The Complainant is WhatsApp Inc., United States of America, represented by Hogan Lovells (Paris) LLP, France.
The Respondent is Rishi Verma, India. 2. The Domain Name(s) and Registrar(s)
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 15, 2020. On June 15, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 16, 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 June 22, 2020. In accordance with the Rules, paragraph 5, the due date for Response was July 12, 2020. The Respondent sent an email communication on June 22, 2020, indicating that “Kindly give a call on […]. I don't know what's going on here”. The Respondent did not submit any formal response. On July 15, 2020, the Center notified the Parties of Commencement of Panel Appointment Process. The Center appointed Gareth Dickson as the sole panelist in this matter on August 7, 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 is a provider of a popular mobile messaging application under the trade mark WHATSAPP (the “Mark”). It is the owner of a number of domain names and trade mark registrations for the Mark around the world, including: - United States trade mark no. 3939463, registered on April 5, 2011; The disputed domain name was registered on October 9, 2019. It is currently inactive and does not point to any active website. However, it appears to have been used shortly after registration to offer software enabling users to send large volumes of messages via the Complainant’s messaging service. The website accessible via the disputed domain name made prominent use of the Mark and the Complainant’s logo. 5. Parties’ Contentions A. Complainant The Complainant argues that it has rights in the Mark by virtue of its ownership of various trade mark registrations for the Mark around the world. It contends that the disputed domain name is confusingly similar to the Mark since it incorporates the Mark (which is recognisable within the disputed domain name), with the addition of the descriptive terms “bulk” and “messages”, under the generic Top-Level Domain (“gTLD”) “.com”. The Complainant confirms that the disputed domain name was registered by the Respondent without its permission and that the Respondent is not a licensee of the Complainant. It alleges that the Respondent has not complied with the Complainant’s brand guidelines on the use of the Mark, which are freely available online, and has been using the disputed domain name to offer software that enables users to use the Complainant’s messaging service in a way that contravenes its Business Terms of Service. The Complainant submits that there is no evidence to suggest that the Respondent: has been commonly known by the disputed domain name; is making, or intends to make, a legitimate noncommercial or fair use of it (the services offered on the Respondent’s website, accessible via the disputed domain name, having been commercial in nature); or has ever used or demonstrated preparations to use it in connection with a bona fide offering of goods or services. The Complainant submits that the Respondent must have known of the Complainant and the Mark when it registered the disputed domain name. The Mark is, according to the Complainant, inherently distinctive and well known throughout the world, being used by over two billion users. The Respondent’s own use of the disputed domain name (and of the Complainant’s logo) to offer software designed for use on the Complainant’s services further confirms that the Respondent knew of the Mark and the Complainant’s interest in it when it registered the disputed domain name. Finally, the Complainant argues that the Respondent has used the disputed domain name to attempt to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Mark, contrary to the Policy. It contends that the (current) passive holding of a domain name remains a use in bad faith under the Policy. Together, the Complainant submits that the disputed domain name has been registered and is being used in bad faith. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings Under paragraph 4(a) of the Policy, the Complainant bears the burden of proving that: a) the disputed domain name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; b) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and c) the disputed domain name has been registered and is being used in bad faith. These criteria are cumulative. The failure of the Complainant to prove any one of these elements means the Complaint must be denied. A. Identical or Confusingly Similar The Panel accepts that the Complainant is the owner of, and therefore has rights in, the Mark. Section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, (“WIPO Overview 3.0”) provides that “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”. The Panel therefore finds that the disputed domain name is confusingly similar to the Mark, since the Mark is recognisable within the disputed domain name and the addition of the descriptive words “bulk” and “messages”, and the “.com” gTLD, do not alter that conclusion. Accordingly, the Panel finds that the disputed domain name is confusingly similar to a trade mark in which the Complainant has rights. B. Rights or Legitimate Interests Although a complainant is required to demonstrate that a respondent has no rights or legitimate interests in respect of the domain name, as explained in section 2.1 of the WIPO Overview 