondly, that, if the prima facie case is made out, the onus of proof then shifts to the Respondent to show that it does have such 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)).
The Panel finds on the evidence that the Complainant has not made out the prima facie case required. If, contrary to the Panel’s finding, the Complainant has made out the prima facie case required, then the Panel finds that the Respondent has rebutted that case.
The Complainant’s argument as to why in its submission the Respondent does not have a right or legitimate interest in the domain names is clear enough. Its opening proposition (at paragraph 15 of the Complaint) is that:
(1) the two websites use the SNAPSHOT mark in the domain names and on the websites to which they resolve.
(2) the websites use the GHOST LOGO and SNAPCHAT YELLOW marks and Snapshot planet graphics;
(3) the websites offer blog posts related to the Snapchat platform;
(4) the websites contain pay-per-click banner advertisements. The evidence that is offered up in support of this assertion is described as “See screenshots below (i.e. below that part of the text in the Complaint dealing with this issue) and Annex V”;
(5) the Respondent “…uses the snapchatplanets.org domain name to drive traffic to Respondent’s websites for commercial gain by displaying pay-per-click advertisements”; this is an issue in dispute as will also be seen later in this decision;
(6) the Respondent uses the domain names “to divert internet traffic to a commercial website”; and
(7) that the Respondent is “receiving internet traffic intended for the Complainant by creating confusion” with the SNAPCHAT mark, so that the Respondent can profit from “commercial pay-per-click advertisements”.
The Complainant also submitted that there was no relationship between the Complainant and the Respondent and that the Respondent was not commonly known by the domain names.
In substance, therefore, the Complainant’s case is that the two websites in question are commercial websites and that they are being used under the guise of the Complainant’s SNAPCHAT trademark. In particular, the Complainant says that the Respondent’s websites “contain pay-per-click banner advertisements” and “pay-per-click advertisements”.
The Respondent’s reply to these submission is that the websites in substance are not commercial but are purely educational and informational and that the use made of the domain names therefore constitutes a legitimate interest in the domain names. As it submits, “(t)he purpose of the website is to provide educational content to its users, which aligns with a legitimate interest under the UDRP framework.”
It is for the Panel to decide on the evidence which of these two interpretations is correct. The Panel apprehends that it must make this decision based on the balance of probabilities. It also apprehends that it should make its decision based on the substance of the websites as revealed in the evidence. To answer the question before it, it is therefore necessary to look at the websites themselves as only by that means will it be possible to determine their true and substantive purpose.
It may first be noted that the Respondent has used the trademark in the disputed domain names and on the websites, the websites use the SNAPCHAT, GHOST LOGO and SNAPCHAT YELLOW marks and Snapshot planet graphics and the websites offer blog posts related to the Snapchat platform. However, the principal dispute remains, which is whether the Respondent, on the evidence, has a right or legitimate interest in the domain name.
The Complainant’s submission to support its side of the argument on this principal issue is said to be contained in the Complainant’s Annex V. The Complainant describes Annex V as “Screenshots of the websites to which the Infringing Domain Names resolve” and it is the only evidence put before the Panel of the contents of websites concerned other than the Respondent’s evidence of what exactly is contained in the websites and how this should be interpreted.
The Panel’s conclusion is that the Complainant has not made out its case on the evidence and that the evidence and the weight of the evidence show that the websites are not commercial but are predominantly educational and informational and that they show that the Respondent is “making a legitimate noncommercial or fair use of the domain name(s), without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.” This brings the Respondent within the provisions of Policy ¶ 4(c)(iii) and gives it a right or legitimate interest in the domain names.
That conclusion is supported by an examination of Annex V. In that regard, this examination shows that there are no advertisements at all on the website to which the snapchatplanets.net relates. It also shows that, although there are two of what might be construed as illustrations on the website to which the snapchatplanets.org relates, neither of them is in substance an advertisement, a pay-per-click advertisement or a pay-per-click banner advertisement and neither of them can be said to be used for commercial gain, to divert traffic to a commercial website or to create confusion with the SNAPCHAT trademark, which is what the Complainant alleges. The evidence is simply not there to prove those contentions of the Complainant and even if there is evidence of any marginal effect in that regard, the weight of the evidence has not proved the Complainant’s principal contentions.
