Complainant is WhatsApp Inc., United States of America (“United States” or “U.S.”), represented by Hogan Lovells (Paris) LLP, France.
Respondent is WhoisGuard Protected, WhoisGuard Inc., Panama / Roger Tulsa, United States. 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 9, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On December 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 Complainant on December 10, 2020, providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on December 11, 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 Respondent of the Complaint, and the proceedings commenced on December 14, 2020. In accordance with the Rules, paragraph 5, the due date for Response was January 3, 2021. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on January 4, 2021. The Center appointed Richard W. Page as the sole panelist in this matter on January 13, 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 Complainant, WhatsApp Inc., is a provider of one of the world’s most popular mobile messaging applications (or “apps”). Founded in 2009 and acquired by Facebook, Inc. in 2014, WhatsApp allows users across the globe to exchange messages for free via smartphones, including iPhone, BlackBerry, and Android. Its main website available at “www.whatsapp.com” also allows Internet users to access its messaging platform. 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). WhatsApp has acquired considerable reputation and goodwill worldwide. Consistently being ranked amongst Apple iTunes’ 25 most popular free mobile applications and Tech Radar’s Best Android Apps, WhatsApp was the 3rd most downloaded application worldwide as per App Annie’s Top Apps Worldwide Rankings in 2020. Complainant has secured ownership of trademark registrations for the WHATSAPP Mark in many jurisdictions throughout the world, including U.S. Trademark Registration No. 3939463, WHATSAPP, registered April 5, 2011; European Union Trade Mark No. 009986514, WHATSAPP, registered October 25, 2011; and International Registration No. 1085539, WHATSAPP, registered May 24, 2011. Reflecting its global reach, Complainant is the owner of numerous domain names, containing the WHATSAPP Mark, under various generic Top-Level Domains (gTLDs) as well as under many country code Top-Level Domains (ccTLDs). Complainant has also made substantial investments to develop a strong presence online by being active on various social media fora. For instance, WhatsApp’s official page on Facebook has over 30 million “likes.” In addition, WhatsApp has 2.72 million followers on Twitter. The Disputed Domain Name was registered on April 18, 2019. The Disputed Domain Name resolves to a website promoting a so-called “Official WhatsApp Spy Tool”. 5. Parties’ Contentions A. Complainant Complaint was recently alerted to the fact that its WHATSAPP Mark and company name had been reproduced together with the descriptive term “spy” under the gTLD “.live”. The Disputed Domain Name currently resolves to a website purportedly offering a program for spying/monitoring WhatsApp accounts, but in fact redirects Internet users to another PPC links page. More specifically, once Internet users have entered a telephone number they want to spy on, they are then required to “complete a brief human verification process.” This process consists of being redirected to a page with PPC Links. In addition, the website associated with the Disputed Domain Name features the same green color scheme as WhatsApp and makes prominent use of a logo highly similar to WhatsApp’s figurative WHATSAPP Mark (see European Union Trade Mark No. 010496602, registered on May 18, 2012). A search carried out by Complainant revealed that Respondent Roger Tulsa was involved in at least one previous domain name proceeding where the Panel ordered the transfer of another disputed domain name to Complainant. See Snap Inc. v. Roger Tulsa / WhoisGuard Protected, WhoisGuard, Inc. / Steve McMahon / Nick Hong / Scott Chaney / Arthur Krebs / Jose Martin / Lindsey Thomas / Joan Boucher / Elizabeth Miller / James Grady / Rick Jones / Oma Jackson / Sung Dawkins / Richard Ellis / Lori Johnson / David Tabor / Courtney Garcia / Dennis Wass / Malcolm Hatchett / Harold Reina / Dennis Clark / Catherine Morrison / Nathaniel Kral / Breanne Valdez / Whitney Mifflin / Larry Pena / Jennifer Dorr / Lee Crowder / Paul Winfrey / Frank Schweiger,WIPO Case No. D2018-0431 On August 25, 2020, Complainant sent a cease and desist letter to Respondent by email underlining Complainant’s rights in the WHATSAPP Mark and requesting the voluntary transfer of the Disputed Domain Name. Respondent did not reply to Complainant’s notice. Complainant contends that it has enforceable rights in the WHATSAPP Mark and that the Disputed Domain Name contains the entirety of the WHATSAPP Mark, including the descriptive word “spy”. Complainant further contends that the inclusion of the gTLD “.live” is not distinctive. Complainant alleges that Respondent has no rights or legitimate interest in the Disputed Domain Name. Respondent is not a licensee of Complainant, nor has he been allowed by Complainant to make use of the WHATSAPP Mark, in a domain name or otherwise. Complainant further alleges that Respondent is not using or made demonstrable preparations to use the Disputed Domain Name in connection with a bona fide offering of goods or services. Complainant further alleges that the purported use of the Disputed Domain Name to spy on WhatsApp users and then to link the Internet user information to a PPC site is not a bona fide or legitimate use. Complainant argues that the only indication of a name associated with Respondent is Roger Tulsa. So Respondent is not commonly known by the Disputed Domain Name. Complainant further argues that Respondent has made no legitimate noncommercial use or fair use of the Disputed Domain Name, without intent for commercial gain to misleadingly divert consumers. Complainant asserts that Respondent has registered and is using the Disputed Domain Name in bad faith and has intended to misleadingly attract Internet users to Respondent’s website for commercial gain through the use of PPC links. B. Respondent Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings Paragraph 15(a) of the Rules instructs the Panel as to the principles the Panel is to use in determining the dispute: “A Panel shall decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules, and any rules and principles of law that it deems applicable.” Even though Respondent has failed to file a Response or to contest Complainant’s assertions, the Panel will review the evidence proffered by Complainant to verify that the essential elements of the claims are met. See section 4.