3.0, the consensus view of previous UDRP panels is that where a complainant establishes a prima facie case that the respondent lacks rights or legitimate interests the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element. In the current proceeding, the Complainant has established its prima facie case. The evidence before the Panel is that the Mark is neither generic nor descriptive but enjoys a degree of inherent distinctiveness that makes a coincidental adoption by the Respondent highly unlikely. The Complainant states that it has not given the Respondent permission to use the Mark, in a domain name or otherwise, and submits that the Respondent has not been commonly known by the disputed domain name. There is no evidence that the Respondent has acquired any common law rights to use the Mark, is commonly known by the Mark or has chosen to use the Mark in the disputed domain name in any descriptive manner or is making any use of the disputed domain name that would establish rights or legitimate interests as a result of a noncommercial or fair use of it. Furthermore, the redirection of Internet users to a website designed to offer, on commercial terms, software to enable users to use the Complainant’s services in a manner that is expressly, and legitimately, prohibited by the Complainant does not constitute a bona fide sale of goods or services or a legitimate noncommercial or fair use within the meaning of the Policy. Section 2.13.1 of the WIPO Overview 3.0 states that: “Panels have categorically held that the use of a domain name for illegal activity (e.g., the sale of counterfeit goods or illegal pharmaceuticals, phishing, distributing malware, unauthorized account access/hacking, impersonation/passing off, or other types of fraud) can never confer rights or legitimate interests on a respondent”. Such consideration applies here. By not participating in these proceedings, the Respondent has failed to refute the Complainant’s prima facie case that it has met its burden under the second UDRP element. As clearly stated in section 2.1 of the WIPO Overview 3.0, “a panel’s assessment will normally be made on the basis of the evidence presented in the complaint and any filed response. The panel may draw inferences from the absence of a response as it considers appropriate, but will weigh all available evidence irrespective of whether a response is filed”. Having reviewed and weighed the available evidence, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name. C. Registered and Used in Bad Faith The Panel notes that the disputed domain name was registered many years after the Mark was registered and accepts that the disputed domain name was chosen by reference to the Mark. As a result, and in the absence of evidence from the Respondent that the similarity of the disputed domain name to the Mark is coincidental or permitted, the Panel must conclude that the Respondent knew of the Complainant’s rights in the Mark when it registered the disputed domain name. The Panel therefore finds that the Respondent’s registration of the disputed domain name was in bad faith since it attempted to appropriate for the Respondent, without the consent or authorisation of the Complainant, rights in the Complainant’s Mark. The disputed domain name is also being used in bad faith by offering, on commercial terms and assisted by the prominent use of the Complainant’s Mark and its logos, the means to enable users to use the Complainant’s services in a manner that directly violates its terms of service. Although that particular bad faith use of the disputed domain name by the Respondent appears to have ceased by the time the Complaint was filed, it does not alter the Panel’s findings above and the Panel finds that the disputed domain name is being used in bad faith under the doctrine of passive holding. Section 3.3 of the WIPO Overview 3.0 states that relevant factors to finding bad faith in passive holding include: “(i) the degree of distinctiveness or reputation of the complainant’s mark; The Panel notes that the Mark is distinctive of the Complainant and further notes that the Respondent did not respond to three communications from the Complainant or its lawyers, has not participated in these proceedings, and has not sought to explain its registration and use of the disputed domain name. Furthermore, there is no conceivable use of the disputed domain name by the Respondent that would not be illegitimate. Therefore, and on the basis of the information available to it, the Panel must, and does, find that the Respondent’s use of the disputed domain name is without justification and is inconsistent with the Complainant’s exclusive rights in the Mark. Consideration of these and other factors militates in favour of a finding of bad faith. The Panel finds that the Respondent has registered and is using the disputed domain name 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 Gareth Dickson
- European Union trade mark no. 009986514, registered on October 25, 2011;
- Indian trade mark no. 2149059, registered on May 24, 2011; and
- International trade mark no. 1085539, registered on May 24, 2011.
(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 […], and
(iv) the implausibility of any good faith use to which the domain name may be put.”
Sole Panelist
Date: August 24, 2020
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