The Complainants are Facebook Inc. (“Facebook”) and WhatsApp Inc. (“WhasApp”), United States of America (“U.S.”), represented by Hogan Lovells (Paris) LLP, France.
The Respondent is Wan Min Yang, su zhou yang an xin xi ke ji you xian gong si, China. 2. The Domain Names and Registrar
The disputed domain names The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on August 26, 2019. On August 26, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Names. On August 27, 2019, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainants on August 27, 2019 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainants to submit an amendment to the Complaint. The Complainants filed an amended Complaint in English on August 28, 2019. On August 27, 2019, the Center transmitted an email in English and Chinese to the Parties regarding the language of the proceeding. The Complainants requested that English be the language of the proceeding on August 27, 2019. The Respondent did not comment on the language of the proceeding. 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 in English and Chinese, and the proceedings commenced on September 6, 2019. In accordance with the Rules, paragraph 5, the due date for Response was September 26, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 27, 2019. The Center appointed Karen Fong as the sole panelist in this matter on October 3, 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, Facebook, is a provider of online social networking services. Founded in 2004, the Complainant allows Internet users to stay connected with friends and family, and to share information mainly via its official website located at “www.facebook.com”. Since its launch in 2004, Facebook rapidly developed considerable renown and goodwill worldwide. Its main website is currently ranked as the 3rd most visited website in the world. With approximately 84.5 % of its daily active users outside the U.S. and Canada, Facebook’s social networking services are provided in more than 70 languages. Facebook is also available for mobile devices and ranked as the most downloaded application in the world as per App Annie’s Top Apps Ranking in 2019. Facebook enjoys a widespread reputation and high degree of recognition as a result of its fame and notoriety throughout the world for its online social networking services. The Complainant, WhatsApp, is a provider of one of the world’s most popular mobile messaging applications (or “app”). Founded in 2009 and acquired by Facebook in 2014, WhatsApp allows users across the globe to exchange messages. Since its launch in 2009, WhatsApp has become one of the fastest growing and most popular mobile applications in the world, with over 1.5 billion monthly active users worldwide (as of January 2019). It is the 3rd most downloaded application worldwide as per App Annie’s Top Apps Worldwide Rankings in 2019. WhatsApp has therefore also acquired considerable reputation and goodwill worldwide. Both are currently inaccessible in China. However, Facebook and WhatsApp are nevertheless well known names to the Chinese public, particularly taking into account the numerous Chinese press articles on their success and popularity worldwide. The Complainants are the owners of numerous domain names consisting of the trademarks FACEBOOK and WHATSAPP, including, FACEBOOK and WHATSAPP are registered as trade marks in many jurisdictions throughout the world. The following were submitted in evidence: - Chinese Trade Mark Registration No. 6389501, FACEBOOK, registered on March 28, 2010; - U. S. Trade Mark Registration No. 3041791, FACEBOOK, registered on January 10, 2006 (first use in commerce in 2004); - Chinese Trade Mark Registration No. 21470703A, WHATSAPP, registered on December 21, 2017; and - U. S. Trade Mark Registration No. 3939463, WHATSAPP, registered on April 5, 2011. The Domain Names were registered by the Respondent, an individual based in China on October 25, 2018. The Domain Names were pointing to similar websites in Chinese which refer to the Trade Marks and the Complainant’s services and offer for sale IT solutions for sending bulk messages via the Complainant’s Facebook and WhatsApp services (the “Websites”). The Websites refer to the same company, Kang Media and Suzhou Yangan Information Technology Limited (the “Company”). It appears that the Respondent is an officer of the Company. On July 17, 2019, the Complainants’ legal representative sent a cease-and-desist letter to the Respondent asserting the Complainants’ trade mark rights and asking the Respondent to transfer the Domain Names to Facebook and WhatsApp. The Respondent did not respond. 5. Parties’ Contentions A. Complainants The Complainants contend that the Domain Names are confusingly similar to the Trade Marks, that the Respondent has no rights or legitimate interests with respect to the Domain Names, and that the Domain Names were registered and are being used in bad faith. The Complainants request transfer of the Domain Names. B. Respondent The Respondent did not reply to the Complainants’ contentions. 6. Preliminary Procedural Issues 6.1 Consolidation of Complaints The case before the Panel involves two individual brand owners who wish to bring a single consolidated complaint in relation to two domain names against a single registrant. The preliminary issue to be determined is whether the Complainants are entitled to bring a consolidated complaint against the Respondent. Paragraph 5(f) of the Policy allows a panel to consolidate multiple disputes between parties at its sole discretion and paragraph 10(e) of the Rules empowers a panel to consolidate multiple domain name disputes in accordance with the Policy and Rules. Neither the Policy nor the Rules expressly provide for the consolidation of multiple complainants in a single complaint in a single administrative proceeding. Paragraph 3(c) of the Rules, provides that a complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name holder. While both the Policy and Rules use the term “complainant” throughout, the Policy and Rules do not expressly preclude multiple legal persons from falling within the term “complainant”. Section 4.11.1 of WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) provides that in assessing whether a complaint filed by multiple complainants may be brought against a single respondent, panels look at whether (i) the complainants have a