The Complainant is WhatsApp, Inc. of Mountain View, California, United States of America, represented by Hogan Lovells (Paris) LLP, France.
The Respondent is Nasser Bahaj of Ataq, Yemen. 2. The Domain Names and Registrar
The disputed domain names and are registered with N LLC (the "Registrar"). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on March 24, 2016. On March 29, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On March 29, 2016, the Registrar transmitted by email to the Center its verification response confirming that the 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 the Respondent of the Complaint, and the proceedings commenced on April 1, 2016. In accordance with the Rules, paragraph 5, the due date for Response was April 21, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on April 22, 2016.
The Center appointed Nayiri Boghossian as the sole panelist in this matter on April 27, 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. 4. Factual Background
The Complainant has created the application WhatsApp, which is a platform that allows smartphone users to send text messages, images, etc. using the Internet. The application was created in 2009 and has become widely popular around the world, including the Arab world. According to Wikipedia and the press, the number of its users has reached one billion by early 2016. The website of the Complainant is one of the most visited sites in the Republic of Yemen.
The Complainant owns many trademark registrations for the trademark WHATSAPP and its device, starting from the year 2009. These registrations cover the United States and many other countries through international registrations. For example, the Complainant owns trademark registration no. 3939463 for the trademark WHATSAPP registered on April 5, 2011 and trademark registration no. 4083272 registered on January 10, 2012 in the United States. The Complainant also owns international trademark registrations nos. 1085539 and 1095940 for the trademark WHATSAPP.
The Complainant has registered many domain names including the WHATSAPP mark starting from the years 2008/2009 under both generic Top Level Domains (gTLD) and the country code Top Level Domains (ccTLD) of many countries.
The disputed domain name was registered in the name of the Respondent on April 1, 2014 and resolves to a site that offers an application called "WhatsApp Plus" in more than one version.
The disputed domain name was registered in the name of the Respondent on November 22, 2014 and resolves to a site that offers applications called "GBWhatsapp" and "OGWhatsapp" that also come in more than one version. 5. Parties' Contentions A. Complainant
The Complainant contends having established rights in the trademark WHATSAPP on the basis of owning various trademark registrations for WHATSAPP around the world. The Complainant contends that the disputed domain names are confusingly similar and identical to its trademark.
The Complainant contends that the disputed domain names identically reproduce the Complainant's trademark. The Panel notes that the Complainant mistakenly refers to the trademark FACEBOOK but the Panel understands that this was a typo and that the Complainant meant to refer to the trademark WHATSAPP. The Complainant contends that the confusing similarity is not eliminated by adding the terms "plus" or the letters "og" and that incorporating the trademark of the Complainant in its entirety creates identity or confusing similarity. As for the suffix ".org" or other suffixes, it is established that they are not taken into consideration when assessing a domain name's identity or confusing similarity.
The Complainant contends that the Respondent has no rights or legitimate interests in the disputed domain names. The Complainant contends that the Respondent is not in a position to establish any of the circumstances set out in paragraph 4(c) of the Policy and that a prima facie showing by the Complainant that the Respondent has no rights or legitimate interests in the disputed domain names shifts the burden onto the Respondent. The Complainant asserts that the Respondent is not a licensee of the Complainant nor was it authorized or allowed by the latter to use the trademark WHATSAPP. The Complainant further contends that the Respondent is not making a bona fide offering of goods or services as the Respondent's websites offer unauthorized versions of the Complainant's application and these websites display commercial banners. It contends that the Respondent is benefitting from the goodwill of the Complainant's trademark and is competing with its business. The Complainant also contends that the Respondent is not commonly known by the Complainant's trademark as the trademark WHATSAPP is notorious and has been exclusively associated with the Complainant. It further contends that the Respondent cannot establish making a legitimate noncommercial or fair use of the disputed domain names as the websites of the Respondent offer goods that compete with the Complainant's application as well as displaying commercial banners which can only be for commercial gain. The Respondent is using the disputed domain names in order to exploit the goodwill of the trademark WHATSAPP especially in light of the notoriety of the Complainant's trademark.
The Complainant contends that the disputed domain names were registered and are being used in bad faith as the trademark WHATSAPP is highly distinctive and well-known. It has been used in connection with an application and has acquired a worldwide renown including in Yemen. Therefore, it is inconceivable that the Respondent did not know of the Complainant's trademark prior to registering the disputed domain names.
This is further confirmed by the fact that the disputed domain names resolve to websites that offer unlicensed versions of the application of the Complainant and use a similar logo. Such prior knowledge is evidence of bad faith.
The Complainant contends that the disputed domain names are being used by the Respondent in bad faith in order to attract Internet users creating the impression of being affiliated with the Complainant and offering the latest versions of the Complainant's application. The Respondent hasn't inserted any disclaimers on its websites that clarify that it is not associated with the Complainant. Furthermore, bad faith is evidenced by the fact that the Respondent is seeking commercial gain as the websites display commercial banners. In addition, the applications offered through the Respondent's websites were developed through manipulating the Complainant's application's code and circumventing the technical measures aimed at protecting the Complainant's application. B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings A. Identical or Confusingly Similar
The Complainant has submitted evidence of its trademark registrations around the world for the trademark WHATSAPP. The Panel is satisfied that the Complainant has established its ownership of the trademark WHATSAPP.
The disputed domain name comprises the Complainant's trademark WHATSAPP combined with the letters "og" which are the initials of the developer Osama Ghoraib as indicated on the website of the Respondent. Adding these two letters does not in any way eliminate the confusing similarity with the Complainant's trademark. As for the gTLD ".org", it is established that a gTLD does not typically eliminate confusion.
The disputed domain name comprises the Complainant's trademark WHATSAPP in its entirety. Adding the term "plus" not only does not eliminate confusion but on the contrary gives the impression that new and enhanced versions of the Complainant's application are available through the website the disputed domain name resolves to.
Therefore, the Panel finds that the disputed domain names are confusingly similar to the trademark of the Complainant. B. Rights or Legitimate Interests
The Complainant has indicated that it has never authorized the use of its trademark by the Respondent. The Respondent is not making a bona fide offering of goods or services via the disputed domain names but is rather offering unauthorized and unlicensed versions of the Complainant's application. The Respondent is not making a legitimate noncommercial or fair use of the disputed domain names as these websites display commercial banners and compete with the Complainant. The Panel notes that there are no indications that the Respondent is commonly known by the disputed domain names and the Respondent has not provided evidence of circumstances of the type specified in paragraph 4(c) of the Policy, or of any other circumstances, giving rise to rights or legitimate interests in the disputed domain names.
The Complainant has made a prima facie showing that the Respondent does not have any rights or legitimate interests and has thus met the requirement under the Policy to show that the Respondent does not have any rights or legitimate interests in the disputed domain names.
Accordingly, the Complainant has satisfied paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
The element of bad faith is established by the fact that the trademark WHATSAPP is well-known and the disputed domain names resolve to websites offering unauthorized versions of the Complainant's application.
It is obvious to the Panel that the Respondent was fully aware of the Complainant's trademark and has registered and used the disputed domain names comprising the Complainant's mark with the aim of diverting Internet traffic. The disputed domain names were registered years after the creation of the Complainant's application and after this application had become a huge success globally. The Respondent has registered the disputed domain names and is using them in bad faith through capitalizing and free-riding on the reputation of the Complainant's trademark.
Such conduct falls squarely within the meaning of paragraph 4(b)(iv) of the Policy, and accordingly, the Panel finds that the Complainant has satisfied 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 names, and be transferred to the Complainant.
Nayiri Boghossian
Sole Panelist
Date: May 1, 2016
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