The Complainant is WhatsApp Inc., United States of America (“United States”), represented by Hogan Lovells (Paris) LLP, France.
The Respondent is Host Master, 1337 Services LLC, Saint Kitts and Nevis. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 10, 2020. On July 13, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On July 14, 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 July 20, 2020. In accordance with the Rules, paragraph 5, the due date for Response was August 9, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 10, 2020. The Center noted that the Domain Name had an expiry date of September 28, 2020. On July 20, 2020, the Center transmitted by email to the Registrar a request for confirmation that the disputed domain name would be placed on Registrar LOCK until the conclusion of the UDRP proceeding and asking whether any action was required by any of the Parties to keep the Domain Name under Registrar LOCK. On July 20, 2020, the Registrar transmitted by email to the Center confirming that the Domain Name would remain on Registrar LOCK until the conclusion of the UDPR proceeding with no immediate action required by either Parties. On August 17, 2020, the Center transmitted an email to the Parties that due to an apparent issue with the notification, the Respondent was given until August 22, 2020 to indicate whether it wished to participate in the proceeding. No communication was received from the Respondent. The Center appointed Jonas Gulliksson as the sole panelist in this matter on September 1, 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 mobile messaging application. The Complainant is, i.a., proprietor of the following trade mark registrations: - United States Trade Mark Registration No. 3939463, WHATSAPP, registered on April 5, 2011; The Complainant is also proprietor of the following figurative trade marks: - United States Trade Mark Registration No. 4359872, , registered on July 2, 2013; and The Domain Name was registered on September 28, 2017. The Domain Name redirects to a website that purports to offer for sale software for bulk-messaging via the Complainant’s WhatsApp service (the “Respondent’s Website”). The website includes a disclaimer which reads: “Copyright 2019 – WA Script – All Rights Reserved. WA Script does not have any connection with WhatsApp or Facebook and is an independent party.” 5. Parties’ Contentions A. Complainant The Complainant considers that the Domain Name is confusingly similar to trade marks in which the Complainant has rights, as it incorporates the Complainant’s trade mark together with the descriptive word “guy”. Further, the Complainant claims that the Respondent has no rights or legitimate interests in the Domain Name. The Complainant claims that the Respondent is not authorized to use the Complainant’s trade marks and that the Respondent is not using the Domain name in connection with a bona fide offering of goods or services or is otherwise unable to invoke any circumstances set out in paragraph 4(c) of the Policy. To this regard, the Complainant has stated the following. To the best of the Complainant’s knowledge, the Respondent has not secured or sought to secure any valid trade mark rights for the terms “whatsapp” or “whatsappguy”. The respondent is not a licensee of the Complainant nor has the Respondent been otherwise authorized by the Complainant to make use of its trade mark WHATSAPP in a domain name or otherwise. Considering that the Domain Name is confusingly similar to the Complainant’s WHATSAPP trade mark, the Respondent’s registration of the Domain Name does not conform to the Complainant’s brand guidelines. There are indicia on the Respondent’s Website that the Respondent is engaged in a fraudulent scheme designed to induce Internet users into paying for non-existent products. In any event, the products offered via the Respondent’s Website, if they exist, may be used to send unsolicited electronic communications for phishing or other unauthorized activities, putting the security of WhatsApp users at risk. Further, the Respondent cannot legitimately claim to be commonly known by the Domain Name and the Respondent’s use of the Complainant’s figurative telephone trade mark via the Respondent’s Website creates a misleading impression of association with the Complainant. Finally, the Complainant claims that the Domain Name was registered and is being used in bad faith. The Complainant contends to this regard that the registration of the Domain Name is part of a pattern of conduct by the Respondent in which the Respondent registers multiple domain names for the purpose of preventing owners of trade marks, similar to such domain names, reflecting their trade marks in corresponding domain names. Further, the Complainant contends that the Respondent is using the Domain Name in connection with a fraudulent scheme designed to obtain payment for goods and services that the Respondent has no real intention of providing. In any event, the products offered via the Respondent’s Website, if they exist, may be used to send unsolicited electronic communications for phishing or other unauthorized activities, putting the security of WhatsApp users at risk. In addition, the Complainant asserts that the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion to the Complainant’s trade marks as to the source, sponsorship, affiliation or endorsement of its website. The Complainant also notes that the Respondent is connected to a domain name registration service provider who enables the Respondent to disguise its identity in a manner and to a degree that goes further than is necessary to address any genuine privacy concerns. The Respondent’s failure to respond to the Complainant’s cease and desist letter is an additional strong indication of the Respondent’s bad faith. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings The burden for the Complainant under paragraph 4(a) of the Policy is to prove: (i) that the Domain Name registered by the Respondent is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; (ii) that the Respondent has no rights or legitimate interests in respect of the Domain Name; and (iii) that the Domain Name has been registered and is being used in bad faith. A. Identical or Confusingly Similar The Complainant has clearly established that it is proprietor to several trade mark registrations for the trade mark WHATSAPP, which are registered prior to the registration of the Domain Name. As stated in section 1.7 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO overview 3.0”), “[...] in cases 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”. In the present case, the Domain Name incorporates the Complainant’s trade mark in its entirety, along with the word “guy” and the Top-Level Domain “.com”. It is clear that the Complainant’s trade mark is recognizable in the Domain Name. This is sufficient to establish that the Domain Name is confusingly similar to the Complainant’s trade mark. Moreover, the word “guy” does not avoid a finding of confusing similarity between the Domain Name and the Complainant’s trade mark WHATSAPP (see Speedo Holdings B.V. v. Dave Evans,WIPO Case No. D2007-0911, and section 1.8 of the WIPO Overview 3.0). Further, it is well established that “.com”, as a generic Top-Level Domain suffix, is disregarded in the assessment of the similarity between the Domain Name and the Complainant’s trade mark (see section 1.11.1 of the WIPO Overview 3.0). Consequently, the Panel concludes that the Domain Name is confusingly similar to the Complainant’s WHATSAPP trade mark. B. Rights or Legitimate Interests Under paragraph 4(a)(ii) of the Policy, a complainant must first make out a prima facie case showing that the respondent lacks rights or legitimate interests in respect of a disputed domain name and then the burden, in effect, shifts to the respondent to come forward with evidence of its rights or legitimate interests (see section 2.1 of the WIPO Overview 3.0). The Panel acknowledges that the Complainant has made a prima facie case showing that the Respondent lacks rights or legitimate interests in respect of the Domain Name. In this regard, the Panel notes that the Respondent does not seem to have acquired trade mark or service mark rights in relation to the Domain Name, nor is there any indication that the Complainant has authorized the Respondent’s use and registration of the Domain Name. Further, the Respondent has hidden its identity by using a domain name registration service “Njalla” that enables it to conceal its identity. It is therefore evident that the Respondent has not been commonly known by the Domain Name. Further, the evidence presented in the case indicates that the Respondent, by using a domain name confusingly similar to the Complainant’s trade mark, has been exploiting on the Complainant’s reputation and goodwill by diverting traffic to the Respondent’s Website. Through the Respondent’s Website, the Respondent has purportedly offered software that may be used to send unsolicited electronic communications for phishing or other unauthorized activities. Further, according to the Complainant’s submissions, there are indicia that the Respondent is engaged in a fraudulent scheme designed to obtain payment for goods through the website associated with the Domain Name and services that the Respondent has no real intention of providing. The burden of production on this element has shifted to the Respondent, who has not responded nor shown that it has any rights or legitimate interest in in relation to the Domain Name. Consequently, the Panel concludes that the Respondent has no rights or legitimate interests in respect of the domain name. C. Registered and Used in Bad Faith Considering the incorporation of the Complainant’s trade mark WHATSAPP in its entirety in the Domain Name, the products purportedly offered through the Respondent’s Website and the use of the Complainant’s figurative telephone trade mark on such website, it is clear that the Respondent must have been aware of the Complainant and its trade mark when the Domain Name was registered. Further, there are indications that the Respondent has acted in a similar pattern of conduct which is shown by other domain name registrations made by the Respondent incorporating well-known trade marks, such as Consequently, The Panel is of the opinion that the registration of the Domain Name was made in bad faith. Considering the knowledge the Respondent must have had of the Complainant and its trade mark WHATSAPP by the time the Domain Name was registered, it is difficult to conceive any plausible legitimate use of the Domain Name by the Respondent. Rather, it is clear that the Respondent has tried to somehow profit from or exploit the Complainant’s WHATSAPP trade mark by intentionally attempt to attract Internet users to its website by creating a likelihood of confusion to the Complainant’s trade mark (see WhatsApp Inc. v. Domain Administrator, See PrivacyGuardian.org, Go-go Taxi Carl Jones, WIPO, Case No. D2019-1788). The Panel also finds that the use of a disclaimer printed in small size and displayed on the bottom of the Respondent’s Website does not cure the misleading impression of association with the Complainant and the Respondent’s bad faith under the circumstances of this case (see section 3.7 of the WIPO Overview 3.0). Further, as stated above under section 6.B., there are indicia that the Respondent is engaged in a fraudulent scheme designed to obtain payment for products that the Respondent has no real intention of providing through the Respondent’s Website, which also indicates bad faith by the Respondent (see section 3.1.4. of the WIPO Overview 3.0). The Respondent has also tried to hide its identity by using a domain name registration service “Njalla” that enables it to conceal its identity, which as well indicates bad faith by the Respondent in this case. Consequently, the Panel considers that the Domain Name was registered and is being used in bad faith by the Respondent. 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 Domain Name, Jonas Gulliksson
- European Union Trade Mark No. 009986514, WHATSAPP, registered on October 25, 2011; and
- International Trade Mark Registration No. 1085539, WHATSAPP, registered on May 24, 2011.
- International Trade Mark Registration No. 1109890, , registered on January 10, 2012.
Sole Panelist
Date: September 15, 2020
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