The Complainant is SNAP Inc. of Venice, California, United States of America (“United States”), represented by Kilpatrick Townsend & Stockton LLP, United States.
The Respondents are Contact Privacy Inc. Customer 0146764045 of Toronto, Ontario, Canada / WhoisGuard Protected, WhoisGuard, Inc. of Panama / Privacy, MyP of Toronto, Ontario, Canada / James Schrimsher of Bensenville, Illinois, United States / Nenad Delic of Caparde, Bosnia and Herzegovina. 2. The Domain Names and Registrars
The disputed domain name is registered with NameCheap, Inc.; the disputed domain names and are registered with Tucows Inc.; and the disputed domain name is registered with EasyDNS Technologies Inc. (the foregoing disputed domain names shall be collectively referred to as the “Disputed Domain Names”, and NameCheap, Inc., Tucows Inc., and EasyDNS Technologies Inc. shall be referred to collectively as the “Registrars”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 29, 2017. On March 29, 2017, the Center transmitted by email to the Registrars a request for registrar verification in connection with the Disputed Domain Names. On March 29, 2017, and March 30, 2017, the Registrars transmitted by email to the Center its verification responses disclosing registrant and contact information for the Disputed Domain Names which differed from the named Respondents and contact information in the Complaint. The Center sent an email communication to the Complainant on April 5, 2017, providing the registrant and contact information disclosed by the Registrars, and inviting the Complainant to submit an amended Complaint. The Complainant filed an amended Complaint on April 7, 2017.
The Center verified that the Complaint together with the amended Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondents of the Complaint, and the proceedings commenced on April 11, 2017. In accordance with the Rules, paragraph 5, the due date for Response was May 1, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 3, 2017.
The Center appointed Gabriela Kennedy as the sole panelist in this matter on May 17, 2017. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7. 4. Factual Background
The Complainant was originally established in the United States under the name Snapchat, Inc. It changed its name to Snap, Inc. on September 23, 2016. The Complainant owns and operates the messaging application and storytelling platform known as “Snapchat”, which allows users to share photographs, videos and messages via their mobile devices (“Snapchat App”). The Snapchat App was launched in 2011. The Complainant owns numerous registered rights in the SNAPCHAT trade mark, and other trade marks incorporating the word “snap”, including the SNAP trade mark, SNAPMOBILE trade mark and SNAPTIME trade mark (“Snapchat Trade Marks”). The Complainant has registered its rights in the Snapchat Trade Marks throughout the world, including registrations in the United States, the European Union, Antigua and Barbuda, Albania, Argentina, Australia and Canada. The earliest date of registration of the SNAPCHAT trade mark was in 2013 (see Australian trade mark number 1558022, registered on May 20, 2013).
The Disputed Domain Name was registered by Nenad Delic on October 22, 2016. The Disputed Domain Names and were registered by James Schrimsher on May 17, 2016, and December 13, 2016, respectively. The Disputed Domain Name was registered by WhoisGuard Protected, WhoisGuard, Inc. on June 24, 2015. 5. Preliminary Issue: Consolidation
The Complainant has requested the consolidation of the Disputed Domain Names and the Respondents under a single complaint.
As held in Speedo Holdings B.V. v. Programmer, Miss Kathy Beckerson, John Smitt, Matthew Simmons,WIPO Case No. D2010-0281: “the consolidation of multiple registrants as respondents in a single administrative proceeding may in certain circumstances be appropriate under paragraph 3(c) or 10(e) of the Rules provided the complainant can demonstrate that the disputed domain names or the websites to which they resolve are subject to common control, and the panel, having regard to all of the relevant circumstances, determines that consolidation would be procedurally efficient and fair and equitable to all parties.” Some examples of where it has been found to be appropriate for a single complaint to be brought against multiple respondents, include circumstances where the relevant domain names resolve to the same website, thereby demonstrating that they are subject to common control (see American Public University System, Inc. v. Toby Schwarzkopf / Kyle Kupher / Domains by Proxy, LLC / DreamHost, LLC,WIPO Case No. D2017-0070 and Tinder, Incorporated v. Super Privacy Service c/o Dynadot / WhoisGuard Protected, WhoisGuard, Inc. / Jennifer Lopez, SI Marketing LLC / David Miller,WIPO Case No. D2016-1610).
In this case, the Disputed Domain Names all incorporate the words “snap” or “snapchat”, along with the term “hack” or “hacker”. As at December 14, 2016, all of the Disputed Domain Names resolved to the same website. As at February 10, 2017, the Disputed Domain Names and ultimately redirected users to the Disputed Domain Name .
In light of the above, and the lack of any submissions or evidence to the contrary from the Respondent, the Panel finds that the Complainant has established that the Disputed Domain Names are more likely than not under common control. In the circumstances, the consolidation of the multiple Disputed Domain Names and Respondents would also be equitable and procedurally efficient.
The Panel will therefore allow the consolidation as requested by the Complainant. 6. Parties’ Contentions A. Complainant
The Complainant’s contentions can be summarized as follows:
(a) The Complainant, its Snapchat App and its Snapchat Trade Marks are well-known worldwide. The Complainant also has numerous registered rights around the world in its GHOST device mark (“Ghost Trade Mark”), including in the United States and the European Union, the earliest of which was registered in 2013.