Annex V seems in fact to be not one, but four separate documents and the Panel’s task has not been assisted by all four documents being run together and presented as what seems to be one document. The first is a 15-page document that relates solely to the snapchatplanets.org domain name and purports to be the website to which that domain name resolves. There are only two illustrations on this website and hence in Annex V. The first is by way of being what seems to be a notice of some sort for an entity described as “Famous Astrologer and Psychic Reader Spiritual Healing center Black Magic Removal Love Expert.” The Panel doubts that this is an advertisement at all, as the essence of an advertisement is that it should recommend or promote whatever it is that is being advertised. The notice of the astrologer and psychic healer does not do this and the weight of the evidence does not support such a conclusion. Even if the notice is an advertisement at all, which must be doubted, it is not a pay- per-click advertisement or a pay-per-click banner advertisement as alleged, as it provides no means of communicating with any website of the entity described, even if it has such a website. Nor can it realistically be said that it is “diverting internet traffic to a commercial website” as the Complainant alleges and there is no evidence that it has had that effect on anyone or that it could do so.
The second document that is part of Annex V is a two-page document, again relating solely to the snapchatplanets.org domain name, the capture having taken place on November 7, 2024. This shows an illustration that appears to be related to World Financial Group, with an image of an individual person examining a mobile telephone and the initials WFG. It says nothing at all about the World Financial Group. This is not a pay-per-click advertisement as alleged, as it does not in effect recommend or promote anything. Nor does it provide any link to that entity and nor could it accurately be described as a banner advertisement. Nor could it even remotely be said that it is being used for “diverting internet traffic to a commercial website”, as the Complainant alleges, as there is no evidence to that effect and no evidence that it has done so or could do so. It is also hard to accept that the Respondent’s labors demonstrated through a long website devoted to education and information were engaged in, not to impart education and information, but for the highly dubious possibility that it will earn some form of payment from an astrologer and a company that has no presence on the internet revealed by the evidence or any means of communicating with it. The fact that the Respondent has apparently received some minor payment to cover its “operational expenses” does not show that the substance of the purpose of the website was to earn what the Complainant describes as “commercial gain” or that this took place, neither of which has been shown on the evidence or from any inference that can be drawn from it.
The conclusion so far must therefore be that Annex V does not contain any evidence that the Respondent “…uses the snapchatplanets.org domain name to drive traffic to Respondent’s websites for commercial gain by displaying pay-per-click advertisements” or banner advertisements. Nor does it contain any evidence that the Respondent is using the website for “diverting internet traffic to a commercial website” as the Complainant alleges.
The third document that is part of Annex V is a one-page document, also relating only to the snapchatplanets.org domain name, the capture having taken place on November 7, 2024. This consists solely of a disclaimer that will be dealt with later.
The fourth and final document that is part of Annex V is a 7-page document that relates not to snapchatplanets.org, but to snapchatplanets.net, as that is stated on the capture, as is the fact that the capture was taken on November 5, 2024. It contains a great deal of information about Snapchat Planets and it also contains a form of disclaimer, twice, that the website “is not connected with Snapchat Inc in any way.” The webpage exhibited does not include any advertisements, either pay-per-click or of any other type.
Before leaving this issue, the Panel notes that the Complaint itself, but not the evidence, purports to depict a screenshot for the website at snapchatplanets.org, or a truncated part of it, showing three laser printers with prices. It will be recalled that the Complaint asserted in the Complaint that the “domain names, plural, contain pay-per-click banner advertisements. See screenshots below”. Below the text appears this depiction of three laser printers.
The depiction, at least as it is presented in the Complaint, does not provide any information that shows that the website is being used to offer three laser printers for sale, by whom, when or where they may be purchased. Nor does it provide any form of communication with whoever it is that may be offering them for sale. They have certainly not been presented to the Panel in such a form that they show that the website is being used for advertisements for a commercial purpose. The screenshot for snapchatplanets.net as already noted, at least as it is presented in evidence, does not contain any advertisements or commercial content at all.
The Panel has also looked at the captures on the Wayback Machine at wwww.archive.org that relate to the two domain names. The Panel has examined all of the large number of captures relating to both domain names but does not see on any of those captures any advertisements for laser printers or for that matter any other advertisements.
