The Complainants are Facebook, Inc. and WhatsApp, Inc. of California, United States of America ("U.S."), represented by Hogan Lovells (Paris) LLP, France.
The Respondent is Domain Manager, NA of Sombrio, Santa Catarina, Brazil, represented by John Berryhill, Ph.d. Esq., U.S. 2. The Domain Names and Registrars
The disputed domain names and are registered with DropC 603 LLC and GoD, LLC (collectively, the "Registrars"). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on February 26, 2016. On February 26, 2016, the Center transmitted by email to the Registrars a request for registrar verification in connection with the disputed domain names. On February 26, 2016, GoD, LLC transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. On February 27, 2016, DropC 603 LLC transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. In response to a notification by the Center that the Complaint was administratively deficient, the Complainants filed an amended Complaint on March 1, 2016.
The Center verified that the Complaint together with the amended 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 10, 2016. On February 27, March 1 and March 28, 2016, the Respondent sent emails to the Center. In response to the Center's email to the parties informing possible settlement options, the Complainants sent an email on March 31, 2016, confirming that it did not wish to suspend the proceedings.
On March 29, 2016, the Respondent requested an extension of Response due date. In accordance with the Rules, paragraph 5(b), the due date for Response was extended to April 3, 2016. The Response was filed with the Center on March 31, 2016.
The Center appointed Christian Schalk as the sole panelist in this matter on April 15, 2016. 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.
The Panel has reviewed the record and confirms the Complaint's compliance with the formal requirements. The Complaint was properly notified to the Respondent in accordance with paragraph 2(a) and (b) of the Rules. The language of the proceeding is English. 4. Factual Background
The Complainant Facebook, Inc. is the world's leading provider of online social network services with more than 1 billion users worldwide since September 2012. It has made substantial investments to develop a strong presence online by being active on different social media forums. Its main website "" is ranked as the second most visited website in the world and in Brazil where the Respondent apparently lives. Furthermore, it has approximately 169 million "likes" on its webpage and over 14 million followers over Twitter. The second Complainant, WhatsApp, Inc., has been acquired by Facebook, Inc. in 2014. WhatsApp, Inc. has been founded in 2009 where it launched also its WhatsApp mobile messaging "app". This application allows users across the globe to exchange messages via smartphones, including iPhone or Android without having to pay for SMS. Since it was founded, WhatsApp became one of the most popular mobile applications in the world with more than 800 million users in April 2015. Facebook and WhatsApp are not only some of the most popular networking applications in the world including Brazil but are also very well-known brands. Both companies have been complainants in several procedures under the UDRP where the panels have recognized the strength and renown of the Complainants' trademarks. See for example, Facebook, Inc. v. Xiamen eName Network Co., Ltd. / Shawn, Wang,WIPO Case No. D2015-1339; Facebook, Inc. v. Cetinje s.r.o.,WIPO Case No. D2014-1070; Facebook, Inc. v. He Wenming,WIPO Case No. DCC2013-0004; Facebook, Inc. v. Seung Hee Lee, Sang Hoon Lee, Master, Inc. and Jung Hyun Shin,WIPO Case No. D2013-2030; WhatsApp, Inc. v. Francisco Costa,WIPO Case No. D2015-1708; WhatsApp Inc. v. Francisco Costa,WIPO Case No. D2015-0909; WhatsApp. Inc. v. Private Whois , Private Whois and Private Whois ,WIPO Case No. D2012-0674.
The Complainants own trademark rights in the terms FACEBOOK and WHATSAPP in many countries of the world, including the following ones:
- U.S. trademark registration No. 3041791, FACEBOOK, registration date of January 10, 2006;
- Brazilian trademark registration No. 829480480, FACEBOOK, registration date of December 15, 2009;
- Brazilian trademark registration No. 829480234, FACEBOOK, registration date of January 19, 2010;
- U.S. trademark registration No. 3939463, WHATSAPP, registration date of April 5, 2011;
- Brazilian trademark registration No. 831031522, WHATSAPP, registration date of October 14, 2014.
The Complainants own also a number of domain names featuring their trademarks, for instance, in the generic Top-Level Domain: , , , , , and under the country extensions: , , and .
The Respondent registered the disputed domain name on September 3, 2015 using a privacy protection service, whilst the disputed domain name was registered by the Respondent on May 27, 2013.
