The Complainant is WhatsApp Inc. of Santa Clara, California, United States of America, represented by IP Legal Advisors P.C., United States of America.
The Respondents are Private Whois , Private Whois and Private Whois of Nassau, the Bahamas. 2. The Domain Names and Registrar
The disputed domain names , and are registered with I Corp. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 29, 2012. On March 30, 2012, the Center transmitted by email to I Corp. a request for registrar verification in connection with the disputed domain names. On April 2, 2012, I Corp. transmitted by email to the Center its verification response confirming that the Respondents are listed as the registrants and providing the contact details for the disputed domain names.
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(a) and 4(a), the Center formally notified the Respondents of the Complaint, and the proceedings commenced on April 12, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was May 2, 2012. The Respondents did not submit any response. Accordingly, the Center notified the Respondents’ default on May 3, 2012.
The Center appointed Andrew F. Christie as the sole panelist in this matter on May 8, 2012. 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.
On May 22, 2012, the Panel issued Procedural Order No. 1, in which the Center was requested to re-notify the Complaint using certain email addresses listed in the WhoIs data for the disputed domain names, and extending to June 11, 2012, the due date for filing a Response. On May 27, 2012, I Corp. forwarded to the Center two emails from “Christian Kneller” enquiring of I Corp about the process under the Policy and in particular how to “surrender the domain name”. No formal Response was filed by the extended due date. 4. Factual Background
The Complainant is a mobile application provider. Its mobile application, provided under the trademark WHATSAPP, has been downloaded by millions of mobile phone users around the world and used to send more than 1 billion messages per day. The Complainant is the owner of four trademark registrations for the trademark WHATSAPP, the earliest of which was registered in the United States of America on April 5, 2011, with a statement claiming first use in commerce on February 24, 2009.
The disputed domain names and were registered on August 15, 2011, and the disputed domain name was registered on September 21, 2011. At the time of commencement of the Complaint, the disputed domain name resolved to a parking page website containing links to other websites concerning a range of goods and services, some of which relate to the mobile phone industry. It appears that the other two disputed domain names do not resolve to any websites. 5. Parties’ Contentions A. Complainant
The Complainant contends that the disputed domain names are confusingly similar to its WHATSAPP trademark because each comprises the WHATSAPP trademark together with one of the marks ANDROID, IPHONE and IPAD (which are owned by Google Inc. and Apple Inc., respectively). The addition of the well-known mark of a third party is not sufficient to distinguish the disputed domain names from the Complainant’s trademark. Furthermore, the addition of one of the marks ANDROID, IPAD and IPHONE, which are closely associated with the business of the Complainant, increases the likelihood of confusion between the Complainant’s trademark and the disputed domain names. The Complainant notes that the Rules do not preclude it from requesting the transfer of the disputed domain names even though they incorporate a third-party mark.
The Complainant contends that the Respondents have no rights or legitimate interests in respect of the disputed domain names because: (i) the Respondents are not known by the name “WhatsApp”, and are not making a bona fide offering of goods or services using that name; (ii) the Respondents are diverting, for the Respondents’ commercial gain, Internet users to websites containing advertisements, and thereby away from the Complainant’s website; (iii) the Complainant, after due diligence, cannot find evidence of the Respondents’ use of, or demonstrable preparation to use, the disputed domain names or a name corresponding to them in connection with a bona fide offering of services; and (iv) the Complainant, after due diligence, cannot find evidence that the Respondents have been commonly known by the disputed domain names.
