The Complainant is Facebook, Inc. and WhatsApp Inc. (the “Complainant”), United States of America (“United States”), represented by Hogan Lovells (Paris) LLP, France.
The Respondent is Wisdom King, Wizindo, Nigeria. 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 14, 2019. On October 15, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 16, 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 October 18, 2019. In accordance with the Rules, paragraph 5, the due date for Response was November 7, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 14, 2019. The Center appointed Rodrigo Velasco Santelices as the sole panelist in this matter on November 20, 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 Facebook, Inc., asserts is the world’s leading provider of online social networking services. Founded in 2004, Facebook allows Internet users to stay connected with friends and family, and to share information mainly via its website available at “www.facebook.com”. Access to Facebook was originally restricted to students at Harvard University (Boston, Massachusetts, United States.) but quickly expanded to other universities and, in 2006, to anyone in the world with a valid email address. Since its launch in 2004, Facebook rapidly developed considerable renown and goodwill worldwide, with 1 million active users by the end of 2004, 100 million users in August 2008, 500 million users in July 2010, 1 billion users worldwide by September 2012 and 2 billion users in June 2017. Presently, Facebook states that has approximately 2.23 billion monthly active users and 1.47 billion daily active users on average worldwide (as of June 30, 2018). Its main website “www.facebook.com” is currently ranked as the 3rd most visited website in the world, with approximately 84.5% of its daily active users outside the United States and Canada, Facebook’s social networking services are provided in more than 70 languages. In addition, Facebook is also available for mobile devices, and in recent years has consistently ranked amongst the top "apps" in the market and is the 8th most downloaded app in Nigeria for iOS Phones, according to applications information company App Annie. On the other hand, WhatsApp Inc., is a provider of one of the world’s most popular mobile messaging applications. Founded in 2009 and acquired by Facebook, Inc. in 2014, WhatsApp allows users across the globe to exchange messages via smartphones, including iPhone, BlackBerry and Android. Its main website is available at “www.whatsapp.com” also allows Internet users to access its messaging platform. Since its launch, WhatsApp has become one of the fastest growing and most popular mobile applications in the world, with 1 billion users in February 2016. Today, WhatsApp has over 1.5 billion monthly active users worldwide (as of October 2018). WhatsApp has acquired considerable reputation and goodwill worldwide consistently being ranked amongst Apple iTunes' 25 most popular free mobile applications. WhatsApp is the 1st most downloaded app for iOS Phones in Nigeria, according to applications information company App Annie. The Complainant has secured ownership of numerous trade mark registrations including the terms FB, FACEBOOK and WHATSAPP in many jurisdictions throughout the world, as detailed in the copies of a selection of the Complainant’s trade mark registrations for FB, FACEBOOK and WHATSAPP included in Annex 11 attached to the Complaint. The Complainant has made substantial investments to develop a strong presence online by being active on the different social media forums. For instance, Facebook’s official page on Facebook has over 213 million "likes". In addition, Facebook has 13.5 million followers on Twitter. These pages are available at the following URLs: - “https://www.facebook.com/Facebook” - “https://twitter.com/facebook” - “http://www.youtube.com/facebook” - “http://www.linkedin.com/company/facebook” WhatsApp also has made substantial investments to develop a strong presence on the different social media forums available online. For instance, WhatsApp currently has over 29 million "likes" on its official Facebook page. These pages are available at: - “https://www.facebook.com/WhatsApp” - “https://twitter.com/whatsapp” - “https://www.linkedin.com/company/whatsapp-inc” The Complainant also states that prior UDRP panels have repeatedly recognized the strength and renown of the Complainant’s trademarks and have ordered the transfer of domain names to the Complainant. The disputed domain name At the time of filing the Complaint, the disputed domain name did not resolve to an active site. However, the Complainant has evidence that, on May 7, 2019, the disputed domain name was resolving to a website seeking to impersonate the Complainant, closely copying the look and feel of the Complainant’s website at “www.facebook.com”, in order to give Internet users the impression that they had arrived at Facebook’s login page where they were asked to enter their email address and password. This website also prominently displayed the Complainant’s FACEBOOK trademark. Therefore, the Respondent has been using the disputed domain name in an attempt to induce unsuspecting Internet users to self- compromise their accounts by impersonating the Complainant. 