(b) The Snapchat Trade Marks have acquired a high degree of public recognition and distinctiveness as a source of products and services offered by the Complainant. As of July 2015, the Complainant had 200 million monthly users and 100 million daily active users. As of June 2016, the Complainant had more than 150 million daily active users. According to the market analytics company, App Annie, from December 2015 to December 2016, the Snapchat App ranked among the top 5 most downloaded photo applications and the top 15 most downloaded mobile applications overall on the iTunes app store. A number of panelists in other UDRP proceedings have found that the SNAPCHAT trade mark is well known or internationally recognized (see Snapchat, Inc. v. Whois Agent, Whois Privacy Protection, Inc. / CheapSuits Media,WIPO Case No. D2016-0629; Snapchat, Inc. v. Macy Wrhel,WIPO Case No. D2016-0558; and Snapchat, Inc. v. Lirong Shi / ,WIPO Case No. D2016-0289).
(c) The Respondents registered the Disputed Domain Names , , and on December 13, 2016, October 22, 2016, June 24, 2015 and May 17, 2016, respectively. As of December 14, 2016, the Disputed Domain Names redirected users to a website that purported to offer users a tool to hack into user accounts of the Snapchat App. The website features the Complainant’s Ghost Trade Mark and the title “SnapChat Hack”. To unlock the alleged hacking content, users are required to complete an advertising survey, which would likely generate advertising or affiliated revenue for the Respondents. As of February 10, 2017, the Disputed Domain Name still resolved to such a website, and the Disputed Domain Names and ultimately redirected users to the Disputed Domain Name .
(d) On December 14, 2016, the Complainant sent an email to Tucows/ContactP in relation to the Disputed Domain Name , alleging that the Disputed Domain Name infringed its rights as it resolved to a website that purported to offer users a tool to hack into user accounts of the Snapchat App. After the Complainant sent the foregoing email, the Disputed Domain Name began resolving to a webpage that stated “Forbidden You don’t have permission to access / on this server”, with the Complainant’s Ghost Trade Mark still displayed on the webpage’s browser tab.
(e) The Disputed Domain Names are confusingly similar to the Complainant’s Snapchat Trade Marks, as they incorporate either the SNAPCHAT trade mark or the SNAP trade mark in their entirety. The addition of the generic terms “hack” or “hacker” in the Disputed Domain Names do not sufficiently distinguish them from the Complainant’s Snapchat Trade Marks.
(f) The Respondents have not been using the Disputed Domain Names for any bona fide offering of goods or services, nor have they been making any legitimate noncommercial or fair use of them. The Respondents are using the Disputed Domain Names to offer purported hacking tools for the Complainant’s Snapchat App in order to induce users to take the advertising surveys for the Respondents’ commercial gain. There is also no relationship between the Complainant and the Respondents that might give rise to any licence, permission or other right by which the Respondents could register the Disputed Domain Names. There is also no evidence that the Respondents are commonly known by the Disputed Domain Names.
(g) The Respondents registered and used the Disputed Domain Names in bad faith with actual knowledge of the Complainant’s rights in the Snapchat Trade Marks. The Disputed Domain Names resolved to a website that contained content that referred to the Snapchat App and incorporated the Complainant’s Ghost Trade Marks, and purported to provide hacking tools in relation to the Snapchat App. The Complainant and its Snapchat Trade Marks are internationally recognized, and the Respondents registered the Disputed Domain Names well after the Complainant acquired rights in its Snapchat Trade Marks. The Respondents registered and used the Disputed Domain Names to generate advertising revenue. B. Respondents
The Respondents did not reply to the Complainant’s contentions.
The fact that the Respondents have not submitted a Response does not automatically result in a decision in favor of the Complainant. However, the failure of the Respondents to file a Response may result in the Panel drawing appropriate inferences from such default. The Panel may also accept all reasonable and supported allegations and inferences flowing from the Complaint as true (see Entertainment Shopping AG v. Nischal Soni, Sonik Technologies,WIPO Case No. D2009-1437 and Charles Jourdan Holding AG v. AAIM,WIPO Case No. D2000-0403). 7. Discussion and Findings
Under paragraph 4(a) of the Policy, the Complainant is required to prove each of the following three elements:
(i) the Disputed Domain Names are identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
(ii) the Respondents have no rights or legitimate interests in respect of the Disputed Domain Names; and
(iii) the Disputed Domain Names have been registered and are being used by the Respondents in bad faith. A. Identical or Confusingly Similar
The Panel accepts that the Complainant has registered rights in the Snapchat Trade Marks, based on its registrations in several different jurisdictions, including in the United States and the European Union.
The Disputed Domain Names and incorporate the Complainant’s SNAPCHAT trade mark in its entirety, the only difference being the use of the word “hack” as a suffix. The Disputed Domain Names and incorporate the Complainant’s SNAP trade mark in its entirety, save that they also include the word “hack” or “hacker” as a suffix.
