Complainant is WhatsApp Inc., United States of America (“United States”), represented by Hogan Lovells (Paris) LLP, France.
Respondent is Michael Nelson, Grey Matter Strategies, United States. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 17, 2020. On May 18, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 19, 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 May 20, 2020. In accordance with the Rules, paragraph 5, the due date for Response was June 9, 2020. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on June 15, 2020. The Center appointed Bradley A. Slutsky as the sole panelist in this matter on June 29, 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 provides a mobile messaging application known as WhatsApp. Complainant has several trademark registrations for the mark WHATSAPP, including United States Reg. No. 3939463, registered on April 5, 2011, with the date of first use being February 24, 2009. Complainant has registered several domain names consisting of the WHATSAPP mark followed by various generic Top-Level Domains (“gTLDs”) and country code Top-Level Domains (“ccTLDs”). The disputed domain name Complainant asserts that its WhatsApp application was launched in 2009, has over 1 billion users, and is the 2nd most downloaded mobile application in the world. As a result, Complainant asserts that its WHATSAPP mark has garnered fame and renown, and that Respondent registered the disputed domain name in order to create a false association with Complainant. Complainant’s attorney sent a cease‑and‑desist letter to Respondent on March 30, 2020 and followed up on April 30, 2020. Complainant asserts that Respondent did not respond to either communication. Complainant asserts that the disputed domain name is confusingly similar to Complainant’s WHATSAPP mark. Complainant further asserts that Respondent has no rights or legitimate interests in the disputed domain name, in that Respondent is not a licensee of Complainant nor has Respondent otherwise been allowed by Complainant to make any use of Complainant's trademarks. Complainant asserts that the disputed domain name is being passively held without use for an active website, and that passive holding is not a bona fide offering of goods or services and does not cause Respondent to become commonly known by Complainant’s mark. Complainant also notes that Respondent has not registered or attempted to register the disputed domain name as a trademark. Complainant asserts that the passive holding of the disputed domain name plus the false suggestion of affiliation with Complainant do not confer any rights or legitimate interests on Respondent and do not give rise to fair use. Complainant also asserts that the disputed domain name was registered and is being used in bad faith. Complainant asserts that, in light of “Complainant's renown and goodwill worldwide and particularly its popularity and trade mark rights well established prior to the registration of the” disputed domain name, “it would be inconceivable for the Respondent to argue that he did not have knowledge of the Complainant's WHATSAPP trade mark when he registered the [disputed] domain name in 2016”, and that this constitutes strong evidence of bad faith. Complainant asserts that Respondent “could simply not have chosen the [disputed domain name] for any reason other than to create a false association with the Complainant”. Complainant further asserts that Respondent’s passive holding of the disputed domain name constitutes bad faith in that “Complainant's WHATSAPP trade mark is highly distinctive and well-known internationally”, Respondent did not respond to Complainant’s cease and desist letter, Respondent allegedly did not keep his contact information up-to-date, the disputed domain name allegedly carries a high risk of implied affiliation with Complainant, and Respondent’s passive holding of the disputed domain name does not constitute a good faith use but rather represents an abusive threat hanging over Complainant’s head. B. Respondent Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings Pursuant to paragraph 15(a) of the Rules, a panel in UDRP proceedings “shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”. Under paragraph 4(a) of the Policy, Complainant must prove the following: (i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and (ii) Respondent has no rights or legitimate interests in respect of the disputed domain name; and (iii) the disputed domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar Under paragraph 4(a)(i) of the Policy, Complainant must show that the disputed domain name is “identical or confusingly similar to a trademark or service mark in which Complainant has rights”. Complainant’s trademark registrations in the Annexes to the Complaint demonstrate that Complainant has rights in the WHATSAPP mark. The disputed domain name consists of the WHATSAPP mark, plus the word “local”, plus the “.com” gTLD. Generally, “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”. WIPO Overview of Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.7 . Thus, the addition of “local” and the “.com” gTLD does not prevent a finding of confusing similarity between the disputed domain name and Complainant’s mark. 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.”); WIPO Overview 3.0 , section 1.11.1 (“The applicable Top Level Domain (‘TLD’) in a domain name (e.g., ‘.com’, ‘.club’, ‘.nyc’) is viewed as a standard registration requirement and as such is disregarded under the first element confusing similarity test.”); WhatsApp Inc. v. Vipul Singh,WIPO Case No. D2020-0903 (holding Accordingly, the Panel finds that the disputed domain name is confusingly similar to a trademark in which Complainant has rights, and that paragraph 4(a)(i) of the Policy is satisfied. B. Rights or Legitimate Interests Complainant also must demonstrate that Respondent has “no rights or legitimate interests in respect of the domain name”, paragraph 4(a)(ii) of the Policy. “Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate [Respondent’s] rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii): (i) before any notice to [Respondent] of the dispute, [Respondent’s] use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or (ii) [Respondent] (as an individual, business, or other organization) ha[s] been commonly known by the domain name, even if [Respondent