The Complainant is WhatsApp Inc., United States of America, represented by Hogan Lovells (Paris) LLP, France.
The Respondent is Vipul Singh, 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 April 14, 2020. On April 14, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 15, 2020, 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 April 20, 2020. In accordance with the Rules, paragraph 5, the due date for Response was May 10, 2020. The Respondent submitted the Response by email on May 8, 2020. Accordingly, the Center sent the Acknowledgement of Receipt Response and Possible Settlement on May 11, 2020. The Complainant sent an email on May 11, 2020. The Center appointed Andrew Brown Q.C. as the sole panelist in this matter on May 22, 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 The Complainant states that it was founded in 2009 and acquired by Facebook in 2014. The Complainant also states that since its launch in 2009, WhatsApp has become one of the fastest growing and most popular mobile messaging applications in the world, supporting over 2 billion users worldwide (as of February 2020). The Complainant also states that WhatsApp has acquired considerable reputation and goodwill worldwide. The Complainant states that it has secured ownership of trade mark registrations in many jurisdictions throughout the world, and by way of example, refers to the following trade mark registrations: Trademark Jurisdiction / Trademark Office Registration Number Registration Date IC Class WHATSAPP India 2149059 May 24, 2011 09 WHATSAPP United States of America 3939463 April 5, 2011 42 WHATSAPP European Union 009986514 October 25, 2011 09, 38, 42 WHATSAPP International registration 1085539 May 24, 2011 09, 38 These are collectively referred to as the “WHATSAPP Mark” The Complainant further states that it has made substantial investments to develop a strong presence online. It is active on various social-media forums including Facebook (https://www.facebook.com/whatsapp/) and Twitter (https://twitter.com/whatsapp) and it is the owner of numerous domain names consisting of the WHATSAPP Mark, under various generic Top-Level Domains (“gTLDs”) as well as under many country code Top-Level Domains (“ccTLDs”). Its main website is available at “www.whatsapp.com”. The Complainant states that this main website also allows Internet users to access its messaging platform. The Respondent registered the disputed domain name The Complainant states that it was recently alerted to the disputed domain name and in an effort to resolve the matter, it unsuccessfully engaged in correspondence with the Respondent seeking the voluntary transfer of the disputed domain name by the Respondent 5. Parties’ Contentions A. Complainant The Complainant asserts its rights in the WHATSAPP Mark. The Complainant contends that the disputed domain name is confusingly similar to the WHATSAPP Mark. In this respect, the Complainant states that the disputed domain name includes the WHATSAPP Mark in its entirety as the leading element, and further that the WHATSAPP Mark remains clearly recognizable despite the addition of the descriptive term “quotes”. The Complainant also asserts that the Respondent has no rights in the disputed domain name. In this respect, the Complainant states that 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 Mark, in a domain name or otherwise. The Complainant also refers to the WhatsApp’s Brand Guidelines which prohibit the registration of domain names that could be confused with the WHATSAPP Mark. The Complainant also contends that the Respondent has no legitimate interests in respect of the disputed domain name. The Complainant states that the Respondent is not commonly known by the disputed domain name and has not acquired or sought any registered trademark rights or unregistered rights in the WHATSAPP Mark or the term “whatsapp-quotes”. The Complainant contends that while the website to which the disputed domain name resolves gives an initial impression of being a fan site aimed at providing quotes for users of the Complainant’s WhatsApp messenger service, the Respondent is in fact using the disputed domain name to derive click-through revenue from the substantial amount of pay-per-click (“PPC”) advertising displayed therein. The Complainant further contends that by registering the disputed domain name containing the WHATSAPP Mark as its leading element, the Respondent has sought to create a misleading impression of association with the Complainant. Finally, the Complainant contends that the disputed domain name was registered and is being used in bad faith. As to registration in bad faith, the Complainant contends that this is evidenced by the content of the website to which the disputed domain name resolves. The content clearly demonstrates actual knowledge of the Complainant and its WHATSAPP Mark, includes references to the Complainant and its messaging services and includes content to be used in connection with the Complainant’s messaging services. As to use in bad faith, the Complainant contends that the Respondent has intentionally attempted to attract, for commercial gain, Internet users to his website or other online location, by creating a likelihood of confusion with the Complainant’s WHATSAPP Mark as to the source, sponsorship, affiliation, or