The Complainant is WhatsApp Inc., United States of America (the “United States”), represented by Hogan Lovells (Paris) LLP, France.
The Respondent is Edwin Lizcano, Inversiones Capira SAS, Colombia. 2. The Domain Name and Registrar
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 18, 2019. On July 18, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 18, 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 19, 2019. In accordance with the Rules, paragraph 5, the due date for Response was August 8, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 14, 2019.
The Center appointed Wilson Pinheiro Jabur as the sole panelist in this matter on August 19, 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 in the business of mobile messaging applications. Founded in 2009 it was acquired by Facebook, Inc. in 2014. It is the owner, amongst several others, of the following trademark registrations and applications (Annex 11 to the Complaint):
- European Union Trade Mark Registration No. 009986514 for the word mark WHATSAPP, registered on October 25, 2011, in International classes 9, 38 and 42;
- European Union Trade Mark Registration No. 010496602 for the figurative trademark, registered on May 18, 2012, in International classes 9, 38 and 42;
- United States Trademark Registration No. 3939463 for the word mark WHATSAPP, registered on April 5, 2011, in International class 42;
- International Trademark Registration No. 1085539 for the word mark WHATSAPP, registered on May 24, 2011, in International classes 9 and 38; and
- Colombian Trademark Registration No. 437692 for the word mark WHATSAPP, registered on December 21, 2011, in International class 9.
The disputed domain name was registered on October 11, 2018 and is currently used in connection with a webpage in Spanish that offers software licensing for bulk messaging via the Complainant’s application (“app”). 5. Parties’ Contentions A. Complainant
The Complainant claims to be one of the fastest growing and most popular mobile applications in the world, having over 1.5 billion monthly active users worldwide (as of October 2018), having acquired considerable reputation and goodwill on a global scale and in Colombia.
Furthermore, the Complainant points out that previous UDRP decisions have already recognized that the WHATSAPP trademark is well known and has “acquired worldwide renown”.
The Complainant asserts that the Respondent uses the disputed domain name in connection with a webpage that offers bulk messaging via the Complainant’s app, charging a monthly license fee of USD 59or an annual fee of USD 358, extensively making reference to the Complainant and using the Complainant’s distinctive green-and-white color scheme, as well as a modified version of the Complainant’s logo, but in such webpage there is not a single disclaimer or indication that the Respondent’s website is not operated by or affiliated with the Complainant, thus creating a misleading impression of association with the Complainant.
To make matters worse, according to the Complainant, the services offered by the Respondent may be used to send unsolicited electronic communications (spam) or phishing, or for other unauthorized activities, what, in addition to being detrimental to the Complainant’s goodwill and reputation puts the Complainant’s app users at risk.
According to the Complainant, the disputed domain name incorporates the WHATSAPP trademark with the addition of the descriptive term “mas” (or “más” meaning “more” in Spanish) as a prefix, what does not prevent a finding of confusing similarity with the Complainant’s trademark which remains clearly recognizable in the disputed domain name.
Regarding the absence of the Respondent’s rights or legitimate interests, the Complainant argues that:
(i) the Respondent is not a licensee of the Complainant and has not been authorized or allowed by the Complainant to make any use of the WHATSAPP trademark;
(ii) the Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services given that the disputed domain name does not conform to the Complainant’s Brand Guidelines which expressly forbid the use of trademarks, logos or other content that could be confused with the Complainant’s app;
(iii) the Respondent’s use of the Complainant’s trademarks and logos on the webpage that resolves from the disputed domain name to offer bulk messaging software to be used in connection with the Complainant’s messaging app violates the Complainant’s Business Terms of Service, as well as do not confer rights or legitimate interests to the Respondent (as found in previous UDRP cases such as WhatsApp Inc. v. Cabir Oz,WIPO Case No. D2019-1046; WhatsApp Inc. v. Emrecan Yildirimlar,WIPO Case No. D2019-0895; and WhatsApp Inc. v. Contact Privacy Inc. Customer 0153186272 / MOHD WILDAN AMIR MUSA,WIPO Case No. D2019-0456); and
(iv) the Respondent is not commonly known by the disputed domain name.
