The Complainant is WhatsApp Inc., United States of America, represented by Hogan Lovells (Paris) LLP, France.
The Respondent is Domain Administrator, See PrivacyG, Go-go Taxi Carl Jones, United Kingdom. 2. The Domain Name and Registrar
The disputed domain name (the “Disputed Domain Name”) is registered with NameSilo, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 25, 2019. On July 26, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name(s). On July 26, 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 July 29, 2019, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed amended Complaint on August 1, 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 August 5, 2019. In accordance with the Rules, paragraph 5, the due date for Response was August 25, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 26, 2019.
The Center appointed Flip Jan Claude Petillion as the sole panelist in this matter on August 30, 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, WhatsApp Inc., is a multinational provider of Over-The-Top (OTT) messaging and communications services. The Complainant currently is the operator of one of the most popular communication applications with over half a billion users worldwide.
The Complainant is the holder of trade and service mark registrations across various jurisdictions throughout the world for the trademark WHATSAPP, which it uses in connection with its OTT messaging and communications services. The Complainant’s trademark portfolio includes, inter alia, the following trade and service mark registrations:
- WHATSAPP, US word mark registered with the USPTO on April 5, 2011 under number 3939463 in class 42;
- WHATSAPP, EU word mark registered with the EUIPO on October 25, 2011 under number 009986514 in classes 9, 38 and 42;
EU figurative mark registered with the EUIPO on May 18, 2012 under number 010496602 in classes 9, 38 and 42 (“Complainant’s Telephone Trademark”); and
- WHATSAPP, international word mark, registered on May 24, 2011 under number 1085539 in classes 9 and 38.
The Disputed Domain Name is registered by the Respondent on January 12, 2019. The Domain Name resolves to a website that purports to offer for sale software for bulk-messaging via the Complainant's WhatsApp service (the “Respondent's Website”). The Respondent also offers for sale subscriptions for so-called “number-generating” software to be used in connection with the Respondent's bulk-messaging software. Prices for the software offered via the Respondent's Website range from a one-time payment of USD 100 to subscriptions services at USD 600 per month.
The Respondent's Website makes reference to the Complainant, copies the “look and feel” of the Complainant's official website by using the same green-and-white color scheme, and makes use of the Complainant's Telephone Trademark in order to market the Respondent's software products.
There is a fine-print disclaimer at the bottom of the page on the Respondent's Website, which reads:
“This site is not a part of Facebook, WhatsApp, Twitter Or Any Other Related Trademark. Additionally, this site is NOT endorsed by WhatsApp in ANY WAY. Facebook, WhatsApp And Twitter is a trademark Of Their Respective Inc. You understand this to be an expression of opinions and not professional advice. You are solely responsible for the use of any Software and hold WhatsAppAdx, Inc. and all members and affiliates harmless in any event or claim. We recommend that you do your own Independent research before purchasing anything.” 5. Parties’ Contentions A. Complainant
The Complainant considers the Disputed Domain Name to be confusingly similar to a trademark in which it claims to have rights. The Complainant further claims that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name. According to the Complainant, the Respondent has not used the Disputed Domain Name in connection with a legitimate use, as there are indicia that the Respondent is engaged in a fraudulent scheme designed to induce Internet users into paying for non-existent products offered via the Respondent’s Website. In any event, the products offered via the Respondent’s website, if they exist, may be used to send unsolicited electronic communications for phishing or other unauthorized activities, putting the security of WhatsApp users at risk. The presence of a disclaimer on the Respondent’s website does not cure the illegitimate use the Respondent is making. Also, according to the Complainant, the Respondent is in no way affiliated with or authorized by the Complainant and the Respondent cannot legitimately claim to be commonly known by the Disputed Domain Name. Finally, the Complainant claims that the Disputed Domain Name was registered and is being used in bad faith. The Complainant contends that the Respondent knew of the existence of the Complainant’s trademark rights and sought to impersonate or create confusion with the Complainant and its business as part of a fraudulent scheme. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
Paragraph 15 of the Rules provides that the Panel is to decide the 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.
The onus is on the Complainant to make out its case and it is apparent, both from the terms of the Policy and the decisions of past UDRP panels, that the Complainant must show that all three elements set out in paragraph 4(a) of the Policy have been established before any order can be made to transfer the Disputed Domain Name. As the UDRP proceedings are expedited and do not have any evidentiary discovery, the standard of proof is the balance of probabilities.
Thus, for the Complainant to succeed it must prove, within the meaning of paragraph 4(a) of the Policy, that:
(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.
The Panel will therefore deal with each of these requirements. A. Identical or Confusingly Similar
To prove this element, the Complainant must first establish that there is a trademark or service mark in which it has rights. The Complainant has clearly established that there are WHATSAPP trademarks in which it has rights. The trademarks have been registered and used in various countries in connection to the Complainant’s messaging and communication services.
The Disputed Domain Name incorporates the Complainant’s WHATSAPP trademark in its entirety, merely adding the suffix “adx”. As stated at section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), where the relevant trademark is recognizable within the Disputed Domain Name, the additions of other terms would not prevent a finding of confusing similarity. The Panel considers that the suffix “adx” may stand for a streamed audio file format. The Panel is of the opinion that the mere addition of a non-distinctive text to a complainant’s trademark constitutes confusing similarity, as set out in paragraph 4(a)(i) of the Policy (see Karen Millen Fashions Limited v. Akili Heidi,WIPO Case No. D2012-1395, where the domain name was held to be confusingly similar to the KAREN MILLEN trademark; Belstaff S.R.L. v. Jason Lau, Sharing,WIPO Case No. D2012‑0783, where the domain name was held to be confusingly similar to the BELSTAFF trademark; Lime Wire LLC v. David Da Silva / C,WIPO Case No. D2007‑1168, where the domain name was held to be confusingly similar to the LIME WIRE trademark, especially with addition of the word “download” because users typically download complainant’s software).
