The Complainant is WhatsApp Inc., United States of America, represented by Hogan Lovells (Paris) LLP, France.
The Respondent is Whois Agent, Domain Protection Services, Inc., United States of America (“United States”) / Leandro Levi, Argentina. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 18, 2020. On June 18, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 18, 2020, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on June 29, 2020 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on July 2, 2020. The Center verified that the Complaint together with the amended 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 July 10, 2020. In accordance with the Rules, paragraph 5, the due date for Response was July 30, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 5, 2020. The Center appointed Reynaldo Urtiaga Escobar as the sole panelist in this matter on August 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. The proceeding is conducted in English, this being the language of the disputed domain name’s registration agreement, as confirmed by the Registrar. 4. Factual Background The Complainant operates one of the world’s most popular mobile messaging applications (or “apps”). Founded by Jan Koum and Brian Acton in 2009, and acquired by Facebook, Inc. in 2014, the Complainant allows its users to exchange messages for free via smartphones. Since its launch in 2009, the Complainant’s application has become one of the fastest growing and most popular mobile applications in the world. Nowadays, the Complainant has over 2 billion active users in 180 countries. The Complainant’s official website is located at “www.whatsapp.com”. The Complainant holds trademark registrations for WHATSAPP on a global scale, including: - Argentinian trademark registration No. 2523513, registered on August 29, 2012, with respect to goods comprised in class 9 of the Nice Classification1 ; The disputed domain name was registered on March 19, 2012, and has since resolved to a website in Spanish displaying the Complainant’s trademarked logo, and offering visitors to download the Complainant’s instant messaging app, as well as blog-style posts of a sexual nature. On January 28, 2020, the Registrar forwarded a Complainant’s Cease and Desist letter to the Respondent, to no avail. 5. Parties’ Contentions A. Complainant In summary, the Complainant contends as follows: (i) The Complainant’s WHATSAPP mark is highly distinctive and well known throughout the world. It has been continuously and extensively used since 2009, and has rapidly acquired considerable goodwill and renown worldwide; (ii) The search results obtained by typing the term WhatsApp into Google’s search engine exclusively refer to the Complainant; (iii) According to the Complainant’s research, in addition to the disputed domain name, the Respondent has also previously registered the following domain names targeting third party trademarks: (iv) The disputed domain name incorporates the Complainant’s WHATSAPP mark in its entirety with the addition of the descriptive term “descargar” (download in Spanish) under the generic Top-Level Domain (“gTLD”) “.com”; (v) The Complainant’s WHATSAPP mark is clearly recognizable as the leading element of the disputed domain name; (vi) It is well established in prior UDRP decisions that, where the relevant trademark is recognizable within the disputed domain name, the addition of other terms, such as “descargar”, would not prevent a finding of confusing similarity under the first element. See section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”); (vii) It is generally accepted that the gTLD suffix, such as “.com”, is irrelevant when assessing confusing similarity pursuant to paragraph 4(a)(i) of the Policy; (viii) The Complainant therefore submits that the disputed domain name is confusingly similar to the Complainant’s mark in accordance with paragraph 4(a)(i) of the Policy; (ix) 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; (x) The Respondent is unable to invoke any of the circumstances set out in paragraph 4(c) of the Policy, in order to demonstrate rights or legitimate interests in the disputed domain name; (xi) The Respondent cannot assert that, it has been using the disputed domain name, prior to the notice of the present dispute, in connection with a bona fide offering of goods or services in accordance with paragraph 4(c)(i) of the Policy; (xii) The Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services, within the meaning of paragraph 4(c)(i) of the Policy; (xiii) The Respondent’s website has a similar “look and feel” to the Complainant’s official website, thus creating a misleading impression that it is affiliated with or endorsed by the Complainant; (xiv) The website to which the disputed domain name resolves does not contain any visible disclaimer stating that it is not affiliated with WhatsApp, nor does it display any functional contact information to identify the Respondent; (xv) The Respondent cannot conceivably assert that it is commonly known by the Complainant’s mark within the meaning of paragraph 4(c)(ii) of the Policy since the disputed domain name has been under privacy and there is no functional contact information displayed on the associated website; (xvi) The disputed domain name itself