5. Parties’ Contentions A. Complainant The Complainant submits that the disputed domain name is confusingly similar to the Complainant's trademarks. The Complainant owns numerous trademark registrations in the terms FB, FACEBOOK and WHATSAPP in many jurisdictions throughout the world. Such trademark registrations include but are not limited to the following: - United States Trademark No. 4659777, FB, registered on December 23, 2014; - European Union Trademark No. 008981383, FB, registered on August 23, 2011; - International Trademark No. 1075094, registered on July 16, 2010; and - International Trademark No. 1085539, WHATSAPP, registered on May 24, 2011. The disputed domain name is confusingly similar to the Complainant’s trade marks in accordance with paragraph 4(a)(i) of the Policy, as the disputed domain name identically reproduces the Complainant’s FB and WHATSAPP trademarks, with the addition of the number "2" and the term "group" under the “.com” generic Top Level Domain (“gTLD”). Moreover, the applicable gTLD, in this case ".com" may be disregarded for the purposes of assessment under the first element, as it is viewed as a standard registration requirement. 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 the information provided by the Complainant clearly attest that the disputed domain name In this regard, the Panel agrees with the Complainant’s contentions that the addition to the trademarks, of the number "2" and the descriptive term "group" does not distinguish the disputed domain name from the Complainant’s trademarks. Further, the applicable generic Top-Level Domain extension “.com” is irrelevant when determining whether a disputed domain name is confusingly similar to protected trademarks because it is considered as a standard registration requirement. Accordingly, this Panel finds that the disputed domain name The Respondent has not responded to the Complaint, and the record is void of any possible rights or legitimate interests he may have in the disputed domain names. Neither has the Respondent refuted the allegations made by the Complainant. Thus, the Panel shall decide on the basis of the statements and documents submitted and in accordance with the Policy. In this sense, the Panel has not found the concurrence of any of the circumstances mentioned by paragraph 4(c) of the Policy. Quite the contrary, the Complainant has effectively demonstrated to be the holder of registered trademarks and associated domain names, which are prior to the Respondent’s registration of the disputed domain name, and that it has not licensed the use or exploitation of the FB, FACEBOOK or WHATSAPP trademarks to the Respondent. 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 FB and/or WHATSAPP trademarks, in a domain name or otherwise. Moreover, the Respondent cannot credibly claim to be commonly known by the disputed domain name, or a name corresponding to the disputed domain name, within the meaning of paragraph 4(c)(ii) of the Policy, given the Complainant’s notoriety. Therefore, in view of the unrebutted prima facie case made out by the Complainant, the Panel considers that the Complainant has fulfilled the second element required by the Policy. C. Registered and Used in Bad Faith This third element requires the Complainant to prove that (1) the disputed domain name was registered in bad faith and (2) 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 incorporate the Complainant’s trademark FB (also an abbreviation of trademark FACEBOOK) and trademark WHATSAPP. The Panel finds the Respondent must have had knowledge of the Complainant’s trademarks and its rights therein at the time the Respondent registered the disputed domain name. These findings are based on: (i) the Complainant’s trademarks having a strong reputation and being widely known all over the world; (ii) the disputed domain name is confusingly similar to the Complainant’s trademarks; and (iii) the above finding of the Respondent having no rights or legitimate interests in the disputed domain name. Further, prior UDRP panels have repeatedly recognized the strength and renown of the Complainant’s trademarks, and have ordered the transfer of domain names to the Complainant, see, e.g., Facebook, Inc. v. Domain Administrator, PrivacyGuardian.org / Hernando Sierra,WIPO Case No. D2018-1145: "[…] the Complainant has enjoyed a high degree of recognition as a result of its fame and notoriety throughout the world for its online social networking services. The longstanding and public use of the FACEBOOK and FB Marks would make it disingenuous for the Respondent to claim that it was unaware that the registration of the Disputed Domain Names would violate the Complainant's rights." Furthermore, and with regard to trademark WHATSAPP, see 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: "Taking into consideration that […] Complainant’s trademark WHATSAPP has become well known around the world, and that Complainant’s trademark is composed of a coined term that confers to it certain distinctiveness, this Panel is of the view that Respondents must have been aware of the existence of Complainant's trademark WHATSAPP at the time of registration of each disputed domain name." Finally, with reference to the passive holding of the disputed domain name, given the similarity of the disputed domain name to the Complainant’s widely known FB and WHATSAPP trademarks and in light of the Complainant’s long standing use of the same, the Panel agrees that the Respondent’s motives to register the disputed domain name can only have been to create a likelihood of confusion with the Complainant’s mentioned trademarks. Consequently, for all the above reasons, the Panel finds that the Complainant has met the requirement of 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
Sole Panelist
Date: November 29, 2019
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