The Complainant is WhatsApp Inc., United States of America, represented by Hogan Lovells (Paris) LLP, France.
The Respondent is Eugeny Startsev, Russian Federation. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 6, 2020. On August 6, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 7, 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. On August 7, 2020, the Center received an email communication from the Respondent. 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 August 27, 2020. In accordance with the Rules, paragraph 5, the due date for Response was September 16, 2020. The Respondent did not submit a further response. Accordingly, the Center notified the commencement of panel appointment process on September 17, 2020. The Center appointed Warwick A. Rothnie as the sole panelist in this matter on October 14, 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 the provider of the widely used mobile messaging application, “WhatsApp”. The Complainant was founded in 2009 when it started providing the service. It was acquired by Facebook Inc. in 2014. According to the Complaint, the Complainant’s service has over 2 billion monthly active users around the world. The application it provides for use of its service is one of the 25 most popular free mobile applications in the iTunes store and Tech Radar’s Best Android Apps. In addition to its mobile applications, the Complainant’s service is made available through its primary website at “www.whatsapp.com”. There are also the “whatsapp” accounts one would expect with Facebook, Twitter, YouTube, and LinkedIn. Amongst other things, the Complainant owns: (a) United States Registered Trademark No. 3,939,463, “WhatsApp”, registered on April 5, 2011 which claims to have been used in commerce first on February 24, 2009; (b) European Union Registered Trademark No. 009986514, WHATSAPP, registered on October 25, 2011 (“EUTM”); and (c) an International Registration No. 1085539, WHATSAPP, registered on May 24, 2011 which designates numerous countries including the Russian Federation. The United States trademark registration is registered in respect of services in International Class 42. The EUTM is registered for a range of goods and services in International Classes 9, 38, and 42. The International Registration designates goods and services in International Classes 9 and 38. The Respondent appears to have registered the disputed domain name on June 17, 2017. As at May 2020, the disputed domain name resolved to a website at which the landing page consisted of a teal background on which two buttons or statements in Russian were placed. The Complainant translates the text of these into English as “click on the screen to start a chat”. Above one of the buttons was the device or logo of one of the Complainant’s main competitors, Viber. According to the Complaint, clicking on this button took one to the Respondent’s WhatsApp account page. The website also included other pages with URLs: - “http://wtsp.biz/butikvlars/” - “http://wtsp.biz/sakura/” - “http://wtsp.biz/lashesvladivostok/” These point, respectively, to a clothing store, a sushi restaurant, and a beauty salon. These pages each featured the same teal background and also included the “click on the screen to start a chat” buttons, but without the Viber trademark. Clicking on the button took the browser to the Facebook or Instagram page for the identified business. The Instagram pages for the latter two businesses were in Russian. On May 26, 2020, the Complainant’s representatives sent a cease and desist letter to the Respondent. After a reminder, the Respondent replied on June 17, 2020 stating “Hello, I do not understand. What would you like? If you are interested in a domain, then I can sell it. Offer an amount.” The Complainant’s representatives sent a further cease and desist letter to which, on June 20, 2020, the Respondent replied: “Lol [smiley] [smiley] [smiley] The Respondent’s communication to the Center after notification of the Complainant was in the same terms as this email, save that the smileys were omitted. At some point after the Complainant’s first cease and desist letter was sent to the Respondent, the website to which the disputed domain name resolved changed. Instead of teal, the background became blue. The two buttons in Russian were replaced by text in English stating “Want To Say Please”, however, the Viber logo still remained. Clicking on these took the browser to a page on the Complainant’s WhatsApp site to start a chat with the Respondent. 5. Discussion and Findings Paragraph 4(a) of the Policy provides that in order to divest the Respondent of the disputed domain name, the Complainant must demonstrate each of the following: (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 has been registered and is being used in bad faith. Paragraph 15(a) of the Rules directs the Panel to decide the 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. The Panel notes that the language of the registration agreement for the disputed domain name is in English and is the default language of the proceeding unless the parties agree otherwise or there is some other good reason: see paragraph 11 of the Rules and WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 4.5. The Respondent appears to be located in Russia and the website to which the disputed domain name resolved before June 2020 was in Russian. However, as set out above, the Respondent has communicated with the Complainant in English. His communication with the Center was also in English. In these circumstances, the Panel finds no reason to change the language of the