The disputed domain names resolve to parking pages containing sponsored links targeting the Complainants' FACEBOOK and WHATSAPP services and redirecting Internet users to third party websites. At the bottom of the page, the following disclaimer is displayed in fine print: "The Sponsored Listings displayed above are served automatically by a third party. Neither the service provider nor the domain owner maintain any relationship with the advertisers. In case of trademark issues, please contact the owner directly (contact information can be found in the whois)".
On September 15, 2015, the Complainants sent a disclosure request to the privacy protection service of the disputed domain name and, on the same day, the privacy protection service revealed the details of the Respondent as the underlying registrant. A further search by the Complainants then revealed that the Respondent was also registrant of the disputed domain name . Furthermore, the Respondent is also registrant of domain names featuring third party's trademarks, including, for instance, , , and . 5. Parties' Contentions A. Complainants
The Complainants allege that the disputed domain names are identical or confusingly similar to the trademarks. The Complainants argue in this context that the disputed domain name reproduces the Complainant's FACEBOOK trademark with the addition of the generic term "free". The Complainants cite in this context among others MasterCard International Incorporated v. Juan Curtis,WIPO Case No. D2008-1295 where the panel found that addition of the generic term "free" does not diminish the confusing similarity with a complainant's trademark. The Complainants state further that the disputed domain name consists of an obvious misspelling of the trademark WHATSAPP which belongs to one of the Complainants. The Complainants cite in this context National Association of Profrssional Baseball Leagues, Inc. d/b/a Minor League Baseball v. John Zuccarini,WIPO Case No. D2002-1011, where the panel found, that obvious misspellings of a trademark are insufficient to distinguish a domain name from a complainant's trademark.
The Complainants allege also that the Respondent has no rights or legitimate interests in respect of the disputed domain names. The Complainants assert that the Respondent is unable to invoke any of the circumstances set out in paragraph 4(c) of the Policy in order to demonstrate rights or legitimate interests in the disputed domain names. The Complainants argue that the Respondent was not commonly known by the Complainant's trademarks, is neither a licensee of the Complainants nor has it been otherwise authorized or allowed by the Complainants to make any use of its FACEBOOK or WHATSAPP trademarks, in a domain name or otherwise. They believe also that the Respondent cannot assert that, prior to any notice of this dispute, it was using, or had made demonstrable preparations to use the disputed domain names in connection with a bona fide offering of goods or services. The Complainants refer in this context to Ustream.TV, Inc. v. Vertical Axis, Inc,WIPO Case No. D2008-0598 where the panel had stated that parking pages built around a trademark can neither constitute a bona fide offering of goods or services nor a legitimate noncommercial or fair use. Therefore, the Complainants conclude that given the overwhelming renown popularity of the Complainants' FACEBOOK and WHATSAPP trademarks worldwide, and the nature of the disputed domain names itself, it is simply not possible to conceive of any plausible actual or contemplated active use of the disputed domain names by any third party that would not be illegitimate. The Complainants refer to Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003, in order to support its conclusions.
Furthermore, the Complainants are convinced that the disputed domain names were registered and are being used in bad faith.
The Complainants allege that given the Complainants' renown and goodwill worldwide and especially in Brazil, where the Respondent apparently lives, it would be inconceivable for the Respondent to argue that, at the time of registration of the disputed domain names, it did not have an knowledge of the Complainants' trademark rights in the terms FACEBOOK and WHATSAPP. The Complainants conclude therefore, that the Respondent registered the disputed domain names in full knowledge of the Complainants' trademark rights. The Complainants argue further that the fact that the disputed domain name consists of an international misspelt version of the Complainants' WHATSAPP trademark is by itself evidence of bad faith registration and refer to Facebook, Inc. v. Seung Hee Lee, Sang Hoon Lee, Master, Inc., Jung Hyun Shin,WIPO Case No. D2013-2030 and National Association of Profrssional Baseball Leagues, Inc. d/b/a Minor League Baseball v. John Zuccarini,WIPO Case No. D2002-1011.
The Complainants assert also that the Respondent registered the disputed domain names in order to prevent the Complainants from reflecting its well-known trademarks in the corresponding domain name and that the Respondent has engaged in a pattern of such conduct, in accordance with paragraph 4(b)(ii) of the Policy. The Complainants believe that the Respondent is a serial cybersquatter / typosquatter who has registered numerous domain names infringing the trademarks rights not only of the Complainants but also of third parties.
