The Complainant is WhatsApp Inc., United States of America (“United States”), represented by Hogan Lovells (Paris) LLP, France.
The Respondent is Kings Lo, Hong Kong, China. 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 August 20, 2019. On August 20, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 22, 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 August 26, 2019. In accordance with the Rules, paragraph 5, the due date for Response was September 15, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 16, 2019.
The Center appointed Andrea Mondini as the sole panelist in this matter on September 27, 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 the provider of the WhatsApp mobile messaging application with over 1.5 billion monthly users worldwide.
The Complainant owns numerous registrations for the trademark WHATSAPP, including United States registration No. 3939463 registered on April 5, 2011, and International Registration No. 1085539 registered on May 24, 2011, designating inter alia China.
The disputed domain name was registered on December 21, 2018, and resolves to a website providing online invitations to open chat groups. 5. Parties’ Contentions A. Complainant
The Complainant in essence contends the following:
The disputed domain name incorporates the WHATSAPP trademark in its entirety. The addition of the descriptive terms “telegram group” and “groups” does not dispel confusion. To the extent that the term “telegram” is construed as referring to the third-party mark TELEGRAM, its inclusion does not prevent a finding of confusing similarity either.
The Complainant has not licensed or otherwise authorized the Respondent to use the WHATSAPP trademark. The inclusion of the term “telegram” corresponding to the third-party trademark TELEGRAM in the disputed domain name may create a misleading impression of association between the Complainant and Telegram Messenger LLP, when these companies are in fact not related to one another. The Respondent’s website lists a number of groups that promote the sharing of “adult” i.e. pornographic content, which has the effect of tarnishing the Complainant’s trademark. The Respondent therefore has no rights or legitimate interests in the disputed domain name.
The disputed domain name has been registered in bad faith because the content of the Respondent’s website demonstrates that the Respondent had actual knowledge of the WHATSAPP mark and intended to target the Complainant and its messaging services.
The Respondent used the disputed domain name in bad faith by promoting the use of the Complainant’s messaging services in connection with the sharing of pornographic materials. By registering and using the disputed domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating likelihood of confusion with the Complainant’s WHATSAPP trademark.
The Complainant requests that the disputed domain name be cancelled. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
According to paragraph 4(a) of the Policy, in order to succeed, a complainant must establish each of the following elements:
(i) The disputed domain name is identical or confusingly similar to the trademark or service mark in which the complainant has rights;
(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. A. Identical or Confusingly Similar
The Complainant has shown that it holds registrations for the trademark WHATSAPP.
The Panel finds that the disputed domain name is confusingly similar to the Complainant’s trademark, because it incorporates in its entirety the distinctive and well-known trademark WHATSAPP. The addition of the descriptive words “telegram” and “groups” does not dispel confusing similarity between the disputed domain name and the Complainant’s trademark. See section 1.8 of WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).
To the extent that the term “telegram” is construed as referring to the third-party mark TELEGRAM, its inclusion would not prevent a finding of confusing similarity either (WIPO Overview 3.0, section 1.12).
Accordingly, the Panel finds that the Complainant has satisfied the requirement under paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
The Complainant contends, credibly, that it has not authorized the Respondent to register or use the Complainant’s trademark WHATSAPP in its disputed domain name, and that there is no relationship whatsoever between the Parties. The Complainant has demonstrated that the Respondent’s website lists a number of groups that promote the sharing of “adult” i.e. pornographic content which may have the effect of tarnishing the Complainant’s trademark (Vivendi v. Giuseva Swetlana,WIPO Case No. D2018-2631).
In the absence of any Response, the Panel concludes that there is no indication of any legitimate noncommercial or fair use of the disputed domain name. Accordingly, the Panel finds that the Respondent does not have rights or legitimate interests in the disputed domain name.
Therefore, the Panel finds that the Complainant has satisfied the requirement under paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
The content of the Respondent’s website demonstrates that the Respondent had actual knowledge of the WHATSAPP mark and intended to target the Complainant and its messaging services. The Panel therefore finds that the disputed domain name has been registered in bad faith.
The Respondent used the disputed domain name in bad faith by promoting the use of the Complainant’s messaging services in connection with the sharing of pornographic materials. Numerous panels deciding cases under the Policy have held that pornographic content on a respondent’s website is in itself sufficient to support a finding of bad faith, irrespective of the respondent’s motivation (Vivendi v. Giuseva Swetlana,WIPO Case No. D2018-2631; Christian Dior Couture v. Paul Farley,WIPO Case No. D2008-0008).
The Panel therefore finds that the Complainant has satisfied the requirement under 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 cancelled.
Andrea Mondini
Sole Panelist
Date: October 4, 2019
Full & Egal Universal Law Academy