Complainant is WhatsApp, Inc. of Menlo Park, California, United States of America (“United States”), represented by Hogan Lovells (Paris) LLP, France.
Respondents are Domain Manager, SHOUT marketing SL of Fuengirola, Málaga, Spain; Gonzalo Gomez Rufino, River Plate Argentina of Mijas, Málaga, Spain; and Gonzalo Gomez Rufino, SHOUT Marketing SL of Marbella, Málaga, Spain. 2. The Domain Names and Registrars
The disputed domain names , , , , and are registered with 1&1 Internet SE. The disputed domain names , and are registered with M International, Inc. The disputed domain name is registered with Hosting Concepts B.V. d/b/a Openprovider (the “Registrars”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 12, 2018. On July 13, 2018, the Center transmitted by email to the Registrars a request for registrar verification in connection with the disputed domain names. On July 13, 16 and 17, 2018, the Registrars transmitted by email to the Center their verification response confirming that Respondents are listed as the registrants and providing the contact details.
The Complaint was filed in English and the language of some of the Registration Agreements is Spanish. On July 18, 2018, the Center sent a communication to the Parties, in English and Spanish, regarding the language of the proceeding. On July 18, 2018, Complainant confirmed its request that English be the language of the proceeding. Respondent did not comment on the language of the proceeding. In reply to a request for clarification from the Center, Complainant made a supplemental filing on August 3, 2018. An email in English from Respondent was received by the Center on August 3, 2018, although said email did not refer to the language of the proceeding.
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 August 6, 2018. In accordance with the Rules, paragraph 5, the due date for Response was August 26, 2018. The Center informed the Parties about the commencement of the panel appointment process on September 4, 2018.
The Center appointed Gerardo Saavedra as the sole panelist in this matter on September 14, 2018. This Panel finds that it was properly constituted. This 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, a United States company, is a provider of one of the world’s most popular mobile messaging applications (or “app”), the WhatsApp. Complainant has rights over the WHATSAPP trademark for which it holds several trademark registrations, such as registration No. 09986514 with the European Union Intellectual Property Office, registered on October 25, 2011 in classes 9, 38 and 42; and registration No. 3939463 with the United States Patent and Trademark Office, registered on April 5, 2011 in class 42, with stated date of first use February 24, 2009.
Complainant also has rights over a figurative trademark (the “Telephone Logo”), registration No. 454678849 with the European Union Intellectual Property Office, registered on May 8, 2012 in classes 9, 38 and 42.
Complainant is the registrant of the domain names created on September 4, 2008, created on February 1, 2010, and created on February 1, 2010, among others.
Complainant is the provider of the WhatsApp mobile messaging application (the “WhatsApp”) which allows users across the globe to exchange messages via smartphones without having to pay for short message services (or “SMS”).
As per the available WhoIs reports and Registrars’ verification responses, the registrants of the disputed domain names are as follows: Domain Manager, SHOUT marketing SL for and ; (ii) SHOUT marketing SL for ; (iii) Gonzalo Gomez Rufino, SHOUT Marketing SL for , , and, ; (iv) Gonzalo Gomez Rufino, River Plate Argentina for and ; and (v) Gonzalo Gomez Rufino, SHOUT marketing SL for .
The disputed domain names were created on the following dates: on April 9, 2014; on July 22, 2014; on November 13, 2014; on February 16, 2015; on May 13, 2015; on August 8, 2015; on October 20, 2015; on September 7, 2016; on April 17, 2017; and on April 28, 2017.