As to the registration and use of the disputed domain name in bad faith the Complainant states that:
(i) the Complainant’s trademark is highly distinctive and well known throughout the world, being inconceivable for the Respondent to argue that he did not have knowledge of the Complainant’s WHATSAPP trademark when he registered the disputed domain name;
(ii) the Respondent’s use of the disputed domain name in connection with a webpage that demonstrates actual knowledge of the Complainant and its trademark, where multiple times references are made to the Complainant, leaves no doubt as to the Respondent’s awareness of the Complainant at the time of registration;
(iii) the Respondent, by registering the disputed domain name has intentionally attempted to attract, for commercial gain, 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, pursuant to paragraph 4(b)(iv) of the Policy;
(iv) the "Terms and Conditions" and the "Privacy Policy" on the Respondent's website consist of pro forma documents lacking any specific information about the Respondent or the services offered via the Respondent's website, which further indicates that the Respondent's website is not bona fide in nature; and
(v) the Respondent’s failure to reply to the Complainant’s cease-and-desist letter sent prior to this procedure may also be considered an additional indicator of the Respondent’s bad faith. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Identical or Confusingly Similar
The Complainant has established rights over the WHATSAPP trademark, entirely reproduced in the disputed domain name. The addition of the “mas” prefix does not prevent a finding of confusing similarity with the Complainant’s trademark, which remains clearly recognizable in the disputed domain name.
For the reasons above, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s trademarks. B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides a non-exclusive list of circumstances that may indicate the Respondent’s rights or legitimate interests in the disputed domain name. These circumstances are:
(i) before any notice of the dispute, the Respondent’s use of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; or
(ii) the Respondent (as individual, business, or other organization) has been commonly known by the disputed domain name, in spite of not having acquired trademark or service mark rights; or
(iii) the Respondent is making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The Respondent, in not responding to the Complaint, nor to the cease-and-desist letter sent by the Complainant prior to the beginning of this procedure, has failed to invoke any of the circumstances which could demonstrate, pursuant to paragraph 4(c) of the Policy, any rights or legitimate interests in the disputed domain name. This entitles the Panel to draw any inferences from such default as it considers appropriate, pursuant to paragraph 14(b) of the Rules.
In that sense, the Complainant has indeed stated that the Respondent has not been authorized or allowed by the Complainant to make any use of the WHATSAPP trademark, nor has he been commonly known by the disputed domain name.
Furthermore, and according to the evidence submitted by the Complainant, the Respondent has indeed not used the disputed domain name in connection with a bona fide offering of goods or services given the webpage that resolves from the disputed domain name offers bulk messaging via the Complainant’s app, charging a monthly license fee of USD 59 or an annual fee of USD 358, extensively making reference to the Complainant and using the Complainant’s distinctive green-and-white color scheme, as well as a modified version of the Complainant’s logo, not making however a single disclaimer or indication that the Respondent’s website is not operated by or affiliated with the Complainant, thus creating a misleading impression of association with the Complainant.
Under these circumstances and absent evidence to the contrary, the Panel finds that the Respondent does not have rights or legitimate interests with respect to the disputed domain name. C. Registered and Used in Bad Faith
The Policy indicates in paragraph 4(b)(iv) that bad faith registration and use can be found in respect of a disputed domain name, where a respondent has intentionally attempted to attract, for commercial gain, Internet users to the respondent’s website or other online location, by creating a likelihood of confusion with a complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the website or location or of a product or service on the website or location.
In this case, both the registration and use of the disputed domain name in bad faith can be found pursuant to Policy paragraph 4(b)(iv) in view of the Respondent’s use of the disputed domain name in connection with a webpage that demonstrates actual knowledge of the Complainant and its trademark, where multiple references are made to the Complainant, its messaging services leaves no doubt as to the Respondent’s awareness of the Complainant at the time of registration.
Other factors corroborate a finding of bad faith:
a. the use of the Complainant’s distinctive green-and-white color scheme, as well as a modified version of the Complainant’s logo at the webpage that resolves from the disputed domain name without a single disclaimer or indication that the Respondent’s website is not operated by or affiliated with the Complainant, thus creating a misleading impression of association with the Complainant;
b. the “Terms and Conditions” and the “Privacy Policy” on the Respondent's website consist of pro forma documents lacking any specific information about the Respondent or the services offered via the Respondent's website;
c. the Respondent’s failure to reply to the Complainant’s cease-and-desist letter sent prior to this procedure; and
d. the use of what may be false physical contact information, the Center not having been able to contact the Respondent through such.
For the reasons above, the Panel finds that the Respondent has registered and is using the disputed domain name in bad faith. 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.
Wilson Pinheiro Jabur
Sole Panelist
Date: August 27, 2019
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