Complainant is WhatsApp, Inc., United States of America (“United States”), represented by Hogan Lovells (Paris) LLP, France.
Respondent is Registration Private, Domains by Proxy, LLC, United States / Anuj Patney, India. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 22, 2020. On January 23, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 24, 2020, the Registrar transmitted by email to the Center its verification response confirming that 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 Respondent of the Complaint, and the proceedings commenced on January 29, 2020. In accordance with the Rules, paragraph 5, the due date for Response was February 18, 2020. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on February 19, 2020. The Center appointed Roberto Bianchi as the sole panelist in this matter on February 26, 2020. 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 Complainant, founded in 2009, provides a popular messaging application. In 2014, Complainant was acquired by Facebook, Inc. Complainant owns multiple registrations for the WHATSAPP trademark worldwide, including the following: - Indian trademark WHATSAPP, registration No. 2149059, registered on May 24, 2011, covering instant messaging and other software, etcetera, in International Class 9, and various telecommunication services, etcetera, in International Class 38. - Indian figurative trademark, registration No. 2344423, registered on June 7, 2012, covering instant messaging and other software, etcetera, in International Class 9, and diverse telecommunication services, etcetera, in International Class 38. - United States trademark WHATSAPP, registration No. 3939463, registered on April 5, 2011, covering application service provider, etcetera, in International Class 42. First use in commerce February 24, 2009; - European Union Trademark WHATSAPP, registration No. 009986514, registered on May 23, 2011, covering diverse apparatus and instruments, instant messaging and other software and services, etcetera, in international Class 38, and scientific and technological services, research and design, etcetera, in International Class 42. - International Trademark WHATSAPP, registration No. 1085539, registered on May 24, 2011, covering instant messaging, file sharing and communications software, etcetera, audio, video, images and graphics via computer, mobile, wireless, and telecommunication networks; computer software, etcetera, in International Class 9; telecommunication services, etcetera, in International Class 38. The disputed domain name was registered on November 18, 2018. The disputed domain name does not resolve to any active website. 5. Parties’ Contentions A. Complainant In its Complaint, Complainant contends as follows: The disputed domain name is confusingly similar to Complainant’s WHATSAPP trademarks. The disputed domain name incorporates this mark in its entirety as its prominent element, in conjunction with the descriptive term “dating”. Respondent has no rights or legitimate interests in the disputed domain name. Respondent is not a licensee of Complainant, nor has Complainant authorized Respondent to make any use of its WHATSAPP trademark, in a domain name or otherwise. Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services. Complainant’s brand guidelines prohibit the registration of domain names that could be confused with WHATSAPP. Currently, Respondent is not using the disputed domain name in connection with any active website. Previously, the disputed domain name pointed to a dating website asking WhatsApp users to provide their WhatsApp number and reproducing Complainant’s logo. This use would not qualify as a bona fide offering of goods or services, as it implied a commercial connection between Respondent and Complainant. In addition, there was no disclaimer indicating that the website was not operated or sponsored by, or affiliated with Complainant. Respondent cannot legitimately claim to be commonly known by the disputed domain name, as Respondent identifies itself in the WhoIs information as “Anuj Patney”. The disputed domain name was resolving to a dating website using Complainant’s trademarks and asking Internet users to provide their WhatsApp number. Therefore, Respondent was using the disputed domain name misleadingly to divert Internet users to its website. This use strongly suggests that Respondent’s intention was to unfairly exploit the goodwill and reputation attached to Complainant’s trademark by creating a false impression of association with Complainant. The disputed domain name was registered and is being used in bad faith. The WHATSAPP trademark is inherently distinctive and well known throughout the world in connection with its messaging application, which prior UDRP panels have repeatedly recognized. The previous content of the website at the disputed domain name made multiple references to Complainant, demonstrating actual knowledge of Complainant and its trademark. The website displayed a telephone logo similar to Complainant’s WHATSAPP trademark, a coined term exclusively associated with Complainant and its messaging services. Thus, the content of the previous website clearly targeted Complainant and its messaging services. Respondent registered the disputed domain name in bad faith, in order to create a misleading impression of association with Complainant. An additional indication of bad faith is the fact that Respondent registered the disputed domain name by using a privacy protection service to conceal its identity. The website at the disputed domain name previously displayed commercial links and contained sections entitled “Affiliate” and “Links”, from which Respondent was seeking to obtain financial gain derived from the goodwill and reputation attached to Complainant’s trademark. This constitutes strong evidence of bad faith. The disputed domain name is currently not resolving to any active website and is being passively held. This cannot preclude a finding of bad faith given the overall circumstances of the case, Complainant's distinctiveness and renown worldwide and Respondent’s failure to provide any evidence of actual or contemplated good-faith use of the disputed domain name. After Complainant’s lawyers sent a cease and