The Complainant is WhatsApp, Inc. of Mountain View, California, United States of America ("United States"), represented by Hogan Lovells (Paris) LLP, France.
The Respondents are Whois Agent, Whois Privacy Protection Service, Inc. of Kirkland, Washington, United States / Mohammed Alkalbani of Muscat, Ibri, or Al-Khoer, Oman; Ops Alkalbani of Muscat, Oman; and M. Rashid Alkalbani of Muscat, Oman. 2. The Domain Names and Registrars
The disputed domain names , , , , , , , , , , , and are registered with GoD, LLC.
The disputed domain names and are registered with N, Inc. (N LLC).
The disputed domain name is registered with WorthyDomains LLC.
The above three registrars are hereinafter referred to as the "Registrars". 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on November 10, 2016. On November 11, 2016, the Center transmitted by email to the Registrars a request for registrar verification in connection with the disputed domain names. On November 11, 2016, the Registrars transmitted by email to the Center their verification responses confirming that the Respondents are listed as the registrants 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 Respondents of the Complaint, and the proceedings commenced on November 29, 2016. In accordance with the Rules, paragraph 5, the due date for Response was December 19, 2016. The Respondents did not submit any response. Accordingly, the Center notified the Respondents' default on December 20, 2016.
The Center appointed Fabrizio Bedarida as the sole panelist in this matter on December 23, 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, WhatsApp, Inc., is a provider of one of the world's most popular mobile messaging applications (or "app"). Founded in 2009 and acquired by Facebook in 2014, WhatsApp allows users across the globe to exchange messages via smartphones, including iPhone, BlackBerry and Android without having to pay for SMS.
The Complainant asserts that since its launch, WhatsApp has become one of the fastest growing and most popular mobile applications in the world, with over 1 million users by the end of 2009, 500 million users in April 2014, 800 million users in April 2015 and 900 million users worldwide in September 2015. WhatsApp now has over 1 billion monthly active users worldwide (as of February 2016).
The Complainant has proven to be the owner of the renowned WHATSAPP mark which enjoys protection through many registrations worldwide.
The Complainant is inter alia the owner of:
United States Trademark No. 3939463, WHATSAPP, registered on April 5, 2011 (first use in commerce February 24, 2009) (class 42);
United States Trademark No. 4083272, WHATSAPP, registered on January 10, 2012 (first use in commerce: September 10, 2009) (classes 9 and 38);
International Trademark No. 1085539, WHATSAPP, registered on May 24, 2011 (classes 9 and 38) (designating Oman);
International Trademark No. 1095940, WHATSAPP, registered on October 6, 2011 (class 38); and
International Trademark No. 1109890, device mark consisting of a green speech bubble with an image of a white telephone in the center, registered on January 10, 2012 (classes 9 and 38).
The Complainant is also the owner of numerous domain names consisting of the WHATSAPP trademark, including , , , and as well as many others under country code extensions.
The disputed domain names were registered by the Respondents between January 10, 2014 and March 16, 2016.
The Complainant's trademark registrations predate the registration of the disputed domain names.
The disputed domain names , , , and , are resolving to websites offering unauthorized versions of the Complainant's instant messaging "app" for download and are also displaying numerous commercial banners.
The disputed domain name , resolves to a parking page containing sponsored links and the disputed domain names , , and resolve to inactive websites or websites with very limited content.
The disputed domain names , , and redirect to "/en.html", i.e., a website offering unauthorized versions of the Complainant's instant messaging "app" for download.
The disputed domain name redirects to "www." and redirects to "www./en/". 5. Parties' Contentions A. Complainant
The Complainant contends that the disputed domain names are identical or confusingly similar to the WHATSAPP trademark, that the Respondents have no rights or legitimate interests in respect of the disputed domain names, and that the disputed domain names have been registered and are being used in bad faith.
The Complainant submits that all the disputed domain names are under common control and therefore requests they be heard in one case.
Regarding the Respondents' identity, the Complainant asserts that according to the WhoIs database, the Respondents in this administrative proceeding are Mohammed Alkalbani (the First Respondent), Ops Alkalbani (the Second Respondent), M. Rashid Alkalbani (the Third Respondent), all of whom are based in Oman, and Whois Privacy Protection Service, Inc. (the Fourth Respondent).
The Complainant asserts that all the disputed domain names are under common control as is shown by the following:
a) The First, Second and Third Respondents have almost identical contact details: the Second and Third Respondents have the exact same physical address in Oman, and the First Respondent is also based in Oman; furthermore, they have all used the same telephone number, and similar email addresses, with two email addresses differing by a single letter;
b) The disputed domain name , registered by the Fourth Respondent, was previously registered in the name of the Third Respondent and so it seems likely that the underlying registrant of this disputed domain name is still the Third Respondent;
c) Many of the websites associated with the disputed domain names are interconnected.
For instance: the disputed domain names (registered by the First Respondent) and (registered by the Third Respondent) redirect to the website associated with the disputed domain name , which is registered in the name of the Fourth Respondent. B. Respondents
The Respondents did not reply to the Complainant's contentions. 6. Discussion and Findings
In order for the Complainant to obtain a transfer of the disputed domain names, paragraphs 4(a)(i) – (iii) of the Policy require that the Complainant must demonstrate to the Panel that:
(i) The disputed domain names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) The Respondents have 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. A. Respondent Identity
According to the registration information verified by the Registrars, the disputed domain names are registered by Mohammed Alkalbani of Muscat, Ibri or Al-Khoer, Oman, Ops Alkalbani of Muscat, Oman, and M. Rashid Alkalbani of Muscat, Oman. The Complainant asserts that all the disputed domain names are under common control and therefore requests they be heard in one case.
