The Complainant is WhatsApp Inc., United States of America (“United States” or “U.S.”), represented by Hogan Lovells (Paris) LLP, France.
The Respondent is Donald Huen, China. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 7, 2020. On September 8, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 9, 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 September 9, 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 September 17, 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 September 21, 2020. In accordance with the Rules, paragraph 5, the due date for Response was October 11, 2020. The Respondent did not submit a formal response. On October 12, 2020, the Respondent expressed willingness to settle the matter. On October 19, 2020, the Complainant instructed the Center to proceed to the Panel appointment. The Center appointed Leon Trakman as the sole panelist in this matter on October 27, 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, WhatsApp Inc., is a global provider of mobile messaging applications (or “apps”). Founded in 2009 and acquired by Facebook, Inc. in 2014, its App known as WhatsApp, allows users to exchange messages for free through smartphones. It also enables Internet users to access its messaging platform via its website “www.whatsapp.com”. The Complainant has secured ownership of trademark registrations for WHATSAPP in multiple jurisdictions, including but not limited to: Hong Kong Trademark No. 301926874, WHATSAPP, registered on May 25, 2011 The disputed domain name was registered on October 17, 2014 and resolves to an inactive website. 5. Parties’ Contentions A. Complainant The Complainant contends that the Respondent has acted contrary to paragraph 4(a) of the Policy on three primary grounds: i). The disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; 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. The Complainant contends that it has established each these factors in its complaint; and alleges further, that it was recently made aware that the Respondent has reproduced its Trademark and Company Name, with the descriptive term “buy” under the generic Top-Level-Domain (“gTLD”) “.com”; that the disputed domain name The Complainant provides evidence further that, on July 21, 2020, it sent an email to the Registrar, requesting it to forward a cease and desist letter, notifying the Respondent of the Complainant’s trademark rights and requesting, inter alia, that it voluntarily transfer the disputed domain name to the Complainant. As the Respondent’s email address was not publicly available on WhoIs, the Registrar requested that the Complainant complete its online form to be able to contact the Respondent. The Complainant completed the form on July 24, 2020. However, the Complainant alleges that it was unable to adequately communicate with the Respondent using the contact form provided on the Registrar’s website, as the form did not provide for the submission of any text. On August 28, 2020, the Registrar confirmed that the cease and desist letter had been forwarded to the Respondent, to which the Respondent failed to respond. B. Respondent The Respondent did not reply formally to the Complainant’s contentions. However, the Respondent submitted several emails on October 12, 16 and 19, 2020, expressing willingness to settle the matter and stating that “I registered this domain in order to prepare for the Cantonese pronunciation name that will cooperate with the business that I operate in the future. The name of the business I run is “WHA TASP PRODUCTS BUYER (華集雜貨採購)”, but she has never been started. And, she has never been launched online, and I don’t think it’s ever affecting “WhatsApp”. Also, I never tried to do anything bad idea.” 6. Discussion and Findings A. Identical or Confusingly Similar The Panel determines that the disputed domain name is identical or confusingly similar to the Complainant’s trademarks pursuant to paragraph 4(a)(i) of the Policy, and paragraphs 3(b)(viii) and (b)(ix)(1) of the Rules. The Complainant has satisfied the requirements of paragraph 4(a) of the Policy, in having trademark rights in WHATSAPP, and in establishing that the disputed domain name is identical or confusingly similar to that trademark. These requirements are further affirmed in WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”). Section 1.2 specifies that, “[w]here the Complainant holds a nationally or regionally registered trademark or service mark, this prima facie satisfies the threshold requirement of having trademark rights for purposes of standing to file a UDRP case.” As is evidenced in section 4 4 above, the Complainant holds a variety of trademark registrations for WHATSAPP across multiple jurisdictions. This confirms its trademark rights in WHATSAPP in accordance with paragraph 4(a)(i) of the Policy. The Panel holds further, that the disputed domain name is confusingly similar to the Complainant’s trademark because it incorporates the Complainant’s WHATSAPP trademark, even if it adds the dictionary term “buy”. See WIPO Overview 3.0, Section 1.7 which stipulates “[…] 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 for purposes of UDRP standing.” The Panel finds that the disputed domain name replicates the Complainant’s trademark, WHATSAPP, in full. The addition of the term “buy” to WHATSAPP does not prevent a finding of confusing similarity to the Complainant’s trademark. As WIPO Overview 3.0, Section 1.8 elaborates: “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.” For other cases that have so held in according with Section 1.8 of the WIPO Overview 3.0, seeRoche Therapeutics, Inc., Hoffman-La Roche, Inc., Genentech, Inc., F. Hoffman-La Roche AG v. Privacy Hero Inc. / IT Company / Kyle Rocheleau, IT Company,WIPO Case No. D2016-0988. The Panel holds further that, in determining whether a disputed domain name is confusingly similar to the Complainant’s trademark, the applicable Top-Level Domain extension, here “.com”, may be disregarded because it is a standard registration required for the purposes of assessment under the first element, as it is construed as a standard registration requirement. This holding is consistent with Section 1.11.1 of WIPO Overview 3.0. The disputed domain name is therefore confusingly similar to the Complainant’s trademark pursuant to paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests The Panel holds that the Respondent has no rights or legitimate interests in respect of the disputed domain name pursuant to paragraph 4(a)(ii) of the Policy and paragraph 3(b)(ix)(2) of the Rules. The Respondent has no rights or legitimate interests in the disputed domain name. See Section 2.1 of WIPO Overview 3.0. “While the