Complainant is WhatsApp Inc. of Mountain View, United States of America, represented by Fenwick & West, LLP, United States of America.
Respondent is Francisco Costa of São Paulo, Brazil. 2. The Domain Name and Registrar
The disputed domain name (the “Disputed Domain Name”) is registered with Key-Systems GmbH dba (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 29, 2015. On May 29, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On May 29, 2015, the Registrar transmitted by email to the Center its verification response confirming that 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(a) and 4(a), the Center formally notified Respondent of the Complaint, and the proceedings commenced on June 4, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was June 24, 2015. Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 25, 2015.
The Center appointed Nathalie Dreyfus as the sole panelist in this matter on July 2, 2015. 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
Complainant is WhatsApp Inc., a Delaware corporation located in Mountain View, California.
Complainant is the owner of the “WhatsApp” sign, created in 2009, and used to designate a well-known mobile messaging application offering exchange of messages via smartphones using Internet data.
The “WhatsApp” sign is the subject of several trademark registrations all over the world, including the international trademark WHATSAPP (No. 1085539) registered on May 24, 2011.
In particular, Complainant has filed the trademark WHATSAPP in Brazil on May 26, 2011, which was later registered on October 14, 2014 under the Registration No. 831031522.
Complainant is also the owner of the domain name , resolving to a website offering users to send and receive WhatsApp messages directly on their computers.
Respondent is the owner of the Disputed Domain Name , registered on October 16, 2012 with the Registrar.
The Disputed Domain Name resolves to a website offering services connected to Complainant’s trademark and messaging services, and allowing users to send and receive WhatsApp messages from their computers.
Complainant sent three cease-and-desist letters to Respondent between June 17, 2013 and February 23, 2015, notifying Complainant’s rights and requesting the transfer of the Disputed Domain Name. Respondent never replied to these letters. 5. Parties’ Contentions A. Complainant
Complainant requests that the Disputed Domain Name be transferred to its benefit as all the three conditions of paragraph 4(a) of the Policy are fulfilled.
Indeed, Complainant contends that the Disputed Domain Name is confusingly similar to Complainant’s WHATSAPP trademark as it entirely incorporates the “WhatsApp” sign, merely adding the generic term “web”, which doesn’t prevent any likelihood of confusion.
Further, Complainant contends that Respondent has no rights or legitimate interests in the Disputed Domain Name, and should have known about Complainant’s well-known WHATSAPP trademark, which is widely used all over the world.
Finally, Complainant contends that Respondent has registered and is using the Disputed Domain Name in bad faith considering the reference to Complainant’s WHATSAPP trademark and services that is made on the website to which the Disputed Domain Name resolves. B. Respondent
Respondent did not reply to Complainant’s contentions, and is therefore in default. 6. Discussion and Findings
In order to obtain the transfer of the Disputed Domain Name, Complainant should, according to paragraph 4(a) of the Policy, prove all the following three elements:
(i) The Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights;
(ii) Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and
(iii) The Disputed Domain Name has been registered and is being used in bad faith.
Moreover, paragraph 14 of the Rules addresses the principles to be used in case of default:
“(a) In the event that a Party, in the absence of exceptional circumstances, does not comply with any of the time periods established by these Rules or the Panel, the Panel shall proceed to a decision on the complaint.
(b) If a Party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under, these Rules or any request from the Panel, the Panel shall draw such inferences therefrom as it considers appropriate.”
Consequently, failure on the part of Respondent to file a response to the Complaint permits an inference that Complainant’s reasonable allegations are true. It may also permit the Panel to infer that Respondent doesn’t deny the facts that Complainant asserts (see Harrods Limited v. Harrod’s Closet,WIPO Case No. D2001-1027; see also Talk City, Inc. v. Michael Robertson,WIPO Case No. D2000-0009). A. Identical or Confusingly Similar
Complainant contends that the Disputed Domain Name is confusingly similar to its WHATSAPP trademark pursuant to paragraph 4(a)(i) of the Policy.
Complainant alleges that the Disputed Domain Name is confusingly similar to its WHATSAPP trademark as it entirely incorporates the term “whatsapp”, merely adding the generic term “web”, which is not prima facie distinctive as to distinguish the Disputed Domain Name from Complainant’s trademark (see Simyo GmbH v. Domain Privacy Service FBO Registrant / Ramazan Kayan,WIPO Case No. D2014-2227). On the contrary, the addition of the term “web” to the Disputed Domain Name increases the likelihood of confusion in view of the fact that Complainant offers a web service.
Therefore, considering the aforementioned elements, the Panel finds that the Disputed Domain Name is confusingly similar to the WHATSAPP trademark in which Complainant has rights pursuant to paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
Complainant contends that Respondent has no rights or legitimate interests in the Disputed Domain Name pursuant to paragraph 4(a)(ii) of the Policy.
