WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Snap Inc. v. Tracy Grand, Primary Knowledge, Inc.
Case No. D2017-0495
1. The Parties
The Complainant is Snap Inc. of Venice, California, United States of America (“United States”), represented by IPLA, United States.
The Respondent is Tracy Grand, Primary Knowledge, Inc. of Santa Monica, California, United States, represented by Miclean Gleason LLP, United States.
2. The Domain Name and Registrar
The disputed domain name <geofilters.com> is registered with eNom, Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 9, 2017. On March 10, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 10, 2017, 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 March 22, 2017. On April 10, 2017, the Respondent requested an extension of the Response due date to April 28, 2017. In light of the Respondent’s request, the Complainant was requested to comment. On April 12, 2017, the Complainant objected to the Respondent’s request for extension of the Response due date beyond April 18, 2017. On April 12, 2017, in accordance with paragraph 5(e) of the Rules, the Center extended the Response due date to April 21, 2017. The Response was filed with the Center on April 22, 2017.
The Center appointed William R. Towns, Christopher S. Gibson and M. Scott Donahey as panelists in this matter on May 19, 2017. The Panel finds that it was properly constituted. Each member of 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 on May 16, 2017, submitted to the Center the following: (1) Complainant’s Request for Leave to File a Supplemental Response and Complainant’s Supplemental Response; and (2) Complainant’s Supplemental Annexes (hereinafter referred to collectively as “Complainant’s Supplemental Filing”). The Respondent on May 19, 2017, submitted (1) Respondent’s Sur-Reply to Complainant’s Supplemental Response; and (2) Respondent’s Supplemental Annexes (hereinafter referred to collectively as “Respondent’s Supplemental Filing”). The Panel in its sole discretion has determined to allow the Parties’ supplemental submissions.
4. Factual Background
The Complainant is a camera company known for its Snapchat photo/video sharing application and platform. In July 2014, the Complainant introduced photo editing “Geofilter” software that allows users to place location-based filters on photos or videos uploaded to Snapchat. The Complainant applied to the United States Patent and Trademark Office (“USPTO”) on December 2, 2016, seeking to register GEOFILTER as a trademark.
The Respondent registered the disputed domain name <geofilters.com> on November 4, 2014. The disputed domain name resolves to a landing page displaying the term “Geofilters” with the tagline “location-based filters”, and providing contact information for the Respondent. Visitors to the Respondent’s website are invited to submit an email to be “notified of the launch”.
In October 2016, a representative of the Complainant contacted the Respondent regarding the availability of the disputed domain name for sale. The Respondent also was approached during this time frame by several other persons or entities expressing interest in the disputed domain name. The Respondent indicated to the Complainant’s representative that the disputed domain name was available “in the mid-six figures range.”
The USPTO on March 29, 2017, issued a Notice of Publication respecting the Complainant’s application to register GEOFILTER, and published the mark in the Official Gazetteon April 18, 2017, for purposes of opposition. The opposition period has not yet closed. The Respondent has obtained from the USPTO an extension of time to file an opposition.1
5. Parties’ Contentions
The Complainant describes itself as a multinational camera company that develops and markets software and hardware, and is primarily known for its photo/video-sharing mobile app and social media platform Snapchat and the Spectacles wearable camera. According to the Complainant, over 150 million people use Snapchat on a daily basis, creating more than 2.5 billion pictures/videos each day.
The Complainant asserts common law trademark rights in GEOFILTER in connection with photo editing software made available through the Snapchat application and platform. The Complainant submits it has used the GEOFILTER mark in commerce since July 2014, that the Geofilter software when introduced was the subject of significant and widespread third-party press and acclaim, and that the Complainant has extensively used and promoted the GEOFILTER mark worldwide. The Complainant relates that it has applied to register the GEOFILTER mark in the United States, and asserts that there is no other pending application or registration for GEOFILTER or GEOFILTERS for the same or similar goods in the United States.
The Complainant maintains that the disputed domain name <geofilters.com> is identical or confusingly similar to the Complainant’s GEOFILTER mark, and is the plural version of the Complainant’s mark. The Complainant states that the Respondent’s website consists of a landing page displaying the term “geofilters” with a tagline “location-based filters”. The Complainant asserts this is an obvious reference to goods and services that the Complainant offers under its GEOFILTER mark. The Complainant maintains that the Respondent is seeking to capitalize on the goodwill and success of the Complainant’s GEOFILTER mark by creating an intentional and misleading association with the Complainant.
