The Complainant is WhatsApp Inc., United States of America (the “United States”), represented by Hogan Lovells (Paris) LLP, France.
The Respondent is Roman Yarovyi, Ukraine. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 3, 2019. On October 4, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 4, 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 October 8, 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 October 10, 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 October 11, 2019. In accordance with the Rules, paragraph 5, the due date for Response was October 31, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 1, 2019. The Center appointed Rodrigo Velasco Santelices as the sole panelist in this matter on November 6, 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., asserts that it is a provider of one of the world’s most popular mobile messaging applications (or “apps”). Founded in 2009 and acquired by Facebook, Inc. in 2014, WhatsApp allows users across the globe to exchange messages for free via smartphones, including iPhone, BlackBerry and Android. Its main website available at “www.whatsapp.com” also allows Internet users to access its messaging platform. The Complainant states that 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 October 2018). Reflecting its global reach, the Complainant assures is the owner of numerous domain names, consisting of the WHATSAPP trademark, under various generic Top-Level Domains (“gTLDs”) as well as under many country code Top-Level Domains (“ccTLDs”). Copies of the WhoIs records for a selection of domain names owned by the Complainant were provided at Annex 6 of the Complaint. Further, the Complainant states that it has also made substantial investments to develop a strong presence online by being active on various social media forums. For instance, WhatsApp's official page on Facebook has over 30 million “likes”. In addition, WhatsApp has 2.88 million followers on Twitter. The Complainant has also secured ownership of trademark registrations for WHATSAPP in many jurisdictions throughout the world, including the following: - United States Trademark Registration No. 3939463, WHATSAPP, registered on April 5, 2011; The Complainant was alerted to the fact that its trademark and company name had been reproduced together with the term “espiar” (“to spy” in Spanish) under the gTLD “.org”. According to the Complaint and the WhoIs records, the disputed domain name was registered on November 5, 2018, and resolves to a website in Spanish that purports to offer information on various software products that can be used to hack, track or spy on messages, call logs and files shared via the Complainant’s WhatsApp application. 5. Parties’ Contentions A. Complainant The Complainant submits that the disputed domain name is confusingly similar to trademarks in which the Complainant has rights. The first element of paragraph 4(a) of the Policy requires a complainant to establish first, that it has rights in a trademark or service mark, and secondly, that the disputed domain name is identical or confusingly similar to that trademark or service mark. As stated in WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.2.1: “[w]here the complainant holds a nationally or regionally registered trademark or service mark, this prima facie satisfies the threshold requirement of having trademark rights for purposes of standing to file a UDRP case.” The Complainant owns numerous trademark registrations for WHATSAPP in jurisdictions throughout the world, the details of which were provided in Annex 8 of the Complaint. Thus, the Complainant has established trademark rights in WHATSAPP for the purposes of paragraph 4(a)(i) of the Policy. The disputed domain name incorporates the Complainant’s WHATSAPP trademark in its entirety, together with the term “espiar” (meaning “to spy” in Spanish) as a prefix. As stated in WIPO Overview 3.0, section 1.7: “[…] in cases where a domain name incorporates the entirety of a trademark, or where at least a dominant feature of the relevant mark is recognizable in the domain name, the domain name will normally be considered confusingly similar to that mark for purposes of UDRP standing.” The Complainant asserts that the addition of the term “espiar” does not prevent a finding of confusing similarity with the Complainant’s WHATSAPP trademark, which remains clearly recognizable in the Domain Name. See WIPO Overview 3.0, section 1.8: “Where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element.” See Facebook Inc., Instagram, LLC, WhatsApp Inc., Facebook Technologies, LLC v. Perfect Privacy, LLC / Milen Radumilo, Hush Whois Protection Ltd., Contact Privacy Inc., Host Master, Transure Enterprise Ltd,WIPO Case No. D2019-0510, in which the panel found the disputed domain name “[…] the Panel is of the view that the Complainant’s marks are readily recognizable within each of the disputed domain names and that the addition of the following descriptive Spanish terms is insufficient to avert a finding of confusing similarity: 'hackear' (meaning 'to hack'), 'como hackear' ('how to hack'), 'espiar' ('to spy'), 'ya' ('already') and 'conversaciones' ('conversations').” Moreover, the applicable gTLD, in this case “.org”, may be disregarded for the purposes of assessment under the first element, as it is viewed as a standard registration requirement. See WIPO Overview 3.0, section 1.11.1. The Complainant submits that the Respondent has no rights or legitimate interests in the disputed domain name. As noted in WIPO Overview 3.0, section 2.1: “While the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the often impossible task of 'proving a negative', requiring information that is often primarily within the knowledge or control of the respondent. As such, where 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. