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 Contact Privacy Inc. Customer 0153186272 of Toronto, Canada / MOHD WILDAN AMIR MUSA of Puncak Alam, Malaysia. 2. The Domain Name and Registrar
The disputed domain name is registered with Tucows Inc. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 27, 2019. On February 27, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 28, 2019, 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 the same date 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 March 4, 2019.
The Center verified that the Complaint together with the 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 March 14, 2019. In accordance with the Rules, paragraph 5, the due date for Response was April 3, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 4, 2019.
The Center appointed Anna Carabelli as the sole panelist in this matter on April 15, 2019. 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 is a provider of one of the world’s most popular mobile messaging applications (or “app”), the WhatsApp which allows users across the globe to exchange messages via smartphones without having to pay for short message services.
The Complainant owns several trademark registrations for WHATSAPP in various jurisdictions (Annex 10 to the Complaint), including the following:
- European Union Trade Mark No. 009986514, registered on October 25, 2011;
- International registration No. 1085539, registered on May 24, 2011;
- United States Trademark Registration No. 3930463, registered on April 5, 2011; and
- Malaysian Trademark Registration No. 2011051331, registered on June 26, 2012.
The Complainant also owns the European Union Trade Mark (the “Telephone Logo”) No. 010496602, registered on May 18, 2012.
The Complainant is the registrant of numerous domain names consisting of the WHATSAPP trademark under various generic Top-Level Domains (“gTLDs”) (among others: registered on September 4, 2008, registered on February 20, 2009, and both registered on February 1, 2010), as well as under many country-code Top-Level Domains (“ccTLDs”) (Annex 6 to the Complaint).
The Complainant is active on various social media and has developed a strong presence online (Annex 7 to the Complaint).
The disputed domain name was registered on November 12, 2018.
According to the screenshots attached to the Complaint (Annex 8), the disputed domain name resolves to a website in English (the Respondent’s website) that purports to offer software for bulk messaging via the Complainant’s WhatsApp products. The Respondent appears to be marketing its software to consumers in Malaysia, by offering licenses to use the bulk messaging software for a fee ranging from MYR 50 to 150 (Malaysian Ringgit, approximately USD 12 and 35 respectively).
The header of the Respondent’s website displays a purple version of the Complainant's green WhatsApp Telephone Logo registered trademark, together with the words "bulkwhatsappsender".
The footer of the Respondent’s website displays a disclaimer reading:
“All trademarks and logos are the property of their respective owners. This site and the products and services offered on this site are not associated, affiliated, endorsed, or sponsored by any business listed on this page nor have they been reviewed tested or certified by any other company listed on this page © Created by BWS – www..” 5. Parties’ Contentions A. Complainant
The Complainant’s contentions can be summarized as follows:
- The Complainant, founded in 2009 and acquired by Facebook in 2014, is a provider of the WhatsApp, one of the world’s most popular mobile messaging applications. Since its launch, WhatsApp has become one of the fastest growing and most popular mobile applications in the world, with over 1.5 billion monthly active users worldwide (as of October 2018). WhatsApp has consistently ranked amongst Apple iTunes 25 most popular free mobile applications and was the 4th most downloaded application worldwide as per App Annie’s Top Apps Worldwide Ranking in 2018.
- The Complainant is the owner of numerous WHATSAPP trademark registrations in many jurisdictions throughout the world, including in Malaysia where the Respondent is based.
- The Complainant owns several domain names and has a strong presence on the different social media available online, having, for instance, approximately 29 million “likes” on its official Facebook page.
- The Complainant’s WHATSAPP trademark has acquired considerable reputation and goodwill worldwide.
- The disputed domain name is identical or confusingly similar to the Complainant’s trademark WHATSAPP. The addition of the descriptive terms “bulk” as a prefix and “sender” as a suffix and of the gTDL”.biz”, does not prevent a finding of confusing similarity.
- The Respondent has no rights or legitimate interests in the disputed domain name. The Respondent has not been authorized or allowed by the Complainant to make any use of its WHATSAPP trademark. The Respondent cannot conceivably claim to be commonly known by the Complainant’s trademark and is unable to invoke any other circumstances set out in paragraph 4(c) of the Policy.
- The Respondent’s use of the disputed domain name is in violation of WhatsApp’s Brand Guidelines that expressly prohibit, among other, any use of the WHATSAPP trademark in domain names or online usernames.
- The disputed domain name is pointing to a website available in English, prominently displaying, without authorization, a purple version of the Complainant's green WhatsApp Telephone Logo registered trademark, together with the words “bulkwhatsappsender”.
- The Respondent’s website is offering bulk-messaging software to be used in connection with the Complainant’s WhatsApp messaging services. Such software can be used to send unsolicited electronic communications (spam), for phishing, or for other unauthorized activities that place the security of WhatsApp users at risk and violate the WhatsApp Business Term of Service.
- The above use of the disputed domain name cannot possibly be considered a bona fide offering of goods or services.
- Given the renown and popularity of the Complainant’s WHATSAPP trademark worldwide, the Respondent deliberately chose to register the disputed domain name in bad faith, seeking to take advantage of the Complainant’s rights and goodwill.
