Complainant is WhatsApp, Inc. of Mountain View, California, United States of America, represented by Hogan Lovells (Paris) LLP, France.
Respondent is Abdallah Almqbali of Alhmlia, Oman. 2. The Domain Names and Registrar
The disputed domain names , , , , and are registered with GoD, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 24, 2016. On June 24, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On June 27, 2016, 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 July 8, 2016. In accordance with the Rules, paragraph 5, the due date for Response was July 28, 2016. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on July 29, 2016.
The Center appointed Roberto Bianchi as the sole panelist in this matter on August 10, 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
Complainant is the provider of Whatsapp, a popular mobile messaging application allowing users to exchange messages via smartphones without having to pay for SMS messages. Complainant, founded in 2009, was acquired by Facebook in 2014. As of February 2016, the Whatsapp application had over 1 billion active users worldwide.
Complainant owns, inter alia, the following trademark registrations:
United States of America:
WHATSAPP, Reg. No. 3939463, registered on April, 5, 2011, filed on April 1, 2009, covering services in International Class 42. First use / First use in commerce: February 24, 2009;
WHATSAPP, Reg. No. 4083272, registered on January 10, 2012, filed on May 22, 2011, covering products in International Class 9 and services in International Class 38. First use / First use in commerce: September 10, 2009;
International Trademarks:
WHATSAPP, Reg. No. 1085539, registered on May 24, 2011, covering products in International Class 9 and services in International Class 38) (designating Oman);
WHATSAPP, Reg. No. 1095940, registered on October 6, 2011, covering telecommunications in International Class 38.
The disputed domain name was registered on January 27, 2015. The disputed domain names , , , and were registered on June 27, 2015. The disputed domain name was registered on November 10, 2015.
The disputed domain names ,, and resolve to inactive pages. The disputed domain names and resolve to websites offering an alleged new version of Complainant’s app WhatsApp. 5. Parties’ Contentions A. Complainant
Complainant contends as follows:
The disputed domain names are identical or confusingly similar to a trademark in which Complainant has rights. The disputed domain name identically reproduces Complainant’s trademark WHATSAPP with the addition of the term “plus”, separated by a hyphen. The disputed domain names , , and reproduce Complainant’s WHATSAPP trademark in its plural form (by adding the letter “s”) with the addition of the generic term “plus”. The addition of a generic term such as “plus” does not diminish the confusing similarity with Complainant’s trademark. Neither does the presence of a hyphen in the disputed domain name diminish the confusing similarity with the Complainant’s trademark.
The disputed domain name consists of an obvious misspelling of Complainant’s WHATSAPP trademark (given the omission of the “h” and the replacement of the “pp” by a “b”, most likely as “p” is pronounced as “b” in Arabic). Prior panels deciding under the Policy have held that an obvious or common misspelling of a trademark is insufficient to distinguish a domain name from a complainant’s trademark and is intended to cause confusion amongst Internet users. It is accepted that a suffix such as “.com”, “.org”, “.info”, “.net” or “.ws”, is generally irrelevant when assessing whether a domain name is identical or confusingly similar to a trademark as it is a functional element. Therefore, the disputed domain names are confusingly similar to Complainant’s trademarks.
Respondent has no rights or legitimate interests in the disputed domain names. (Complainant’s contentions as to rights and legitimate interests are dealt with at section 6.B. below).
The disputed domain names were registered and are being used in bad faith. Complainant’s WHATSAPP trademark is highly distinctive and well known throughout the world. This mark has continuously and extensively been used since 2009 in connection with an instant messaging “app” for mobile devices, and has rapidly acquired considerable goodwill and renown worldwide, including in Oman, where Respondent is based. Complainant’s registered trademark rights in Oman date back to 2011 and so they significantly predate the registration of the disputed domain names. Thus, it would be inconceivable for Respondent to argue that it did not have knowledge of Complainant’s WHATSAPP trademark at the time of registration of the disputed domain names in 2015. Respondent’s subsequent use of the domain names to resolve to websites offering unauthorized versions of Complainant’s “app” (e.g., in the case of the disputed domain names , and ) and even displaying a logo that closely resembles Complainant’s logo (e.g., in the case of the disputed domain name ) or encouraging users to download the “app” (e.g., in the case of the disputed domain name ), leaves no doubt as to Respondent’s awareness of Complainant. Complainant therefore submits that Respondent registered the disputed domain names in full knowledge of Complainant’s rights in the name WHATSAPP.
