Complainant is WhatsApp Inc. of Mountain View, California, United States of America ("US"), represented by Fenwick & West, LLP, US.
Respondent is Francisco Costa of Sao Paulo, Brazil. 2. The Domain Name and Registrar
The disputed domain name is registered with Key-Systems GmbH d/b/a (the "Registrar"). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on September 24, 2015. On September 25, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 25, 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 and 4, the Center formally notified Respondent of the Complaint, and the proceedings commenced on October 13, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was November 2, 2015. Respondent did not submit any response. Accordingly, the Center notified Respondent's default on November 5, 2015.
The Center appointed Stephanie G. Hartung, Rodrigo Azevedo and Manoel J. Pereira Dos Santos as panelists in this matter on November 24, 2015. 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. 4. Factual Background
Complainant is a US corporation under the company name WhatsApp, Inc. with legal domicile in California that runs the communication platform known as "WhatsApp", offering a global messaging service which allows users to exchange all kinds of messages, photos, videos etc. via smartphones for no SMS charges.
Complainant has provided evidence that it is the owner of numerous registered trademarks relating to the term "WhatsApp", inter alia:
- Wordmark WHATSAPP, United States Patent and Trademark Office (USPTO), Registration No. 3939463; Registration Date: April 5, 2011; Status: active.
- Wordmark WHATSAPP, United States Patent and Trademark Office (USPTO), Registration No. 4083272; Registration Date: January 10, 2012; Status: active..
- Wordmark WHATSAPP, World Intellectual Property Office (WIPO), Registration No. 1085539; Registration Date: May 24, 2011; Status: active.
- Wordmark WHATSAPP, Instituto Nacional da Propriedade Industrial (INPI) Brasil, Registration No. 831031522; Registration Date: October 14, 2014; Status: active.
According to the WhoIs record for the disputed domain name, Respondent is domiciled in Brazil.
The disputed domain name was created on June 21, 2015. By the time of the rendering of this decision, it does not resolve to any content on the Internet.
Complainant has submitted copies of pre-Complaint correspondence dated June 17, 2013, September 24, 2013, February 23, 2015 as well as August 3, 2015, addressed to Respondent under the contact information provided for in the WhoIs record for the disputed domain name, in which Complainant requested to cease and desist using first the domain name and later of the disputed domain name . Complainant has filed already on May 29, 2015 a parallel UDRP complaint with the Center relating to the domain name , which has meanwhile been transferred to Complainant as a consequence of the decision rendered in WhatsApp Inc. v. Francisco Costa,WIPO Case No. D2015-0909 on July 15, 2015.
Complainant requests that the disputed domain name be transferred to Complainant. 5. Parties' Contentions A. Complainant
Complainant asserts to have created the name and brand WHATSAPP in 2009 and that the WhatsApp's software application and platform has continued to enjoy extraordinary success worldwide and has attracted significant media coverage ever since (with more than 1 billion downloads on the Android operating system as of March 12, 2015, and more than 800 million monthly active users as of April 17, 2015).
Moreover, Complainant reports that by the time of the drafting of the Complaint, the disputed domain name resolved to a website that featured products and services competing with those offered by Complainant, first under the heading "WebWhatsA", and lately under the heading "WebW", both times subtitled: "Your Web Interface To WhatsApp".
Complainant suggests that the disputed domain name is nearly identical or confusingly similar to Complainant's WHATSAPP trademark since (1) the disputed domain name is an intentional misspelling of WHATSAPP, one which creates the same commercial impression, (2) WHATSAPP and "wazzup" are both a play-off of the phrase "What's Up" and, therefore, have a similar meaning, (3) the disputed domain name is phonetically similar to the WHATSAPP trademark, as there are various ways that both WHATSAPP and "wazzup" may be pronounced as they are not plain English words, and (4) adding the generic or highly descriptive term "web" to an intentional misspelling of the WHATSAPP trademark may not avoid a likelihood of confusion.
Complainant further claims that Respondent has no rights or legitimate interests in respect of the disputed domain name since (1) Complainant has not authorized or licensed Respondent to use any of its trademarks in any way, particularly not as a domain name that encompasses an intentional misspelling of Complainant's famous WHATSAPP trademark, (2) the disputed domain name resolved to a website featuring products and services that compete with those offered by Complainant which constitutes neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the disputed domain name, and (3) Respondent is not commonly known by the name or nickname of the disputed domain name or any name containing Complainant's WHATSAPP trademark.