proceeding from the default under the Rules. A. Identical or Confusingly Similar The first element that the Complainant must establish is that the disputed domain name is identical with, or confusingly similar to, the Complainant’s trademark rights. There are two parts to this inquiry: the Complainant must demonstrate that it has rights in a trademark and, if so, the disputed domain name must be shown to be identical or confusingly similar to the trademark. The Complainant has proven ownership of the registered trademarks for “WhatsApp” and WHATSAPP referred to above. The second stage of this inquiry simply requires a visual and aural comparison of the disputed domain name to the proven trademarks. Questions such as the scope of the trademark rights, the geographical location of the respective parties and other considerations that may be relevant to an assessment of infringement under trademark law are not relevant at this stage. Such matters, if relevant, may fall for consideration under the other elements of the Policy, e.g., WIPO Overview 3.0, section 1.7. In undertaking that comparison, it is permissible in the present circumstances to disregard the Top-Level Domain (“TLD”) component as a functional aspect of the domain name system. WIPO Overview 3.0, section 1.11. The Complainant contends that the disputed domain name is simply a contraction of the Complainant’s trademark, essentially omitting the vowels and just using the consonants so that it is the aural equivalent of the Complainant’s trademark. The Complainant points out that in Ritzio Purchase Limited, Dareos Inc., Dareos Ltd v. Private Whois, Global Domain Privacy Services Inc, Irina Polyakova, Grygorii Leontiev, GGS Ltd, Valerii Polinskyi, Vilardo Ltd,WIPO Case No. D2018-2015, the complainant owned registered trademarks for ВУЛКАН, VULKAN, and VOLCANO. The panelist concluded that a number of domain names in dispute were confusingly similar on the basis that the trademark was recognisable within the domain names. The panelist stated: “…. The other Domain Names in this case, such as The omission of the “h” and one “p” in the disputed domain name from the consonants comprising the Complainant’s trademark is unlikely to affect its aural perception. As the Respondent pointed out in his communications to the Complainant, the disputed domain name can be seen as a four letter acronym which could potentially have many different meanings. Accordingly, how it may be perceived could depend on who is the perceiver and context. Someone who is not familiar with the Complainant’s service but is familiar with the West Tennessee State Penitentiary (to take an example raised by the Respondent) may not recognise the Complainant’s trademark in the disputed domain name. On the other hand, members of the public who are users of the Complainant’s service – of which there are many – may well readily perceive the disputed domain name as referencing the Complainant. It is possible that some portion of the public would view the four letters as an initialism so that it is pronounced W.T.S.P, but it is also likely that many people – particularly those who are familiar with modern, colloquial usages – may well sound out the contraction as a spoken word. Moreover, where a domain holder is, or may be, relying on the descriptive nature of a term comprising a domain name, the success or otherwise of the claim will typically require consideration under the second limb of the Policy of how the domain name is being used and whether or not that is consistent with the claimed descriptive nature of the term. See, e.g., WIPO Overview 3.0, section 2.10. Thus, while the content of a respondent’s website is not usually relevant to the assessment under the first limb of the Policy, panels have been willing to take note of the content of the respondent’s website to confirm confusing similarity where it appears the respondent has been targeting the trademark. See WIPO Overview 3.0, section 1.15. Given the nature of the website to which the disputed domain name resolved before the Complainant’s first cease and desist letter, that appears very likely in the present case. Accordingly, the Panel finds that the Complainant has established that the disputed domain name is confusingly similar to the Complainant’s trademarks and the requirement under the first limb of the Policy is satisfied. B. Rights or Legitimate Interests The second requirement the Complainant must prove is that the Respondent has no rights or legitimate interests in the disputed domain name. Paragraph 4(c) of the Policy provides that the following circumstances can be situations in which the Respondent has rights or legitimate interests in a disputed domain name: (i) before any notice to [the Respondent] of the dispute, [the Respondent’s] use of, or 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) [the Respondent] (as an individual, business, or other organization) has been commonly known by the [disputed] domain name, even if [the Respondent] has acquired no trademark or service mark rights; or (iii) [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. These are illustrative only and are not an exhaustive listing of the situations in which a respondent can show rights or legitimate interests in a domain name. The onus of proving this requirement, like each element, falls on the Complainant. UDRP panels have recognized the difficulties inherent in proving a negative, however, especially in circumstances where much of the relevant information is in, or likely to be in, the possession of the respondent. Accordingly, it is usually sufficient for a complainant