The Complainants allege also that the Respondent is using the disputed domain names to intentionally attract, for commercial gain, Internet users to its websites by creating a likelihood of confusion with the Complainants' trademarks as to the source, sponsorship, affiliation or endorsement of the websites, in accordance with paragraph 4(b)(iv) of the Policy. The Complainants argue in this context that the Respondent is using the disputed domain names to deliberately cause confusion among Internet users searching for the Complainant. As far as the disputed domain name is concerned, the Complainants argue that the Complainant Facebook, Inc. provides access to its services for free under the URL: "". The only difference between this URL and the disputed domain name is the dot between term "free" and the Complainant's FACEBOOK trademark. As far as the disputed domain name is concerned, the Complainants argue that the Respondent registered this obvious misspelling of the WHATSAPP trademark in order to take advantage of the Internet users who inadvertently misspell this trademark of one of the Complainants when attempting to access its official website available at "www." and divert them to its own website. The Complainants argue further that the Respondent's use of the disputed domain names to divert them to parking pages containing sponsored links is intended for commercial gain and constitutes classic bad faith use, in accordance with paragraph 4(b)(iv) of the Policy. The Complainants state that the disclaimer made on the websites to which the disputed domain names resolve are irrelevant since, in accordance with paragraph 3.5 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0"), the Respondent remains responsible for the content appearing on the websites, regardless of whether sponsored links are automatically generated or not. The Complainants allege further that it is sufficient for third parties behind the sponsored links to have made some profit from such arrangements and refers to Get Away Today.Com, Inc. v. Warren Gilbert,WIPO Case No. DCO2010-0021. Finally, the Complainants submit that an additional strong indication of the Respondent's bad faith is the fact that it registered the disputed domain name with privacy protection service to conceal its identity. B. Respondent
The Respondent states that it was not its indication to have the disputed domain names. The Respondent asserts that the disputed domain names had been registered by an agent of the Respondent with access to the Respondent's account. The Respondent explains in this context that upon notification of the Complaint, the Respondent was quite surprised to find out that the disputed domain names had been added to its account. The Respondent acknowledges that they have been registered for the Respondent but that it does not want them. Therefore, the Respondent requested to transfer the disputed domain names to the Complainants, notwithstanding the Complainants' refusal to accept transfer of them without the need for a panel determination as the Respondent believes that there is no dispute between the parties on the subject of to whom these domain names should be registered. 6. Discussion and Findings A. Consolidation of Disputes
The Complainants are different legal entities and their complaints are based on trademark rights owned by each of them. However, the Panels decides to consolidate both complaints. Neither the Policy nor the Rules expressly provide for the filing of a complaint by multiple complainants, although they do not expressly exclude this (see, for instance, Inter-Continental Hotels Corporation, Six Continents Hotels, Inc. v. Daniel Kirchhof; WIPO Case No. D2009-1661 and Fulham Football Club (1987) Limited, Tottenham Hostpur Public Limited, West Ham United Football Club PLC, Manchester United Limited, The Liverpool Football Club And Athletic Grounds Limited v. Domains by Proxy, Inc./ Official Tickets Ltd,WIPO Case No. D2009-0331). Furthermore, paragraph 4.16 of the WIPO Overiew 2.0 provides that in case of complaints brought by more than one complainant, consolidation may proceed where the complainants have a common grievance against the respondent and that it would be equitable and procedurally efficient to permit the consolidation of the complaints. WhatsApp, Inc. is a wholly owned subsidiary of Facebook, Inc. and therefore, both Complainants belong to the same group of companies. Prior UDRP panels have accepted complaints filed by multiple complainants especially in case they were related entities (see eBay Inc., PayPal. Inc. v. Rene Rene/Wuxi Yilian LLC,WIPO Case No. D2015-0010 and Altria Group, Inc. and Philip Morris USA, Inc. v. Leonard Di Bari,WIPO Case No. D2014-0181). This is the case also here. Furthermore, there is also a common grievance against the Respondent. Both Complainants have been target of a common conduct of the Respondent, having affected their individual legal interests in a similar fashion. The Respondent has registered the disputed domain names, which each feature trademarks of the Complainants. Therefore, a consolidation of the complaints is also equitable and procedurally efficient. The arguments made by the Complainants apply to both disputed domain names. Furthermore, the Complaint clearly stipulates each disputed domain name, the individual Complainant making a claim thereto, the rights relied upon and the remedy sought in respect of each disputed domain name. For these reasons, the Panel is convinced that it is equitable to permit consolidation of the complaints in this case. B. Decision on the Merits
Prior UDRP decisions illustrate that it is within the Panel's discretion to grant a unilateral transfer of the disputed domain names as requested by the Respondent or to decide whether the conditions for transfer under paragraph 4(a) of the Policy are met (see e.g. Brownells, Inc. v. Texas International Property Associates,WIPO Case No. D2007-1211).