Finally, Complainant argues that the disputed domain name was registered and is being used in bad faith by Respondent since (1) Respondent was well aware of Complainant's WHATSAPP trademark prior to registration of the disputed domain name which is especially evidenced by the parallel UDRP proceeding WhatsApp Inc. v. Francisco Costa, supra, in which Respondent was as well found to have used the disputed domain name in bad faith, (2) using the disputed domain name to resolve to a website that offers products and services competing with those of Complainant is indicative of Respondent's intention to disrupt Complainant's business and to attract Internet users to Respondent's own website for commercial gain, and (3) Respondent has failed to respond to any of Complainant's attempts to settle this matter amicably before the filing of this Complaint. B. Respondent
Respondent did not reply to Complainant's contentions. 6. Discussion and Findings
Under paragraph 4(a) of the Policy, Complainant carries the burden of proving:
(i) that the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) that Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) that the disputed domain name has been registered and is being used in bad faith.
Respondent's default in the case at hand does not automatically result in a decision in favor of Complainant, however, paragraph 5(e) of the Rules provides that if Respondent does not submit a response, in the absence of special circumstances, the Panel is to decide the dispute solely based upon the Complaint. A. Identical or Confusingly Similar
The Panel concludes that the disputed domain name is confusingly similar to the WHATSAPP trademark in which Complainant has shown to have rights.
It has become a consensus view among panelists (see, WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0"), paragraph 1.2) that the application of the confusing similarity test under the UDRP would typically involve a straight forward visual or oral comparison of the concerned trademark with the alphanumeric string in the disputed domain name and that the test is satisfied if the relevant trademark would generally be recognizable as such therein. By the same time, the content of a website under the disputed domain name would usually be disregarded in the threshold assessment of risk of confusing similarity under the first element of the UDRP.
Complainant's WHATSAPP trademark is a play-off or modification of the English phrase "What's Up" and is composed of the two terms "Whats" and "App" (as an abbreviation of "application"). The disputed domain name is a modification of the "What's up" phrase, too, that is composed of the three terms "Web", "Wazz" and "Up". The Panel notes that despite of the visual differences arising from the variations in the spelling of the WHATSAPP trademark and the disputed domain name, there are still significant phonetic similarities to be found arising from a similar pronunciation, namely: (1) phonetic identity of the terms "Whats" and "Wazz", (2) phonetic similarity of the terms "App" and "Up", and (3) same order of the terms "Whats" and "App" versus the terms "Wazz" and "Up", both meant to play-off the phrase "Whats Up". Many UDRP panels have recognized that phonetic similarity is decisive for the finding of confusing similarity under the first element of the UDRP, especially in situations where a consumer might unintentionally type in the disputed domain name instead of the trademark term, particularly having regard to imperfect recollection and the potential for persons using the Internet to guess at domain names (see, e.g., Grundfos Holding A/S v. PrivacyP / Incredible SEO Mehul (Sailesh Patel/Ajay Soni),WIPO Case No. D2011-1355; Sierra Health Styles LLC v. Modern Limited-Cayman Web Development,WIPO Case No. D2006-0020).
The Panel agrees with the principle approach that the confusing similarity test under the UDRP is not of similarity between businesses or websites which is why, as a general rule, "the content of a website (whether it is similar or different to the business of a trademark owner)" is irrelevant in the finding of confusing similarity (WIPO Overview 2.0, paragraph 1.2). Looking at the case at hand, however, it is important to notice that Complainant has pointed to the existence of a parallel UDRP proceeding WhatsApp Inc. v. Francisco Costa, supra, in which Respondent used the domain name , apparently to resolve to the same website to which the disputed domain name redirected by the time of the drafting of the Complaint filed in the case at hand. In said parallel proceeding, the panel had no difficulties in finding a confusing similarity between Complainant's WHATSAPP trademark and the domain name . Comparing the domain name and the disputed domain name , and also taking into account that both domain names were used to run the same website offering products and services in competition with those of Complainant, it becomes pretty evident that also the disputed domain name is directly pointing to Complainant's WHATSAPP trademark.
Against this particular background, the Panel indeed accepts to take knowledge in the case at hand of the content of the website under the disputed domain name as a confirmation of the finding that the disputed domain name has been set up in order to be confusingly similar and that it will be perceived as such by the relevant Internet users.
