The Complainant is WhatsApp Inc., United States of America, represented by Hogan Lovells (Paris) LLP, France.
The Respondent is Segundo Munoz, Hosting and Domain Registration, Peru / Karla Samaniego Carranza, Corts, Mexico. 2. The Domain Name and Registrar
The disputed domain name is registered with CloudFlare, Inc. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 22, 2019. On August 22, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 23, 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 August 26, 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 an amended Complaint on August 27, 2019. The Respondent sent three email communications between August 27-28, 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 28, 2019. In accordance with the Rules, paragraph 5, the due date for Response was September 17, 2019. The Center sent the Commencement of Panel Appointment Process on September 18, 2019.
The Center appointed Manuel Moreno-Torres as the sole panelist in this matter on September 24, 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 a provider of one of the world’s most popular 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:
- United States Trademark Registration No. 3939463 for the word mark WHATSAPP, registered on April 5, 2011;
- International Trademark Registration No. 1085539 for the word mark WHATSAPP registered on May 24, 2011;
- European Union Trade Mark Registration No. 009986514 for the word mark WHATSAPP, registered on May 25, 2011;
- European Union Trade Mark Registration No. 010496602 for the figurative trademark, registered on May 18, 2012; and
- Peruvian trademark registration No. T00004569, WHATSAPP, registered on June 4, 2012.
The disputed domain name was registered on September 3, 2018. The domain name resolves to a website in Spanish which lists various so called pro-forma “chain messages” to be sent via the Complainant’s WhatsApp service. The website displays a number of sponsored pay-per-click (PPC) advertising to third-party products.
The Complainant sent a cease-and-desist letter to the Respondent by email on April 1, 2019 and a reminder 15 days later. The Respondent did no reply to any such letters. 5. Parties’ Contentions A. Complainant
The Complainant claims that the disputed domain name is confusingly similar to a trademark in which the Complainant has rights. The disputed domain name incorporates the Complainant’s WHATSAPP trademark in its entirety with the addition of the descriptive term “cadenas de”. Moreover, the generic Top-Level Domain (“gTLD”) “.org” should be disregarded for the purposes of the assessment under the first element.
The Complainant asserts that the Respondent is unable to invoke any of the circumstances set out in paragraph 4(c) of the Policy, in order to demonstrate rights or legitimate interests in the disputed domain name.
Accordingly, the Complainant asserts that the Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services. The Complainant notes that the Respondents is not complying with the Complainant’s Brand Guidelines which prohibit the registration of domain names that could be confused with its trademark. Besides, the Respondent is not a licensee nor has the Respondent been authorized by the Complainant to make use of its trademarks in a domain name or otherwise. Further, the Respondent is making use of the Complainant’s trademarks and logos on its website. And there is no disclaimer on the Respondent’s website to clarify the lack of relationship with the Complainant.
The Respondent is not commonly known by the disputed domain name or a name corresponding to the dispute domain name.
Neither the Respondent is making a legitimate noncommercial or fair use of the disputed domain name since the Respondent is driving Internet users to its website via links embedded in its chain messages which prominently displays PPC links.
With regard to the third element, the Complainant asserts that the Respondent registered the disputed domain name without authorization and in full knowledge of the Complainant’s rights. The content of the website makes use of the Complainant´s telephone logo and color scheme, and indicates the Respondent’s intent to target the Complainant when registering the disputed domain name.
The Respondent is providing chain messages on its website with the intent to increase Internet traffic to its website in order to generate click-through-revenue from the sponsored advertising appearing therein.
The Complainant also notes that the Respondent creates an impression of association with the Complainant. There is no disclaimer, nor any comprehensive contact information to make the relation between the parties clear.
Further, the Complainant submits that the Respondent’s failure to reply the Complainant’s cease and desist letter may be seen as a further indicator of the Respondent’s bad faith. B. Respondent
The Respondent did not substantially reply to the Complainant’s contentions. However, the Respondent sent three email communications, in two of them asking about information on the dispute and on the third saying it will only transfer the disputed domain name if the Complainant pays for it. 6. Discussion and Findings
Under paragraph 4(a) of the Policy, to succeed the Complainant must satisfy the Panel that:
(i) the disputed domain name is identical or confusingly similar to a 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 was registered and is being used in bad faith.
