The Complainant is WhatsApp Inc., United States of America (“United States”), represented by Hogan Lovells (Paris) LLP, France.
The Respondent is Cabir Oz, Turkey. 2. The Domain Name and Registrar
The disputed domain name is registered with IHS Telekom, Inc. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 7, 2019. On May 7, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 8, 2019, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
The Registrar confirmed that the language of the registration agreement is in Turkish, whereas the Complaint was submitted in English. On May 8, 2019, The Center sent the Parties a language of proceedings email in which they were invited to substantiate their arguments on the language of proceedings. The Complainant replied to this request on May 9, 2019, arguing in favor of English being the language of proceedings. No response received from the Respondent.
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 Respondent of the Complaint, and the proceedings commenced on May 15, 2019. In accordance with the Rules, paragraph 5, the due date for Response was June 4, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 5, 2019.
The Center appointed Gökhan Gökçe as the sole panelist in this matter on June 11, 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 WhatsApp Inc., a United States technology company providing one of the world’s most popular mobile messaging applications, founded in 2009 and acquired by Facebook, Inc. in 2014, owning several trademark registrations for WHATSAPP, among which:
- Turkish Trademark Registration No.2011/70159 for WHATSAPP, registered on December 28, 2012;
- European Union Trademark Registration No. 009986514 for WHATSAPP, registered on October 25, 2011;
- International Trademark Registration No.1085539 for WHATSAPP, registered on May 24, 2011.
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 August 11, 2018.
According to the screenshots attached to the Complaint (Annex 8), the disputed domain name resolves to a website in Turkish (the Respondent’s website) that purports to offer service for bulk messaging via the Complainant’s WhatsApp products. Pursuant to the evidences listed in Annex 8, the Respondent’s website prominently displays the Complainant’s trademarks and logos, together with the terms “toplu mesaj gönder” which means “sending bulk messages”, and makes use of the same colour scheme used for the Complainant’s official website.
On February 27, 2019 and March 13, 2019 the Complainant sent two cease-and-desist letters to the Respondent, without receiving any answer.
Although the Complainant submitted evidences which shows that the disputed domain name is linked to a Turkish website, the Panel visited the disputed domain name on June 12, 2019 and determined that the disputed domain name was inactive, thus there was no content provided. The website at the disputed domain name showed the following content: “Sistem Değerlendirmede” which means “System Evaluation” A. Complainant
The Complainant requests the transfer of the disputed domain name.
The Complainant is of the opinion that the disputed domain name is confusingly similar to its WHATSAPP trademark. The Complainant asserts that the addition of the descriptive terms “toplu mesaj gönder” do not prevent a finding of confusing similarity with the Complainant’s WHATSAPP trademark.
Furthermore, the Complainant argues that the Respondent has no rights or legitimate interests in respect of the disputed domain name. It is rather argued that the disputed domain name falsely suggests that there is some official or authorized link with the Complainant and the Respondent.
Finally, it is argued that the Respondent has registered and is using the disputed domain name in bad faith. The Complainant particularly argues that the Respondent must have been well aware of the Complainant's WHATSAPP trademark, when registering the disputed domain name, particularly as the Respondent prominently uses the Complainant’s word and figurative WHATSAPP trademarks on the websites linked to the disputed domain name without any disclosure of the missing relationship between the Complainant and the Respondent. The Complainant argues that the Respondent’s failure to reply to the Complainant’s cease-and-desist letter and/or subsequent reminder can be viewed as further evidence of the Respondent’s bad faith. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings 6.1. Language of Proceeding
Paragraph 11(a) of the Rules provides that: “Unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding.”
Although the language of the Registration Agreement for the disputed domain name is Turkish, the Complainant argues that the language of the administrative proceeding should be English for the following reasons:
The Complainant is a United States corporation, and neither it nor its representatives are capable of understanding or communicating in Turkish. To require the Complainant to submit a Turkish translation of the Complaint and Annexes would cause unwarranted delay, and would cause the Complainant to incur considerable additional expenses, running contrary to the aim of the Policy of providing time- and cost-effective means of resolving domain name disputes.
It is established practice to make a decision regarding the language of the proceeding to ensure fairness to the parties and the maintenance of an inexpensive and expeditious avenue for resolving domain name disputes. Language requirements should not lead to undue burdens being placed on the parties and undue delay to the proceeding (see, Solvay S.A. v. Hyun-Jun Shin,WIPO Case No. D2006-0593). In this case, the Complainant, which is not proficient in Turkish, will have to incur considerable expense if it is forced to translate the Complaint into Turkish. Additionally, since the Respondent did not submit any Response, translating the Complaint into Turkish will lead to undue and unnecessary burden and delay resolution of the dispute. Under these circumstances, noting that the Respondent was notified of the present proceeding in both English and Turkish, and noting that the Respondent acquiesced to the Complaint being filed in English, and the Respondent’s subsequent failure to file any substantive response to the Complaint, the Panel determines English to be the language of this proceeding. Therefore, The Panel finds that it would be inappropriate to conduct the proceeding in Turkish and request a Turkish translation of the Complaint, noting that the Respondent has failed to raise any objection with regard to the language of the proceeding and submitted an informal communication in both English and Turkish. 6.2 Substantive Issues
Paragraph 15(a) of the Rules requires the Panel to decide a complaint on the basis of the statements and documents submitted 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 bears the burden of showing:
(i) that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) that the disputed domain name has been registered and is being used in bad faith.