The Complainant contends that the Respondents have registered and are using the disputed domain names in bad faith because: (i) the Respondents are using the disputed domain names to attract Internet users to the Respondents’ websites for commercial gain by creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation, and endorsement of the Respondents’ websites; and (ii) WHATSAPP is an arbitrary trademark and it cannot be argued that the Respondents registered the disputed domain names with any intent other than to capitalize on the notoriety of the Complainant’s trademark. B. Respondent
The Respondents did not reply to the Complainant’s contentions. 6. Procedural Issue: Consolidation of Multiple Domain Names
Pursuant to paragraph 3(c) of the Rules, a single complaint may be brought in respect of multiple domain names “provided that the domain names are registered by the same domain-name holder”. As explained by this Panel in Kimberly-Clark Corporation v. N/A, Po Seer and N/A, Hu Lim,WIPO Case No. D2009-1345, the use of the phrase “domain-name holder” rather than “domain-name registrant” in the Rules indicates that the holder of a disputed domain name may be someone other than the apparent registrant of it – and, in particular, includes the underlying registrant of a privacy or proxy service registration, an entity that controls the operation of the registrant of record, and an entity that has adopted an alias for the name of the registrant of record. The common feature of these various situations is that, while the registrant of record has apparent control over a disputed domain name, some other person has practical control over the disputed domain name. As explained by this Panel in the Kimberly-Clark case, for the purpose of determining if a single complaint has been properly brought in respect of multiple domain names, a “holder” of a disputed domain name is any person who has such an interest in the disputed domain name that provides it with apparent or actual control over the disputed domain name. It follows that a single complaint will be properly brought in respect of multiple domain names where there is a common person holding an interest in those domain names. Other panels deciding cases under the Policy have adopted a similar approach to this issue – see, e.g., Speedo Holdings B.V. v. Programmer, Miss Kathy Beckerson, John Smitt, Matthew Simmons,WIPO Case No. D2010-0281 (consolidation permitted where “common control is being exercised over the disputed domain names or the websites to which they resolve”).
Applying this principle to the facts of this case, this Panel finds that there is a common person holding an interest in the disputed domain names. The Registrar has provided evidence showing that all three disputed domain names have the same contact details of address and telephone number. This evidence, together with the fact that the Respondents did not contest this assertion, persuades this Panel that there is a single entity that has practical control over the disputed domain names – that being the entity for whom the names of the registrants of record are aliases. Accordingly, this Panel finds that this single Complaint is properly brought against each of the disputed domain names, despite the fact that the registrant of record for each disputed domain name is different. 7. Procedural Issue: Transfer of Domain Name containing a Third Party’s Trademark
The Complainant acknowledges that each of the disputed domain names contains, in addition to the Complainant’s trademark, a trademark owned by a third party (being either Google Inc. or Apple Inc.). This fact raises the important procedural issue of whether, in the event the Complaint is successful, there is any impediment to ordering the remedy sought by the Complainant – being, transfer of the disputed domain names to the Complainant.
There have been a number of previous cases brought under the Policy in relation to domain names containing a third-party’s trademark. In a small number of these cases, the panel has refused to order the Complainant’s requested remedy of transfer because of the existence of a third party’s trademark in the disputed domain name. In Nokia Group. v. Mr. Giannattasio Mario,WIPO Case No. D2002-0782, the panel denied the requested remedy, reasoning that there could be no confusingly similarity between the disputed domain name and the complainant’s trademark in the absence of the third party jointly filing the complaint with the complainant, providing a letter of support for the complainant’s action, or participating in a proposed or completed merger with the complainant. The panel in Yahoo! Inc. and Overture Services, Inc. v. Registrant (187640), a/k/a Gary Lam, a/k/a Birgit Klosterman, a/k/a XC2, a/k/a Robert Chua, a/k/a Registrant,WIPO Case No. D2004-0896, took a different approach. Noting that “the remedy in a proceeding is a matter for the Panel’s discretion”, the panel in that case ordered cancellation of the domain name on the basis that this was “the only fair remedy” in the situation. Cancellation was also ordered in Dr. Ing. h.c. F. Porsche AG v. Automotive Parts Solutions,WIPO Case No. D2003-0725 – although it is to be noted that this was the remedy requested by the complainant in that case.
In the substantial majority of UDRP decisions dealing with this issue, however, the panel has been prepared to order the complainant’s requested remedy of transfer. In a number of these cases, the complainant and the third party were contemplating merger, and this fact was noted by the panel in justification for the order of transfer – see, e.g., Chevron Corporation v. Young Wook Kim,WIPO Case No. D2001-1142. In other cases, an example of which is Pfizer, Inc. v. Martin Marketing,WIPO Case No. D2002-0793, the complainant filed evidence establishing that the third party consented to the disputed domain name being transferred to the complainant in the event of the complaint succeeding. Nevertheless, there have been a number of cases where transfer has been ordered despite the third party neither contemplating merger with the complainant nor indicating its consent to the order – see, e.g., Minnesota Mining and Manufacturing Company v. Belowcost,WIPO Case No. D2001-0420; and F. Hoffmann-La Roche AG v. Bob,WIPO Case No. D2006-0751.