has] acquired no trademark or service mark rights; or (iii) [Respondent is] making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.” Policy, paragraph 4(c). There is no evidence that Respondent was making a bona fide use of the disputed domain name before receiving notice of this dispute, or that Respondent has been commonly known by the disputed domain name These allegations make out a prima facie case of lack of rights or legitimate interests, which Respondent has not rebutted. See, e.g., WIPO Overview 3.0 section 2.5.1 (“Even where a domain name consists of a trademark plus an additional term (at the second- or top-level), UDRP panels have largely held that such composition cannot constitute fair use if it effectively impersonates or suggests sponsorship or endorsement by the trademark owner. [C]ertain geographic terms … are seen as tending to suggest sponsorship or endorsement by the trademark owner.”); WhatsApp Inc., Facebook, Inc. v. Alex Xu, HKITN,WIPO Case No. D2019-1709 (“With respect to the domain name Accordingly, the record supports a conclusion that Respondent has no rights or legitimate interests in respect of the disputed domain name, and that paragraph 4(a)(ii) of the Policy is satisfied. C. Registered and Used in Bad Faith Complainant also bears the burden of establishing that the “domain name has been registered and is being used in bad faith”. Policy, paragraph 4(a)(iii). As set forth in the Policy, paragraph 4(b): “[T]he following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith: (i) circumstances indicating that [Respondent has] registered or [Respondent has] acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to [C]omplainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of [Respondent’s] documented out‑of‑pocket costs directly related to the domain name; or (ii) [Respondent has] registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that [Respondent has] engaged in a pattern of such conduct; or (iii) [Respondent has] registered the domain name primarily for the purpose of disrupting the business of a competitor; or (iv) by using the domain name, [Respondent has] intentionally attempted to attract, for commercial gain, Internet users to [Respondent’s] web site or other online location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of [Respondent’s] website or location or of a product or service on [Respondent’s] website or location.” “Given that the scenarios described in UDRP paragraph 4(b) are non-exclusive and merely illustrative, even where a complainant may not be able to demonstrate the literal or verbatim application of one of the above scenarios, evidence demonstrating that a respondent seeks to take unfair advantage of, abuse, or otherwise engage in behavior detrimental to Complainant’s trademark would also satisfy Complainant’s burden.” WIPO Overview 3.0 , section 3.1 . Complainant asserts that the disputed domain name was registered and is being used in bad faith because, among other things, Respondent must have known of Complainant’s mark when registering the disputed domain name and must have intended to create a false association with Complainant; Respondent is passively holding a domain name that is confusingly similar to a “trade mark [that Complainant asserts] is highly distinctive and well-known internationally”; Respondent did not respond to Complainant’s cease-and-desist letter; and Respondent did not keep his contact information up‑to‑date. The evidence submitted by Complainant and not rebutted by Respondent suggests that Complainant’s WHATSAPP mark is well known, and that Respondent in all probability intended to create a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or a product or service on Respondent’s website, as contemplated by paragraph 4(b)(iv) of the Policy. It is not obvious what other use could be intended by the disputed domain name, as WHATSAPP does not appear to have any meaning independent of Complainant’s mobile application, and the combination of “local” with WHATSAPP suggests a local version of Complainant’s mobile application. The registration of a domain name with knowledge of a trademark and the intent to trade on the goodwill of the trademark is evidence of bad faith. See WhatsApp Inc. v. Francisco Costa,WIPO Case No. D2015-0909 ("The Panel agrees with Complainant that it is likely improbable that Respondent did not know about Complainant’s WHATSAPP trademark at the time it registered the Disputed Domain Name considering the worldwide renown it has acquired amongst mobile applications, and the impressive number of users it has gathered since the launch of the WhatsApp services in 2009 . . . Finally, Respondent has never replied to any of the cease-and-desist letters sent by Complainant requesting the transfer of the Disputed Domain Name on the grounds of Complainant’s rights in the WHATSAPP trademark, which is considered another evidence of bad faith on Respondent’s behalf.”); WIPO Overview 3.0 , section 3.1.4 (“Panels have consistently found that the mere registration of a domain name that is identical or confusingly similar […] to a famous or widely-known trademark by an unaffiliated entity can by itself create a presumption of bad faith.”). The fact that the disputed domain name is being passively held does not prevent a finding of bad faith. As noted in WIPO Overview 3.0 , section 3.3 , “factors that have been considered relevant in applying the passive holding doctrine include: (i) the degree of distinctiveness or reputation of the complainant’s mark, (ii) the failure of the respondent to submit a response or to provide any evidence of actual or contemplated good-faith use, (iii) the respondent’s concealing its identity or use of false contact details (noted to be in breach of its registration agreement), and (iv) the implausibility of any good faith use to which the domain name may be put”. In this case, it appears that at least factors (i), (ii), and (iv) are met, and these factors also weigh in favor of a finding of bad faith. Accordingly, the Panel finds that the present record supports a conclusion that the disputed domain name has been registered and is being used in bad faith, and that paragraph 4(a)(iii) of the Policy is satisfied. 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 Bradley A. Slutsky
Sole Panelist
Date: July 13, 2020
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