The Complainant is WhatsApp, Inc., United States of America(“United States” or “U.S.”), represented by Hogan Lovells (Paris) LLP, France.
The Respondent is Naresh Jagani, India. 2. The Domain Name and Registrar
The disputed domain name (the “Disputed Domain Name”) is registered with GoD, LLC (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 11, 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 18, 2019. In accordance with the Rules, paragraph 5, the due date for Response was August 7, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 8, 2019.
The Center appointed Nicholas Weston as the sole panelist in this matter on August 13, 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 January 20, 2018. The Disputed Domain Name resolved to a parking web page containing advertisements and links relating to various categories of interest. 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 words “group”, “link” and “join”.
The Complainant contends that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name because the Respondent “is not a licensee of the Complainant, nor has the Respondent been otherwise authorized by the Complainant to make any use of its WHATSAPP trade mark, in a domain name or otherwise”. The Complainant also contends that use, which intentionally trades on the fame of another to divert traffic to a website does not meet the criteria of a bona fide offering of goods or services “within the meaning of paragraph 4(c)(i) of the Policy”.
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 and, in particular, paragraph 4(b)(iv). It contends that by using the Complainant’s “well-known” WHATSAPP mark in the Disputed Domain Name, “Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with the Complainant's WHATSAPP trademark as to the source, sponsorship, affiliation, or endorsement of its website or other online location, pursuant to paragraph 4(b)(iv) of the Policy.” 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 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 “group”; (c) followed by the word “link”; (d) followed by the word “join”; (e) followed by the general Top-Level Domain (“gTLD”) “.com”.
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: “whatsappgrouplinkjoin”.
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 words “group”, “link” and “join” after the Complainant’s registered trademark are additional elements that do not serve to adequately 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”); LEGO Juris A/S v. Todd Ahlstrom,WIPO Case No. D2009-1712 (“[t]he word ‘links' is merely descriptive. It accepts the argument of the complainant that the use of the suffix ‘links' does not have any impact on the overall impression of the dominant part of the domain name”); NutriSystem IPHC, Inc. v. Craig Rosenfeld,WIPO Case No. D2008-0336 (“The domain name consists of complainant’s registered mark preceded by the common term “join” and followed by the gTLD suffix “.com”. It has long been held that the addition of a generic or descriptive term to a mark will not alter the fact that a domain name is confusingly similar to a 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 Respondent’s rights or legitimate interest 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 WIPO 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 web page dominated by links that seek to illegitimately passing off the owner’s goodwill and reputation for its own benefit. The Complainant has not licensed, permitted, or authorized the Respondent to use the Complainant’s trademark and is not using the Disputed Domain Name in connection with a bona fide offering of goods or services, within the meaning of paragraph 4(c)(i) of the Policy.
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.,WIPO Case No. D2001-0903. 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, and displaying a commercial banner advertisement, 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 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 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,WIPO Case No. D2018-1581,(“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”); WhatsApp Inc., Instagram, LLC v. Naim Wekking, Jack Worli,WIPO Case No. D2019-0117 ("the Complainant’s WHATSAPP and INSTAGRAM trademarks are highly distinctive and well-known throughout the world. They have been continuously and extensively used since 2009 (for WHATSAPP) and 2010 (for INSTAGRAM), and have rapidly acquired considerable goodwill and renown worldwide, including in India where the Respondent is based.").
This Panel accepts, as the basis of a further finding of bad faith, the Complainant’s uncontested evidence that “the Respondent's website clearly demonstrates actual knowledge of the Complainant and its trademark, as it makes multiple references to the Complainant”.
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 resolves to a webpage unconnected with any bona fide supply of goods or services by the Respondent. The Panel finds that the evidence does support a finding that the Respondent has registered the Disputed Domain Name to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the complainant’s mark, by: (i) seeking to cause confusion for the Respondent’s commercial benefit, including the display of links and a banner advertisement; (ii) the lack of the Respondent’s own rights to or legitimate interests in the Disputed Domain Name; (iii) the lack of any form of disclaimer; and (iv) the absence of any conceivable good faith use (see WIPO Overview 3.0, section 2.5.3).
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 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 Complainant.
Nicholas Weston
Sole Panelist
Date: August 19, 2019
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