As the panel held in The Cartoon Network LP, LLLP v. Mike Morgan,WIPO Case No. D2005-1132,
"A genuine unilateral consent to transfer by the Respondent provides a basis for an immediate order for transfer without consideration of the paragraph 4(a) elements. Where the Complainant has sought transfer of a disputed domain name, and the Respondent consents to transfer, then pursuant to paragraph 10 of the Rules the Panel can proceed immediately to make an order for transfer. This is clearly the most expeditious course (see John Bowers QC v. Tom Keogan,WIPO Case No. D2008-1720; Williams-Sonoma, Inc. v. EZ-Port,WIPO Case No. D2000-0207)". This approach has been followed in a number of other decisions: See, for example, Valero Energy Corporation, Valero Refining and Marketing Company v. RareNames, WebReg,WIPO Case No. D2006-1336; Nutri/System, IHPC, Inc. v. Texas International Property Associates,WIPO Case No. D2007-0864; and KBC Group N.V. and KBC Bank N.V. v. Bank Dir, Bankgroup,WIPO Case No. D2008-0446. However, there may be circumstances where it is appropriate to proceed to a consideration of the merits of the Complaint, for example where it is desirable to make a public finding of bad faith against a serial cybersquatter who has repeatedly sought to avoid such a finding by timely concession (see Brownells, Inc. v. Texas International Property Associates,WIPO Case No. D2007-1211 and Messe Frankfurt GmbH v. Texas International Property Associates,WIPO Case No. D2008-0375). It is also clear that the panel has a discretion to consider the merits where appropriate, even if the respondent has consented to the relief sought by the complainant (John Bowers QC v. Tom Keogan,WIPO Case No. D2008-1720).
In Research In Motion Limited v. Privacy Locked LLC/Nat Collicot,WIPO Case No. D2009-0320, the panel stated that it is not open to him to transfer the disputed domain name without consideration of the merits, even if there is a justification for simply ordering transfer of the disputed domain names either on the basis that the consent to transfer is to be treated as a concession that the three elements of paragraph 4(a) of the Policy are present or on the more broad assumption that no purpose will be serviced by postponing a decision to address paragraph 4(a) of the Policy.
One argument for this view can be found in the Rules, which sets out the General Powers of the Panel. Paragraph 10 of the Rules states that:
"(a) The Panel shall conduct the administrative proceeding in such manner as it considers appropriate in accordance with the Policy and these Rules.
(b) In all cases, the Panel shall ensure that the Parties are treated with equality and that each Party is given a fair opportunity to present its case.
(c) The Panel shall ensure that the administrative proceeding takes place with due expedition. It may, at the request of a Party or on its own motion, extend, in exceptional cases, a period of time fixed by these Rules or by the Panel."
Paragraph 15(a) of the Rules provides that, a "Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
Furthermore, paragraph 4(a) of the Policy, having set out the three elements of a compliant complaint concludes: "In the administrative proceeding, the complainant must prove that each of these three elements is present."
Taking those provisions together, the Panel believes that in this case the Complainants must satisfy themselves that those three elements are in fact present.
Additionally, like the panel in Research In Motion Limited v. Privacy Locked LLC/Nat Collicot, WIPO Case No. D2009-0320, also this panel has sympathy with those panels who have taken the view that once a complainant has invoked the Policy and paid the fee, it is entitled to what it paid for unless it declares otherwise (Sanofi-aventis v. Standard Tactics LLC,WIPO Case No. D2007-1909; Davis+Henderson, Limited Partnership v. Whois Privacy Protection Service, Inc./Demand Domains Inc.,WIPO Case No. D2008-1162).