In accordance with the Rules, paragraph 3(c), the complaint may relate to more than one domain name, provided that the domain names are registered by the same domain-name holder. Although some of the names of the disputed domain name registrants are different, the Panel on the evidence available (including, for example, that all registrants share the same family name, i.e., Alkalbani, and that they have all listed the same telephone number in their registration details for the disputed domain names) finds that all the disputed domain names identified in the Complaint are registered by the same domain name holder or are at least under common control. The Panel, therefore, accepts the Complainant's request to address all the disputed domain names in one case under the Rules, paragraphs 10(e) and 3(c). Accordingly, the Respondents will be collectively referred to as the "Respondent" hereinafter. B. Identical or Confusingly Similar
The Complainant has established rights in the WHATSAPP trademark.
The disputed domain names , , , , , , , , , and identically reproduce the Complainant's WHATSAPP trademark with the addition of generic terms such as "download", "plus", "reborn", "status" and "cool" and the letters "og" and "apk" (which stands for "Android application package").
The addition of the above indicated generic terms, i.e., "plus", "download" etc., does not diminish the confusing similarity with the Complainant's trademark.
Moreover the disputed domain names and are classic cases of "typosquatting" and therefore they are insufficient to distinguish the disputed domain names from the Complainant's trademark. In fact, as well explained in National Association of Professional Baseball Leagues, Inc., d/b/a Minor League Baseball v. John Zuccarini,WIPO Case No. D2002-1011, "Typosquatted domain names are intended to be confusing so that Internauts, who unwittingly make common typing errors, will enter the domain name instead of the mark…".
The Panel finds all the disputed domain names to be confusingly similar to the trademark WHATSAPP in which the Complainant has rights.
Accordingly, the Panel finds that the Complainant has satisfied paragraph 4(a)(i) of the Policy. C. Rights or Legitimate Interests
This Panel finds that the Complainant has made a prima facie case that the Respondent does not have rights or legitimate interests in the disputed domain names. The Respondent has no connection or affiliation with the Complainant, and the Complainant has not licensed or otherwise authorized the Respondent to use or register any domain name incorporating the Complainant's trademark. The Respondent does not appear to engage in any legitimate noncommercial or fair use of the disputed domain names, nor any use in connection with a bona fide offering of goods or services for the reasons described in section 6.D below. In addition, the Respondent does not appear to be commonly known by the disputed domain names or by a similar name. Moreover, the Respondent has not replied to the Complainant's contentions, claiming any rights or legitimate interests in the disputed domain names.
Finally, this Panel agrees with the previous panel's finding in Calvin Klein Trademark Trust and Calvin Klein Inc. v. Wang Yanchao,WIPO Case No. D2014-1413, that "the Complainant and its CALVIN KLEIN marks enjoy a widespread reputation and high degree of recognition as a result of its fame and notoriety in connection with men's and women's apparel, fragrances, accessories, and footwear products and is a registered trademark in many countries all over the world. Consequently, in the absence of contrary evidence from the Respondent, the CALVIN KLEIN marks [are] not one[s] that traders could legitimately adopt other than for the purpose of creating an impression of an association with the Complainant".
The same concept applies to the present case: the WHATSAPP mark is not one that traders could legitimately adopt for commercial use other than for the purpose of creating an impression of an association with the Complainant. This is especially true considering that the Respondent is using most of the disputed domain names to offer unauthorized versions of the Complainant's instant messaging "app" for download.
Accordingly, the Panel finds that the Complainant has satisfied paragraph 4(a)(ii) of the Policy. D. Registered and Used in Bad Faith
The Panel finds that based on the record, the Complainant has demonstrated the Respondent's bad faith pursuant to paragraph 4(b)(iv) of the Policy.
Based on the evidence put forward by the Complainant, the Panel is of the opinion that the Respondent was aware of the Complainant's trademark registrations and rights to the WHATSAPP mark when it registered the disputed domain names.
The Respondent's knowledge of the WHATSAPP mark is particularly obvious, given the worldwide renown it has acquired amongst mobile applications, the impressive number of users it has gathered since the launch of the WhatsApp services in 2009 and the Respondent's use of most of the disputed domain names to offer unauthorized versions of the Complainant's instant messaging "app", giving the false impression that the Respondent is affiliated with the Complainant.
Therefore, the Panel finds that the Respondent knew of the Complainant's marks and intentionally intended to create an association with the Complainant and its business at the time of registration of the disputed domain names.
Moreover the Panel notes the following:
One of the disputed domain names was registered through Whois Agent, Whois Privacy Protection Service, Inc., a company offering a privacy registration service. As established in many previous decisions, the use of a privacy registration service is not per se an indication of bad faith. However, the manner in which such service is used can in certain circumstances constitute a factor indicating bad faith. It is this Panel's opinion that when it is combined with other elements such as the registration of a domain name corresponding to and/or containing a renowned third-party trademark, the use of a privacy shield is, on the balance of probability, to be considered an inference of bad faith registration and use of the disputed domain name.
The disputed domain names and consist of an obvious deliberate misspelling of the Complainant's WHATSAPP trademark and this is a further indication of bad faith registration.
The Respondent also appears to have registered other domain names incorporating third-parties' trademarks including , , , , and . It therefore appears that the Respondent has established a pattern of registering domain names that correspond and/or contain famous marks, a pattern of conduct expressly forbidden by paragraph 4(b)(ii) of the Policy. This pattern of conduct clearly demonstrates bad faith on the part of the Respondent.
Finally, the Panel finds the Respondent's use of most of the disputed domain names to offer unauthorized versions of the Complainant's instant messaging "app" for download to be definitive evidence of bad faith registration and use under paragraph 4(b)(iv) 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.
Fabrizio Bedarida
Sole Panelist
Date: January 6, 2017
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