In case of default of Respondent, Complainant would still bear the burden to prove that Respondent lacks rights or legitimate interests in the Disputed Domain Name (see EAuto, L.L.C. v. Triple S. Auto Parts d/b/a Kung Fu Yea Enterprises, Inc.,WIPO Case No. D2000-0047).
However, because the nature of a registrant’s rights or legitimate interests in the domain name, if any, lies most directly within the registrant’s own knowledge, the consensus view is that this burden is a light one for Complainant who needs only to make a prima facie case on this element (see Education Testing Service v. TOEFL,WIPO Case No. D2000-0044).
Complainant asserts that it has never granted Respondent any authorization to use its WHATSAPP trademark in any way, nor to register the Disputed Domain Name.
Moreover, Respondent has never been commonly known by the Disputed Domain Name or any name containing Complainant’s WHATSAPP trademark pursuant to paragraph 4(c)(ii) of the Policy.
The Disputed Domain Name resolves to a website offering various products and services in connection to Complainant’s WHATSAPP trademark, and even competing with those offered by Complainant in relation to its trademark.
Furthermore, Complainant contends that Respondent is thereby also violating WhatsApp’s Terms of Service in various ways, including copying and misusing the WhatsApp code and circumventing some technical measures created to protect WhatsApp users’ secrecy of correspondence.
It is therefore acknowledged by the Panel that Respondent is not fulfilling paragraph 4(c)(i) of the Policy as Respondent could not validly have demonstrated a use or preparations to use the Disputed Domain Name in connection with a bona fide offering of goods or services.
It has been shown to the Panel that Respondent is only using the Disputed Domain Name in a way to create a likelihood of confusion in the mind of the public as to the source of the products and services offered on its website, and thus to misleadingly attract users to its website at Complainant’s detriment and to benefit from the WHATSAPP trademark’s goodwill.
Therefore, Respondent is not making a legitimate noncommercial or fair use of the Disputed Domain Name without intent for commercial gain to misleadingly divert consumers, as provided under paragraph 4(c)(iii) of the Policy.
In light of all the foregoing elements, the Panel finds that Complainant has succeeded in demonstrating that Respondent has no rights or legitimate interests in the Disputed Domain Name pursuant to paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
Complainant contends that Respondent has registered and is using the Disputed Domain Name in bad faith pursuant to paragraph 4(a)(iii) of the Policy.
Indeed, Complainant recalls that it has widely used the “WhatsApp” sign since 2009, and registered numerous WHATSAPP trademarks all over the world prior to Respondent’s registration of the Disputed Domain Name on October 16, 2012.
The Panel agrees with Complainant that it is likely improbable that Respondent did not know about Complainant’s WHATSAPP trademark at the time it registered the Disputed Domain Name considering the worldwide renown it has acquired amongst mobile applications, and the impressive number of users it has gathered since the launch of the WhatsApp services in 2009 (see Barney’s Inc. v. BNY Bullletin Board,WIPO Case No. D2000-0059).
Respondent should have known about Complainant’s trademark with regards to its notoriety and especially since the WHATSAPP sign and trademarks have been respectively used and registered far prior to Respondent’s registration of the Disputed Domain Name.
This argument is in particular strengthened by the fact that the WHATSAPP trademark’s filing in Brazil, where Respondent is domiciled, also pre-dates the registration of the Disputed Domain Name.
The Panel acknowledges that Respondent is, in light of its use of the Disputed Domain Name as mentioned above, intentionally attempting to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with Complainant’s WHATSAPP trademark as to the source, sponsorship, affiliation or endorsement of its website or of a product of service on its website, which supports evidence of bad faith pursuant to paragraph 4(b)(iv) of the Policy.
Furthermore, Respondent’s use of the Disputed Domain Name, especially considering the apparent reference to Complainant’s WHATSAPP trademark on its website, is for the Panel further evidence of bad faith on its part as proving that it registered the Disputed Domain Name primarily for the purpose of disrupting the business of Complainant pursuant to paragraph 4(b)(iii) of the Policy.
Finally, Respondent has never replied to any of the cease-and-desist letters sent by Complainant requesting the transfer of the Disputed Domain Name on the grounds of Complainant’s rights in the WHATSAPP trademark, which is considered another evidence of bad faith on Respondent’s behalf (see Encyclopedia Britannica v. Zuccarini,WIPO Case No. D2000-0330).
Therefore, considering all the aforementioned elements, the Panel finds that Respondent has registered and is using the Disputed Domain Name in bad faith pursuant to paragraph 4(a)(iii) of the Policy. 7. 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 Name be transferred to Complainant.
Nathalie Dreyfus
Sole Panelist
Date: July 15, 2015
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