Moreover, proceeding to a proper consideration of the three elements of paragraph 4(a) of the Policy reduces the risk of an injustice, for instance, the transfer of a domain name to a complainant with no relevant trademark rights (see also Research In Motion Limited v. Privacy Locked LLC/Nat Collicot, WIPO Case No. D2009-0320).
In this case, the legal representative of the Complainants has informed the Center on March 31, 2016, that he does not wish to suspend the proceeding. Furthermore, the Respondent has registered several domain names which feature well-known trademarks such as SONY, SEIKO or CLASH OF CLANS. It appears, therefore, that the Respondent is engaged in a pattern of registering domain names that are confusingly similar to trademarks in which it has no rights. Therefore, and for the reasons set out more fully below, principally under the "Bad Faith" ground, the Panel is of the view that wider merits are appropriate to consider in this particular case.
The Panel needs to decide whether, pursuant to paragraph 4(a) of the Policy, the Complainants have proven each of the following three elements for all disputed domain names:
(i) the disputed domain names are identical or confusingly similar to a trademark or service mark in which the Complainants have rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain names; and
(iii) the disputed domain names have been registered and are being used in bad faith. C. Identical or Confusingly Similar
The Panel finds that the Complainants have established trademark rights in FACEBOOK and WHATSAPP. The disputed domain names are not identical to the Complainants' trademark. However, the Panel finds that the disputed domain names are confusingly similar to the Complainants' trademark.
As it has been decided by previous UDRP panels, incorporating a trademark in its entirety can be sufficient to establish that a domain name is identical or confusingly similar to a registered trademark (see for instance, Casa Editorial El Tiempo, S.A. v. Montanya Ltd,WIPO Case No. D2009-0103; T v. Francisco Gómez Ceballos,WIPO Case No. D2002-0717; Bayerische Motoren Werke AG v. , WIPO Case No. D2002-0615; Compagnie Générale des Etablissement MICHELIN v. Lost in Space, SA,WIPO Case No. D2002-0504; Oki Data Americas, Inc. v. ASD, Inc.,WIPO Case No. D2001-0903; Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr.,WIPO Case No. D2000-1525; Eauto, L.L.C. v. Triple S. Auto Parts d/b/a Kung Fu Yea Enterprises, Inc.,WIPO Case No. D2000-0047).
Furthermore, in accordance with many decisions rendered under the Policy, the addition of descriptive terms or numbers to a trademark is generally not a distinguishing feature (see Bellsouth Intellectual Property Corporation v. Freeworld and/or Luis,WIPO Case No. D2000-1807; Bellsouth Intellectual Property Corporation v. Henry Chan,WIPO Case No. D2004-0550; Canon U.S.A. Inc., Astro Business Solutions, Inc. and Canon Information Systems, Inc. v. Richard Sims,WIPO Case No. D2000-0819; Aventis, Aventis Pharma SA. v. John Smith,WIPO Case No. D2004-0565; Aventis, Aventis Pharma SA. v. John Smith,WIPO Case No. D2004-0624; and Toyota France and Toyota Motor Corporation v. Computer-Brain,WIPO Case No. D2002-0002).
As far as the disputed domain name is concerned, the word "free" is a very common word in English language which meaning is also understood by most people in Brazil where the Respondent apparently lives. It simply suggests that the disputed domain name resolves to a website which offers some kind of services for free. Therefore, the word "free" cannot avoid similarity nor does it add anything to avoid confusion with the Complainants' trademark. The only distinctive element of the disputed domain name consists of the term "facebook", which is identical to the Complainants' trademark.
It is similar with the disputed domain name . This is apparently a typo of the trademark WHATSAPP. Although the letter "a" between the letters "h" and "t" have been omitted and it is the same with the letter "s" after the letter "t" as well as the second "p" at the end of that word, the trademark WHATSAPP can still be easily recognized since the misspelled trademark remains the dominant or principal component of the domain name (see for instance, Humana Inc. v. Cayman Trademark Trust,WIPO Case No. D2006-0073; Wachovia Corporation v. Peter Carrington,WIPO Case No. D2002-0775).