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second 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. The Complainant submits that the Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services, within the meaning of paragraph 4(c)(i) of the Policy. The Respondent is not a licensee of the Complainant, nor has the Respondent been otherwise authorized by the Complainant to make any use of its WHATSAPP trademark, in a domain name or otherwise. Further, in accordance to the Complaint, the disputed domain name resolves to a website in Spanish offering information on various software products (spyware) that can be used to hack, track or spy on messages, call logs and files shared via the Complainant’s WhatsApp application. Furthermore, the Respondent’s website makes several references to a spy software program called “mSpy”, together with several links that lead Internet users to the website “https://mspy.com.es/whatsapp”, where subscriptions for use of the “mSpy” software are offered for sale. Subscriptions for use of the mSpy software range from EUR 14.16 – 59.99 per month. Therefore, the Complainant submits the Respondent registered and is using the disputed domain name in bad faith. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Identical or Confusingly Similar The Panel considers that all the information provided by the Complainant attests that the disputed domain name is confusingly similar to the Complainant’s trademark WHATSAPP. Further, the Panel agrees with the Complainant’s contentions that the addition of the dictionary word “espiar” (“to spy” in Spanish) should be disregarded as it does nothing to avoid a finding of confusing similarity with the Complainant’s trademark WHATSAPP. Moreover, the applicable gTLD, in this case “.org”, must also be disregarded for this purpose. Therefore, this first requirement has been satisfied. B. Rights or Legitimate Interests The Respondent has not responded to the Complaint, and the record is void of any possible rights or legitimate interests it may have in the disputed domain name. Neither has the Respondent refuted the allegations made by the Complainant. Therefore, having been duly notified of the Complaint, the Panel considers that the Respondent has not rebutted the Complainant contentions. Moreover, the Panel has not found the occurrence of any of the circumstances mentioned by paragraph 4(c) of the Policy. Quite the contrary, the Complainant has effectively demonstrated the following: to be the owner of registered trademarks and associated domain names, including the mark WHATSAPP, which is prior to the Respondent’s registration of the disputed domain name, and that it has not licensed the use or exploitation of its WHATSAPP trademark to the Respondent. Accordingly, and considering the unrebutted prima facie case made out by the Complainant, the Panel considers that the Complaint has also fulfilled the second element required by the Policy. C. Registered and Used in Bad Faith This third element requires the Complainant to prove that the disputed domain name was registered in bad faith and is being used in bad faith. Paragraph 4(b) of the Policy provides a non-exhaustive list of circumstances that evidence registration and use of a domain name in bad faith. The disputed domain name incorporates the Complainant’s trademark WHATSAPP. The Panel finds the Respondent must have had knowledge of the Complainant’s mark WHATSAPP and its rights therein at the time the Respondent registered the disputed domain name. These findings are based on: (i) the Complainant’s trademark having a strong reputation and being widely known internationally; (ii) the disputed domain name is confusingly similar to the Complainant’s trademark; (iii) the disputed domain name resolves to a website in Spanish that purports to offer information on various software products that can be used to hack, track or spy on messages, call logs and files shared via the Complainant’s WhatsApp application; and (iv) the above finding of the Respondent having no rights or legitimate interests in the disputed domain name. Finally, given the similarity of the disputed domain name with the Complainant’s WHATSAPP trademark and in light of the use given to the disputed domain name, the Panel agrees that the Respondent’s motive to register the disputed domain name can only have been to create a likelihood of confusion with the Complainant’s WHATSAPP trademark within the meaning of paragraph 4(b)(iv) of the Policy. Consequently, for all these reasons, the Panel finds that the Complainant has met the third element required by 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 Rodrigo Velasco Santelices
- European Union Trade Mark No. 009986514, WHATSAPP, registered on October 25, 2011;
- European Union Trade Mark No. 010496602, registered on May 18, 2012;
- International Trademark Registration No. 1085539, WHATSAPP, registered on May 24, 2011; and
- International Trademark Registration No. 1396913, WHATSAPP, registered on December 12, 2017, designating, inter alia, Ukraine.
Sole Panelist
Date: November 20, 2019
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