The Complainant submits that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant asserts that its common law rights to the GEOFILTER mark pre-date the Respondent’s registration of the disputed domain name, and that the Complainant’s use of its mark was well advertised and widely known at the time the Respondent registered the disputed domain name. The Complainant avers that the Respondent has no trademark rights in “Geofilters” and has not used the disputed domain name in connection with a bona fide offering of goods or services. According to the Complainant, the Respondent owns 123 domain names, 95 or which either do not resolve to an active website or else use the same website template used with the disputed domain name, inviting users to submit an email to be “notified of the launch”.
The Complainant contends that the Respondent’s use of the disputed domain name in connection with “location-based filters” and other content on the Respondent’s website is calculated to cause confusion or to deceive consumers as to an affiliation, sponsorship, or association with the Complainant. According to the Complainant, the Respondent is attempting to pass off the disputed domain name as the Complainant’s domain name or trademark. The Complainant asserts that the Respondent is seeking to profit from the sale of the disputed domain name or by the sale or other monetization of email addresses collected through the invitation on the website.
The Complainant argues that the disputed domain name was registered and is being used in bad faith by the Respondent. The Complainant asserts that it coined the GEOFILTER mark for use with graphical overlays for digital photos, and represents that the Complainant’s GEOFILTER mark was already known in the United States and to millions of consumers around the world when the Respondent registered the disputed domain name. The Complainant submits that the Respondent is using the disputed domain name intentionally to attract Internet users to the Respondent’s website for commercial gain by creating a likelihood of confusion with the Complainant’s mark as to source, sponsorship, affiliation or endorsement of the Respondent’s website and content thereon.
Alternatively, the Complainant argues that the sole reason the Respondent registered the disputed domain name was to sell it for a profit. The Complainant observes that the Respondent is trying to sell the disputed domain name for “mid-six figures” and has indicated that the disputed domain name’s worth is driven by the Complainant’s use of its GEOFILTER mark, and by recent publicity concerning a possible initial public stock offering by the Complainant.
(ii) Complainant’s Supplemental Filing
The Complainant disputes the Respondent’s claim to have been developing a mobile application in connection with the disputed domain name for the last two years. According to the Complainant, only two of the Respondent’s twelve annexes referring to the disputed domain name were generated before the filing of the Complainant. The Complainant further asserts there is no evidence that the computer code the Respondent makes reference to was written prior to the filing of the Complaint, and that the only screenshot of the Respondent’s alleged mobile application was taken in April 2017, at the “Medtech Innovator Showcase 2017”.
The Complainant takes issue with the Respondent’s assertion that the term “geofilter” is descriptive of the Complainant’s product or services and not entitled to registration as a mark. According to the Complainant, the USPTO has concluded its examination of the Complainant’s trademark application, and has published the GEOFILTER mark, an indication that the USPTO considers the mark to be distinctive and entitled to registration. The Complainant predicts that any opposition to the Complainant’s mark maintained by the Respondent will fail because the Respondent cannot demonstrate prior rights in the disputed domain name.
The Complainant contends that the Respondent’s efforts to sell the disputed domain name for a “massive sum” belies any claim that the Respondent intends to launch a new software application. The Complainant submits that a communication sent by the Respondent to the Complainant on May 8, 2017, demonstrates that the Respondent has no legitimate interest in using the disputed domain name with a software application. To the contrary, the Complainant contends that the Respondent registered the disputed domain name in bad faith following the Complainant’s launch of its Geofilter product, to attempt to sell the disputed domain name to the Complainant at an exorbitant price.
The Respondent asserts that the Complainant did not create the word “geofilter”, which the Respondent maintains is a term that had been in use for many years prior to the Complainant’s alleged first use in July 2014. According to the Respondent, the term “geofilters” is a widely used descriptive term related to geographically filtered content (including images), in use since 2005 and long before the Complainant’s first use. The Respondent maintains that the Complainant has no trademark rights in “geofilter”, and that the Respondent intends to file an opposition to the Complainant’s registration of GEOFILTER.
The Respondent explains that the disputed domain name was registered for use in connection with a smartphone app and web service being developed by Paul and Tracy Grand (the “Grands”). The Respondent argues that the documents submitted by the Complainant reflect the descriptive use of the term “geofilter” in the computer and smartphone industry, and undercut the Complainant’s assertion of exclusive rights. The Respondent cites to webpages from iTunes, Photofy, TechCrunch, The Verge, and Shemazing as depicting the descriptive use of “geofilter” as a filtering tool used by Instagram, Facebook and other companies. The Respondent also cites articles discussing the Complainant’s recent acquisition from Mobli (for USD 7.7 million) of a “geofilter” patent related to “localized filters” and “photo filters”.