specific common grievance against the respondent, or the respondent has engaged in common conduct that has affected the complainants in a similar fashion, and (ii) it would be equitable and procedurally efficient to permit the consolidation. With regard to the first limb of the test, the Complainants are related to each other as WhatsApp is a wholly owned subsidiary of Facebook. Although each individually own the two separate Trade Marks, the corporate relationship means that they have a common legal interest and therefore a common grievance against the Respondent who they allege has registered and used the Domain Names in bad faith. Further, the Respondent has also engaged in common conduct that has affected the Complainants in a similar fashion. Common conduct has been found to exist in the following cases: (i) where the rights relied on and the disputed domain names in question involve readily identifiable commonalities; or (ii) where there is a clear pattern of registration and use of all the disputed domain names. In this case, the indications of the Respondent engaging in common conduct which has affected the Complainants’ legal rights in a similar fashion are as follows: (i) the Complainants are related companies with one being the parent of the other; (ii) The way the Trade Marks are being used on the Websites are identical and therefore affects their respective rights and interests in a similar fashion. The Panel is satisfied from the above that common conduct is found to exist. The Panel now turns to the second limb of the test as to whether it would be equitable and procedurally efficient to permit the consolidation. In considering this, the Panel also is satisfied that this is the case for the following reasons: (i) the Complainants’ substantive arguments made under each of the three elements of the Policy are common to the Domain Names; (ii) Both the Complainants are represented by a single authorized representative for the purpose of the proceedings. Accordingly, the Panel determines that this Complaint consisting of multiple Complainants should, for the reasons discussed above, be permitted to have their complaints consolidated into a single Complaint for the purpose of the present proceedings under the Policy. The Respondent has not chosen to file a Response and consequently there are no submissions to be taken into account on the procedural issues. In light of the above, the Complainants may be referred to collectively as the “Complainant” hereafter. 6.2 Language of the Proceeding The Rules, paragraph 11, provide that unless otherwise agreed by the parties or specified otherwise in the registration agreement between the respondent and the registrar in relation to the disputed domain name, the language of the proceeding shall be the language of the registration agreement, subject to the authority of the panel to determine otherwise, having regard to the circumstances of the administrative proceedings. According to the information received from the Registrar, the language of the registration agreement for the Domain Names is Chinese. The Complainant submits that the language of the proceeding should be English for the following reasons: - The Websites display a link which redirects to another of the Respondent’s websites, “www.qunkong360.com”. This website is available in several languages including English which suggests that the Respondent has a good understanding of the English language. - It would be disproportionate to require the Complainant to submit the Complaint in Chinese as this would result in additional expense and unnecessary delay for the Complainant for the translation. In exercising its discretion to use a language other than that of the Registration Agreement, the Panel has to exercise such discretion judicially in the spirit of fairness and justice to both Parties, taking into account all relevant circumstances of the case, including matters such as the Parties’ ability to understand and use the proposed language, time and costs. The Panel accepts the Complainant’s submissions regarding the language of the proceeding. The Respondent has not challenged the Complainant’s request and in fact has failed to file a Response. The Panel is also mindful of the need to ensure the proceeding is conducted in a timely and cost effective manner. In this case, the Complainant may be unduly disadvantaged by having to conduct the proceeding in Chinese. The Panel notes that all of the communications from the Center to the Parties were transmitted in both Chinese and English. In all the circumstances, the Panel determines that English be the language of the proceeding. 7. Discussion and Findings 7.1 General According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the Domain Names, the Complainant must prove each of the following, namely that: (i) The Domain Names are identical or confusingly similar to trade marks or service marks in which the Complainant has rights; and (ii) The Respondent has no rights or legitimate interests in respect of the Domain Names; and (iii) The Domain Names were registered and are being used in bad faith. 7.2 Substantive Analysis A. Identical or Confusingly Similar The Panel is satisfied that the Complainant has established that it has registered and unregistered rights to the Trade Marks. The standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between the trade mark and the domain name to determine whether the domain name is confusingly similar to the trade mark. The test involves a side-by-side comparison of the domain name and the textual components of the relevant trade mark to assess whether the mark is recognizable within the domain name. In this case the Domain Names contain the Complainant’s distinctive FACEBOOK trade mark in its entirety plus the word “qunkong” which means “batch control” in Chinese and the WHATSAPP trade mark in its entirely plus a single letter “k”. The addition of these terms does not negate the confusing similarity encouraged by the Respondent’s complete integration of the Trade Marks in the Domain Names. E.g., N.V. Organon Corp. v. Vitalline Trading Ltd., Dragic Veselin / PrivacyProtect.org,WIPO Case No. D2011-0260; Oakley, Inc. v. wu bingjie aka bingjie wu/Whois Privacy Protection Service,WIPO Case No. D2010-0093; X-ONE B.V. v. Robert Modic,WIPO Case No. D2010-0207. For the purposes of assessing identity and confusing