endorsement of his website or other online location. B. Respondent The Respondent denies that the disputed domain name is confusingly similar to the WHATSAPP Mark. The Respondent also states that the website to which the disputed domain name resolves clearly states that “the website is not related to WHATSAPP Messenger in any way”. The Respondent contends that he has a legitimate interest in the disputed domain name as a result of the hard work he has put into driving approximately 1900 daily users from organic search results to his page. The Respondent admits that he makes money from the website to which the disputed domain name resolves but maintains that he did not register the disputed domain name in bad faith. Finally, the Respondent contends that he is the legal owner of the disputed domain name and therefore, he will not transfer the disputed domain name to the Complainant until he has received compensation from the Complainant. 6. Discussion and Findings A. Laches The Panel notes that the disputed domain name was registered in September 2018 and that the Complaint was filed on April 14, 2020. The question which arises is whether the lapse of around one and a half years from the domain name registration date prevents the Complainant from commencing an administrative proceeding against the Respondent under the Policy. The Panel recognizes that the issue has been addressed in previous UDRP decisions and that the doctrine of laches or estoppel has not been applied to proceedings under the UDRP. See section 4.17 of the WIPO Overview of WIPO Panel Views on Selected URDP Questions, Third Edition (“WIPO Overview 3.0”) and cases cited therein. Here, the Panel does not draw any negative inference from the mere delay in the filing of the Complaint. The Panel will now review each of the three cumulative elements set forth in paragraph 4(a) of the Policy. Pursuant to paragraph 4(a) of the Policy, the Complainant must prove each of the following elements with respect to the disputed domain name in order to succeed in this proceeding: (i) That the disputed domain name is identical or confusingly similar to a trademark in which the Complainant has rights, and (ii) That the respondent has no rights or legitimate interests in respect of the disputed domain name, and (iii) That the disputed domain name has been registered and is being used in bad faith. B. Identical or Confusingly Similar The Panel finds that the Complainant is the owner of the WHATSAPP Mark both by evidence of its registrations (which include registrations in India (the jurisdiction in which the Respondent lives), the United States of America, and the European Union) and by acquired reputation with a history of use going back to 2009. The Panel also finds that the disputed domain name is confusingly similar to the Complainant’s WHATSAPP Mark. First, the Panel accepts that the WHATSAPP Mark is included in its entirety and as the leading element in the disputed domain name. Secondly, with respect to the addition of the term “quotes”, it is now well-established that the addition of terms or letters to a domain name does not necessarily distinguish the domain name from a trademark, particularly where the trademark is incorporated in its entirety or at least as a dominant feature such that it remains readily recognizable (see, WIPO Overview 3.0, section 1.7 and WhatsApp Inc. v. Huseyin Ugurlukilic, Ahmet Cebi, Resul Deger,WIPO Case No. D2019-0311). Thirdly, it is well-established that the addition of the gTLD “.com” may be disregarded for the purposes of comparisons under the first element. The Panel does not accept the Respondent’s claim that the disclaimer displayed on the website to which the disputed domain name resolves (and which reads “This website is not related to WhatsApp messenger in any way”) removes any likelihood of confusing similarity between the disputed domain name and the Complainant’s WHATSAPP Mark. This disclaimer appears in the content of the website which is usually disregarded by UDRP panels when assessing confusing similarity (WIPO Overview 3.0, section 1.15). Therefore, the Panel finds that paragraph 4(a)(i) of the Policy is satisfied in favour of the Complainant. C. Rights or Legitimate Interests Pursuant to paragraph 4(c) of the Policy, the Respondent may establish that it has rights or legitimate interests in the disputed domain name, among other circumstances, by showing any one of the following elements: (i) That before notice of the dispute, the Respondent used or made demonstrable preparations to use the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; or (ii) That the Respondent has been commonly known by the disputed domain name, even if it had acquired no trade mark or service rights; or (iii) That the Respondent is making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue. The overall burden of proof for establishing that the Respondent has no rights or legitimate interests in respect of the disputed domain name lies with the Complainant. The Panel has stated, and the Panel accepts, that the Respondent has no rights or legitimate interests in the disputed domain name. In this respect, the Panel accepts that the Respondent is not commonly known by the disputed domain name and has not acquired any rights (registered or