Prior to the time the Complaint was filed and according to the screenshots attached to the Complaint:
(i) the website associated to showed information on an application that is based on the WhatsApp, the legends “WhatsAppAlertas”, “COMPRAR PLANES”, “Whatsapp Call Center plaforma helpdesk de atención al cliente”, “Atención al cliente vía WhatsAppAlertas Helpdesk”, “BUY PACKAGES”, “PRICES”, “In order to purchase any plan, please sign up now and go the shop section”, “Whatsapp Call Center”, “Sobre WhatsAppAlertas”, “About WhatsAppAlerts”, among others;
(ii) the website associated to showed information on an application that is based on the WhatsApp, showed Complainant’s Telephone Logo followed by “WhatsAppMarketing”, and the legends “BUY CREDITS”, “BULK WHATSAPP MARKETING”, “PRICES”, “Send Professional Bulk Messages Through Whatsapp Marketing Software”, “About WhatsAppMarketing”, among others, and afterwards resolved to an adult content website;
(iii) the website associated to showed information on an application that is based on the WhatsApp, showed Complainant’s Telephone Logo followed by “WhatsAppMarketing”, the legends “Comprar Créditos”, “Preços”, “Novas características do Whatsapp Marketing”, “Mensagens em massa através do WhatsappMarketing”, among others;
(iv) was automatically redirected to the website of ;
(v) resolved to a webpage initially showing, among others, the legend “Virus/Spyware Download Blocked” and which afterwards displayed a login web page;
(vi) resolved to a “Client Login” home page; and
(vii) , , and resolved to no active websites. 5. Parties’ Contentions A. Complainant
Complainant’s assertions may be summarized as follows.
The disputed domain names are under common control by all Respondents, as shown by the fact that four of them have similar contact details for telephone numbers and email addresses, the organization of four of them is the same, namely SHOUT marketing SL, a company owned by Gonzalo Gómez Rufino, with its registered office at the same street address at Fuengirola, Málaga, Spain. The contact section of the website associated with contains a link to the website associated with and both websites associated with these disputed domain names contain a link “Agencia de Marketing Online” which redirects to SHOUT marketing SL’s website at “”. The websites of , and are pointing to websites that have the same look and feel, offering an application that allows bulk messaging campaigns to be sent via the WhatsApp and technical assistance for WhatsApp users, while the disputed domain name previously resolved to a similar website. The consolidation would be fair and equitable to all Parties since Complainant's substantive arguments against each Respondent are the same. Given that there is clearly a connection between each of the Respondents, that they are either one and the same person or acting in concert, and for reasons of fairness and equity it is justified in bringing a single Complaint against all Respondents.
Complainant, founded in 2009 and acquired by Facebook in 2014, is a provider of one of the world’s most popular mobile messaging applications (or “app”), the WhatsApp. Its main website is available at “www.”. Since its launch, the 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, 900 million users in September 2015, 1 billion users in February 2016, and over 1.5 billion monthly active users worldwide as of February 2018. The WhatsApp has consistently ranked amongst Apple iTunes 25 most popular free mobile applications and is the first most downloaded application for Windows phones in Spain, according to applications information company App Annie.
Complainant is the owner of numerous domain names consisting of the WHATSAPP trademark, including , , as well as under numerous country code extensions such as and . Complainant also has a strong presence on the different social media fora available online, having, for instance, approximately 29 million “likes” on its official Facebook page. WHATSAPP is exclusively associated with Complainant: all search results obtained by typing the term “whatsapp” in Google’s search engine refer to Complainant.
Complainant’s WHATSAPP trademark has acquired considerable reputation and goodwill worldwide, including in Spain where Respondents are based. Complainant has secured ownership of numerous trademark registrations for WHATSAPP in many jurisdictions throughout the world, including in Spain.
A search carried out by Complainant has revealed that Respondents’ names or organization are also associated with other infringing domain names such as , , , , , and .1
On September 22, 2017, Complainant’s counsel in France sent a cease and desist letter by post and by email to Respondents asserting Complainant’s trademark rights and asking Respondents to transfer the disputed domain names to Complainant. No response was received, however said cease and desist letter sent by post was returned undelivered. On October 27, 2017, Complainant’s counsel in Spain sent a Spanish translation of said letter to Respondents by post and by email, and followed up with a telephone conversation with a call operator at Whatsappmarketing who confirmed that he would inform Respondents. On November 24, 2017, Gonzalo Gomez Rufino called Complainant’s counsel in Spain and indicated that by January 15, 2018, he would change the design of the websites associated with the disputed domain names and use non infringing domain names to point to such websites in order to avoid any conflict. However, despite leaving numerous messages, Complainant’s counsel has since been unable to contact Gonzalo Gomez Rufino, and the disputed domain names are still pointing to the websites which have not significantly changed.
