The Complainant is Snap Inc., United States of America (“United States”), represented by IPLA, United States.
The Respondent is Lorne Campbell, Hofmans, Japan.
The disputed domain names, <bitemoji.net> and <bitmoji.net> (the “Domain Names”), are registered with GoDaddy.com, LLC (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 11, 2019. On July 11, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Names. On July 12, 2019, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on July 24, 2019. In accordance with the Rules, paragraph 5, the due date for Response was August 13, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 14, 2019.
The Center appointed Tony Willoughby as the sole panelist in this matter on August 21, 2019. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
The Complainant owns and distributes the BITMOJI custom avatar software application and service, which it acquired when it purchased BitStrips Inc. in July 2016 for a figure well in excess of USD 50,000,000.
The Complainant is the registered proprietor ofUnited States Trademark Registration No. 5409939 registered February 27, 2018 (application filed January 4, 2016). BITMOJI (word) for various software goods and services in classes 9 and 41.
The Domain Names were registered on February 24, 2017 and are connected to a website headed “Real Emotion Texting” and inviting the visitor to download from the App Store “Bit Emoji for iMessage”. The main text reads:
“The Popular Bit Emoji Has Come to iMessage! Say what you REALLY WANT with REAL EMOTION STICKERS! Create your own BitEmoji Sticker Comic strips! Enjoy building funny texting scenes with your friends right inside the iMessage chat window on iPhone and iPad! Hundreds of stickers, thousands of combinations possible!”
The Complainant contends that the Domain Names are identical or confusingly similar to its trade mark. BITMOJI, in which it has both registered and unregistered rights. It contends that the Respondent has no rights or legitimate interests in respect of the Domain Names. It contends that the Domain Names have been registered and are being used in bad faith to sell competing products and services on the back of the fame of the Complainant’s trade mark.
The Respondent did not reply to the Complainant’s contentions.
According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the Domain Names, the Complainant must prove each of the following, namely that:
(i) The Domain Names are identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
(ii) The Respondent has no rights or legitimate interests in respect of the Domain Names; and
(iii) The Domain Names have been registered and are being used in bad faith.
The Domain Names each incorporate the Complainant’s BITMOJI trade mark at the second level, although one of them features an “e” inserted between the “t” and the “m”. Nonetheless, in each case the Complainant’s trade mark is readily recognizable. The Panel finds that the Domain Names are identical or confusingly similar to the Complainant’s BITMOJI trade mark.
The Complainant asserts that the Respondent registered the Domain Names fully aware of the existence of the Complainant’s business and the BITMOJI trade mark under and by reference to which the Complainant markets its goods and services. The Complainant has produced screenshots showing how the Respondent is using the Domain Names and contends that the Respondent is using them to sell its own competing software application and service. The Complainant contends that the Respondent, with whom the Complainant has had no dealings, cannot have acquired any rights or legitimate interests in respect of the Domain Names on the back of such a use.
The Panel is satisfied on the evidence before it that the Respondent is using the Domain Names to advertise and promote sale of software application and service competing with those of the Complainant, but it is to be noted that while the Complainant applied to register its BITMOJI trade mark in January, 2016, that application did not mature into a registration until February 2018. The Respondent registered the Domain Names in February, 2017. Is it not possible that the Respondent registered the Domain Names unaware of the existence of the Complainant? The Complainant demonstrates that when it purchased the BITMOJI business in 2016, the purchase attracted widespread publicity. The purchase price was well in excess of USD 50,000,000.
The Panel concludes from the evidence that by the time that the Complainant acquired the BITMOJI business and certainly by February 2017 when the Respondent registered the Domain Names there was a significant reputation and goodwill associated with the BITMOJI name. The Panel further concludes that it is most unlikely that anyone engaged in the industry will have been unaware of the existence of the Complainant’s BITMOJI business at that time. The Panel finds that the Complainant has made out a prima facie case; in other words, a case calling for an answer from the Respondent.
In the absence of an answer from the Respondent, the Panel is unable to conceive of any basis upon which the Respondent might reasonably be said to have acquired any rights or legitimate interests in respect of the Domain Names and finds that the Respondent has no such rights or legitimate interests.
In the absence of any explanation from the Respondent, the Panel concludes on the evidence before it and on the balance of probabilities that the Respondent registered the Domain Names for the purpose for which they are being used, namely to advertise and sell goods and services competing with those of the Complainant.
In the view of the Panel visitors to the Respondent’s website are likely to have been attracted to it in the belief, encouraged by the Domain Names, that it is a website of the Complainant or a website in some other way associated with the Complainant.
The Panel finds that the Domain Names have been registered and are being used in bad faith within the meaning of paragraphs 4(b)(iv) and 4(a)(iii) of the Policy.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Names <bitemoji.net> and <bitmoji.net> be transferred to the Complainant.
Date: August 23, 2019
Stay updated! Get new cases and decisions by daily email.