The Complainant is WhatsApp Inc., United States of America, represented by Hogan Lovells (Paris) LLP, France.
The Respondent is Trace Margon, India. 2. The Domain Name and Registrar
The disputed domain name is registered with Hostinger, UAB (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 11, 2019. On July 11, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 12, 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 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 July 15, 2019. In accordance with the Rules, paragraph 5, the due date for Response was August 4, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 5, 2019.
The Center appointed Nicholas Weston as the sole panelist in this matter on August 12, 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 operates a messaging application business with over 1.5 billion monthly active users. The Complainant holds registrations for the trademark WHATSAPP in numerous countries, which it uses to designate computer applications, software programs, websites, databases, wireless communication, mobile information access and remote data management for wireless delivery of content to computers and smartphones. United States Trademark Registration No. 3,939,463, for example, cites a first-use date of February 24, 2009 and was registered on April 5, 2011.
The Complainant owns numerous domain names that comprise of, or contain, the trademark WHATSAPP, including the domain name , and has from 2009 operated an active website as an online resource that allows Internet users around the world to access its messaging platform and to support its mobile communications app.
The Respondent registered the Disputed Domain Name on November 19, 2018. The Disputed Domain Name resolved to a parking web page containing advertisements and links relating to pornography. Currently, the Disputed Domain Name resolves to an inactive webpage. 5. Parties’ Contentions A. Complainant
The Complainant cites its trademark registrations of the trademark WHATSAPP in the United States, India, European Union and other geographies as prima facie evidence of ownership.
The Complainant submits that the mark WHATSAPP is well-known and that its rights in that mark predate the registration of the Disputed Domain Name . It submits that the Disputed Domain Name is confusingly similar to its trademark, because the Disputed Domain Name incorporates in its entirety the WHATSAPP trademark and that the confusing similarity is not removed by the addition of the word “groups”.
The Complainant contends that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name because the Respondent has no trademark rights in or license to use the Complainant’s trademark. The Complainant also contends that use, which intentionally trades on the fame of another to divert traffic to a PPC website does not meet the criteria of a bona fide offering of goods or services (citing Oki Data Americas, Inc. v. ASD, Inc.,WIPO Case No. D2001-0903).
Finally, the Complainant alleges, inter alia, that the registration and use of the Disputed Domain Name was, and currently is, in bad faith, contrary to paragraphs 4(a)(iii) and 4(b) of the Policy, using the Complainant’s WHATSAPP mark in the Disputed Domain Name, and has intentionally attempted to attract for commercial gain Internet users to the Respondent’s website or other online locations, by creating likelihood of confusion with the Complainant’s trademarks as to the source, sponsorship, affiliation or endorsement of the Respondent’s websites (citing WhatsApp, Inc. v. Domain Manager, SHOUT marketing SL, and Gonzalo Gomez Rufino, River Plate Argentina, and Gonzalo Gomez Rufino, SHOUT Marketing SL,WIPO Case No. D2018-1581). B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
Under paragraph 4(a) of the Policy, the Complainant has the burden of proving the following:
(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. A. Identical or Confusingly Similar
The Complainant has produced sufficient evidence to demonstrate that it has registered trademark rights in the mark WHATSAPP in numerous countries including the United States of America and the Respondent’s apparent location, India. The requirements of the first element for purposes of the Policy may be satisfied by a trademark registered in any country (see Thaigem Global Marketing Limited v. Sanchai Aree,WIPO Case No. D2002-0358).
Turning to whether the Disputed Domain Name is identical or confusingly similar to the WHATSAPP trademark, the Panel observes that the Disputed Domain Name comprises: (a) an exact reproduction of the Complainant’s trademark WHATSAPP; (b) followed by the word “groups”; (c) followed by the generic Top-Level Domain (“gTLD”) “.net”.
It is well-established that the gTLD used as technical part of a domain name may be disregarded (see Autodesk v. MumbaiDomains,WIPO Case No. D2012-0286). The relevant comparison to be made is with the second-level portion of the Disputed Domain Name, specifically: “whatsappgroups”.
It is also well established that where a domain name incorporates a complainant’s well-known and distinctive trademark in its entirety, it may be confusingly similar to that mark despite the addition of a word, in this case, the word “groups”: (see Oki Data Americas, Inc. v. ASD, Inc.,WIPO Case No. D2001-0903; Wal Mart Stores, Inc. v. Kuchora, Kal,WIPO Case No. D2006-0033).
This Panel accepts the Complainant’s contention that the addition of the word “groups” after the Complainant’s registered trademark is an additional element that does not serve to distinguish the Disputed Domain Name (see: Accenture Global Services Limited v. Milano Mariah,WIPO Case No. D2019-1067 (“The addition of the descriptive word “groups” does not dispel confusing similarity between the disputed domain name and the Complainant’s trademark”); The Royal Bank of Scotland Group Plc v. tom dobberfuhl / Private Registration US,WIPO Case No. D2012-0853 (“the addition of a generic word, such as “groups” does not serve to distinguish the disputed domain name from the Complainant’s well-known trademark”); Statoil ASA v. Domain Administrator, Fundacion Private Whois,WIPO Case No. D2014-1682 (“the additions of a gTLD and the term “groups” fail to distinguish the domain name from the incorporated mark”).