The fact that the term "wazzup" in the disputed domain name is preceded by the prefix "web" is not in contrast to the finding of a confusing similarity with Complainant's WHATSAPP trademark. It has been held in numerous UDRP decisions and has also become a consensus view among panelists (see WIPO Overview 2.0, paragraph 1.9) that the addition of a generic or descriptive term or geographical wording to a trademark in a domain name is normally insufficient in itself to avoid the finding of confusing similarity under the first element of the UDRP. Accordingly, the mere addition of the generic and descriptive term "web" (as an abbreviation of "world wide web") is not at all capable to dispel the confusing similarity arising from the various phonetic equivalences between Complainant's trademark and the term "wazzup" in the disputed domain name.
As a result, the Panel holds that Complainant has in fact met the burden of the threshold confusing similarity test under the UDRP with sort of a "helping hand" by Respondent (see, RapidShare AG and Christian Schmidt v. majeed randi,WIPO Case No. D2010-1089).
Therefore, the first element under the Policy set forth in paragraph 4(a)(i) in the case at hand is fulfilled. B. Rights or Legitimate Interests
The Panel is further convinced that on the basis of Complainant's undisputed contentions, Respondent apparently has neither made use of the disputed domain name in connection with a bona fide offering of goods or services, nor has Respondent been commonly known by the disputed domain name, nor can it be found that Respondent makes a legitimate noncommercial or fair use thereof without intent for commercial gain.
Respondent has not been authorized to use Complainant's WHATSAPP trademark, neither as a domain name nor in any other way. Also, there is no reason to believe that Respondent's name somehow corresponds with the disputed domain name. Moreover, Respondent so far has neither made use of the disputed domain name for a bona fide offering of products or services nor for a legitimate noncommercial or fair use. On the contrary, Respondent apparently redirected the disputed domain name to a website offering goods and services that compete with those of Complainant.
Accordingly, Complainant has established a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name. Now, the burden of production shifts to Respondent to come forward with appropriate allegations or evidence demonstrating to the contrary (WIPO Overview 2.0, paragraph 2.1). In the case at hand, Respondent did not reply to any of Complainant's allegations as they were included both in the pre-Complaint communication as well as in the Complaint duly notified to Respondent by the Center on October 13, 2015.
Therefore, the Panel finds that Complainant has also satisfied paragraph 4(a)(ii) and, thus, the second element of the Policy. C. Registered and Used in Bad Faith
The Panel finally holds that the disputed domain name was registered and is being used by Respondent in bad faith.
Complainant contends, and Respondent has not challenged this contention, that the disputed domain name at least by the time of the drafting of the Complaint resolved to a website at "www." that offered products and services competing with those offered by Complainant. The Panel, therefore, has no difficulty in finding that the disputed domain name was registered and is being used by Respondent intentionally attempting to attract, for commercial gain, Internet users to said website, by creating a likelihood of confusion with Complainant's WHATSAPP trademark as to the source, sponsorship, affiliation, or endorsement of Respondent's website. Such circumstances shall be evidence of registration and use of the disputed domain name in bad faith within the meaning of paragraph 4(b)(iv) of the Policy. Especially in light of the parallel UDRP proceeding WhatsApp Inc. v. Francisco Costa, supra, there can be no doubt that Respondent was well aware of the WHATSAPP trademark by the time of the registration of the disputed domain name and that the latter was made use of in order to somehow circumvent the panel's decision which had found the domain name to have been registered and used in bad faith, too.
In this context, the Panel also takes into account that (1) Respondent obviously provided false WhoIs information since the delivery of the Complaint sent to Respondent via TNT on October 13, 2015 failed because of an incorrect address and phone number and (2) Respondent kept silent on all of Complainant's contentions as they were included in the pre-Complaint correspondence sent by Complainant to Respondent (e.g., on June 17, 2013, September 24, 2013, February 23, 2015 and August 3, 2015) as well as in the Complaint. These facts taken all together throw a light on Respondent's behavior which at least supports the conclusion of a registration and use of the disputed domain name in bad faith.
Therefore, the Panel finds that also the third element under the Policy set forth in paragraph 4(a)(iii) is fulfilled and that, accordingly, Complainant has satisfied all of the three requirements of paragraph 4(a) under 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.
Stephanie G. Hartung
Presiding Panelist
Rodrigo Azevedo
Panelist
Manoel J. Pereira Dos Santos
Panelist
Date: December 9, 2015
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