Respondent is using the disputed domain names ,, and intentionally to attract, for commercial gain, Internet users to its websites by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation or endorsement of the websites, in accordance with paragraph 4(b)(iv) of the Policy.
Respondent is intentionally using the disputed domain names , , and which are confusingly similar to Complainant’s trademark seeking to deliberately mislead Internet users searching for the latest version of Complainant’s Whatsapp “app” into thinking that the associated websites are somehow affiliated to or sponsored by Complainant when in fact that is not the case. There is no doubt that most Internet users would expect to find a website that is affiliated to or sponsored by Complainant (or of Complainant itself) at a domain name containing Complainant’s WHATSAPP trademark in conjunction with the term “plus”, particularly as the term “plus” appears to suggest that the website offers a new and improved version of Complainant’s official “app”. It is therefore clear that Respondent is deliberately using the disputed domain names , , and seeking to attract traffic to its own websites, where Internet users will be exposed to unauthorized and potentially unsafe versions of Complainant’s “app” (as is the case with the disputed domain names , , and ) or to a website encouraging the purchase of such product (as is the case with the disputed domain name ).
The confusion caused by the aforementioned domain names is compounded by the content of the websites to which they resolve. As described above, Respondent’s use of the disputed domain names , and to resolve to websites offering identical goods or services to those offered by Complainant, namely mobile “apps” under the WHATSAPP trademark, is also likely to mislead Internet users into thinking that the websites (and the products) have been developed or authorized by Complainant when in fact that is not the case. The fact that the website associated with the disputed domain name prominently displays a logo that closely resembles Complainant’s telephone logo (as described above) further exacerbates the confusion.
Even though some Internet users may be intentionally searching for unauthorized versions of Complainant’s “app”, Respondent’s use of the disputed domain names incorporating Complainant’s trademark and offering products bearing Complainant’s trademark without authorization is not only illegitimate but also in bad faith as Respondent is unduly taking advantage of Complainant’s goodwill and reputation to attract Internet users to its websites. This will increase not only the number of downloads of the unauthorized “app” available on the websites (from which Respondent or a third party is likely to be obtaining financial gain) but also the number of users that will click on the commercial banners appearing on the websites which will no doubt also result in increased revenues for Respondent (or a third party). Complainant also submits that Respondent’s use of the disputed domain names , and to resolve to websites offering mobile “apps” that have not been developed nor authorized by Complainant under the WHATSAPP trademark is also detrimental to Complainant’s reputation and is also putting Internet users’ privacy and security at risk, and therefore constitutes additional strong evidence of bad faith. The “apps” available on Respondent’s websites have been created using and manipulating the WhatsApp code without authorization and by circumventing the technical measures that have been put in place by Complainant to protect its technology. Furthermore, given that the messaging “apps” available on Respondent’s websites have not been developed or authorized by Complainant, Complainant cannot guarantee their quality or safety and thus, as discussed above, users’ private information is at risk of being disclosed to unauthorized third parties. The products available on Respondent’s websites are therefore not only detrimental to Complainant’s reputation but are also putting Internet users’ privacy and security at risk. Such use of the disputed domain names , and is therefore clearly additional strong evidence of bad faith.
Finally, the fact that the disputed domain names and are currently being passively held by Respondent, as there is very little or no activity on the associated websites, does not prevent a finding of bad faith. Given the overwhelming renown and explosive popularity of Complainant’s WHATSAPP trademark worldwide, and the nature of the disputed domain names themselves, there simply cannot be any actual or contemplated good faith use of the disputed domain names as such use would invariably result in misleading diversion and taking unfair advantage of Complainant’s rights. See Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003. B. Respondent
The Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings A. Identical or Confusingly Similar
The Panel notes that by virtue of its trademark registrations in the United States of America and elsewhere, Complainant has shown that it owns rights in the WHATSAPP mark.
The Panel also notes that in the disputed domain names , , , and the WHATSAPP mark is incorporated in its entirety, with the addition of the generic term “plus”. It is well established that such kind of additions generally is inapt to distinguish the domain name from the mark. Also, the addition of an “s” to the mark to make the plural form in some of these domain names does not avoid the impression of confusing similarity. Nor can the addition in the domain name of a hyphen between the mark and the term “plus” avoid such impression.
The Panel agrees with Complainant that the disputed domain name , where the letter “h” is omitted and the letter “b” is substituted for the letters “pp”, is an obvious misspelling of the WHATSAPP trademark, which is insufficient to distinguish the resulting domain name from the WHATSAPP mark.