According to the Respondent, as early as 2005 computer graphic developers at the Georgia Institute of Technology used “GeoFilter” to describe technology for enhancing images and computer graphics. Additionally, the Respondent relates that Iorhythm, Inc. filed a United States Patent Application in January 2007 for a “geofilter” that describes a method for processing information to enable use of geographic identifiers. The Respondent also points to other patents filed between 2012 and 2014 that use the term “geo-filter” in connection with the filtering of content related to geographic locations, including providing location-relevant information programming to handheld devices.
In light of the foregoing, the Respondent submits that the Complainant cannot claim common law rights to the word “geofilter”. The Respondent asserts that consumers do not recognize the word “geofilter” as an indicator of source, but rather as a tool, and that the Complainant also uses “geofilter” in a descriptive manner on its website when urging artists and designers to create and submit geofilters for their city, university, local landmarks or other public locations, citing “www.snapchat.com/geofilters”.
The Respondent asserts rights and legitimate interests in the disputed domain name. The Respondent maintains that the disputed domain name was acquired after the Grands had a discussion with their teenage daughters in June 2014 about geotagging ideas for iPhone camera apps. The Respondent represents that the disputed domain name was chosen because it was a descriptive term for geotagged filters, and also explains that more than 100 domain names registered in the Respondent’s portfolio largely were selected based on their descriptive qualities.
The Respondent insists the disputed domain name was registered and is being used in good faith. The Respondent represents that efforts to develop a software code and build a geofilter app began in 2015, before receipt of any notice from the Complainant. The Respondent reiterates that the disputed domain name was acquired as a descriptive term for a geo-filtered app platform, asserts that the Complainant does not have trademark rights in “geofilter”, and argues that the Complainant has no right to the disputed domain name.
The Respondent denies soliciting the Complainant to buy the disputed domain name, noting that it was the Complainant who, using an agent to avoid identification, initiated the inquiry for the sale of the disputed domain name. The Respondent asserts that the Complainant’s only purpose in making this inquiry was to manufacture “sale” evidence that the Complainant could use in a UDRP proceeding. According to the Respondent, various offers for the disputed domain name had been received since its registration, but it was not until being contacted by three additional solicitors on October 5, 2016, which included the Complainant, that any serious consideration was given to selling the disputed domain name. The Respondent describes the “mid-six figure” price response as an exploratory response, and not an offer for sale.
(ii) Respondent’s Supplemental Filing
The Respondent maintains that the Complainant withheld from the Panel relevant information showing the descriptive and generic use of the term “geofilter”. The Respondent observes that the USPTO previously refused a prior applicant’s attempt to register “Geofilter” as being merely descriptive when used in connection with software that adds a filter or picture to a photograph based on a geographic location. The Respondent notes that the USPTO cited multiple users of the term “geofilter” in a descriptive context.
The Respondent dismisses as “wholly false” the Complainant’s assertion that the Respondent’s software application was developed only after the Complaint was filed. The Respondent maintains that photographs created by the Respondent’s geofilters app are clearly date-stamped in May 2015. The Respondent adamantly denies that the geofilter app is pretextual or was developed only after the Complaint was filed.
The Respondent contends that the Complainant has sought to use acquisition or settlement discussions in to disparage and impugn the Respondent, and asserts that the Complainant’s disclosure of confidential settlement communications between the parties is improper but also reflects the bullying of the Respondent by the Complainant and its legal counsel. The Respondent dismisses the Complainant’s claim that the Respondent demanded a “massive sum” for the disputed domain name.
6. Discussion and Findings
A. Scope of the Policy
The Policy is addressed to resolving disputes concerning allegations of abusive domain name registration and use. Milwaukee Electric Tool Corporation v. Bay Verte Machinery, Inc. d/b/a The Power Tool Store, WIPO Case No. D2002-0774. Accordingly, the jurisdiction of this Panel is limited to providing a remedy in cases of “the abusive registration of domain names”, also known as “cybersquatting”. Weber-Stephen Products Co. v. Armitage Hardware, WIPO Case No. D2000-0187. See Final Report of the WIPO Internet Domain Name Process, April 30, 1999, paragraphs 169 and 170.
Paragraph 15(a) of the Rules provides that the Panel shall decide a complaint on the basis of statements and documents submitted and in accordance with the Policy, the Rules and any other rules or principles of law that the Panel deems applicable.