Paragraph 4(a) of the Policy states that the Complainant bears the burden of proving that all these requirements are fulfilled, even if the Respondent has not replied to the Complainant’s contentions. Stanworth Development Limited v. E Net Marketing Ltd.,WIPO Case No. D2007-1228.
However, concerning the uncontested information provided by the Complainant, the Panel may, where relevant, accept the provided reasonable factual allegations in the Complaint as true. See, section 4.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).
It is further noted that the Panel has taken note of the WIPO Overview 3.0 and, where appropriate, will decide consistent with the WIPO Overview 3.0. A. Identical or Confusingly Similar
The Panel finds that the Complainant has registered trademark rights in the mark WHATSAPP by virtue of various trademark registrations, including trademark registrations covering protection in Turkey, where the Respondent is located.
It is well accepted that the standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between the Complainant’s trademark and the disputed domain name.
This test typically involves a side-by-side comparison of the domain name and the textual components of the relevant trademark to assess whether the mark is recognizable within the disputed domain name. Where a domain name incorporates the entirety of a trademark, or where at least a dominant feature of the relevant mark is recognizable in the domain name, the domain name will normally be considered confusingly similar to that mark. See section 1.7 of the WIPO Overview 3.0. Although not identical, the disputed domain name fully incorporates the trademark WHATSAPP and therefore, the disputed domain name is confusingly similar to the trademark WHATSAPP as the addition of the word “toplu mesaj gonder” which means “sending bulk messages” is not sufficient to prevent a finding of confusing similarity between the disputed domain name and the Complainant’s trademark. (see WIPO Overview 3.0, section 1.8; WhatsApp, Inc. v. Abdallah Almqbali,WIPO Case No. D2016-1287 and WhatsApp Inc. v. Contact Privacy Inc. Customer 0153186272 / MOHD WILDAN AMIR MUSA,WIPO Case No. D2019-0456).
As recorded in section 1.11 of the 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 (see LEGO Juris A/S v. Whois Data Protection Sp. z o.o. / Mirek Nowakowski ROSTALCO Sp. z o.o.,WIPO Case No. D2012-0607).
Accordingly, the Panel finds that the Complainant has established element 4(a)(i) of the Policy. B. Rights or Legitimate Interests
The Respondent has not provided any evidence of the type specified in paragraph 4(c) of the Policy, or any other circumstances giving rise to rights or legitimate interests in the disputed domain name. It is clear that the Respondent has not demonstrated any bona fide offering of goods and services by its using the disputed domain name. Nor has the Respondent shown that it has been commonly known by the disputed domain name. Rather, the evidence of the Complainant suggests that the Respondent has used the disputed domain name in an attempt to trade off the goodwill associated with the Complainant’s trademark.
The Complainant also showed, inter alia, that the Respondent has neither a license nor any other permission to use the Complainant’s trademark in the disputed domain name or otherwise. 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 rights on legitimate interests 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 made a prima facie case that the Respondent lacks rights or legitimate interests, and the Respondent has failed to demonstrate such rights or legitimate interests (see, Croatia Airlines d.d. v. Modern Empire Internet Ltd.,WIPO Case No. D2003-0455). Additionally, according to earlier UDRP panels, “non-response is indicative of a lack of interests inconsistent with an attitude of ownership and a belief in the lawfulness of one’s own rights” (see GA Modefine S.A. and Giorgio Armani S.p.A. v. Yoon-Min Yang,WIPO Case No. D2005-0090; and Pomellato S.p.A. v. Richard Tonetti,WIPO Case No. D2000-0493).
Therefore, the Panel finds that the Complainant has established element 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
The Panel is convinced that the Respondent has registered and is using the disputed domain name in bad faith.
It appears that the Respondent has registered the disputed domain name solely for the purpose of creating an association with the Complainant. Although the disputed domain name no longer has been resolved to any active website, according to the print-outs of the websites linked to the disputed domain name provided as annexes to the Complaint, the Panel is convinced that the Respondent has intentionally registered the disputed domain name in order to create the false impression that the website is somehow officially linked to the Complainant. The Panel also notes that prior UDRP panels have found that the WHATSAPP trademark has acquired worldwide renown amongst mobile applications (see WhatsApp Inc. v. Francisco Costa,WIPO Case No. D2015-0909). 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).
When the Panel visited the disputed domain name, it resolved to a parking/passive page and the Respondent has not submitted any evidence or suggestion that he has any intention of using the disputed domain name for any purpose or legitimate activity consistent with good faith use. Paragraph 3.3 of the WIPO Overview 3.0 states that the lack of active use of the domain name does not as such prevent a finding of bad faith.
For these reasons, the Panel finds that the Complainant has established that the disputed domain name was registered and used in bad faith for the purpose of 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, the Panel orders that the disputed domain name be transferred to the Complainant.
Gökhan Gökçe
Sole Panelist
Date: June 12, 2019
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