The Complainant is WhatsApp Inc., United States of America (“United States”), represented by Hogan Lovells (Paris) LLP, France.
The Respondent is Varun Kumar, India. 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 17, 2020. On August 17, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On August 18, 2020, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name, which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on August 20, 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 August 20, 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 August 24, 2020. In accordance with the Rules, paragraph 5, the due date for Response was September 13, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 14, 2020. The Center appointed Wolter Wefers Bettink as the sole panelist in this matter on September 21, 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 the WhatsApp messaging application. Since its launch in 2009, WhatsApp has become one of the fastest growing and most popular mobile applications in the world, with over 2 billion monthly active users worldwide (as of February 2020). The Complainant is the owner of registrations for the WHATSAPP trade mark in many jurisdictions throughout the world, including: - United States trade mark No. 3939463, registered on April 5, 2011 (first use in commerce 10 September 2009); - European Union Trade Mark No. 009986514, registered on October 25, 2011; - Indian trade mark No. 2149059, registered on April 18, 2016; and - International trade mark No. 1085539, registered on May 24, 2011. These are hereinafter together referred to as the “Trade Marks”. The Domain Name was registered on October 30, 2017 and at the time of filing of the Complaint, resolved to an error webpage. On July 31, 2020, the Complainant sent a cease and desist letter to the email address listed in the historic WhoIs record, notifying the Respondent of the Complainant’s trade mark rights and requesting, inter alia, voluntary transfer of the Domain Name. The Respondent did not reply. 5. Parties’ Contentions A. Complainant The Complainant submits that the Domain Name is confusingly similar to the Trade Marks, since it incorporates the WHATSAPP trade mark in its entirety, while the addition of the descriptive term “shopping” is not sufficient to refute the similarity between the Domain Name and the Trade Marks. According to the Complainant, the generic Top-Level Domain (“gTLD”) extension “.com” may be disregarded for the purposes of assessment under the first element, as it is viewed as a standard registration requirement. The Complainant contends that the Respondent has no rights or legitimate interests in the Domain Name. According to the Complainant, the Respondent is not using the Domain Name in connection with a bona fide offering of goods or services and is not making a legitimate noncommercial or fair use of the Domain Name, as the Domain Name resolves to an error page lacking any substantive content while, to the best of the Complainant’s knowledge, the Domain Name has previously only been used to resolve to a “coming soon” landing webpage. Furthermore, the Complainant states that the Respondent is not a licensee of the Complainant, nor has the Respondent been otherwise authorized by the Complainant to make any use of the Trade Marks, in a domain name or otherwise. The Complainant also points out that the Respondent has not replied to the Complainant’s cease and desist letter of July 31, 2020, with any claims of having made any demonstrable preparations to use the Domain Name, such as evidence of business formation-related due diligence/legal advice/correspondence, evidence of credible investment in website development or promotional materials such as advertising, letterhead, or business cards, proof of a genuine business plan utilizing the Domain Name, or any credible signs of pursuit of such a business plan. The Complainant submits that the Respondent cannot credibly claim to be commonly known by the Domain Name, or a name corresponding to the Domain Name, identity as the name of the Respondent shows no resemblance to the Domain Name, while the Complainant is not aware of any evidence that the Respondent has sought to secure any trade mark rights in the terms “whatsapp” or “whatsappshopping”, as reflected in the Domain Name. The Complainant submits that the Domain Name was registered and is being used in bad faith. According to the Complainant, the Respondent could not credibly argue that it did not have prior knowledge of the Complainant’s trade marks at the time it registered the Domain Name in October 2017, at which time the Complainant’s social network had already amassed over 1.3 billion users, while the WHATSAPP trade mark is inherently distinctive and well known throughout the world in connection with its messaging application, having been continuously and extensively used since the respective launching of its services, and acquiring considerable reputation and goodwill worldwide. The Complainant also submits that the Respondent registered the Domain Name having no authorization to make use of the Trade Marks in a domain name or otherwise, thereby creating a misleading impression of association with the Complainant, in bad faith. The Complainant points out that the Domain Name resolves to an error page and that the Respondent is not making any apparent substantive use of the Domain Name, which is similar to passive holding, which would not prevent a finding