Paragraph 4(a) of the Policy requires that the complainant prove each of the following three elements to obtain a decision that a domain name should be either cancelled or transferred:
(i) The domain name registered is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) The respondent has no rights or legitimate interests with respect to the domain name; and
(iii) The domain name has been registered and is being used in bad faith.
Cancellation or transfer of the domain name are the sole remedies provided to the complainant under the Policy, as set forth in paragraph 4(i).
Paragraph 4(b) of the Policy sets forth four situations under which the registration and use of a domain name is deemed to be in bad faith, but does not limit a finding of bad faith to only these situations.
Paragraph 4(c) of the Policy in turn identifies three means through which a respondent may establish rights or legitimate interests in a domain name. Although the complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, UDRP panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is primarily if not exclusively within the knowledge of the respondent. Thus, the consensus view is that paragraph 4(c) of the Policy shifts the burden of production to the respondent to come forward with evidence of a right or legitimate interest in the domain name, once the complainant has made a prima facie showing. See, e.g., Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270.
B. Identical or Confusingly Similar
The Panel initially addresses whether the Complainant has established trademark or service mark rights in GEOFILTER. The term “trademark or service mark” as used in paragraph 4(a)(i) of the Policy encompasses both registered marks and common law marks. See, e.g., The British Broadcasting Corporation v. Jaime Renteria, WIPO Case No. D2000-0050; United Artists Theatre Circuit, Inc. v. Domains for Sale Inc., WIPO Case No. D2002-0005; The Professional Golfers’ Association of America v. Golf Fitness Inc., a/k/a Golf Fitness Association, WIPO Case No. D2001-0218.
The Complainant does not currently own a trademark registration for GEOFILTER. Consequently, the Complainant presently must rely on common law rights. To establish protectable trademark or service mark rights in GEOFILTER, the Complainant must establish that secondary meaning has been developed, which occurs when, “in the minds of the public, the primary significance of a [mark] is to identify the source of the product rather than the product itself.” Wal-Mart Stores, Inc. v. Samara Brothers, Inc., 529 U.S. 205, 211 (2000) (quoting Inwood Laboratories, Inc. v. Ives Laboratories, Inc., 456 U.S. 844, 851 n.11 (1982)).
Generally speaking, relevant evidence demonstrating secondary meaning includes factors such as (i) the duration and nature of use of the mark, (ii) the amount of sales under the mark, (iii) the nature and extent of advertising using the mark, (iv) the degree of actual public (e.g., consumer, industry, media) recognition, and (v) consumer surveys. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Jurisdictional Overview 3.0”), paragraph 1.3. In cases involving unregistered or common law marks that are comprised of descriptive terms that are not inherently distinctive, there is a greater onus on the complainant to present evidence of secondary meaning. Id.
It is the Complainant’s burden to demonstrate unregistered or common law trademark or service mark rights in GEOFILTER. The Panel concludes that the Complainant has failed to meet this burden. On the basis of the record, the Panel considers the Complainant’s applied-for GEOFILTER mark to be descriptive in relation to the Complainant’s product. The term “Geofilter” as used refers to software that adds a filter or picture to a photograph based on a geographic location. The Complainant has provided little or no evidence regarding the nature of extent of the use of “Geofilter” as a mark, sales or advertising using the mark, public recognition of “Geofilter” as an indicator of source, or consumer surveys evidencing secondary meaning. The examples of media recognition provided by the Complainant appear to focus primarily on the features of the product. Nor is the Complainant’s use of “Geofilter” exclusive; the record before the Panel reflects other descriptive third-party usages of “geofilter” as well. In the final analysis, the Complainant has failed to show that the consuming public has come to recognize “Geofilter” as an indicator of the source of the product rather than the product itself.
In view of the foregoing, the Panel concludes that the Complainant has not satisfied its burden under paragraph 4(a)(i) of the Policy.
C. Rights or Legitimate Interests
In view of the Panel’s determination above under paragraph 4(a)(i) of the Policy, it is unnecessary for the Panel to address the issue of the Respondent’s rights or legitimate interests with respect to the disputed domain name under paragraph 4(a)(ii) of the Policy.
D. Registered and Used in Bad Faith
In view of the Panel’s determination above under paragraph 4(a)(i) of the Policy, it is unnecessary for the Panel to address issues of bad faith registration and use of the disputed domain name under paragraph 4(a)(iii) of the Policy.
For the foregoing reasons, the Complaint is denied.
William R. Towns
Christopher S. Gibson
M. Scott Donahey
Date: June 2, 2017
1 The period within which to file an opposition has been extended to August 16, 2017.