It is therefore untrue to say, as the Complainant alleges, that on the evidence the Respondent uses either website to drive traffic to the Respondent’s websites for commercial gain by displaying “pay-per-click advertisements”, or that the Respondent is using either website for “diverting internet traffic to a commercial website”. The two illustrations on the snapchatplanets.org website occupy a minute portion of the voluminous websites and cannot possibly color the substantive nature of the sites, which is overwhelmingly that they are informational sites for Snapchat afficionados. The little “commercial” content which emanates from the Respondent itself is content stating that the Snapchat Plants facility has “endless possibilities”, is “a good feature”, that “99.99% of users like it”, and that internet users should take out a Snapchat Plus subscription and presumably pay Snapchat for using it. Thus, the content is designed to promote and support the Complainant’s Snapchat Planets facility through education and information and not to manipulate it for any sort of illicit commercial gain to the Respondent.
In any event, the substance of the matter and the weight of the evidence as determined by the Panel under Rule 10(d) is that the websites for both domain names are not in substance commercial in any sense and are not set up to divert internet traffic anywhere but are in substance educational and informative websites. That is borne out by a further examination of aspects of the content of the websites relating to the two domain names.
The website in the case of each domain name states that its objective is to provide “information” about Snapchat’s Planets, and a perusal of the two websites makes it clear that this is exactly what they do. The websites contain many pages of information, often going into quite technical issues, but some extracts from that content taken at random and which are only a small part of the extensive content on the websites, show the true nature of the information contained on the site and that the sites are in substance informational and educational. Those extracts are as follows:
*”(i)n this article, I have explained everything about Snapchat Plus Planets in the best possible and easiest manner. At the end of this article, there is a section on FAQs. If you don’t have much time to read the whole article, just go through it, and you will get the basic information. If you have plenty of time, keep reading!”
*the websites contain a lengthy description of the planets and their significance in the use of the Snapchat facility;
*the websites describe the process as one of identifying friends by reference to planets and the frequency of contact with fellow users;
*they invite users to reflect on their school science classes; describes 8 planets “in detail”;
*they state that the reason for giving this information “is to give users a unique way to understand their friendship levels”;
*they offer help to internet users and makes the offer to “Let me help you understand it more deeply with an example”;
*they contain an invitation to watch a video “for more information”;
*they contain information on ‘How to Find Your Position in a Friend’s Profile”; how to use the service;
*they show how to boost the user’s rankings;
*they discusses the desirability of exchanging snaps and chatting regularly between friends;
* they discuss how to install the system; and
* they state that the system has “endless possibilities”, that it is “a good feature”; that “99.99% of users like it”, and that users should take out a Snapchat Plus subscription and by implication pay for it.
Clearly none of this is commercial, except where it must benefit the Complainant by encouraging users to take out a subscription and pay for it. Above all, the content is characterized by being laudatory and not critical in the slightest; nor does it denigrate or detract from the standing of the Complainant at all or use the Complainant’s name and brand as a subterfuge for illicitly making money; indeed, its purpose is clearly to explain and encourage the use of the Complainant’s Snapchat Planets facility and not to restrict it.
The Respondent’s About Us page on its website is consistent with this interpretation and reinforces the notion that what the Respondent was on about from the beginning was not some ulterior commercial objective but to impart information about Snapchat Planets, praise it, and urge afficionados to pay money to Snapchat for using it. As already noted, its About Us page states inter alia:
“The logos used in this website are the property of Snapchat Inc. and are used for education purposes only”; and
“The logos used in this website are the property of Snapchat Inc. and are used for education purposes only.”
Accordingly, when this evidence is put together it must be concluded that the Complainant’s submissions on the principal issue set out above have not been made out on the evidence presented to the Panel.
Moreover, the Panel finds that the Respondent’s submissions in its Response and its other submissions are upheld and are made out on the evidence.
Accordingly, the Panel finds that the evidence and the weight of the evidence, as the Panel has determined under Rule 10(d), have made out the Respondent’s contentions and that it has shown that it has made “a legitimate noncommercial or fair use of the domain name(s), without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.” In particular, the evidence shows that the Respondent’s use of the domain names was in substance noncommercial and fair, that the Respondent has not been motivated by an intention to divert consumers misleadingly or to tarnish the Complainant’s trademarks within the meaning of Policy ¶4(c)(iii).