otherwise) in the WHATSAPP Mark or name. The Panel does not accept the Respondent’s contentions that he has a legitimate interest in the disputed domain name as a result of the hard work he has put into driving approximately 1900 daily users from organic search results to his page. Rather, the Respondent has admitted that he is deriving commercial gain from the website through PPC advertising and that he intends to “attract more traffic and to earn more money” (see Annex 10 to the Complaint). This is not a bona fide offering of goods or services. The inclusion of the WHATSAPP Mark in its entirety in the disputed domain name will likely be misleading Internet users as to the source, sponsorship, affiliation, or endorsement of the website, thereby attracting Internet users to the website. Section 2.9 of WIPO Overview 3.0 notes that UDRP panels have found that the use of a domain name to display PPC advertising does not represent a bona fide offering where such links compete with or capitalize on the reputation and goodwill of the Complainant’s mark or otherwise mislead Internet users. Finally, the Respondent has not made any legitimate noncommercial or fair use of the disputed domain name. As already noted, the Respondent is deriving commercial gain from the website located at the disputed domain name. The Panel finds that the Complainant has satisfied the burden of establishing that the Respondent has no rights or legitimate interests in the disputed domain name and accordingly finds that paragraph 4(a)(ii) of the Policy is satisfied in favor of the Complainant. D. Registered and Used in Bad Faith The Panel is satisfied that the disputed domain name has been registered in bad faith for the following reasons: (i) The Panel shares the views of prior UDRP panels who have found that the Complainant’s WHATSAPP Mark and services are well known and famous worldwide. 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 …”) and WhatsApp Inc. v. Super Privacy Service LTD c/o Dynadot, WIPO Case No. D2019-2519 (“… 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 Panel is therefore satisfied that at the time of registering the disputed domain name, the Respondent was aware of the Complainant, its WHATSAPP Mark, the Complainant’s exclusive rights in that Mark and the goodwill residing in the Mark. Registration of the disputed domain name incorporating the Complainant’s well-known WHATSAPP Mark was not innocent but deliberate. In this respect, the Panel notes that the Complainant has provided, as evidence (Annex 9 to the Complaint), screenshots of the Respondent’s website which show multiple references to the Complainant, its WhatsApp messaging services and the inclusion of content to be used in connection with the Complainant’s messaging service. In addition, the disclaimer on the Respondent’s website specifically refers to the Complainant’s WhatsApp Messenger service and so it can only be inferred from the disclaimer that the Respondent was fully aware of the Complainant, its WHATSAPP Mark and the Complainant’s services. (ii) Without any rights or legitimate interests, the Respondent’s registration of the disputed domain name is indicative of bad faith. The Panel is also satisfied that the disputed domain name has been used in bad faith for the following reasons: (iii) The Panel accepts that the Respondent’s use of the WHATSAPP Mark in its entirety in the disputed domain name and on the website to which the disputed domain name resolves will create a likelihood of confusion with the Complainant’s WHATSAPP Mark and messaging services as to the source, sponsorship, affiliation, or endorsement of the website. This likelihood of confusion will in turn benefit the Respondent as the substantial amount of PPC advertising on the website to which the disputed domain name resolves provides a means for the Respondent to generate click-through revenue. The Respondent has himself admitted that he has earned money and intends to create more content for his website to attract more traffic and earn more money (see Annex 10 to the Complaint). The Panel therefore accepts that the Respondent has used the disputed domain name to benefit commercially by taking advantage of any confusion as to the source, sponsorship, affiliation, or endorsement of the associated website. (iv) The Panel does not consider that any likelihood of confusion will be cured by the Respondent’s disclaimer. While the disclaimer appears directly below the website header, it is displayed in small font and, in any case, it is overwhelmed by the disputed domain name itself, the dominant website heading “Whatsapp-Quotes.com” and the website content which implies an official connection with the Complainant. In addition, section 3.7 of the WIPO Overview 3.0 states that where the overall circumstances of a case point to the Respondent’s bad faith, the mere existence of a disclaimer cannot cure such bad faith. Further, in such cases, UDRP panels may consider the respondent’s use of a disclaimer as an admission by the respondent that users may be confused. In the present case, the Panel finds that the disclaimer constitutes such an admission. 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 Andrew Brown Q.C.
Sole Panelist
Date: June 4, 2020
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