The Complainant is WhatsApp Inc. of Menlo Park, California, United States of America (“United States”), represented by Hogan Lovells (Paris) LLP, France.
The Respondent is Private Registration of Denver, Colorado, United States / Ton Bab of Kefar Sava, Israel. 2. The Domain Name and Registrar
The disputed domain name (the “Domain Name”) is registered with DropC LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 14, 2017. On November 15, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On the same day, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on November 20, 2017 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on November 23, 2017.
The Center verified that the Complaint 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 November 24, 2017. In accordance with the Rules, paragraph 5, the due date for Response was December 14, 2017. The Center received various email communications from the Parties during the period between November 20, 2017 and November 28, 2017. The Respondent did not submit a formal response.
The Center appointed Dawn Osborne as the sole panelist in this matter on December 21, 2017. 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 owns trade mark registrations for WHATSAPP in, inter alia, Israel (international trademark registration number 1085539, registered on May 24, 2011), where the Respondent is based, in connection with instant messaging software and related services with first registration in the United States (trademark registration number 3939463, registered on April 5, 2011).
The Domain Name was registered on November 5, 2016 and has been used to point to pay-per-click links relating to software not originating from the Complainant. 5. Parties’ Contentions A. Complainant
The Complainant’s contentions can be summarised as follows:
The Complainant is a provider of one of the world’s most popular mobile messaging applications. Founded in 2009 and acquired by Facebook in 2014, it is the second most downloaded application in the world including in Israel where the Respondent is based. The Complainant owns trade mark registrations for WHATSAPP in many jurisdictions throughout the world in connection with instant messaging services including in Israel. The Complainant is the owner of numerous domain names containing WHATSAPP including .
The Domain Name was registered in 2016 and is pointed to a page containing sponsored links. Some of these point to hacking software and the page includes a link indicating “Buy the Domain”.
The Respondent did not respond to a cease and desist letter from the Complainant.
The Domain Name contains the Complainant’s mark WHATSAPP in its entirety together with the dictionary term “sniffer” and the generic Top-Level Domain (“gTLD”) “.net”, neither of which prevent the Domain Name being confusingly similar to the Complainant’s trade mark.
The Respondent is not authorised by the Complainant to use the Complainant’s WHATSAPP mark. Use in relation to sponsored links, including links offering spyware likely to be associated with illegitimate activities is not a bona fide offering of goods and services or a legitimate noncommercial or fair use of the Domain Name. The Respondent is not commonly known by the Domain Name. The Respondent has no rights or legitimate interests in the Domain Name.
The Respondent has admitted to being a buyer of expired domain names, but the Respondent must have known of the Complainant and cannot rely on wilful blindness as a defence. The fact that the Respondent used a privacy service is an indication of bad faith. The Respondent has owned other domain names containing well-known trade marks.
By using in relation to sponsored links the Respondent is using the Domain Name to intentionally attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s trade mark as to the source or affiliation of its website in accordance with paragraph 4 (b)(iv) of the Policy. Sponsored links are classic bad faith use under this paragraph. The fact that these links lead to websites offering suspicious spy software is additional strong evidence of bad faith, as is the fact that the Respondent did not respond to the Complainant’s cease and desist letter. The Respondent also registered and used the Domain Name in bad faith under paragraph 4 (b)(iii) of the Policy. B. Respondent
The Respondent did not provide a formal Response to the Complainant’s contentions.
In its informal correspondence with the Center the Respondent indicated it was willing to transfer the Domain Name to the Complainant. 6. Decision A. Identical and/or Confusingly Similar
The Domain Name in this Complaint combines the Complainant’s WHATSAPP mark (registered in, inter alia, the United States and Israel in 2011 for software and related services), the dictionary term “sniffer” and the gTLD “.net”.
The addition of the dictionary word “sniffer” does not serve to distinguish the Domain Name from the Complainant’s WHATSAPP mark, especially as it is a term related to software, the field in which the Complainant operates.
The gTLD “.net” does not serve to distinguish the Domain Name from the WHATSAPP mark, which is the distinctive component of the Domain Name.
Accordingly, the Panel finds that the Domain Name is confusingly similar to a mark in which the Complainant has rights for the purpose of the Policy. B. Rights or Legitimate Interests
It is clear from the evidence that the Respondent has used the website attached to the Domain Name to promote software not originating from the Complainant.
The Respondent has not responded to this Complaint and has not provided any legitimate reason why it should be able to use the Complainant’s WHATSAPP mark. It does not appear to be commonly known by the mark, have any rights in it or be authorised to use it. The use made of the Domain Name was commercial, so cannot be considered noncommercial fair use. In its informal communications with the Center, the Respondent did not claim any rights in the Domain Name and indicated it was willing to relinquish the Domain Name to the Complainant.
The Respondent’s use cannot be considered fair fair as the website at the Domain Name does not make it clear that there is no commercial connection with the Complainant. The Panel finds that such use cannot amount to the bona fide offering of goods and services.
As such the Panel finds that the Respondent does not have rights or legitimate interests in the Domain Name and that the Complainant has satisfied the second limb of the Policy. C. Registration and Use in Bad Faith
The Respondent’s use of the Domain Name was and is commercial and the site attached to the Domain Name is being used to make profit from software which harms and/or capitalises on the reputation and goodwill of the Complainant’s mark or otherwise misleads Internet users. The nature of the software can be inferred from the links which describe it as spyware.
The use of the Complainant’s trade mark in the links which have been attached to the Domain Name makes it clear that the Respondent was aware of the Complainant’s rights. It seems clear that the use of the Domain Name in relation to links offering software would cause Internet users to associate such websites with the Complainant and its business and software. Accordingly, the Panel holds that the Respondent has intentionally attempted to attract for commercial gain Internet users to its website by creating a likelihood of confusion with the Complainant’s trade marks as to the source, sponsorship, affiliation or endorsement of the websites and products attached to the Domain Name in contravention of paragraph 4(b)(iv) of the Policy.
As such, the Panel believes that the Complainant has made out its case that the Domain Name was registered and used in bad faith and has satisfied the third limb of the Policy and there is no need to consider further alleged grounds of bad faith or the exact nature of the competing software offered. 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 the Complainant.
Dawn Osborne
Sole Panelist
Date: January 3, 2018
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