similarity under paragraph 4(a)(i) of the Policy, it is permissible for the Panel to ignore the generic Top-Level Domain (“gTLD”) which in this case is “.com”. It is viewed as a standard registration requirement. The Panel finds that the Domain Names are identical or confusingly similar to trade marks in which the Complainant has rights and that the requirements of paragraph 4(a)(i) of the Policy therefore are fulfilled. B. Rights or Legitimate Interests Pursuant to paragraph 4(c) of the Policy, a respondent may establish rights to or legitimate interests in the domain name by demonstrating any of the following: (i) before any notice to it of the dispute, the respondent’s use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or (ii) the respondent has been commonly known by the domain name, even if it has acquired no trade mark or service mark rights; or (iii) the respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain, to misleadingly divert consumers. Although the Policy addresses ways in which a respondent may demonstrate rights or legitimate interests in a disputed domain name, it is well established that, as it is put in section 2.1 of the WIPO Overview 3.0, that a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests in the domain name. Once such prima facie case is made, the burden of production shifts to the respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name. If the respondent does come forward with some allegations of evidence of relevant rights or legitimate interests, the panel weighs all the evidence, with the burden of proof always remaining on the complainant. The Complainant submits that the Respondent is not a licensee of the Complainant nor has he been otherwise allowed by the Complainant to make any use of the Trade Marks. The Respondent cannot assert that he was using or had made demonstrable preparations to use the Domain Names in connection with a bona fide offering of goods or services. The Websites which are used for offering purported marketing services through bulk messages via the Complainant’s social media platforms Facebook and WhatsApp without authorization cannot be considered a bona fide offering of goods or services as it is clearly a case where a respondent is seeking to unduly profit from the complainant’s goodwill and reputation. Further such use which involves the sending of unsolicited electronic communications or spam has been found by other panels not to give rise to rights and legitimate interests (see 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) The Complainant also submits that the Respondent has never been commonly known by the Domain Names or Trade Marks nor does he / she operate a business or other organizations under the Trade Marks. The Websites are commercial websites clearly being used for commercial gain and therefore do not amount to bona fide offering of goods or services or legitimate noncommercial fair use under the Policy. The Panel finds that the Complainant has made out a prima facie case, a case calling for an answer from the Respondent. The Respondent has not provided any reasons why he / she chose to register a well-known trade mark which he / she has no connection to. The Panel is unable to conceive of any basis upon which the Respondent could sensibly be said to have any rights or legitimate interests in respect of the Domain Names. The Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Names. C. Registered and Used in Bad Faith To succeed under the Policy, the Complainant must show that the Domain Names have been both registered and used in bad faith. The Panel is satisfied that the Respondent must have been aware of the Trade Marks when he / she registered the Domain Names. It is implausible that he / she was unaware of the Complainants when he / she registered the Domain Names. The Trade Marks are well known and the fact that the Websites refer to the Complainant’s social media platforms make it clear that the Respondent had knowledge of the Trade Marks when he / she registered them. In the WIPO Overview 3.0, section 3.2.2 states as follows: “Noting the near instantaneous and global reach of the Internet and search engines, and particularly in circumstances where the complainant’s mark is widely known (including in its sector) or highly specific and a respondent cannot credibly claim to have been unaware of the mark (particularly in the case of domainers), panels have been prepared to infer that the respondent knew, or have found that the respondent should have known, that its registration would be identical or confusingly similar to a complainant’s mark. Further factors including the nature of the domain name, the chosen top-level domain, any use of the domain name, or any respondent pattern, may obviate a respondent’s claim not to have been aware of the complainant’s mark.” The fact that there is a clear absence of rights or legitimate interests coupled with no explanation for the Respondent’s choice of the Domain Names is also a significant factor to consider (as stated in section 3.2.1 of WIPO Overview 3.0). In light of the above, the Panel finds that registration is in bad faith. The Domain Names are also used in bad faith. The Websites target the Trade Marks purporting to provide marketing services by sending bulk messages to Facebook and WhatsApp users. The Respondent was clearly seeking to benefit from the Complainant’s reputation and goodwill to attract traffic to his / her website for commercial gain. Using the Domain Names to intentionally attract for commercial gain, Internet users to his / her website by creating a likelihood of confusion with the Complainant’s as the source, sponsorship, affiliation or endorsement of the website is bad faith in accordance with paragraph 4(b)(iv) of the Policy. There is also a danger that such use by the Respondent could also be for the purposes of phishing and other unauthorized activities. This may place the security of Facebook and WhatsApp users at risk which is an indication of bad faith. From the above, the Panel finds that the Respondent has registered and used the Domain Names in bad faith and the Complainant has succeeded in proving the third element. 8. Decision For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name Karen Fong
(together, the “Trade Marks”).
Sole Panelist
Date: October 28, 2019
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