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”). Paragraph 4(a) of the Policy directs that Complainant must prove each of the following: i) that the Disputed Domain Name registered by Respondent is identical or confusingly similar to the WHATSAPP Mark in which Complainant has rights; and, ii) that Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and, iii) that the Disputed Domain Name has been registered and is being used in bad faith. A. Identical or Confusingly Similar Complainant contends that it has numerous registrations of the WHATSAPP Mark. Section 1.2.1 of the WIPO Overview 3.0 states that registration of a trademark is prima facie evidence of Complainant having enforceable rights in the WHATSAPP Mark. Respondent has not contested Complainant’s contention of trademark rights. Therefore, the Panel finds that Complainant has enforceable rights in the WHATSAPP Mark. Complainant further contends that the Disputed Domain Name is confusingly similar to the WHATSAPP Mark pursuant to paragraph 4(a)(i) of the Policy. Section 1.7 of the WIPO Overview 3.0 says that inclusion of the entire trademark in a domain name will be considered confusingly similar. See Section 1.8 of the WIPO Overview 3.0, which instructs that the addition of other terms (whether descriptive, geographical, pejorative, meaningless or otherwise) does not prevent a finding of confusing similarity. Also see Section 1.11.1 of the WIPO Overview 3.0, which instructs that gTLDs, such as “.live”, are generally disregarded for purposes of assessing confusing similarity. The Panel finds that the Disputed Domain Name includes the principal element of the WHATSAPP Mark. The descriptive word “spy” and the gTLD “.live” are irrelevant under the analysis pursuant to paragraph 4(a)(i) of the Policy. Therefore, the Panel finds that the Disputed Domain Name is confusingly similar to the WHATSAPP Mark, pursuant to paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests Complainant contends that Respondent has no rights or legitimate interests in the Disputed Domain Name pursuant to paragraph 4(a)(ii) of the Policy. Section 2.1 of the WIPO Overview 3.0 states that once Complainant makes a prima facie case in respect of the lack of rights or legitimate interests of Respondent, Respondent carries the burden of demonstrating he has rights or legitimate interests in the Disputed Domain Name. Where Respondent fails to do so, Complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy. Paragraph 4(c) of the Policy allows three nonexclusive methods for the Panel to conclude that Respondent has rights or legitimate interest in the Disputed Domain Name: (i) before any notice to you [Respondent] of the dispute, your 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) you [Respondent] (as an individual, business, or other organization) have been commonly known by the Disputed Domain Name, even if you have acquired no trademark or service mark rights; or (iii) you [Respondent] are 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 WHATSAPP Mark. Complainant alleges that Respondent is not a licensee of Complainant, nor has he been allowed by Complainant to make use of the WHATSAPP Mark, in a domain name or otherwise. Complainant further alleges that the purported use of the Disputed Domain Name to spy on WhatsApp users and then to redirect the Internet user to a PPC site is not a bona fide or legitimate use. Complainant argues that the only indication of a name associated with Respondent is Roger Tulsa. So Respondent is not commonly known by the Disputed Domain Name. Complainant further argues that Respondent has made no legitimate noncommercial use or fair use of the Disputed Domain Name, without intent for commercial gain to misleadingly divert consumers. The Panel finds that Complainant has made a prima facie showing, which has not been contested by Respondent. Therefore, the Panel finds that Complainant has shown the necessary elements of paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith Complainant contends that Respondent registered and is using the Disputed Domain Name in bad faith in violation of paragraph 4(a)(iii) of the Policy. The Policy paragraph 4(b) sets forth four nonexclusive criteria for Complainant to show bad faith registration and use of the Disputed Domain Name: (i) circumstances indicating that you [Respondent] have registered or you have acquired the Disputed Domain Name primarily for the purpose of selling, renting, or otherwise transferring the Disputed Domain Name registration to Complainant who is the owner of the WHATSAPP Mark or to a competitor of Complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the Disputed Domain Name; or (ii) you [Respondent] have registered the Disputed 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 [Respondent] have registered the Disputed Domain Name primarily for the purpose of disrupting the business of a competitor; or (iv) by using the Disputed Domain Name, you [Respondent] 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 WHATSAPP Mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product. Complainant asserts that Respondent has registered and is using the Disputed Domain Name in bad faith and has intended to misleadingly attract Internet users to Respondent’s website for commercial gain through the use of PPC links. Respondent has not contested these assertions. The composition of the Disputed Domain Name and the content of the website at the Disputed Domain Name demonstrate Respondent’s actual knowledge of Complainant, noting that the website makes multiple references to Complainant and makes prominent use of a variation of Complainant’s logo and green color scheme. Coupled together with the prior UDRP proceeding involving Respondent, the Panel finds it clear that Respondent knew of Complainant and its rights upon registration of the Disputed Domain Name and sought to obtain commercial gain derived from the goodwill and reputation attached to Complainant’s Mark. Therefore, the Panel finds that Complainant has made the necessary showing under paragraph 4(b)(iv) of the Policy and has complied with 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 Richard W. Page
Sole Panelist
Date: January 14, 2021
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