The disputed domain names are identical or confusingly similar to a trademark in which Complainant has rights: (i) , , , , , , identically reproduce Complainant’s WHATSAPP trademark in conjunction with descriptive terms (such as “alertas”, “tm-“, “masivo”, “masivos”, “marketing”, “bulk”, “em massa”) under the “.com” and “.marketing” generic Top-Level Domains (gTLDs), which additions do not distinguish the disputed domain names in any material way; and (ii) the remaining two disputed domain names and consist of common or obvious misspellings or typos of the WHATSAPP trademark, the only difference being the omission of the letters “h”, “t” or “p” and the addition of the generic term “marketing”.
Respondents have no rights or legitimate interests in the disputed domain names. Respondents are 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. Respondents have not been authorised or allowed by Complainant to make any use of its WHATSAPP trademark. Respondents cannot conceivably claim that any of them is commonly known by Complainant’s trademark, and have not secured or even sought to secure any trademark rights in the term “whatsapp”.
Respondents cannot assert that, prior to any notice of the dispute, they were using, or had made demonstrable preparations to use, the disputed domain names in connection with a bona fide offering of goods or services.
The disputed domain name is pointing to a website available in English and Spanish offering an application that allows bulk messaging campaigns to be sent via the WhatsApp as well as technical assistance for the WhatsApp users displaying the messages “Whatsapp Call Center, the HelDesk thru Whatsapp!” or “Send Professional Bulk Messages Through Whatsapp Marketing Software”. The disputed domain name resolves to a website similar to the website associated with but in Portuguese, while redirects to the website associated with . All websites associated with these disputed domain names prominently display Complainant’s WHATSAPP trademark and have the same “look and feel” as the WhatsApp’s official website.
The websites associated with , and prominently display, without authorisation, recoloured versions of Complainant’s Telephone Logo. The disputed domain name previously resolved to a website similar to the website associated with , although it now redirects to a pornographic website.
Such use of the disputed domain names cannot possibly be considered a bona fide offering of goods or services as the corresponding Respondent is clearly seeking to take advantage of Complainant’s goodwill for its own financial gain, and Internet users will likely believe that such Respondent is connected to Complainant, especially as there are no disclaimers on the websites associated with the disputed domain names. Respondents are using Complainant’s WHATSAPP trademark and Telephone Logo without permission to divert Internet users to commercial websites.
The disputed domain name resolves to a login home page, indicating that it is being used for commercial gain, while is pointing to a webpage indicating that it is blocked due to malware, which cannot constitute a legitimate interest in it. The remaining disputed domain names , , , and do not resolve to active websites and there is no evidence that Respondents have ever used them to host active websites. Therefore they are being passively held and Respondents do not have any rights or legitimate interests in them.
Given the renown and popularity of Complainant’s WHATSAPP trademark worldwide, Complainant submits that it is not possible to conceive of any plausible actual or contemplated active use of the disputed domain names by Respondents (or a third party) that would not be illegitimate.
The disputed domain names were registered and are being used in bad faith.
Complainant further submits that Respondents registered the disputed domain names in full knowledge of Complainant’s rights in WHATSAPP, which is highly distinctive and well known throughout the world and which makes inconceivable for Respondents to argue that they did not have knowledge of Complainant’s trademark at the time of registration of the disputed domain names.
Respondents’ use of the disputed domain names and to resolve to websites that display a recoloured version of Complainant’s Telephone Logo leaves no doubt as to Respondents’ awareness of Complainant and its rights at the time of the registration. There are no disclaimers on any of the corresponding websites stating that Respondents are not authorized by Complainant to provide assistance to their users or that clarify that they are not associated with Complainant.
