The Complainant is WhatsApp Inc., United States of America (“United States”), represented by Hogan Lovells (Paris) LLP, France.
The Respondent is Proxy Protection LLC, Proxy Protection LLC, United States / Leonardo Passos, Leonardo Passos, Brazil. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 8, 2020. On December 8, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 8, 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 December 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 December 14, 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 December 15, 2020. In accordance with the Rules, paragraph 5, the due date for Response was January 4, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 5, 2021. The Center appointed Assen Alexiev as the sole panelist in this matter on January 15, 2021. 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 was founded in 2009 and acquired by Facebook, Inc. in 2014. It is the provider of the WhatsApp mobile messaging application, which had over two billion monthly active Internet users worldwide as of February 2020. WhatsApp was the fourth most downloaded application worldwide as per App Annie’s Top Apps Worldwide Rankings in April 2020. The Complainant is the owner of the following trademark registrations for the sign “WHATSAPP” (the “WHATSAPP trademark”): − the United States trademark WHATSAPP with registration No. 3939463, registered on April 5, 2011 for services in International Class 42; The Complainant is also the owner of the domain name The disputed domain name was registered on October 14, 2018. It resolves to a Portuguese language website that promotes a mobile application described as allowing users to send automatic responses on the Complainant’s WhatsApp platform (that seems to be available 7 days free). 5. Parties’ Contentions A. Complainant The Complainant submits that it has made substantial investments to develop a strong presence online by being active on various social-media forums, and the WhatsApp’s official page on Facebook has over 30 million “likes”, while its official page on Twitter has more than two million followers. The Complainant states that the disputed domain name is confusingly similar to the WHATSAPP trademark, because it consists of its constituent elements “whats” and “app” in reverse order, with the addition of the generic word “bot”. According to the Complainant, this combination of elements in the disputed domain name does not prevent its confusing similarity with the Complainant’s WHATSAPP trademark. The Complainant contends that the Respondent has no rights or legitimate interests in respect of the disputed domain name, because the Respondent has not been authorized by the Complainant to use the WHATSAPP trademark in a domain name or otherwise, and is not known by the disputed domain name and has no trademark rights in the terms “whatsapp” or “appwhatsbot”. The Complainant submits that the Respondent is not currently making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers. The Complainant asserts that the disputed domain name violates WhatsApp’s Brand Guidelines, which prohibit the registration of domain names that could be confused with WhatsApp, and points out that the website associated with the disputed domain name features the same green color scheme as WhatsApp and makes prominent use of the WHATSAPP trademark and logos, while the right-hand side of the website contains an animated gif of a telephone screen displaying the conversation window of WhatsApp. According to the Complainant, the application featured on the Respondent’s website, enabling to send automatic responses to be used in connection with WhatsApp, violates the WhatsApp Terms of Service, which prohibit automated messaging or non-personal use of WhatsApp services. The Complainant notes that the application proposed on the Respondent’s website can be tested for free for only seven days, and after that period, a subscription has to be purchased for the amount of BRL 39 per year, which shows that the Respondent’s website is commercial. The Complainant submits that the presence of a disclaimer at the bottom of the Respondent’s website does not render the Respondent’s activities bona fide, as the Complainant would never consent to its trademark being used in order to market a product that violates its Terms of Service. According to the Complainant, the display of an animated gif depicting the Complainant’s application to market the products purportedly offered via the Respondent’s website creates a misleading impression of association with the Complainant. The Complainant contends that the disputed domain name was registered and is being used in bad faith. According to the Complainant, the Respondent registered the disputed domain name in full knowledge of the Complainant’s rights, without authorization to do so, and with a clear absence of rights or legitimate interests in the disputed domain name. The content of the Respondent’s website demonstrates actual knowledge of the Complainant and its trademark, as it makes multiple references to the Complainant and its messaging services and displays an animated gif depicting the Complainant’s application. The Complainant points out that the Respondent conceals its identity by means of privacy protection service for the disputed domain name and this is an indication of the Respondent’s bad faith and its intent to use the disputed domain name in a way which may be detrimental to the Complainant and its rights. According to the Complainant, by using the disputed domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website, by creating a likelihood of confusion with the Complainant as to the source, sponsorship, affiliation or endorsement of its website or of a product or service on its website. The Respondent’s use of the disputed domain name to resolve to a website containing an animated image representing the Complainant’s application and logo similar to the Complainant’s logo and offering for sale software enabling its users to send automated replies via WhatsApp is in bad faith as the Respondent is using the Complainant’s trademark in an attempt to increase traffic to its website to obtain commercial gain derived from the goodwill and reputation of the Complainant’s WHATSAPP trademark, all this by violating the WhatsApp Brand Guidelines and Terms of Service. The Complainant notes that on May 28, 2020, it sent a cease-and-desist letter to the Respondent and a reminder on June 18, 2020, to which the Respondent did not reply. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings Pursuant to the Policy, paragraph 4(a), the Complainant must prove each of the following to justify the transfer of the disputed domain name: (i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; The Complainant has provided evidence and has thus established its rights in the WHATSAPP trademark. The Panel notes that a common practice has emerged under the Policy to disregard in appropriate circumstances the generic Top-Level Domain (“gTLD”) section of domain names for the purposes of the comparison under the Policy, paragraph 4(a)(i). See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.11.1. The Panel sees no reason not to follow the same approach here, so it will disregard the “.com” gTLD of the disputed domain name. The relevant part of the disputed domain name incorporates the elements “app”, “what”, “s” and “bot”. The first three of these elements reproduce the WHATSAPP trademark in reverse order, but the trademark remains easily recognizable, while the last element “bot” is a dictionary word. Where the relevant trademark is recognizable within a disputed domain name, the addition of other terms would not prevent a finding of confusing similarity under the first element. See section 1.8 of WIPO Overview 3.0. In view of the above, the Panel finds that the disputed domain name is confusingly similar to the WHATSAPP trademark in which the Complainant has rights. B. Rights or Legitimate Interests While the overall burden of proof in UDRP proceedings is on the complainant, previous UDRP panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name 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. As such, 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. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element. See section 2.1 of the WIPO Overview 3.0. The Complainant contends that the Respondent has no rights or legitimate interests in the disputed domain names, stating that the Respondent has not been authorized by the Complainant to use the WHATSAPP trademark, is not known by the disputed domain name, and is not carrying out a bona fide use of the disputed domain name. According to the Complainant, the disputed domain name violates WhatsApp’s Brand Guidelines, which prohibit the registration of domain names that could be confused with WhatsApp, and the associated website makes prominent use of the WHATSAPP trademark and features the same green color scheme as WhatsApp, thus creating a misleading impression of association with the Complainant, while the automated messaging application featured on the Respondent’s website violates the WhatsApp Terms of Service, and is offered for commercial gain. The Complainant submits that the presence of a disclaimer at the bottom of the Respondent’s website does not render the Respondent’s activities bona fide. Thus, the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. The Respondent has not submitted a Response and has not explained why and for what purposes it has registered and used the disputed domain name. It has not denied the contentions of the Complainant and has not submitted any contrary evidence. There is no evidence that the Respondent has been authorized by the Complainant to use the WHATSAPP trademark or that it is known by the disputed domain name. The evidence submitted by the Complainant shows that the disputed domain name has indeed been used for a website that features the WHATSAPP trademark and offers an automated messaging application to be used in the Complainant’s WhatsApp platform, and the use of such application appears to be in violation of the WhatsApp Terms of Service as submitted by the Complainant. All the above supports a finding that the Respondent, being aware of the success and popularity of the Complainant’s WhatsApp platform and of its WHATSAPP trademark, has registered and used the disputed domain name in an attempt to exploit this popularity to attract Internet users to the Respondent’s website at the disputed domain name and to offer for commercial gain a mobile application to be used in conjunction with the Complainant’s platform that would be in violation of the Complainant’s Terms of Service. The Panel therefore does not regard this conduct of the Respondent as a legitimate activity that may give rise to rights or legitimate interests of the Respondent in the disputed domain name under the Policy. The Panel notes the Complainant’s allegation that the Respondent’s website at the disputed domain name contains a disclaimer for the lack of relationship between the Parties, but the Panel agrees that the presence of this disclaimer does not render the Respondent’s activities bona fide under the Policy. When Internet users have a chance to read the disclaimer they have already been attracted to the Respondent’s website, under the impression that the disputed domain name and the website are associated with the Complainant’s WHATSAPP trademark, and would be exposed to the commercial offer of an illegitimate mobile application on it. Therefore, the Panel finds that the Respondent does not have rights or legitimate interests in the disputed domain name. C. Registered and Used in Bad Faith Paragraph 4(b) of the Policy lists four illustrative alternative circumstances that shall be evidence of the registration and use of a domain name in bad faith by a respondent, namely: “(i) circumstances indicating that you have registered or you have 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 documented out-of-pocket costs directly related to the domain name; or (ii) you 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 have engaged in a pattern of such conduct; or (iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or (iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your 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 website or location or of a product or service on your website or location.” As discussed above, the disputed domain name is confusingly similar to the WHATSAPP trademark and includes the dictionary word “bot”, which is used to refer to software applications that run automated tasks over the Internet. The Respondent does not deny that it has used the disputed domain name for a website that offers exactly this – an automated application to be used in conjunction with the Complainant’s WhatApp platform, and its operation would be in violation of the Complainant’s Terms of Service. The Internet users of the Respondent’s application have to pay a fee for it, which shows that the Respondent’s activities are aimed to attract for commercial gain. As discussed in the section on rights and legitimate interests above, the presence of a disclaimer on the Respondent’s website does not render its activities bona fide under the Policy. Taking the above into account, the Panel accepts that it is more likely than not that the Respondent has registered and used the disputed domain name with knowledge of the Complainant and targeting the WHATSAPP trademark in an attempt to attract, for commercial gain, Internet users to the Respondent’s website, by creating a likelihood of confusion with the WHATSAPP trademark as to the affiliation or endorsement of its website and of the mobile application offered on it. Therefore, the Panel finds that the disputed domain name has been registered and 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 Assen Alexiev
− the European Union Trade Mark WHATSAPP with registration No. 009986514, registered on October 25, 2011 for goods and services in International Classes 9, 38 and 42;
− International trademark WHATSAPP with registration No. 1085539, registered on May 24, 2011 for goods and services in International Classes 9 and 38; and
− Brazilian trademark WHATSAPP with registration No. 831031522, registered on October 14, 2014 for goods in International Class 9.
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and,
(iii) the Respondent has registered and is using the disputed domain name in bad faith. A. Identical or Confusingly Similar
Sole Panelist
Date: February 2, 2021
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