THE RESPONDENT’S BLOGS
The Complainant has also submitted that the Respondent has copied its trademarks for a blog in the form of a “splog” to divert traffic away from a complainant’s legitimate website through impersonation and passing off. No such blog was produced in evidence. The Panel has therefore sought to verify the Complainant’s submission by resorting to the Wayback Machine. This shows that each domain name does in fact have a blog, apparently the same blog in the case of each domain name. They consist of a long series of technical questions such as “What Does SFS Mean on Snapchat” and the Respondent’s answers to those questions. They are thus educational and informative and have no commercial content at all. Consequently, it is wrong to assert that they are diverting internet traffic away from the Complainant’s own website. Perhaps more significantly, it is wrong to assert that they are a form of impersonation or passing off. The Respondent has never, so far as the Panel can see, impersonated or sought to pass itself off as the Complainant. Indeed, the whole thrust and substance of both websites shows that the Respondent was at pains to show that it was not the Complainant and was not impersonating or passing itself off as the Complainant, but the opposite, namely that as it was providing information on how to use the Snapchat Planets facility and its considerable qualities. Indeed, the Respondent’s succession of disclaimers makes this clear.
THE RESPONDENT’S DISCLAIMERS
The Panel has given attention to the arguments of both parties on the content and the positioning of the Respondent’s disclaimers.
Here again the Panel can only go by the websites as exhibited by the Complainant in Annex V where the disclaimers appear.
The website for snapchatplanets.org, on page 13 of 15 of Annex V, carries the disclaimer, under the heading “Disclaimer” that:
“This website is not affiliated with or endorsed by Snap Inc. in any possible manner. It is just an educational site to provide users with information about the latest Snapchat features. All logos and images belong to their respective owner. To know more about this website please visit our About Us page.”
A further disclaimer relating to snapchatplanets.org, on page 1 of 1 provides:
“Disclaimer. If you require any more information or have any questions about our site’s disclaimer, please feel free to contact us by email at thorofficial@gmail.com”.
A further disclaimer on the same site provides on page 1 of 1, inter alia, that “all the information on this website-https://snapchatplanets.org- is published in good faith and for general information purpose only”.
With respect to the website at snapchatplanets.net, the disclaimer states on page 6 of 7 relating to that website:
“This website is not connected with Snapchat Inc. in any way. The only purpose of this website is educational. The logos and images are the properties of their respective owners and are used here for illustrative purposes only. If you still have any doubts, head to our About Us page.”
The Panel finds that these disclaimers make it clear that the Respondent has not sought to impersonate or pass itself off as the Complainant, but it has done the opposite, namely to assert that it is a separate entity not affiliated with the Complainant and that its websites are designed to provide education and information. The disclaimers are also placed in positions that are reasonable for internet users to see and read and are expressed in language that internet users should not have any difficulty in understanding.
CONCLUSION ON RIGHTS AND LEGITIMATE INTERESTS
The conclusion on rights and legitimate interests must therefore be that the Respondent has shown that it has a right or legitimate interest in the domain names because they are in substance information sites coming clearly within Policy ¶ 4(c)(iii) as “a legitimate noncommercial or fair use of the domain names, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service at issue”. They in no sense mislead internet users and in no way compromise or tarnish the Complainant’s trademarks, but, if they must be categorized, they are more akin to tribute or fan sites, as they do nothing but make tribute to Snapchat Planets and cater for its fans.
The Complainant has thus not made out a prima facie case against the Respondent and, even if has, it has clearly been rebutted by the Respondent.
The Complainant has therefore not made out the second of the three elements it must establish under the Policy.
Registration and Use in Bad Faith
As the Complainant has not made out the second of the three elements to be proved under the Policy, it cannot succeed in this proceeding. It is therefore not strictly necessary to discuss the third element, namely bad faith.
However, for completeness, the Panel will add that even if the Complainant had succeeded on the second element, the Panel is unable to find that the Respondent registered and used the disputed domain names in bad faith.