carries a risk of implied affiliation with the Complainant as it could be interpreted as an official WhatsApp website where Spanish consumers can download the WhatsApp application; (xvii) The Respondent’s website is merely a pretextual attempt to mask the Respondent’s cybersquatting activities as the disputed domain name could be easily used to offer unauthorized versions of WhatsApp containing malware for download; (xviii) Given the Complainant’s renown and goodwill worldwide and particularly its popularity and trademark rights established prior to the registration of the disputed domain name, it would be inconceivable for the Respondent to argue that it did not have knowledge of the Complainant’s WHATSAPP mark when it registered the disputed domain name in 2012; (xix) The provision of links to the official WhatsApp website or to the official app store to download WhatsApp further strengthens the impression that the Respondent’s website is operated, authorized by or otherwise connected with the Complainant, when in fact it is not; (xx) The Complainant cannot allow unauthorized third parties such as the Respondent to offer WhatsApp downloads from unofficial websites, even if those websites link to official WhatsApp sources, as WhatsApp users must be able to trust the source of downloads, otherwise this would seriously put the security of WhatsApp users at risk. B. Respondent The Respondent did not reply to the Complaint. 6. Discussion and Findings According to paragraph 4(a) of the Policy, in order to succeed in this administrative proceeding, the Complainant must prove that: (i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and (ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and (iii) the disputed domain name was registered and is being used in bad faith. These elements are discussed in turn below. In considering these elements, paragraph 15(a) of the Rules provides that the Panel shall decide the Complaint on the basis of statements and documents submitted and in accordance with the Policy, the Rules, and any other rules or principles of law that the Panel deems applicable. A. Identical or Confusingly Similar The first element has a low threshold merely serving as a gateway requirement under the Policy. See section 1.7 of the WIPO Overview 3.0 (the standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between the Complainant’s trademark and the disputed domain name). The Complainant owns numerous trademark registrations for WHATSAPP worldwide, including United States trademark registration No. 3939463 (registered on April 5, 2011 3), European Union trademark (EUTM) registration No. 009986514 (registered on October 25, 2011), and International trademark registration No. 1085539 (registered on May 24, 2011), all of which predate registration (on March 19, 2012) of the disputed domain name. As submitted by the Complainant, the WHATSAPP mark remains clearly recognizable within the disputed domain name despite sitting side by side with “descargar” (download in Spanish), which is a generic term in the mobile app industry. According to section 1.8 of the WIPO Overview 3.0, where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether generic, descriptive, geographical, pejorative, meaningless, or otherwise) does not prevent a finding of confusing similarity under the first element. The gTLD “.com” is a non-distinctive string that is to be set aside from the instant comparison. Accordingly, the Panel holds that the disputed domain name is confusingly similar to the mark in which the Complainant has rights. The Complainant has passed the first threshold of paragraph 4(a) of the Policy. B. Rights or Legitimate Interests The second element under the Policy is that the Respondent has no rights or legitimate interests in respect of the disputed domain name (Policy, paragraph 4(a)(ii)). Paragraph 4(c) of the Policy provides that “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 [the respondent’s] rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii): (i) before any notice to you [the respondent] of the dispute, your [the 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) you [the respondent] (as an individual, business, or other organization) have been commonly known by the domain name, even if you [the respondent] have acquired no trademark or service mark rights; or (iii) you [the respondent] are 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”. As noted in section 2.1 of the WIPO Overview 3.0, the onus is on the Complainant to establish the absence of the Respondent’s rights or legitimate interests in the disputed domain name. However, because of the inherent difficulties in proving a negative, the consensus view is that the Complainant need only put forward a prima facie case that the Respondent lacks rights or legitimate interests. The burden of production then shifts to the Respondent to rebut that prima facie case (see also, e.g., World Wrestling Federation Entertainment, Inc. v. Ringside Collectibles,WIPO Case No. D2000-1306). The Complainant represents not having authorized the incorporation of its WHATSAPP mark in the disputed domain name. The Complainant also claims that the Respondent is not commonly known by the disputed domain name. The Panel regards the above factual submissions