Finally, the ".com" suffix in the disputed domain names does not affect the determination that the disputed domain names are confusingly similar with FACEBOOK and WHATSAPP in which the Complainants have trademark rights (see also Compagnie Générale des Etablissements Michelin v. Trendimg,WIPO Case No. D2010-0484; Köstrizer Schwarzbierbrauerei v. Macros-Telekom Corp.,WIPO Case No. D2001-0936; Laboratoire Pharmafarm (SAS) v. M. Sivaramakrishan,WIPO Case No. D2001-0615 and cases cited therein).
For all these reasons, the Panel finds that the Complainants have fulfilled the first element under paragraph 4(a) of the Policy. D. Rights or Legitimate Interests
Based on the submissions and materials filed in this case, the Panel finds that the Respondent does not have rights or legitimate interests in the disputed domain names.
It is the consensus view of UDRP panels that once the complainant has made out a prima facie showing on this element, the burden of production shifts to the respondent (see also paragraph 2.1 of the WIPO Overview 2.0; Ustream.TV, Inc. v. Vertical Axis, Inc,WIPO Case No. D2008-0598; mVisible Technologies, Inc v. Navigation Catalyst Systems, Inc.,WIPO Case No. D2007-1141; Asian World of Martial Arts Inc. v. Texas International Property Associates,WIPO Case No. D2007-1415.
The Respondent has not provided any evidence of circumstances specified in paragraph 4(c) of the Policy or of any other circumstances giving rise to a right to or legitimate interest in the disputed domain names. Specifically, the Panel finds no evidence that the Respondent has been or is commonly known by any of the disputed domain names. The Respondent is neither affiliated with any of the Complainants nor does it have a license to use any of the Complainants' trademarks.
The only response of the Respondent is to the effect that the disputed domain names have been registered by its agent with access to the Respondent's account and the implication, inferred by the Panel for the purposes of this case, is that the Respondent did not know what it had acquired.
The fact (if it be a fact) that the Respondent did not know that it had acquired the disputed domain names is a fair indication that it can claim no rights or legitimate interests in respect of it for the purposes of paragraphs 4(c) and 4(a)(ii) of the Policy; nor does it do so.
Furthermore, it is by now well established that PPC parking pages built around a trademark do not constitute a bona fide offering of goods or services pursuant to paragraph 4(c)(i) of the Policy, nor do they constitute a legitimate noncommercial or fair use pursuant to paragraph 4(c)(iii) (see Ustream.TV, Inc. v. Vertical Axis, Inc,WIPO Case No. D2008-0598; mVisible Technologies, Inc v. Navigation Catalyst Systems, Inc.,WIPO Case No. D2007-1141; Mobile Communication Service Inc v. WebReg, RN,WIPO Case No. D2005-1304; Gerber Products Co. v. LaPorte Holdings,WIPO Case No. D2005-1277; Asian World of Martial Arts Inc. v. Texas International Property Associates,WIPO Case No. D2007-1415; Champangne Lanson v. Development Services/MailP,WIPO Case No. D2006-0006; The Knot, Inc. v. In Knot we Trust Ltd,WIPO Case No. D2006-0340).
Therefore, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain names and therefore, the requirement of paragraph 4(a)(ii) of the Policy is met (see also: Research In Motion Limited v. Privacy Locked LLC/Nat Collicot, WIPO Case No. D2009-0320). E. Registered and Used in Bad Faith
The Complainants contend that the Respondent registered and is using the disputed domain names in bad faith. The Policy, paragraph 4(b) sets forth four non-exclusive circumstances, which evidence bad faith registration and use of domain names:
(i) circumstances indicating that the Respondent has registered or has acquired the disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the disputed domain name registration to the Complainant who is owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the Respondent's documented out-of-pocket costs directly related to the domain name; or
(ii) the Respondent has registered the disputed domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the Respondent has engaged in a pattern of such conduct; or
(iii) the Respondent has registered the disputed domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the disputed domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of its website or location of a product.
According to the materials brought before the Panel, the Panel finds that the disputed domain names have been registered and are used by the Respondent in bad faith in accordance with paragraph 4(b)(iv) of the Policy.
It is a principle considered under prior UDRP decisions (see, for instance, Carolina Herrera, Ltd. v. Alberto Rincon Garcia,WIPO Case No. D2002-0806; Six Continents Hotels, Inc. v. Seweryn Nowak,WIPO Case No. D2003-0022) and under the Policy (see paragraph 2), that a domain name registrant represents and warrants to the concerned registrar that to its knowledge, the registration of the disputed domain name will not infringe the rights of any third party. This applies to cases where the Respondent has registered the disputed domain names by itself but also to cases where an agent of the Respondent has registered the disputed domain names on behalf of it.