The evidence does not bring the Respondent within any of the four criteria for finding bad faith registration and use set out in Policy ¶ 4(b); clearly, the Respondent did not register the domain names to sell them, within sub-paragraph(b)(i), but to retain and use them for the dissemination of information, as this is the main function of the websites; nor did it do so to prevent the Complainant from reflecting its trademark in a domain name within sub-paragraph (b)(ii), as the Complainant is at liberty to register any such domain name; nor could it possibly be said that the Respondent has set about disrupting the Complainant’s business under sub-paragraph (b)(iii) when what it did as a matter of fact was not to disrupt the Snapchat Planets business but to extol it and encourage internet users to use it because it was a good system with endless possibilities and that internet users should buy a subscription to it; nor does the Respondent come within sub-paragraph (b)(iv), as it makes it clear on its websites that “This website is not affiliated or connected with Snapchat Inc. in any possible manner…(and) …(t)he logos used in this website are the property of Snapchat Inc. and are used for education purposes only;” there could therefore be no confusion in the minds of internet users when they were informed that there was no affiliation between the Complainant and the Respondent.
Nor, apart from these specific criteria, is there any other factor shown by the evidence that would justify the conclusion that the Respondent registered and used the domain names in bad faith. The whole thrust of the Respondent’s conduct on all the evidence is that it was a good faith, detailed and sustained effort to educate and disseminate information.
The Complainant has therefore not made out the third of the three criteria that it has to establish.
OTHER SUBMISSIONS MADE BY THE PARTIES
As already noted, the Panel has given consideration to the additional submissions made by the parties after the initial Complaint and Response and has taken them into account. The issues raised by those additional submissions have all been considered by the Panel in reaching its conclusion.
Reverse Domain Name Hijacking
Reverse Domain Name Hijacking (RDNH), is a significant part of the successful arbitration process set up under the UDRP and similar policies to resolve domain name disputes. Not only is it significant, but it is integral to the system as an instrument to deter abusive claims being made which is obviously not in then public interest. Indeed, the way that Rule 15(e) is expressed to confer the power to find RDNH actually requires panels to “consider the submissions” of the parties and then to decide if the Complaint has been brought “in an attempt at Reverse Domain Name Hijacking.” Accordingly, the issue of RDNH should at least be considered, even if the Panel ultimately decides not to find it and even if the Respondent has not requested it, for example where the Respondent, as in the present case, is presumably a layman who may not be familiar with the ins and outs of RDNH.
In the present case, enough has emerged from “consider(ing) the submissions” to show that the Panel should at least consider the issue and decide if (the operative word being “if”) a finding of RDNH should be made. The Panel has therefore considered the issue.
As with most issues, there are points on both sides.
On the one hand, the Complainant is a trademark owner and it has the right to take proceedings to prevent its trademark from being tarnished or compromised in breach of the UDRP.
On the other hand, the Complainant should have realized that its chances of succeeding on the evidence were slim. It must have and should have known that the Respondent’s websites, which it put in evidence itself in Annex V, would reveal that the websites were substantially if not entirely made up of educational and informational material which, all other things being equal, would probably give the Respondent a right and legitimate interest in the domain names.
It also went out on a limb in asserting that the websites contained pay-per-click commercial advertisements and ” banner advertisements” when, again, an examination of the websites would show that they did not contain any such advertisements and that the website for snapchatplanets.net domain name did not contain any advertisements or commercial material at all.
The Panel is also concerned at the use of prior UDRP decisions to allege that the Respondent had created the likelihood of confusion between the trademark and the Respondent’s websites. The decisions cited showed that they were based on facts completely different from the present case. The Respondent in the first Home Depot case had required the user to navigate through circular links; in the second Home Depot case, the website falsely suggested an association with the Complainant; in the Allianz case, the Respondent had diverted internet users to its own website; and in the British Broadcasting Corporation case, the Respondent had wrongly indicated that the Complainant endorsed its site site, passed itself off as the Complainant, carried advertising on the site and offered to sell the domain names for $75,0001. These circumstances and the actual facts of the present proceeding are as different as chalk from cheese.
Moreover, the allegations of bad faith registration and use should always have been seen as very dubious when the known facts were unlikely to justify a finding of bad faith.
In the interest of maintaining the integrity of the UDRP, the panel finds that the Complaint was brought in bad faith in an attempt at Reverse Domain Name Hijacking or primarily to harass the domain-name holder within the meaning of Rule 15 (e).
DECISION
The Complainant having failed to establish all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the snapchatplanets.org and snapchatplanets.net domain names REMAIN with the Respondent.
The Honorable Neil Anthony Brown KC, Panelist
Dated: November 30, 2024