There are no exceptional circumstances within paragraph 5(e) of the Rules to prevent this Panel from determining the dispute based upon the Complaint, notwithstanding the failure of the Respondent to lodge a formal Response. Under paragraph 14(a) of the Rules in the event of such a “default” the Panel is still required “to proceed with a decision on the complaint”, whilst under paragraph 14(b) it “shall draw such inferences there from as it considers appropriate”. A. Identical or Confusingly Similar
The Complainant has provided enough evidence to show trademarks rights with regard to WHATSAPP in a large number of countries worldwide. Where the Complainant holds registered trademarks this evidence satisfies “the threshold requirement of having trademark rights for the purposes of standing to file a UDRP case” (see section 1.2 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).
It is well accepted that the standing test for confusing similarity involves a comparison between the Complainant’s mark and the disputed domain name. Here, the comparison shows the reproduction of the Complainant’s trademark in its entirety and the addition of the dictionary term “cadenas de”. Previous UDRP panels have consistently considered that both the reproduction of the trademark as well as the mere addition of a descriptive or dictionary term to a trademark would not prevent a finding of confusing similarity. See Universal Services of America, LP d/b/a Allied Universal v. Registration Private, Domains By Proxy, LLC / Carolina Rodrigues, Fundación Comercio Electrónico, WIPO Case No. D2019-0156or Alfred Dunhill, Inc. v. Registration Private, Domains By Proxy, LLC / Abdullah Altubayieb, WIPO Case No. D2017-0209.
It is well established that the gTLD, in this case “.org”, is typically irrelevant to the consideration of identity or confusing similarity between a trademark and a domain name.
To the satisfaction of the Panel the first requirement is met under paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
With regard to paragraph 4(a)(ii) of the Policy, the Panel finds that the Complainant has made a prima facie showing that the Respondent does not have rights or legitimate interests in the disputed domain name. As such, the Respondent is not using the disputed domain name in connection with a bona fide offering of goods and services, nor has been commonly known by the disputed domain name and, neither is making a legitimate noncommercial or fair use of the disputed domain name.
It is apparent for the Panel that the Respondent is not a licensee of the Complainant nor has been otherwise authorized to use the disputed domain name. Besides, the Panel has checked the use of the Complainant’s marks in the website to which the dispute domain name resolves. In the Panel’s view such a use is obvious and illegitimate. Moreover, the disputed domain name’s composition effectively impersonates or falsely suggest a sponsorship or endorsement by the Complainant. The Panel refers to the WIPO Overview 3.0 section 2.5, which states that “fundamentally, a respondent’s use of a domain name will not be considered fair if it falsely suggests affiliation with the trademark owner”.
There is no evidence in the file that the Respondent is commonly known by the disputed domain name or a name corresponding to the disputed domain name.
The Panel has also checked the use of the PPC links on the Respondent’s website. In the Panel’s view this use is made with the ultimate intent to gain click-through-revenue. Therefore, a commercial intention is recognizable.
Since the Respondent has failed to respond substantially the Complaint, the prima facie case has not been rebutted. Under these circumstances the Complainant has demonstrated that the Respondent lacks rights or legitimate interests in the disputed domain name to the satisfaction of the Policy. C. Registered and Used in Bad Faith
As set out at paragraph 4(a)(iii) of the Policy the Complainant is required to show that the Respondent both registered and is using the disputed domain name in bad faith.
As it has been corroborated on the previous requirements, the Panel finds that the registration was in bad faith. By incorporating the Complainant’s marks in the disputed domain name and by using its brand and image on the corresponding website, the Respondent must have had the Complainant or its trademarks in mind when selecting the disputed domain name for registration. See Philip Morris Products S.A. v. Contact Privacy Inc. Customer 0150128648 / Chen Yu Chen, HeatShopUSA,WIPO Case No. D2018-0601.
Likewise, UDRP panels may take into account the degree of recognition of the Complainant’s trademark when assessing whether the respondent’s registration of the disputed domain name is in bad faith. WHATSAPP is to be considered a well-known trademark. Therefore, the Panel finds that the Respondent knew or should have known about the existence of the WHATSAPP trademark when registering the disputed domain name. In the circumstances, this suffices to establish bad faith registration.
The Panel also finds that the Respondent intentionally registered and has been using the disputed domain name to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s marks as to the source, sponsorship, affiliation or endorsement of such website and consequently that the disputed domain name has been registered and is being used in bad faith pursuant to paragraph 4(b)(iv) of the Policy. That way, the Respondent features a number of PPC links in the website which apparently are making profit. For such a goal the Respondent has registered the disputed domain name with an intent of confusion to the Internet users since the disputed domain name and the content of the website reproduce the WHATSAPP trademark. Such a conclusion is reinforced by the fact that no disclaimer is found in the website.
Consequently, the requirements of paragraph 4(a)(iii) of the Policy have been satisfied. 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.
Manuel Moreno-Torres
Sole Panelist
Date: October 6, 2019
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