The Complainant is WhatsApp Inc., United States of America (“United States”), represented by Hogan Lovells (Paris) LLP, France.
The Respondent is Super Privacy Service LTD c/o Dynadot, United States of America. 2. The Domain Names and Registrar
The disputed domain names 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 names. 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 November 8, 2019. In accordance with the Rules, paragraph 5, the due date for Response was November 28, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 2, 2019. The Center appointed Evan D. Brown as the sole panelist in this matter on December 11, 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 provides the well-known WhatsApp mobile messaging application. More than a billion people use the app each month. The Complainant owns a number of registrations for the trademark WHATSAPP, including United States Reg. No. 3,939,463, registered on April 5, 2011. The disputed domain names were registered through the Registrar’s privacy registration service. Despite a request from the Complainant’s counsel, the Registrar would not disclose the true identity of the Respondent. As discussed below, however, the Panel finds that the three disputed domain names were registered by the same domain name holder, or are subject to common control. The disputed domain names The Complainant contends that the disputed domain names are identical or confusingly similar to the Complainant’s trademark; that the Respondent has no rights or legitimate interests in respect of the disputed domain names; and that the disputed domain names were registered and are being used in bad faith. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings To succeed, the Complainant must demonstrate that all of the elements listed in paragraph 4(a) of the Policy have been satisfied: (i) the disputed domain names are 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 names; and (iii) the disputed domain names have been registered and are being used in bad faith. A. Procedural Issue – Consolidation The Complaint relates to multiple disputed domain names. Paragraph 3(c) of the Rules states that “[t]he complaint may relate to more than one domain name, provided that the domain names are registered by the same domain-name holder”. Notwithstanding the fact that the disputed domain names have been registered using a privacy service, the Complainant submits that the following factors show that the same domain name holder registered the three disputed domain names, or that they are subject to common control: (1) The three disputed domain names, along with other domain names, were initially subject to a complaint the Complainant filed (Facebook, Inc. and WhatsApp Inc. v. Registration Private, Domains By Proxy, LLC / Nanci Nette,WIPO Case No. D2019-2223) on September 13, 2019. In response to the registrant information disclosed in the Center’s Notice of Registrant Information in that case, out of an abundance of caution, the Complainant filed the present Complaint to separately address these disputed domain names, which have been confirmed to be registered in the name of Super Privacy Service LTD c/o Dynadot. Notwithstanding the change in registrant information, the Complainant still maintains that the disputed domain names are all still under the common control of the individual in whose name they were previously registered; (2) The three disputed domain names were all subsequently moved to the Registrar, and have since become subject to privacy protection; (3) Notwithstanding these changes, the domain name servers for all three disputed domain names remain the same as they were before they were transferred to the Registrar; (4) All three disputed domain names target the Complainant’s WHATSAPP trade mark; and (5) All three disputed domain names are registered under the “.com” generic Top-Level-Domain (gTLD) and incorporate the Complainant’s trade mark in its entirety, together with additional dictionary terms, such as “desktop”, “novinhas” (“young girls” in Portuguese) and “web”. Based on these facts, the Complainant argues that the disputed domain names are subject to common control, and that to allow consolidation of the present Complaint would be fair and equitable to all of the parties, in accordance with WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 4.11.2. The Panel agrees, and will consolidate the three disputed domain names in this one action. B. Identical or Confusingly Similar The Panel finds that the disputed domain names are identical to a trademark in which the Complainant has rights. WHATSAPP is a well-known trademark, being the mark used to identify one of the most popular messaging apps in the world. The Complainant owns trademark registrations for the WHATSAPP mark that predate the registration of the disputed domain names. The disputed domain names incorporate the WHATSAPP mark in its entirety (except for a missing “p” in the case of The Panel evaluates this element of the Policy by first looking to see whether the Complainant has made a prima facie showing that the Respondent lacks rights or legitimate interests in respect of the disputed domain names. If the Complainant makes that showing, the burden of demonstrating rights or legitimate interests shifts to the Respondent. The Complainant has established, prima facie, that the Respondent lacks rights or legitimate interests in the disputed domain names. On this point, the Complainant asserts, among other things, that: (1) The Respondent is not a licensee of the Complainant, nor has it been otherwise allowed by the Complainant to make any use of the Complainant’s trademarks. (2) The Respondent cannot assert that, prior to any notice of this dispute, it was using, or had made demonstrable preparations to use, the disputed domain names in connection with a bona fide offering of goods or services, in accordance with paragraph 4(c)(i) of the Policy. (3) The Respondent cannot assert that it is commonly known by the disputed domain names, in accordance with paragraph 4(c)(ii) of the Policy. (4) The Respondent cannot assert that it has made or is currently making legitimate noncommercial or fair use of the disputed domain names pursuant to paragraph 4(c)(iii) of the Policy. The Respondent failed to introduce evidence to rebut this prima facie showing. The Panel finds that the Complainant has established this second element under the Policy. D. Registered and Used in Bad Faith The Panel finds the Respondent registered the disputed domain names in bad faith because, given the Complainant’s renown and goodwill worldwide, it would be inconceivable for the Respondent to argue that it did not have knowledge of the Complainant’s trade marks at the time of registration of the disputed domain names. The facts make it clear that the Respondent targeted the Complainant and its well-known trademark when it registered the disputed domain names. Bad faith use is clear from a number of facts. The Respondent has set up a range of websites purporting to offer online surveys, downloads, security notifications and pay-per-click advertisements. It is currently trying to sell one of the disputed domain names. And to the extent of the Complainant’s assertions that the Respondent is using certain of the disputed domain names for phishing and malware, a clear example of bad faith use exists. 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 names Evan D. Brown
Sole Panelist
Date: December 24, 2019
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