overall burden of proof in UDRP proceedings is on the Complainant […] where a Complainant makes out 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.” Here the Complainant has made out a prima facie case; so the burden of production shifts to the Respondent. The Respondent has failed to satisfy that burden. There is no evidence that the Respondent has any rights or legitimate interests in the disputed domain name. The Respondent is not authorized by the Complainant or any other with legitimate authority to use that domain name. The absence of such authorization may be sufficient to establish prima facie that the Respondent lacks rights or legitimate interests in the disputed domain name. See, for instance, The Coca-Cola Company v. ICU Agency, WIPO Case No. D2008-1851. The Panel finds no other basis upon which the Respondent has acquired a right or legitimate interest in the disputed domain name. There is no evidence to support the assertion that the Respondent is commonly known by the domain name, or in any way identified with that domain name, such as in having a similar family name, or using that disputed domain name in legitimate business dealings prior to the registration of the Complainant’s trademark. Nor is there evidence that the Respondent is making legitimate noncommercial and fair use of that disputed domain name. Nor is any evidence adduced that the Respondent has used that domain name to direct Internet traffic to an active website at or after registration of the domain name in 2014. Registering a disputed domain name and then holding it passively does not ordinarily confer rights or legitimate interests on the Respondent. See, for example, Guinness World Records Limited v. Solution Studio,WIPO Case No. D2016-0186 “While passive holding by itself may be a legitimate activity, doing so does not as such confer any rights or legitimate interests in the domain name”). The Respondent claims that it registered the disputed domain name “in order to prepare for the Cantonese pronunciation name that will cooperate with the business “WHA TASP PRODUCTS BUYER (華集雜貨採購)”. However, evidence of such an entitlement is wholly absent from the record. Accordingly, the Panel concludes that the Respondent has no rights or legitimate interests in the disputed domain name pursuant to paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith The Panel holds that the disputed domain name was registered and is being used in bad faith pursuant to paragraph 4(a)(iii) and 4(b) of the Policy and paragraph 3(b)(ix)(3) of the Rules. The Respondent’s bad faith registration of the disputed domain name is evidenced as it was aware of the Complainant’s well-known trademark and that it registered the disputed domain name knowing that it was confusingly similar to the Complainant’s distinctive WHATSAPP trademark that was in use since 2009. Indeed, search results obtained by typing the terms WHATSAPP or WHATSAPP BUY in “www.google.com” consistently resolve to the Complainant business and/or its trademark. It is also reasonable to conclude that, in incorporating the Complainant’s well-known trademark in the disputed domain name, the Respondent was aware of that trademark, that it did not have the express, implied, or ostensible authority from, or ratification by, the Complainant to register and use that domain name. The Respondent was also likely aware that Internet users would confuse the disputed domain name with the Complainant’s trademark, and assume the Respondent was affiliated with, or endorsed by the Complainant to use that domain name. With respect to the bad faith use, no evidence has been adduced that the Respondent has ever actively used the disputed domain name. The disputed domain name does not resolve to an active website, but to the Registrar’s holding page. The Internet Archive also does not establish that the Respondent has ever used the disputed domain name. There is therefore no evidence of the Respondent had been actively using the disputed domain name in good faith prior to these proceedings. Nevertheless, the non-use of a disputed domain name does not prevent a finding of bad faith where that domain name is being held passively and able to be used in bad faith at a future time. In so determining, this the Panel has taken into account of the context surrounding the use of the disputed domain name including inter alia: “(i) the degree of distinctiveness or reputation of the Complainant’s mark, (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 or use of false contact details (noted to be in breach of its registration agreement), and (iv) the implausibility of any good faith use to which the domain name may be put.” Section 3.3 of WIPO Overview 3.0. See also Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003. The global recognition of the Complainant’s trademark is well evidenced in prior UDRP decisions, repeatedly maintaining that “Complainant’s trademark WHATSAPP has become well known around the world”; that it is “composed of a coined term that confers to it certain distinctiveness” and that “ Respondents must have been aware of the existence of Complainant’s trademark WHATSAPP at the time of registration of each disputed domain name.” See WhatsApp, Inc. v. Domain Manager, SHOUT marketing SL, and Gonzalo Gomez Rufino, River Plate Argentina, and Gonzalo Gomez Rufino, SHOUT Marketing SL,WIPO Case No. D2018-1581. Nor does the Respondent’s passive holding of the disputed domain name demonstrate its legitimate noncommercial or fair use in compliance with paragraph 4(c)(i) of the Policy. See Philip Morris USA Inc. v. Gabriel Hall,WIPO Case No. D2015-1779. The fact that the Respondent has not actively used the disputed domain name is therefore not determinative, given that it has positioned itself and any buyer or transferee of that name to do so in the future. There is no evidence on record that the Respondent used the disputed domain name to direct Internet traffic to its website, purported to sell it to the Complainant or to a third party, or intended to “squat” on that domain name for an unspecified time before using it for an active purpose. Accordingly, the Panel determines that the Respondent registered and used the disputed domain name in bad faith pursuant 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 Leon Trakman
Hong Kong Trademark No. 303816720, WHATSAPP, registered on June 23, 2016
United States Trademark Registration No. 3939463, WHATSAPP, registered on April 5, 2011
European Union Trademark No. 009986514, WHATSAPP, registered on October 25, 2011
International Registration No. 1085539, WHATSAPP, registered on May 24, 2011.
Sole Panelist
Date: November 3, 2020
Full & Egal Universal Law Academy