These are all issues that this post will attempt to tackle (and tie together with a nice pretty bow). But first, let’s take a little stroll down Internet 101 lane.
The Internet has become an invaluable tool that many lean on to share information, engage with others, and improve their daily lives. Pulsating data streams flowing out of I.P. addresses build resource and support networks, helping people literally improve their lives. These aren’t platitudes, trust me. I think we can all speak from experience on this one and arrive at the same conclusion: in a World where people actively seek explanations and validation, the worldwide web is our lifeblood. And how do we navigate this lifeblood and determine, from the great cacophony of noise, what is legitimate and what isn’t? Links, searches, “likes”, content shares (which are forms of linking), and hash tags; all are filtered and validated a la our own B.S. indicators which have been so finely sharpened by our years of experience navigating the Internet.
Domain names of course have tremendous marketing value to the underlying owner. Nowadays, it is pretty common for a business to simply advertise by listing their domain name (and no other identifying information such as a phone number or office location). The rationale is that a domain name is easier to remember than a long slew of digits. A domain name is often an extension of the brand, leading consumers to the online face of the brand owner. The domain name may be part of a broader online identity for the trademark owner that includes social media, YouTube channels, and blogs.
Ideally, the brand name used across each online identity will be constant and match the identity used by the owner in their brick-and-mortar operations. With each iteration of the brand name across different online identities, the brand owner pads the goodwill for the brand, much like adding successive coats of paint to a wall, each coat contributing to a richer color. Add it all up over years and years of use and you get a multi-million dollar brand, the stuff that billion dollar IPO’s are built on. After all, how else do you think SnapChat got its $10 valuation last year?
Well the brand name wasn’t entirely the reason for that valuation, but it was at least a contributing factor. Snapchat is the baseline brand for the company. So having another company out there that is using the Snapchat name in a domain name should raise the ire of those responsible for protecting the Snapchat brand. Consumers could be confused about the affiliation between a third party and Snapchat if the third party is simply allowed to use the brand however it wishes. The third party is essentially free-riding on all the millions of dollars and years of hard work that went into developing the Snapchat name. All of this is no bueño for the third party.
That is, unless the third party was using the name in a permissible way, and not to free ride on the brand. Companies that do find themselves in a situation where somebody else has used their trademark in a domain name have a relatively quick and low-cost means for forcing a registrar to turn that domain name over: the uniform domain name dispute resolution policy, or UDRP. A UDRP is an arbitral proceeding (i.e. not held in a courtroom before judges) where the trademark owner submits arguments that some third party is taking unfair advantage of the trademark owners’ rights. In a UDRP, the trademark owner generally has to demonstrate that the person who registered the domain name knew about the trademark owners’ trademark, does not have any legitimate reason for using a domain name that includes the trademark owners’ mark, and simply registered the domain name in a bid to profit commercially in some way from the trademark.
In this case, the third party (which was really just a concerned Snapchat user who was worried about warning other users of the 2013 databreach) advertised its website as a tool for users to check and see if their personal information had been compromised in the breach. In addition to using the mark Snapchat in the domain name (www.snapchatcheck.com), the website also used Snapchat’s ghost icon. Snapchat argued that all of these activities took unfair advantage of its trademarks and made a commercial use of Snapchat’s strong trademarks in an apparent attempt to profit off of the trademarks.
This argument only works if the shapchatcheck.com was, you know, actually using the Snapchat name commercially. But what does “commercial” mean exactly? Does it mean that someone registered a domain name that includes a prominent trademark with the sole purpose of selling it back to the trademark owner? Yes. Does it mean registering a domain name that includes a prominent trademark to drive traffic to the webpage, using the domain name to sell large volumes of products or collect clicks on AdWord ads? Yes. Does it mean registering a domain name that includes a prominent trademark without getting the trademark owners’ permission, even if you plan on selling some product or service made by the trademark owner? Sometimes.
The thing with snapchatcheck.com is that it wasn’t doing any of this. Indeed, its only purpose was to allow fellow Snapchat members to enter some basic information about their Snapchat profile and find out if their account was compromised. That’s it. No catches; no subscription fees; no commercial gain to the underlying website owner. Yes there was a link to the owners’ main website (an internet technology company) and this kind of sounds like something that takes unfair advantage of the Snapchat trademark because lots of traffic to a particular page could result in a large number of people going to the owners’ main website, ostensibly resulting in more business for that company. But apparently that wasn’t enough to tip the scales towards a commercial use, according to the panel that rendered the decision.
When you get down to brass tacks though, what the UDRP process is really concerned with is particularly obvious and bad attempts by other people to take advantage of someone else’s trademark. Maybe a subtle direction to visit another website in the form of a small link on the bottom of the page isn’t enough of a connection between the trademark and a potential source of profit; clearly not in this case. The website is simply offering a courtesy service to Snapchat users, one that is in no way inspired by a clear motive for profit. It is a form of public good, much like a website that serves as a sounding board for disgruntled customers might get away with using the domain name “ihaveacomplaintagainstwalmart.com”. These kinds of websites (referred to in the legal world as “gripe sites”) are allowed based on the rationale that (1) they do not allow their owners to collect profit from the website itself; and (2) Internet users would not be confused into thinking that the website was actually supported by Wal-Mart.
The UDRP panel in the snapchatcheck.com case didn’t find a profit motive or a likelihood that visitors to the site would associate it with Snapchat. In the next post on this topic, we’ll dissect the UDRP decision a little more to see why else snapchatcheck.com was not seen as a commercial, bad-faith use of the Snapchat mark.