desist letter to Respondent, the content of the website at the disputed domain name changed. In addition, Respondent failed to reply to this letter. These are clear indicators of Respondent’s bad faith. B. Respondent Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings A. Identical or Confusingly Similar By submitting printouts taken from official trademark databases, Complainant has shown to the satisfaction of the Panel that it owns registrations for the WHATSPP trademark in various jurisdictions and thus, that it has rights in this mark for purposes of Policy paragraph 4(a)(i). See section 4 above. The Panel notes that in the disputed domain name Complainant`s mark WHATSAPP is incorporated in its entirety as a relevant element, to which the descriptive or dictionary term “dating” is added as a suffix. It is well established that such kind of additions would not prevent a finding of confusing similarity between a domain name and the mark it incorporates. See section 1.8 of WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”). Therefore, the Panel finds that the disputed domain name is confusingly similar to the WHATSAPP trademark, in which Complainant has rights. B. Rights or Legitimate Interests The Panel also notes that according to the relevant WhoIs database, the registrant of record of the disputed domain name is “Anuj Patney”, and there is no evidence that this person is known by the disputed domain name. Thus, Policy paragraph 4(c)(ii) does not apply. As to the use of the disputed domain name, Complainant has shown that previously, the disputed domain name was used to resolve to a website depicting itself as “a dating social site service that allows members to create unique personal profiles online in order to find and communicate with old and new friends. The service is operated by “DatingForAll”. Annex 12 to the Complaint. Complainant also has shown that the owners of the website at the disputed domain name announced that they might charge users for their service. The Panel further notes that on this website – according to a printout showing the former content of the website provided by Complainant - there seemed to exist no disclaimer of any relationship to Complainant or its well-known messaging services. The Panel concludes that Internet users presumably looking for Complainant’s services were diverted to a website profiting from their confusion with Complainant`s services and WHATSAPP mark. In the view of the Panel, this is neither a use in connection with a bona fide offering of services under Policy paragraph 4(c)(i), nor a fair or legitimate noncommercial use without intent for commercial gain misleadingly to divert consumers under Policy paragraph 4(c)(iii). This evidence is sufficient for Complainant to establish a prima facie case that Respondent lacks rights or legitimate interests in the disputed domain name. The Panel further notes that Respondent, after receiving a cease-and-desist letter from Complainant`s counsel, did not reply to the letter, and ceased to actively use the disputed domain name by removing every content from the website. Lastly, Respondent also failed to provide the Panel with any reasons for its registration, former use as shown and present lack of any active use of the disputed domain name. The Panel concludes that Respondent does not have any rights or legitimate interest in the disputed domain name. C. Registered and Used in Bad Faith It is noteworthy that Complainant’s WHATSAPP mark was registered several years before the registration of the disputed domain name. See section 4 above. In addition, the Panel agrees with prior panels that the WHATSAPP mark is well known or famous with regard to diverse telecommunication services. See for example WhatsApp, Inc. v. Whois Agent, Whois Privacy Protection Service, Inc. / Mohammed Alkalbani, Ops Alkalbani, M. Rashid Alkalbani,WIPO Case No. D2016-2299 (“The Respondent's knowledge of the WHATSAPP mark is particularly obvious, given the worldwide renown it has acquired amongst mobile applications, the impressive number of users it has gathered since the launch of the WhatsApp services in 2009…”); see also WhatsApp Inc. v. Huseyin Ugurlukilic, Ahmet Cebi, Resul Deger,WIPO Case No. D2019-0311, (“The reputation of the Complainant’s trademark WHATSAPP in the field of instant messaging apps for mobile devices is clearly established…”). Further, the disputed domain name was used in a website exclusively dedicated to users of the WhatsApp communication application. These facts are clear evidence that Respondent knew of and targeted Complainant at the time of registering the disputed domain name. In the circumstances of this case, this means that the registration of the disputed domain name was in bad faith. As shown by Complainant, the disputed domain name was formerly used in a website offering to provide dating and other contact services for users of the WhatsApp application, without displaying any notice or disclaimer that the website was not in any manner related to Complainant. Moreover, the website contained a notice advising that it might charge for its services. Thus, it is clear that Respondent has created confusion among Internet users presumably looking for Complainant’s services, and has done this for profit. This means that Respondent, by using the disputed domain name as described, has intentionally attempted to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of its website or of a product or service on its website. According to Policy paragraph 4(b)(iv), this is a circumstance of registration and use in bad faith. Lastly, the Panel notes that presently, the disputed domain name does not resolve to any active website. This lack of any active Internet presence followed the reception by Respondent of Complainant’s cease- and-desist letter, which went unanswered. In the view of the Panel, this behavior suggests that Respondent does not contemplate any use for the disputed domain name that would not be in bad faith. The Panel finds that the disputed domain name was registered and is being used in bad faith. 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 Roberto Bianchi
Sole Panelist
Date: March 11, 2020
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