- The disclaimer on the Respondent’s website does not clarify its relationship or lack thereof with the Complainant. Taking into account the disputed domain name itself, the presence of the Complainant’s logo, the extensive mention of the Complainant and its product on the Respondent’s website and the unclear wording of the disclaimer, it is more likely than not that Internet users would assume that the Respondent’s website is affiliated with or operated or approved by the Complainant.
- By using the disputed domain name, the Respondent has intentionally attempt to attract, for commercial gains, Internet users to its website, by creating a likelihood of confusion with the Complainant’s WHATSAPP trademark as to the source, sponsorship, affiliation, or endorsement of its website, which constitutes evidence of bad faith use.
The Complainant requests that the disputed domain name be transferred to the Complainant. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
Paragraph 15(a) of the Rules instructs the Panel to decide the Complaint based on the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.
Under paragraph 4(a) of the Policy, the Complainant must prove each of the following:
(i) The disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) The Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) The disputed domain name has been registered and is being used in bad faith.
Paragraph 4(b) of the Policy sets out four illustrative circumstances, which for the purposes of paragraph 4(a)(iii), shall be evidence of registration and use of a domain name in bad faith.
Paragraph 4(c) of the Policy sets out three illustrative circumstances any one of which, if proved by the Respondent, shall be evidence of the Respondent’s rights to or legitimate interests in the disputed domain names for the purpose of paragraph 4(a)(ii) above. A. Identical or Confusingly Similar
The Complainant has proved that it owns several trademark registrations for WHATSAPP, in various jurisdiction throughout the world. The disputed domain name contains such trademark in its entirety, although with other terms.
As recorded in section 1.11 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), the addition of the applicable gTLD (e.g. “.com”, “.site”, “.net”) is for registration purposes only, being a technical requirement of registration of a domain name, and may be disregarded for purposes of comparison under paragraph 4(a)(i) of the Policy.
It is also well established that where the relevant trademark is recognizable within the disputed domain name, the addition of other terms – here “bulk” as a prefix and “sender” as a suffix – does not prevent a finding of confusing similarity under the first element (see WIPO Overview 3.0, section 1.8).
Accordingly, the Panel finds that the Complainant has established element 4(a)(i) of the Policy. B. Rights or Legitimate Interests
The Complainant has not authorized, licensed or permitted the Respondent to use the Complainant’s trademark WHATSAPP.
The Complainant asserts that the Respondent cannot demonstrate any legitimate noncommercial or fair use of the disputed domain name, particularly because: (i) the Respondent is using it to attract Internet users to a webpage offering bulk-messaging software to be used in connection with the Complainant’s WhatsApp messaging services and (ii) such software can be used to send unsolicited electronic communications (spam), for phishing, or for other unauthorized activities that place the security of WhatsApp users at risk and violate the WhatsApp Business Term of Service.
The Complainant has established prima facie evidence that none of the three circumstances establishing legitimate interests or rights provided for in paragraph 4(c) of the Policy applies. As stressed by many UDRP decisions, in such a case the burden of production shifts to the Respondent to rebut the evidence (see WIPO Overview 3.0, section 2.1).
In the absence of a Response to the Complaint, the Respondent has failed to rebut the prima facie case made by the Complainant or advance any other arguments supporting its rights or legitimate interests in the disputed domain name.
Therefore, the Panel finds that the Complainant has established element 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
The Complainant’s trademark WHATSAPP is composed of a coined term that confers to it certain distinctiveness.
Given the reputation of the Complainant’s WHATSAPP trademark – registration and use of which precede by far the registration of the disputed domain name – it is not conceivable that the Respondent did not have in mind the Complainant’s trademark when registering the disputed domain name. Such fact suggests that the disputed domain name was registered in bad faith (see WIPO Overview 3.0, section 3.2.2).
From the screenshots of the Respondent’s website submitted by the Complainant, it appears that the Respondent is using it for commercial gain, by offering licenses to use a bulk-messaging software for a fee ranging from MYR 50 to 150. The presence of the Complainant’s (re-colored) “Telephone Logo” trademark on the Respondent’s website, suggests that the Respondent clearly targeted the Complainant’s trademark with a website aimed at Malaysian consumers interested in the Complainant’s WhatsApp mobile messaging application. This indicates an attempt to benefit from the reputation of the Complainant’s trademark and to attract Internet users for commercial gain, by creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website or of the services offered on the Respondent’s website.
In the Panel’s view, all the above circumstances support a finding of bad faith.
As recorded in section 3.7 of the WIPO Overview 3.0, where the overall circumstances of a case point to the respondent’s bad faith, the mere existence of a disclaimer is not sufficient to cure such bad faith, especially when – as in the case in hand – the respondent does not appear to otherwise have right or legitimate interest in the disputed domain name (see section B above).
Moreover, the disclaimer appearing in the footer of the Respondent’s website (as per the screenshots submitted as Annex 8 to the Complaint) does not in any case have the features (clear wording and sufficient prominence) that may lead to believe that the Respondent has undertaken reasonable steps to avoid unfairly passing itself off as related to the Complainant, or to otherwise confuse users. Furthermore, the composition of the disputed domain name is such that it effectively suggests sponsorship or endorsement by the Complainant.
The Panel concludes in these circumstances that the Respondent’s registration and use of the disputed domain name constitute bad faith, and that the requirement of paragraph 4(a)(iii) of the Policy is also satisfied in this case 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.
Anna Carabelli
Sole Panelist
Date: April 29, 2019
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