It is well established that where the distinctive and prominent element of a disputed domain name is the complainant’s mark, and the only difference is an additional term that adds no distinctive element, then such addition does not negate the confusing similarity between the disputed domain name and the mark (see Oakley, Inc. v. Joel Wong/BlueH- INC,WIPO Case No. D2010-0100; Diageo Ireland v. Guinnessclaim,WIPO Case No. D2009-0679; and The Coca-Cola Company v. Whois Privacy Service,WIPO Case No. D2010-0088).
The Panel finds that “snap” and “snapchat” are the distinctive elements of the Disputed Domain Names, and the use of the words “hack” or “hacker” do nothing to detract from the confusing similarity of the Disputed Domain Names to the Complainant’s Snapchat Trade Marks.
It is also well established that in making an enquiry as to whether a trade mark is identical or confusingly similar to a domain name, the generic Top-Level Domain extensions, in this case “.me”, “.co” and “.org”, may be disregarded (see Rohde & Schwarz GmbH & Co. KG v. Pertshire Marketing, Ltd., WIPO Case No. D2006-0762).
The Panel finds that paragraph 4(a)(i) of the Policy is satisfied. B. Rights or Legitimate Interests
Paragraph 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Jurisprudential Overview 3.0”) states that once a complainant establishes a prima facie case in respect of the lack of rights or legitimate interests of a respondent, the burden of production shifts to the respondent to come forward with relevant evidence demonstrating that it has rights or legitimate interests in the domain name. Where the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy.
The Panel accepts that the Complainant registered and began using the Snapchat Trade Marks many years before the Disputed Domain Names were registered by the Respondents, and the Complainant has never authorised the Respondents to use its Snapchat Trade Marks. Accordingly, the Panel is of the view that a prima facie case has been established and it is for the Respondents to produce evidence of their rights or legitimate interests in the Disputed Domain Names. As the Respondents have not submitted a Response to the Complainant’s contentions, the Panel will assess the case based on the reasonable inferences that can be drawn from the Complainant’s evidence.
Pursuant to paragraph 4(c) of the Policy, the Respondents may establish rights or legitimate interests in the Disputed Domain Names by demonstrating any of the following:
(i) before any notice to them of the dispute, the Respondents’ use of, or demonstrable preparations to use the Disputed Domain Names or a name corresponding to the Disputed Domain Names in connection with a bona fide offering of goods or services; or
(ii) the Respondents have been commonly known by the Disputed Domain Names, even if they had acquired no trade mark or service mark rights; or
(iii) the Respondents are making a legitimate noncommercial or fair use of the Disputed Domain Names, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.
The Respondents have not provided any evidence to demonstrate that they have become commonly known by the Disputed Domain Names, or a name corresponding to them. The Disputed Domain Names resolved to a website that purported to offer users a tool to hack into the Snapchat App user accounts (“Respondents’ Website”). The Respondents’ Website features the Complainant’s Ghost Trade Mark, the title “SnapChat Hack” and includes references to the Snapchat App. To unlock the alleged hacking content, users are required to complete an advertising survey, which would likely generate advertising or affiliated revenue for the Respondents.
On December 14, 2016, the Complainant sent an email to the proxy service provider of the Disputed Domain Name , informing it that the use of such Disputed Domain Name to resolve to the Respondents’ Website amounted to an infringement of its rights in the Snapchat Trade Marks. The Complainant never received a response. After the Complainant sent such email, the websites at the Disputed Domain Names , and subsequently became inactive. The Disputed Domain Name is currently the only Disputed Domain Name that still resolves to the Respondents’ Website.
In light of the above, the Panel finds that the Respondents are not using the Disputed Domain Names to make a bona fide offering of goods or services, or for any purpose that amounts to legitimate noncommercial or fair use. The Respondents are clearly seeking to take advantage of the Complainant’s well-known Snapchat Trade Marks to offer alleged hacking services to the Complainant’s Snapchat App most likely for commercial gain (e.g., to generate advertising revenue by getting users to complete an advertising survey) and to disrupt the Complainant’s business.
Consequently, the Panel finds that the Respondents have no rights or legitimate interests in the Disputed Domain Names and the Complainant has satisfied paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
The Complainant has been using the Snapchat Trade Marks for many years, prior to the registration of the Disputed Domain Names, and is well known worldwide. Further, the Respondents’ Website purports to offer hacking services in relation to the Complainant’s Snapchat App, and includes several references to the Complainant’s SNAPCHAT trade mark. The Respondents’ Website also prominently displays the Complainant’s Ghost Trade Mark. The Respondents therefore must have been aware of the Complainant at the time they registered the Disputed Domain Names, and sought to register and use the Disputed Domain Names in order to take advantage of the Complainant’s reputation and its well-known Snapchat Trade Marks for profit and/or to disrupt the Complainant’s business.
In light of the foregoing, the Panel finds that the Respondents registered and are using the Disputed Domain Names in bad faith.
The Panel finds paragraph 4(a)(iii) of the Policy is satisfied. 8. Decision
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Disputed Domain Names , , , and be transferred to the Complainant.
Gabriela Kennedy
Sole Panelist
Date: May 29, 2017
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