to raise a prima facie case against the respondent under this head and an evidential burden will shift to the respondent to rebut that prima facie case. See, e.g., WIPO Overview 3.0, section 2.1. While the Respondent does have a WhatsApp account, the Complainant states that it has not authorised the Respondent to use the disputed domain name. Nor is the Respondent otherwise affiliated with it. The disputed domain name is plainly not derived from the Respondent’s name. Nor is there any suggestion of some other name by which the Respondent is commonly known from which the disputed domain name could be derived. From the available record, the Respondent does not appear to hold any trademarks for the disputed domain name. The teal or green colour that dominated the Respondent’s website before June 2020 is very close to the colouring used by the Complainant for its branding and get-up. The “buttons” even clicked through to start a chat in WhatsApp with the Respondent. Moreover, the links were also associated with one of the Complainant’s significant competitors. The website also had links to businesses. It is not clear if the businesses are associated with the Respondent in any way or are in the nature of pay-per-click promotions or something similar. In any event, it appears the disputed domain name is being used to drive traffic to the Respondent’s account and the linked businesses based on potential confusion with the Complainant’s marks. The Complainant contends that all of these matters are in breach of its terms and conditions for subscribers. Furthermore, the get-up of the Respondent’s website (before June 2020), the Viber logo and the similarity of the disputed domain name to the Complainant’s trademark convey a real risk that members of the public would be misled into thinking that the Respondent and the linked businesses are endorsed by, or associated with, the Complainant in some way. There is no disclosure of the nature of the Respondent’s relationship with the Complainant. These matters, taken together, are sufficient to establish a prima facie case under the Policy that the Respondent has no rights or legitimate interests in the disputed domain name. The potential for the four letters of the disputed domain name to represent some other business or activity – such as West Tennessee State Penitentiary or the call sign of a television network in the United States – does not assist the Respondent in this case as the Respondent is not using the disputed domain name in connection with any of those other businesses or services. Accordingly, the Panel finds the Complainant has established the second requirement under the Policy also. C. Registered and Used in Bad Faith Under the third requirement of the Policy, the Complainant must establish that the disputed domain name has been both registered and used in bad faith by the Respondent. These are conjunctive requirements: both must be satisfied for a successful complaint: see, e.g., Burn World-Wide, Ltd. d/b/a BGT Partners v. Banta Global Turnkey Ltd,WIPO Case No. D2010-0470. Generally speaking, a finding that a domain name has been registered and is being used in bad faith requires an inference to be drawn that the respondent in question has registered and is using the disputed domain name to take advantage of its significance as a trademark owned by (usually) the complainant. Given the widespread use of the Complainant’s service by reference to its trademark for many years before the Respondent registered the disputed domain name, it is highly likely that the Respondent was well aware of the Complainant and its trademark before registering the disputed domain name. That awareness appears to be confirmed by the fact he has a WhatsApp account and the nature of the website to which it resolved. There is no evidence to support a conclusion that the Respondent registered the disputed domain name for use in connection with some “descriptive” signification of W.T.S.P. Rather, all the available evidence points to the Respondent having registered the disputed domain name to take advantage of its close resemblance to the Complainant’s trademark. Accordingly, the Panel finds that the Respondent registered the disputed domain name in bad faith. As discussed above, it appears that the Respondent has been using the disputed domain name to attract users to his “chat” or divert them to the businesses linked on his site. The Respondent has also sought “bids” or “offers” to purchase the disputed domain name at, the Panel infers from the context, a price higher than his out of pocket costs. In circumstances where he does not have rights or legitimate interests in the disputed domain name, that constitutes use in bad faith under the Policy. Accordingly, the Complainant has established all three requirements under the Policy. 6. 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, Warwick A. Rothnie
WhatsApp trade mark and my domain is wtsp.biz , u c different?
What’s and App - WhatsApp
Also wtsp https://www.tn.gov/correction/sp/state-prison-list/west-tennessee-state-penitentiary.html
Also wtsp https://en.wikipedia.org/wiki/WTSP
It was before WhatsApp App )))
Domain wtsp.biz for my business ;), and wtsp it is “Want To Say Please” you can check ))
what other questions may be?
“Domain Nissan.com It is written as the automobile company Nissan, but the domain does not belong to them. I registered my domain for a long time, if you need it, but you are interested in it and therefore need it, I can sell it to you. Bid or don’t waste your time.”
Sole Panelist
Date: October 30, 2020
Full & Egal Universal Law Academy