of bad faith. The Complainant submits that the following factors support a conclusion of bad faith use in the present case: (i) the WHATSAPP trade mark is well known internationally and, when confronted with the combination of the WHATSAPP trade mark together with the term “shopping”, many Internet users would be confused and wrongly assume that the Domain Name is owned by or otherwise endorsed by the Complainant; (ii) despite the Complainant’s efforts to contact the Respondent prior to the submission of the present Complaint, the Respondent has failed to engage with the Complainant or to produce any evidence of actual or contemplated good-faith use of the Domain Name; (iii) the Complainant cannot conceive of any bona fide use that the Respondent could make of the Domain Name that would not result in creating a misleading impression of association with the Complainant. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Identical or Confusingly Similar The Complainant has shown that it has registered rights in the Trade Marks. The Domain Name is confusingly similar to the Trade Marks as it incorporates WHATSAPP, of which the Trade Marks consist, in its entirety. The gTLD “.com” is typically disregarded under the confusing similarity test, since it is a technical registration requirement (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.11). Therefore, the Panel finds that the Domain Name is confusingly similar to the Trade Marks in which the Complainant has rights. B. Rights or Legitimate Interests Under paragraph 4(c) of the Policy, the second element a complainant has to prove is that a respondent lacks rights or legitimate interests in a domain name. This may result in the often impossible task of proving a negative, requiring information that is often primarily within the knowledge or control of the respondent. In order to satisfy the second element, the Complainant has to make out a prima facie case that the Respondent does not have rights or legitimate interests in the Domain Name. If the Complainant succeeds in doing so, 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 (see WIPO Overview 3.0, section 2.1). Based on the evidence and the undisputed submissions of the Complainant, the Panel concludes that the Respondent has not received the Complainant’s consent to use the Trade Marks as part of the Domain Name, is not commonly known by the Domain Name and has not acquired trade mark rights in the Domain Name. As the Domain Name does not resolve to an active website, there is no evidence that the Domain Name is used for a bona fide offering of goods or services, or a legitimate noncommercial or fair use. In view of the above, the Panel concludes that the Complainant has established that the Respondent has no rights or legitimate interests in the Domain Name. C. Registered and Used in Bad Faith Based on the information and the evidence provided by the Complainant, the Panel finds that at the time of registration of the Domain Name the Respondent was or should have been aware of the Trade Marks, since: (i) the Respondent’s registration of the Domain Name occurred six years after the registration of the earliest of the Trade Marks; (ii) the trade mark WHATSAPP for mobile messaging services is well-known throughout the world, including India where the Respondent is based; (iii) a simple trade mark register search, or even an Internet search, prior to its registration of the Domain Name, would have informed the Respondent of the existence of the Trade Marks. With regard to bad faith use, the fact that the Domain Name at this stage does not appear to resolve to an active website does not imply a lack of bad faith. As set out in WIPO Overview 3.0, section 3.3, the consensus view is that the apparent lack of so-called active use (e.g., to resolve to an active website) of a domain name without any active attempt to sell or to contact the trademark holder (passive holding), does not as such prevent a finding of bad faith (see inter alia Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003 and HUGO BOSS Trade Mark Management GmbH & Co. KG, HUGO BOSS AG v. Dzianis Zakharenka,WIPO Case No. D2015-0640). In accordance with this UDRP jurisprudence, a UDRP panel must examine all the circumstances of the case to determine whether a respondent is acting in bad faith. In this case, the Panel finds that the following circumstances together are found to be indicative of bad faith use of the Domain Name: (i) the probability that the Respondent was aware or should have been aware of the Complainant’s rights in the Trade Marks; (ii) the non-dictionary nature of the mark WHATSAPP incorporated in the Domain Name, such that the Respondent cannot claim to have “accidentally” registered a domain name that happens to correspond to the Trade Marks; (iii) it is difficult, if not impossible, to conceive of any use by the Respondent of the Domain Name, which combines the WHATSAPP trade mark with the term “shopping”, that would not result in creating a misleading impression of association with the Complainant; (iii) the lack of a Response of the Respondent; (iv) the lack of a response of the Respondent to the cease-and-desist letter sent by the Complainant. Therefore, the Panel concludes that the Domain Name has been registered and is being used 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 Wolter Wefers Bettink
Sole Panelist
Date: October 5, 2020
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