Additionally, it is well established that the generic Top-Level Domain (“gTLD”) “.com” may be disregarded when considering whether the Disputed Domain Name is confusingly similar to the trademark in which the Complainant has rights.
In light of the above, the Panel considers the Disputed Domain Name to be confusingly similar to the Complainant’s WHATSAPP trademark. Accordingly, the Complainant has made out the first of the three elements of the Policy that it must establish. B. Rights or Legitimate Interests
Under paragraph 4(a)(ii) of the Policy, the Complainants have the burden of establishing that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name.
As established by previous UDRP panels, it is sufficient for the complainants to make a prima facie showing that the respondent has no rights or legitimate interests in the Disputed Domain Names in order to place the burden of production on the respondent (seesection 2.1 of the WIPO Overview 3.0 ).
The Panel notes that the Respondent has not apparently been commonly known by the Disputed Domain Name and that the Respondent does not seem to have acquired trademark or service mark rights. The Respondent has hidden its identity by using a privacy service, and there is nothing in the record to indicate that the Respondent is commonly known by the Disputed Domain Name.The Respondent’s use and registration of the Disputed Domain Name was not authorized by the Complainant. There are no indications that a connection between the Complainant and the Respondent existed.
Moreover, the Panel is of the opinion that the Respondent’s use of the Disputed Domain Name does not constitute a legitimate noncommercial or fair use. The Panel considers that the Respondent was trading on the Complainant’s reputation and goodwill by diverting traffic to a website associated with a domain name that is confusingly similar to the Complainant’s WHATSAPP trademark and on which the Respondent offered purported software that can be used to send unsolicited electronic communications. There are indicia that the Respondent is engaged in a fraudulent scheme designed to induce Internet users into paying for non-existent products offered via the Respondent’s Website. In any event, even if the software products are effectively offered via the Respondent’s Website, such use is likely to generate commercial gain through the offering of spam services and cannot be considered a bona fide offering of goods and services for purposes of paragraph 4(c)(i) of the Policy.
The Respondent had the opportunity to assert and explain their purported rights or legitimate interests but did not do so.
Therefore, the Panel finds that the Complainant has established that the Respondent has no rights or legitimate interests in the Disputed Domain Name. In light of the above, the Complainant succeeds on the second element of the Policy. C. Registered and Used in Bad Faith
The Complainant must prove on the balance of probabilities both that the Disputed Domain Name was registered in bad faith and that it is being used in bad faith (see, e.g., Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003; Control Techniques Limited v. Lektronix Ltd,WIPO Case No. D2006-1052).
The Respondent has incorporated the Complainant’s WHATSAPP trademark in its entirety in the Disputed Domain Name. Additionally, the Disputed Domain Name has been used to resolve to a website offering purported software products associated to the Complainant’s WHATSAPP offering. The Respondent’s Website incorporates one of the Complainant’s figurative trademarks and copies the look and feel of the Complainant's official website. It is therefore inconceivable that the Respondent was unaware of the Complainant and its trademark rights when it registered the Disputed Domain Name. The Panel therefore finds that the Respondent’s awareness of the Complainants’ trademark rights at the time of registration suggests bad faith (see Red Bull GmbH v. Credit du Léman SA, Jean‑Denis Deletraz,WIPO Case No. D2011-2209; Nintendo of America Inc. v. Marco Beijen, Beijen Consulting, Pokemon Fan Clubs Org., and Pokemon Fans Unite, WIPO Case No. D2001-1070; BellSouth Intellectual Property Corporation v. Serena, Axel,WIPO Case No. D2006-0007).
In the present case, the Panel is of the opinion that the Complainant’s trademarks have a strong reputation and are widely known throughout the world. This makes it difficult to conceive any plausible legitimate future use of the Disputed Domain Name by the Respondent.
Moreover, it is clear that the Respondent registered Disputed Domain Name with the intent to profit in some fashion from or otherwise exploit the Complainant’s trademarks through the purported offering of bulk-messaging software. The use of a disclaimer on the Respondent’s Website does not cure the misleading impression of association with the Complainant (seesections 3.1.4 and 3.7 of the WIPO Overview 3.0).
Finally, by temporarily using a privacy service and providing apparently false contact information on the Respondent’s Website, the Respondent has taken active steps to conceal its identity (see Fifth Third Bancorp v. Secure Whois Information Service,WIPO Case No. D2006-0696, where it was held that the use of a proxy registration service to avoid disclosing the identity of the real party in interest is also consistent with an inference of bad faith when combined with other evidence of evasive and irresponsible conduct). The Panel also notes that Respondent did not respond to the Complaint. Therefore, the Panel considers that the inference of bad faith is strengthened, in light of the cumulative circumstances indicating bad faith (See Telstra Corporation Limited v. Nuclear Marshmallows, supra).
Therefore, the Panel finds that, on the balance of probabilities, it is sufficiently shown that the Disputed Domain Name was registered and is being used in bad faith. In light of the above, the Complainant also succeeds on the third and last element 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.
Flip Jan Claude Petillion
Sole Panelist
Date: September 3, 2019
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