Had the Respondent registered the disputed domain names by itself, the Panel would be convinced that the Respondent must have been aware of the Complainants given their notoriety, their strong presence in any kind of media, such as the Internet or in social media (see, Liseberg AB v. Administration Local Manage Technical,WIPO Case No. D2003-0864). The Complainants are without any doubt one of the most famous brands in the world. There are more than one billion users of Facebook, which are located on all continents. In addition, millions of people in most countries of the world and therewith also in Brazil use the WhatsApp – application on their mobile phone. Therefore, in case that the Respondent registered the disputed domain names by itself, the Panel would also hold that the Respondent registered the disputed domain names in bad faith.
The result would be the same, if an agent of the Respondent had registered these domain names on behalf of the Respondent, as it has been claimed. In such case, the Respondent should have had knowledge of what it has purchased, whether by itself or by an agent. Therefore, if a domain name which the Respondent has purchased incorporates a third party's trademark of which the Respondent is likely to have knowledge, the Respondent should be treated as having acquired the disputed domain names knowingly. Otherwise, purchasing of domain names by an agent would be a good shield for abusive registrations (see in this context also the discussions on automated bulk transfer of domain names in Research In Motion Limited v. Privacy Locked LLC/Nat Collicot, WIPO Case No. D2009-0320).
For all these reasons, the Panel finds that the disputed domain names have been registered in bad faith.
The Panel finds further, that the Respondent is also using the disputed domain name in bad faith. The use, to which the disputed domain names are put, namely a parking page featuring sponsored advertising links, is calculated to attract Internet users to the site in the mistaken belief that they are visiting a site of or associated with the Complainant. The object has to be commercial gain, namely pay-per-click or referral revenue achieved through the visitors to the site clicking on the sponsored advertising links.
Even if visitors arriving at the websites to which the disputed domain names resolve become aware that these websites are not such of the Complainants, the operators of these websites will nonetheless have achieved commercial gain in the form of a business opportunity, namely the possibility that a proportion of those visitors will click on the sponsored links (see also: Research In Motion Limited v. Privacy Locked LLC/Nat Collicot, WIPO Case No. D2009-0320). This means that it does not make a difference whether the Respondent itself or its agent selected the disputed domain names and put them to the use to which they have been put. The Respondent has to be treated as someone who knew or should have known how the disputed domain names are used (see also: Research In Motion Limited v. Privacy Locked LLC/Nat Collicot, WIPO Case No. D2009-0320). Therefore, the disputed domain names were not only registered in bad faith for which the Respondent is responsible for but are also used in bad faith as set out in paragraph 4(b)(iv) of the Policy.
Another indication of bad faith use is the behavior of the Respondent after receipt of the Complaint. The situation in this case is not the same as in Brownells, Inc. v. Texas International Property Associates,WIPO Case No. D2007-1211, where the parties had started settlement negotiations, which, however, never came to an end. However, one reason for offering the transfer of the disputed domain names at the last minute could be to avoid a decision on the merits and thereby minimizing the risk of adverse findings or comments. The Respondent could have a "good reason" for this given the fact that it has apparently also registered other domain names featuring trademarks of third companies. The purpose of such a strategy is not to delay the inevitable transfer of the disputed domain names but to thwart the Policy where patterns of questionable conduct have always been relevant. That constitutes an abuse of the process and is a further indication of bad faith conduct (see Messe Frankfurt GmbH v. Texas International Property Associates,WIPO Case No. D2008-0375).
In accordance with paragraph 3.5 of the WIPO Overview 2.0, the existence of the disclaimer on the websites to which the disputed domain names resolve cannot by itself cure bad faith when bad faith has been established by other factors. The disclaimer is also further evidence of the Respondent's prior knowledge of the Complainants' trademarks.
Given all facts and circumstances of this case, the Panel finds therefore, that the disputed domain names have been registered and used in bad faith. 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 to be transferred to the Complainant Facebook, Inc. and the disputed domain name to be transferred to the Complainant WhatsApp, Inc.
Christian Schalk
Sole Panelist
Date: April 23, 2016
Full & Egal Universal Law Academy