Respondents are the registrants of other domain names infringing Complainant’s trademark and thus Respondents have engaged in a pattern of conduct by registering 18 domain names incorporating Complainant’s well-known WHATSAPP trademark for the purpose of preventing Complainant from reflecting its trademark in a corresponding domain name.
Complainant submits that the disputed domain names could simply not have been chosen for any reason other than to unduly profit from the considerable goodwill and reputation attached to Complainant’s trademark, which constitutes further evidence of bad faith registration. Respondents deliberately chose to register the disputed domain names seeking to take advantage of Complainant’s rights and goodwill and therefore in bad faith.
Respondents are using the disputed domain names , and to intentionally attract, for commercial gain, Internet users to their website by creating a likelihood of confusion with Complainant’s trademark as to the source, sponsorship, affiliation or endorsement of their corresponding websites, deliberately seeking to mislead Internet users searching for Complainant and divert them to their own website. Internet users are likely to expect to find websites at these disputed domain names that are affiliated to or sponsored by Complainant.
The disputed domain name points to a webpage indicating that it is blocked due to malware, while resolves to a pornographic website, which is additional evidence of Respondent's bad faith use.
The fact that resolves to a login home page with no other substantive content and that the remaining disputed domain names , , and are not resolving to active websites does not prevent a finding of bad faith, given the strength and renown of Complainant’s WHATSAPP trademark and Respondents’ pattern of abusive registrations.
Complainant submits that there is no doubt that most Internet users would expect to find a website that is affiliated to or sponsored by Complainant at a domain name incorporating Complainant’s WHATSAPP trademark in conjunction with the terms referred to above. It is therefore clear that Respondents are deliberately using the disputed domain names seeking to attract traffic to their own websites. There simply cannot be any actual or contemplated good faith use of any of the disputed domain names, as such use would invariably result in misleading diversion and taking unfair advantage of Complainant’s rights.
Complainant requests that the disputed domain names be transferred to Complainant. B. Respondents
Respondents did not reply to Complainant’s contentions. As set forth above, on August 3, 2018, the Center received an email communication from the email address corresponding to one of Respondents as per the WhoIs, which in essence contains the following: “We are in a legal case against whatsapp inc about this issue. A spanish court will decide about this issue. Gonzalo Gómez Rufino Director Marketing www.ShoutAd.com Tel: +34 669[…] […]@”.2 No documentation was provided in support of said claim. 6. Discussion and Findings
Paragraph 15(a) of the Rules instructs the Panel to “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”.
As regards the naming of multiple Respondents, this Panel considers that Complainant has established that all disputed domain names are under common control and that it is fair and equitable to have all named Respondents in this single administrative proceeding since, on its face, it appears to be a connection among each registrant and the disputed domain names (see section 4.11.2 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”)).
The general rule under paragraph 11(a) of the Rules is that the language of the administrative proceeding shall be the language of the Registration Agreement, unless otherwise agreed to by the Parties, and subject to the authority of the panel to decide otherwise taking into consideration the circumstances of the case. As reported by the Registrars, the language of the Registration Agreement of some of the disputed domain names is English, while for the other disputed domain names is Spanish. The communications from the Center to the Parties were in both English and Spanish. The Complaint was filed in English, and Complainant asked for the proceeding to be conducted in English. Respondents did not oppose to that request and, in fact, the email the Center received on August 3, 2018, from an email address corresponding to one of Respondents, is in English. Taking into account the aforesaid, this Panel resolves to have this proceeding conducted in English.