This Panel is of the view that there is no basis in principle or in practice for denying a complainant the remedy of transfer merely because the disputed domain name contains, in addition to the complainant’s trademark, a trademark owned by a third party. Neither the Policy nor the Rules contains a provision that precludes the grant of the transfer remedy in this situation. Furthermore, neither the Policy nor the Rules contains a provision that precludes the third party from bringing an action under the Policy, or under any other applicable law, against the complainant in whose favor an order of transfer is made, in the event that the third party considers the complainant’s holding of the domain name to be in violation of the Policy. Thus, a UDRP panel need not be concerned that an order of transfer of a domain name will immunize the complainant from further action in relation to that domain name. The panel in Minnesota Mining and Manufacturing Company v. Belowcost,WIPO Case No. D2000-0420, felt it desirable to state “the order of transfer is not intended to sanction use of the mark by Complainant or to indicate any preference between Complainant and the third-party as to the use of the domain name at issue”. This Panel believes that it is not necessary to expressly include such a proviso in an order of transfer, because that intention is implicit in every panel decision made in this situation.
For the above reasons, this Panel sees no reason not to make the requested order of transfer of the disputed domain names to the Complainant in the event that its case under the three requirements of the Policy is established. 8. Discussion and Findings A. Identical or Confusingly Similar
Each of the disputed domain names incorporates the whole of the Complainant’s trademark WHATSAPP, and adds one of the words “android”, “ipad” or “iphone”. The addition of these words does not lessen to this Panel the inevitable confusion of each of the disputed domain names with the Complainant’s trademark. This is especially so given that these terms are used by third parties in relation to goods or services connected with the services in respect of which the Complainant uses its trademark. (The fact that these terms are also trademarks of those third parties does not, of itself, preclude a finding of confusing similarity – see Hoffmann-La Roche Inc. v. #1 Viagra Propecia Xenical & More Online Pharmacy,WIPO Case No. D2003-0793, and the cases referred to therein.) Accordingly, this Panel finds that each of the disputed domain names is confusingly similar to a trademark in which the Complainant has rights. B. Rights or Legitimate Interests
The Respondents are not licensees of, or otherwise affiliated with, the Complainant, and have not been authorized by the Complainant to use its WHATSAPP trademark. The Respondents have not provided any evidence that they have been commonly known by, or have made a bona fide use of, the disputed domain names, or that they have, for any other reason, rights or legitimate interests in the disputed domain names. Each of the disputed domain names was registered after the Complainant’s first use and filing for registration of the trademark in respect of which the disputed domain names are confusingly similar. It appears that two of the disputed domain names, and , do not resolve to any websites while the third one, , resolves to a website concerning a range of goods and services, some of which relate to the mobile phone industry. According to the present record, none of the disputed domain names are being used in connection with a bona fide offering of goods and services, or for a legitimate noncommercial or fair use. Accordingly, this Panel finds that the Respondents have no rights or legitimate interests in any of the disputed domain names. C. Registered and Used in Bad Faith
The evidence on the record provided by the Complainant with respect to the use of its trademark, combined with the absence of any evidence provided by the Respondents to the contrary, is sufficient to satisfy this Panel that the Respondents both knew of the Complainant’s trademark at the time of registration of the disputed domain names, and knew that they had no rights or legitimate interests in the disputed domain names. According to the present record, one of the disputed domain names, , has been used to attract, for commercial gain, Internet users to a website by creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation or endorsement of that website. The two of the disputed domain names, and , do not appear to have been actively used. Nevertheless, as this Panel explained in Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003, a finding of registration and use in bad faith can be made in respect of a passively held domain name where all the circumstances of the case indicate that the respondent is acting in bad faith. The circumstances of this case, which include the Respondents’ concealment of their true identity and their failure to respond to the Complainant’s assertions, are such as to persuade this Panel that each of the disputed domain names has been registered and is being used in bad faith. 9. 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.
Andrew F. Christie
Sole Panelist
Dated: June 18, 2012
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