The Complainant is WhatsApp Inc., United States of America (the “Unites States”), represented by Hogan Lovells (Paris) LLP, France.
The Respondent is Roberto-Carlos Consultores, SL, Spain. 2. The Domain Name and Registrar
The disputed domain name is registered with Acens Technologies, S.L.U. (the “Registrar”). 3. Procedural History
The Complaint was filed in English 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 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”).
The Center sent an email communication to the parties on August 26, 2019 regarding the language of the proceeding, as the Complaint has been submitted in English and the language of the registration agreement for the disputed domain name is Spanish. The Complainant submitted a request for English to be the language of the proceeding on August 26, 2019. The Respondent did not comment on the language of the proceeding.
In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint in English and Spanish, and the proceedings commenced on September 3, 2019. In accordance with the Rules, paragraph 5, the due date for response was September 23, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 24, 2019.
The Center appointed Manuel Moreno-Torres as the sole panelist in this matter on September 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.
In accordance with Articles 10 and 11 of the Rules on the general powers of the Panel and on the language of the proceeding, the Complaint is accepted in English. For this purpose, the Panel has taken into account the silence of the Respondent, the correct notification of the proceedings in English and Spanish together with the Complaint to Respondent, as well as the fact that the disputed domain name contains the English word “on”. Therefore, the Panel agrees that English is the language of the proceeding and therefore also the language in which the Decision is to be issued. 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
The disputed domain name was registered on September 4, 2018. The disputed domain name resolves to a website in Spanish that promotes a bulk-messaging software program called “WhatsON”. The Respondent’s website makes extensive reference to the Complainant, the Complainant’s logo and trademark.
The Complainant sent a cease-and-desist letter to the Respondent by email on March 29, 2019; and a reminder later on April 17, 2019. 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 “-on”. Moreover, the generic Top-Level Domain (“gTLD”) “.com” 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 Respondent 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.
The Complainant also notes that there is no disclaimer on the Respondent’s website to clarify the lack of relationship with the Complainant. By contrast, the Respondent’s website creates a strong impression of affiliation between the Complainant, the Respondent and the software advertised by the latter on its website.
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 within the meaning of paragraph 4(c)(iii) of the Policy. The Respondent’s website purports to offer for sale licenses or subscriptions for the Respondent’s bulk-messaging services and therefore with commercial intent.
With regard to the third element the Complainant asserts that the Respondent registered the disputed domain name in full knowledge of the Complainant’s rights. The Complainant notes that previous UDRP panels have recognized the strength and renown of the Complainant’s trademark and have ordered the transfer of the disputed domian names to the Complainant. Moreover, the content of the website makes use of the Complainant’s logo and variations of it as well as references to the Complainant. Accordingly, the Respondent registered the disputed domain name in bad faith without authorization and in full knowledge of the Complainant’s rights.
The Respondent is using the disputed domain name in connection with a website that makes use of the Complainant’s trademark and logo to offer for sale subscriptions for bulk-messaging services, in connection with the Complainant’s WhatsApp messaging services.
The Complainant also notes that the Respondent creates an impression that its website and the software offered therein are affiliated with or endorsed by the Complainant.
The use of the Complainant’s logo and trademark in the Respondent’s site indicates an attempt to benefit from the reputation of the Complainant’s trademark and to attract Internet users for commercial gain, by creating a likelihood of confusion with the Complainant’s WHATSAPP trademark as to the source, sponsorship, affiliation or endorsement of its website.
Further the Complainant submits that the Respondent failure to reply the Complainant’s cease and desist letters may be seen as a further indicator of the Respondent’s bad faith. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 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 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. Rightly, such submissions allow the Panel to proceed with the standing test for confusing similarity which involves a comparison between the Complainant’s mark and the disputed domain name. The comparison shows the reproduction of the disputed domain name and the addition of the dictionary term “-on”. 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 Alfred Dunhill, Inc. v. Registration Private, Domains By Proxy, LLC / Abdullah Altubayieb,WIPO Case No. D2017-0209.
gTLDs are typically irrelevant to the consideration of identity or confusing similarity between a trademark and a domain name.
Therefore, the first requirement is met under paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
In relation 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.
Therefore, the Respondent is not a licensee of the Complainant nor has been otherwise authorized to use the disputed domain name. The Respondent is using the Complainant’s trademarks in the disputed domain name or replicating them on its website. While the layout is not prominent, the Respondent creates the impression of being the owner or licensee of the corresponding trademarks on the website. Obviously, this is not the case when using the WHATSAPP logo and trademark. Under these circumstances it is apparent for the Panel that the Respondent is seeking to take unfair commercial advantage of the Complainant’s trademark.
Further, nothing in the file evidences that the Respondent is commonly known as “WhatsApp-on”, neither is the Respondent making a legitimate noncommercial or fair use of the disputed domain name.
According to WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 2.1.: “[W]here a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name.” However, the Respondent did not file a Response to the Complaint. Thus, the Respondent did not come forward with such appropriate allegation or evidence before the Panel.
The Complainant has therefore demonstrated that the Respondent lacks rights or legitimate interests in the disputed domain name to the satisfaction of the Policy, paragraph 4(a)(ii). C. Registered and Used in Bad Faith
For the purposes of the Policy, a Complainant must establish that the disputed domain name was registered and used in bad faith by the Respondent.
Previous UDRP decisions have recognized the notoriety and well-known character of the WHATSAPP trademark, see for example 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. Being that as it is, the Panel is of the view that the Respondent must have been aware of the existence of the Complainant’s trademark WHATSAPP at the time of the registration. Further, the consecutive use of the Complainant’s marks and logo in the Respondent’s site reinforces such a conclusion.
The Panel notes that the composition of the disputed domain name effectively impersonates or suggests sponsorship or endorsement by the Complainant. Besides, the Panel also finds that the layout and content of the Respondent’s website intends to create the impression that the website and the software offered therein are affiliated with or endorsed by the Complainant.
In addition, the legal notice at the bottom of the website reinforces the intent of the Respondent to suggest impersonation or sponsorship. While it is well proven that the Respondent has no authorization to use the WHATSAPP trademark in a corresponding domain name or otherwise, the legal notice on the website reads that the Respondent is the owner or a licensee of the intellectual property displayed on the website. Such statement supports a finding of bad faith.
Accordingly, the Complainant has succeeded on the third 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.
Manuel Moreno-Torres
Sole Panelist
Date: October 7, 2019
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