The informal email communication from Respondents of August 3, 2018, referred to above, cannot be deemed as an official response since it does not comply with the requirements set forth in the Rules, paragraph 5(c). This Panel further notes that Respondents have not made any substantive arguments regarding the Complaint. The lack of response from Respondents does not automatically result in a favorable decision for Complainant (see Berlitz Investment Corp. v. Stefan Tinculescu,WIPO Case No. D2003-0465). The burden for Complainant, under paragraph 4(a) of the Policy, is to show: (i) that each of the disputed domain names is identical or confusingly similar to a trademark or service mark in which Complainant has rights; (ii) that Respondents have no rights or legitimate interests in respect of the disputed domain names; and (iii) each of the disputed domain names has been registered and is being used in bad faith. A. Identical or Confusingly Similar
It is undisputed that Complainant has rights over the WHATSAPP trademark.
Since the addition of a gTLD suffix in a domain name is technically required, it is well established that such element may be disregarded where assessing whether a domain name is identical or confusingly similar to a trademark. Eight of the disputed domain names contain such trademark in its entirety, although with other terms or characters; it is clear to this Panel that the central element of such disputed domain names is Complainant’s trademark, and thus the addition of other terms or characters in said disputed domain names does not prevent a finding of confusing similarity. The other two disputed domain names contain a misspelling of such trademark, along with the term “marketing”; such misspelling and the addition of said suffix in each of them do not prevent a finding of confusing similarity. Based on the aforesaid, it is clear that each disputed domain name is confusingly similar to Complainant’s trademark.
Thus this Panel finds that Complainant has satisfied paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
Complainant has alleged and Respondents have failed to deny that Respondents have no rights or legitimate interests in respect of the disputed domain names.
Complainant contends that it has not authorized Respondents to use its trademarks, that Respondents are not commonly known by Complainant’s trademark, and that Respondents are unable to invoke any of the circumstances set out in paragraph 4(c) of the Policy.
This Panel notes, from the screenshots of the active websites associated to some of the disputed domain names, that Respondents seem to commercially operate a platform which apparently is related to the Complainant’s messaging application. Even if such an operation might be based on a legitimate business, in the file there is no justification for Respondents to use Complainant’s trademark in the disputed domain names (even with misspellings or with other characters) and commercially benefit therefrom.3
This Panel considers that Complainant has established a prima facie case that Respondents have no rights or legitimate interests in the disputed domain names (see INTOCAST AG V. LEE DAEYOON,WIPO Case No. D2000-1467, and section 2.1 of the WIPO Overview 3.0). In the file there is no evidence of circumstances of the type specified in paragraph 4(c) of the Policy or of any other circumstances giving rise to a possible right to or legitimate interest in the disputed domain names by Respondents. In the absence of any explanation from Respondents as to why they might consider each of them has a right or legitimate interest in using domain names which incorporate wholly or almost identically Complainant’s WHATSAPP trademark (albeit with other characters), this Panel considers that Respondents have no rights or legitimate interests in the disputed domain names.
Based on the aforesaid, this Panel concludes that paragraph 4(a)(ii) of the Policy is satisfied. C. Registered and Used in Bad Faith
Complainant contends that Respondents have registered and used the disputed domain names in bad faith, which Respondents chose not to rebut.
Taking into consideration that the registration and use of Complainant’s WHATSAPP trademark preceded the registration of the disputed domain names, that Complainant’s trademark WHATSAPP has become well-known around the world, and that Complainant’s trademark is composed of a coined term that confers to it certain distinctiveness, this Panel is of the view that Respondents must have been aware of the existence of Complainant’s trademark WHATSAPP at the time of registration of each disputed domain name.
The fact that Respondents registered the 10 disputed domain names, each incorporating Complainant’s WHATSAPP trademark (albeit two of them with just a minor typographical error variation, practice commonly known as typosquatting), simply reinforces the aforesaid and leads to infer that Respondents registered and used the disputed domain names in bad faith.4
Complainant provided screenshots of the websites associated to the disputed domain names. From those having an active website, it is clear that Respondents are using them for commercial gain (the content of such active websites already set forth in section 4 above of this Decision). The fact that one of the disputed domain names is redirected to an adult content website also demonstrates Respondents’ bad faith.