to be credible in light of the evidence on file, and particularly considering that the term WHATSAPP is exclusively associated with the Complainant and its worldwide used mobile app. At any rate, those submissions remain uncontested by the Respondent. Moreover, by offering the Complainant’s mobile app for download under the WHATSAPP mark and logo, the Respondent’s website has intentionally disguised itself as the Complainant’s portal. This use of the disputed domain name is neither bona fide, legitimate, nor fair in the context of the Policy. In the Panel’s opinion, both the disputed domain name and its associated website mislead Internet users into thinking that they landed on the Complainant’s official website where a legitimate, current, and secure version of Complainant’s mobile app can be downloaded, which is false. See section 2.13.1 of the WIPO Overview 3.0 (panels have categorically held that the use of a domain name for illegal activity, such as impersonation/passing off, or other types of fraud, can never confer rights or legitimate interests within the meaning of the Policy). In sum, the Panel finds that the Respondent lacks rights and legitimate interests in the disputed domain name within the meaning of the Policy. The Complainant has fulfilled the second limb of Policy, paragraph 4(a). C. Registered and Used in Bad Faith Pursuant to Policy, paragraph 4(a)(iii), in order to be granted relief, the Complainant must show that the disputed domain name was registered and is being used in bad faith. Paragraph 4(b) of the Policy sets forth the following non-exhaustive grounds of bad faith registration and use: “(i) circumstances indicating that you [the respondent] have registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your [the respondent’s] documented out-of-pocket costs directly related to the domain name; or (ii) you [the respondent] have 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 you [the respondent] have engaged in a pattern of such conduct; or (iii) you [the respondent] have registered the domain name primarily for the purpose of disrupting the business of a competitor; or (iv) by using the domain name, you [the respondent] have intentionally attempted to attract, for commercial gain, Internet users to your [the respondent’s] website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your [the respondent’s] website or location or of a product or service on your [the respondent’s] website or location.” The Panel notes that WhatsApp is a pun on the phrase ‘What’s Up’4 . As such, the WHATSAPP mark is inherently distinctive of the Complainant’s mobile app services. See Facebook, Inc. and WhatsApp Inc. v. Registration Private, Domains By Proxy, LLC / Nanci Nette, WIPO Case No. D2019-2223 (the WHATSAPP mark is inherently distinctive and is widely considered to be exclusively associated with WhatsApp, Inc.). The Panel also takes notice that the Complainant’s WHATSAPP mark is well known internationally. See WhatsApp Inc. v. Carlos Rogers,WIPO Case No. D2019-1135 (the Complainant’s WHATSAPP mark has been continuously and extensively used since 2009 in connection with an instant messaging app for mobile devices and has rapidly acquired considerable goodwill and renown worldwide). Against this backdrop, the Panel finds that the disputed domain name’s registration and use exhibits opportunistic bad faith as the Respondent took unfair advantage of the goodwill and notoriety attaching to the WHATSAPP mark. See section 3.1 of the WIPO Overview 3.0 (bad faith under the UDRP is broadly understood to occur where a respondent takes unfair advantage of or otherwise abuses a complainant’s mark). Additionally, the Panel deems plausible the Complainant’s allegation that the Respondent may well provide malware to the Internet visitors actually downloading the mobile app offered in the Respondent’s website, which only corroborates Respondent’s bad faith use of the disputed domain name within the realm of the Policy. See section 3.1 of the WIPO Overview 3.0 (the use of a disputed domain name for the purposes of phishing, identity theft, or malware distribution constitutes bad faith). For the reasons stated above, the Panel holds that the disputed domain name was registered in bad faith and has been used in bad faith. The Complainant has discharged its burden in relation to paragraph 4(a)(iii) of the Policy. 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 Reynaldo Urtiaga Escobar 1 The Nice Classification (NCL), established by the Nice Agreement (1957), is an international classification of goods and services applied for the registration of marks. See “https://www.wipo.int/classifications/nice/en/”
- United States trademark registration No. 3939463, registered on April 5, 20112 , with respect to services comprised in class 42 of the Nice Classification;
- European Union trademark (EUTM) registration No. 009986514, registered on October 25, 2011, with respect to goods and services comprised in classes 9, 38, and 42 of the Nice Classification;
- International trademark registration No. 1085539, registered on May 24, 2011, with respect to goods and services comprised in classes 9 and 38 of the Nice Classification.
Sole Panelist
Date: August 26, 2020
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