The Panel finds that the Complainant has established paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy lists the ways that the Respondent may demonstrate rights or legitimate interests in the Disputed Domain Name. The Policy also places the burden on the Complainant to establish the absence of the Respondent’s rights or legitimate interests in the Disputed Domain Name. Because of the inherent difficulties in proving a negative, the consensus view is that the Complainant need only put forward a prima facie case that the Respondent lacks rights or legitimate interests. The burden of production then shifts to the Respondent to rebut that prima facie case (see World Wrestling Federation Entertainment, Inc v. Ringside Collectibles,WIPO Case No. D2000-1306; WIPO Overview of Panel Views on Selected URDP Questions, Third Edition “WIPO Overview 3.0”, section 2.1).
The Complainant contends that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name because it is misleadingly directing Internet users to a pay-per-click (“PPC”) landing web page dominated by links advertising supposed income earning opportunities and pornography, thereby illegitimately passing off the owner’s goodwill and reputation for its own benefit. The Complainant also has not licensed, permitted or authorized the Respondent to use the Complainant’s trademark.
On any objective view, the Respondent is not a reseller with a legitimate interest in a domain name incorporating a manufacturer’s mark, such that it could meet the tests set out in Oki Data Americas, Inc. v. ASD, Inc., supra. Nor, alternatively, is the Respondent commonly known by the Disputed Domain Name.
This Panel finds that the Respondent is making an illegitimate commercial use of the Disputed Domain Name. By misleadingly diverting consumers, it can be inferred that the Respondent is opportunistically using the Complainant’s well-known mark in order to attract Internet users to its website and has been using the Disputed Domain Name to divert Internet traffic to its PPC web page.
The Panel finds for the Complainant on the second element of the Policy. C. Registered and Used in Bad Faith
The third element of the Policy that the Complainant must also demonstrate is that the Disputed Domain Name has been registered and used in bad faith. Paragraph 4(b) of the Policy sets out certain circumstances to be construed as evidence of both of these conjunctive requirements.
The Panel finds that the evidence in the case shows the Respondent registered and has used the Disputed Domain Name in bad faith.
On the issue of registration, the trademark WHATSAPP is such a famous mark for software that it would be inconceivable that the Respondent might have registered the mark without knowing of it (see Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003; WhatsApp, Inc. v. Nasser Bahaj, WIPO Case No. D2016-0581 (“the trademark WHATSAPP is well-known”); WhatsApp, Inc. v. Domain Manager, SHOUT marketing SL, and Gonzalo Gomez Rufino, River Plate Argentina, and Gonzalo Gomez Rufino, SHOUT Marketing SL, supra (“Complainant’s trademark WHATSAPP has become well-known around the world”); WhatsApp Inc. v. Emrecan Yildirimlar,WIPO Case No. D2019-0895 (“Complainant’s well-known WHATSAPP trademark”).
This Panel accepts, as the basis of a further finding of bad faith, the Complainant’s uncontested evidence that “the content of the Respondent’s website clearly demonstrates actual knowledge of the Complainant and its trade mark, as it makes multiple references to the Complainant, displaying the Complainant’s WhatsApp telephone logo and trade mark.” (see WhatsApp Inc. v. Chandru Printers, Praveen Chandru,WIPO Case No. D2018-1543 (“Plainly, the Respondent was and is well aware of the Complainant’s product”).
The diversion of Internet users is also a common example of use in bad faith as referred to in paragraph 4(b)(iv) of the Policy and identified in many previous UDRP decisions (see L’Oréal, Biotherm, Lancôme Parfums et Beauté & Cie v. Unasi, Inc.,WIPO Case No. D2005-0623; Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co.,WIPO Case No. D2000-0163 and Hoffmann-La Roche Inc. v. Samuel Teodorek,WIPO Case No. D2007-1814).
On the issue of use, the evidence is that the Disputed Domain Name resolved to a PPC parking page unconnected with any bona fide supply of goods or services by the Respondent. The Panel surmises that the business model in this case, was for the Respondent to passively collect click-through revenue generated solely from the Complainant’s goodwill and Internet users’ inaccurate guessing of the correct domain name associated with the Complainant’s WHATSAPP service. Exploitation of the reputation of a trademark to obtain click-through commissions from the diversion of Internet users is a common example of use in bad faith as referred to in paragraph 4(b)(iv) of the Policy and identified in many previous UDRP decisions. (See Veuve Cliquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co., supra; Lilly ICOS LLC v. The Counsel Group LLC,WIPO Case No. D2005-0042; and L’Oréal, Biotherm, Lancôme Parfums et Beauté & Cie v. Unasi, Inc, supra; Research In Motion Limited v. International Domain Names Inc./Moniker Privacy Services, supra; Lowen Corporation d/b/a Lowen Sign Company v. Henry Chan, supra and Deloitte Touche Tohmatsu v. Henry Chan, supra).
In the absence of any evidence to the contrary, this Panel finds that the Respondent has taken the Complainant’s trademark WHATSAPP and incorporated it in the Disputed Domain Name without the Complainant’s consent or authorization, for the very purpose of capitalizing on the reputation of the trademark by diverting Internet users to a PPC parking web page for commercial gain.
Accordingly, the Panel finds that the Complainant has satisfied the requirements 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 Complaint.
Nicholas Weston
Sole Panelist
Date: August 21, 2019
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