The Panel concludes that the disputed domain names are confusingly similar to Complainant’s trademarks. B. Rights or Legitimate Interests
Complainant contends that 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 in accordance with Policy paragraph 4(c)(i). The disputed domain names and resolve to a website offering unauthorized versions of Complainant’s instant messaging “app” for download that likely are harmful or unsafe. Also, the disputed domain names and display commercial banners. Such use cannot possibly be considered a bona fide offering of goods or services as Respondent is trading on the Complainant’s goodwill and renown and is also misleading Internet users as to the source of the websites and the products available therein.
The Panel believes that the available evidence supports these contentions of Respondent. A Panel’s visit conducted on August 22, 2016, confirmed that the disputed domain names and resolve to a website with texts in in Arabic and English on which, under the title “whtsapp plus” a “WA Reborn v1.70 version”, an application apparently unrelated to Complainant’s Whatsapp application, is being offered. On this website, a logo in white and blue, apparently imitating the original Complainant’s logo in white and green also is being displayed in a clear attempt to profit from this imitation. This means that Respondent is not using the disputed domain names in connection with a bona fide offering of products or services under Policy paragraph 4(c)(i).
An attempt made on the same day to connect the Panel’s browser to the disputed domain names , , and showed that none of them resolve to any active website. In the Panel’s opinion, this lack of use entails that Respondent cannot allege a use in connection with a bona fide offering pursuant to Policy paragraph 4(c)(i), or a legitimate or noncommercial fair use pursuant to Policy paragraph 4(c)(iii).
Complainant also contends that Respondent cannot conceivably claim that he is commonly known by Complainant’s trademark, given the notoriety of the WHATSAPP trademark and the fact that it is exclusively associated with Complainant. The Panel agrees with Complainant, since according to the current data from the WhoIs database for the disputed domain names, Respondent’s name is “Abdallah Almqbali”.
Lastly, Respondent failed to submit any argument or evidence that it may have rights or legitimate interests in any of the disputed domain names. The Panel concludes that Respondent lacks any rights or legitimate interests in the disputed domain names. C. Registered and Used in Bad Faith
Complainant has shown that it owns trademark rights based on its United States of America registrations for WHATSAPP beginning in 2011, with a stated date of first use/first use in commerce in February 2009, i.e.,six years before the registration of the disputed domain names. In addition, the Panel notes that Alexa lists Complainant’s website “” as 23rd among the most visited websites in Oman, the country of residence of Respondent, and as 64th among the most visited websites in the world. See Annex 4 to the Complaint. The Panel also notes that prior UDRP panels have found that the WHATSAPP trademark has acquired worldwide renown amongst mobile applications. See, for instance, WhatsApp Inc. v. Francisco Costa,WIPO Case No. D2015-0909 (relating to ). Further, as seen above, Respondent is using some of the disputed domain names in websites offering services in competition with Complainant. In the Panel’s opinion, these facts indicate that Respondent knew of Complainant, its mark and services, and had them in mind at the time of registering the disputed domain names. In the circumstances of this case, this is evidence of registration in bad faith.
As to use in bad faith, it has been shown that the disputed domain names and are being re-directed to a website with texts in Arabic and English offering, under the title, “whtsapp plus” an application called “WA Reborn v1.70 version”, apparently unrelated to Complainant’s Whatsapp application, and in competition with Complainant. In the Panel’s opinion this is evidence that Respondent, by using such domain names, has intentionally attempted to attract, for commercial gain, Internet users to its website or other on-line locations, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of its website or location or of a product or service on its website or location, which is a circumstance of registration and use in bad faith pursuant to Policy paragraph 4(b)(iv).
The Panel notes that the rest of the disputed domain names no longer resolve to any active website. A disclaimer states that the disputed domain name “is no longer parked by GoDaddy”, while a “404 Error” message appears where the and disputed domain names are being browsed for. Lastly, a tombstone for the disputed domain name announces, “Website coming soon! Please check back soon to see if the site is available”.
This apparent inactivity does not mean that these four disputed domain names are not being used in bad faith, because there is no indication that Respondent is contemplating any use for them that would differ from the use of the “active” disputed domain names, i.e., to offer unauthorized products and services in competition with Complainant. As stated by the panel in Telstra Corporation Limited v. Nuclear Marshmallows, supra, the Panel believes that “taking into account all of the above, it is not possible to conceive of any plausible actual or contemplated active use of the domain name by the Respondent that would not be illegitimate”, i.e., in bad faith.
The third element of the Policy, requiring registration and use in bad faith is thus met. 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 Complainant.
Roberto Bianchi
Sole Panelist
Date: August 23, 2016
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