As regards those disputed domain names that do not resolve to an active website, several UDRP decisions have held that the passive holding of a domain name that incorporates a well‑known trademark, without obvious legitimate purpose, may be deemed to be bad faith use under paragraph 4(a)(iii) of the Policy.5 It seems to this Panel that there are no bases to conceive a legitimate use of these disputed domain names by Respondents. In reaching that conclusion, this Panel has taken into account, in addition to the circumstances mentioned above, the following: (i) Respondents are using Complainant’s trademark at the disputed domain names (albeit with just a minor typpographical error variation in two of them and with the addition of irrelevant terms or characters) without Complainant’s authorization; (ii) the use of the disputed domain names that resolve to active websites; (iii) Respondents’ registration of other domain names that, on their face, might infringe Complainant’s trademark rights (for instance, , , , ); and (iv) the lack of Response, which is indicative that Respondents either have no interest in the disputed domain names or lack arguments and evidence to support their holding of the disputed domain names.
Thus the overall evidence in the file leads this Panel to deduce that Respondents’ choice of the disputed domain names was deliberate for their substantial identity with, and with the intention to benefit from the reputation and goodwill of, Complainant’s trademark, which denotes bad faith.6
In light of the above, this Panel finds that 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, this Panel orders that the disputed domain names , , , , , , , , and be transferred to Complainant.
Gerardo Saavedra
Sole Panelist
Date: September 28, 2018
1 According to the WhoIs reports attached to the Complaint, SHOUT marketing SL appears as the registrant of five of such domain names, River Plate Argentina as the registrant of one of them, and Gomez Gonzalo as the registrant of one of them. Gonzalo Gomez Rufino appears as the administrative and technical contact in two of them.
2 The existence of court proceedings does not preclude this Panel from reaching a decision under this administrative proceeding. See paragraph 18 of the Rules.
3 See Statoil ASA v. Giovanni Laporta, Yoyo.Email Ltd.,WIPO Case No. D2014-0637: “the Panel finds the Respondent's business model not to result in any rights or legitimate interests […] Respondent does not necessarily have to register the disputed domain name and other domain names consisting of well established trademarks to establish his service”. See Sanofi v. Giovanni Laporta,WIPO Case No. D2014-1145: “Respondent seems to base his claim that he has a legitimate interest in the disputed domain name because he has a ‘legitimate business purpose’ […] though his concept for a business may be legitimate, he cannot build his business on the back of another’s rights”.
4 See A, Inc. v. Steven Newman a/k/a Jill Wasserstein a/k/a Pluto Newman,WIPO Case No. D2006-0517: the practice of typosquatting, in and of itself, constitutes bad faith registration”. See also America Online, Inc. v. Dolphin@Heart,WIPO Case No. D2000-0713: “registration of several names corresponding to Complainant’s service marks is sufficient to constitute a pattern of such conduct, and thus to constitute bad faith within the meaning of paragraph 4(b)(ii) of the Policy”. Cfr. section 3.1.2 of the WIPO Overview 3.0.
5 See section 3.3 of the WIPO Overview 3.0. See Ferrari S.p.A. v. Ms. Lee Joohee (or Joo-Hee),WIPO Case No. D2003-0882: “Respondent has provided no evidence or suggestion of a possible legitimate use of the Domain Name. Thus, in the words of Telstra, 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”.
6 See Jafra Cosmetics, S.A. de C.V. and Jafra Cosmetics International, S.A. de C.V. v. ActiveVector,WIPO Case No. D2005-0250: “due to the intrinsically distinctive character of Complainants’ trademarks, it is inconceivable that the contested domain name would have been registered and used if it were not for exploiting the fame and goodwill of Complainants’ marks by diverting Internet traffic intended for Complainant”. See also Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co.,WIPO Case No. D2000-0163 and DaimlerChrysler Corporation v. Web4COMM SRL ROMANIA,WIPO Case No. DRO2006-0003.
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