The Complainant is WhatsApp LLC, United States of America (“United States”), represented by Hogan Lovells (Paris) LLP, France.
The Respondent is Arturo Sancho, Mexico. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on May 11, 2021. On the same day, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 13, 2021, 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 May 19, 2021 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 in English on May 21, 2021. The Center also sent an email communication in English and Spanish to the parties on May 19, 2021 regarding the language of the proceeding. The Complainant submitted a request for English to be the language of the proceeding on May 20, 2021. The Respondent did not comment on the language of the proceeding. 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 in English and Spanish, and the proceedings commenced on May 31, 2021. In accordance with the Rules, paragraph 5, the due date for Response was June 20, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 21, 2021. The Center appointed Matthew Kennedy as the sole panelist in this matter on June 29, 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 is the provider of the WhatsApp mobile messaging application. The Complainant was founded in 2009 and acquired by Facebook, Inc. in 2014. WhatsApp allows users to exchange messages for free via smartphones. The Complainant’s main website available at “www.whatsapp.com” also allows Internet users to access its messaging platform via WhatsApp Web. WhatsApp has over two billion monthly active users worldwide (as of March 2020). The Complainant holds multiple trademark registrations in multiple jurisdictions, including: - International trademark registration number 1085539 for WHATSAPP, registered on May 24, 2011, designating multiple jurisdictions and specifying goods and services in classes 9 and 38, including communications software for electronically exchanging data, audio, video, images and graphics via computer, mobile, wireless, and telecommunication networks; and - European Union Trade Mark registration number 010496602 for a green and white figurative mark (the “WhatsApp logo”), registered on May 18, 2012, specifying goods and services in classes 9, 38 and 42. The above trademark registrations remain current. The Respondent is an individual. The disputed domain name was registered on December 14, 2019. It formerly resolved to a website in English that offered tools for WhatsApp users to extract data from, and send messages via, the WhatsApp messaging application. The website was presented in green and white and prominently displayed the WhatsApp logo multiple times. The website offered “WA Tracker”, a tool with features including an online status tracker for WhatsApp, push notifications when online, chat probability between numbers, and insights of WhatsApp users’ activity. WA Tracker was offered by subscription with a free trial period. The website offered certain other tools for free that allowed WhatsApp subscribers to check if a number existed on WhatsApp, discover the current WhatsApp online status for any number, download the WhatsApp profile picture of any contact (depending on their privacy settings) and send anonymous WhatsApp messages. The home page displayed text in fine print with subheadings that read “About WhatsAppTools.net”, “About WhatsApp”, “Some more text that nobody cares about” and “What is WhatsApp Web?” The text described WhatsAppTools.net as an independent website and included a paragraph that read: “It is important to note that WhatsAppTools.net is not associated or affiliated in any way with the WhatsApp social network or its creator company, Facebook.” The Complainant sent a cease-and-desist letter to the Respondent on April 15, 2021. Subsequently, the disputed domain name began redirecting to the domain name The disputed domain name is confusingly similar to the Complainant’s WHATSAPP trademark. The Respondent has no rights or legitimate interests in the disputed domain name. The inclusion of the Complainant’s trademark in the disputed domain name implies affiliation between the Complainant and the disputed domain name. The Respondent is not a licensee of the Complainant, nor has the Respondent been otherwise authorized by the Complainant to make any use of its WHATSAPP trademark, in a domain name or otherwise. The WhatsApp Brand Guidelines prohibit the registration of domain names that could be confused with WHATSAPP. The Respondent’s use of the disputed domain name violates the Complainant’s Terms of Service. The Respondent’s website offers services that place the privacy and security of WhatsApp users at risk. Use of a domain name in connection with services that violate the Complainant’s Terms of Service does not amount to a bona fide offering of goods or services. The presence of a disclaimer-like statement on the Respondent’s website cannot cure the Respondent’s abusive use of the disputed domain name. The name of the Respondent bears no resemblance to the disputed domain name. The Respondent’s website is clearly intended to be commercial in nature as evidenced by the subscription plans offered to users of the Respondent’s website when creating an account. The disputed domain name was registered and is being used in bad faith. The Respondent’s website clearly demonstrates actual knowledge of the Complainant and its trademark. The disputed domain name resolves to a website offering paid subscriptions for use of a tool that allows users to track other WhatsApp users’ activity. Such use of the disputed domain name facilitates, inter alia, data scraping, and places the privacy and security of WhatsApp users at risk. The disputed domain name and the Respondent’s website do not conform to the WhatsApp Brand Guidelines, nor to the Complainant’s Terms of Service. The Respondent’s website makes extensive reference to the Complainant, uses the same green and white color scheme used by the Complainant, and makes use of the Complainant’s logos. Notwithstanding the inclusion of a short, disclaimer-like statement in the body of the text on the Respondent’s website, the Complainant submits that Internet users are likely to be misled into believing that the Respondent’s website is operated by or in some way approved by the Complainant. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings 6.1. Language of the Proceeding Paragraph 11(a) of the Rules provides that “unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding”. The Registrar confirmed that the Registration Agreement for the disputed domain name is in Spanish. The Complainant requests that the language of the proceeding be English. Its main arguments are that the disputed domain name is composed of Latin characters, including the English term “tools”; the contents of the website to which the disputed domain name resolves are entirely in English; and requiring the Complainant to translate the Complaint and supporting documents into Spanish would cause it to incur substantial additional costs, and cause significant delay in the proceeding. Paragraph 10(b) and (c) of the Rules require the Panel to ensure that the Parties are treated with equality, that each Party is given a fair opportunity to present its case and that the administrative proceeding take place with due expedition. Prior UDRP panels have decided that the choice of language of the proceeding should not create an undue burden for the parties. See, for example, Solvay S.A. v. Hyun-Jun Shin,WIPO Case No. D2006-0593; Whirlpool Corporation, Whirlpool Properties, Inc. v. Hui’erpu (HK) electrical appliance co. ltd.,WIPO Case No. D2008-0293. The Panel observes that in this proceeding the Complaint was filed in English. The website to which the disputed domain name resolved was also in English, from which it is reasonable to infer that the Respondent is able to communicate in that language. Further, despite the Center having sent an email regarding the language of the proceeding and a notice of the Complaint in both Spanish and English, the Respondent did not comment on the issue of language or express any interest in participating otherwise in this proceeding. Therefore, the Panel considers that requiring the Complainant to translate the Complaint into Spanish would create an undue burden and delay whereas accepting it in English does not create unfairness to either Party. Having considered all the circumstances above, the Panel determines under paragraph 11(a) of the Rules that the language of this proceeding is English. The Panel would have accepted a Response filed in Spanish, but none was filed. 6.2. Substantive Issues Paragraph 4(a) of the Policy provides that the Complainant must prove each of the following elements: (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. A. Identical or Confusingly Similar Based on the evidence submitted, the Panel finds that the Complainant has rights in the WHATSAPP mark. The disputed domain name wholly incorporates the WHATSAPP mark as its initial element. The disputed domain name adds the dictionary word “tools”. Given that the trademark remains clearly recognizable within the disputed domain name, the Panel does not consider that the addition of this dictionary word prevents a finding of confusing similarity. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.8. The disputed domain name includes a generic Top-Level Domain (“gTLD”) “.net”, which is a technical requirement of domain name registration. A gTLD is normally disregarded in the comparison between a disputed domain name and a trademark for the purposes of the first element of the Policy. Therefore, the Panel finds that the disputed domain name is confusingly similar to a trademark in which the Complainant has rights. The Complainant has satisfied the first element in paragraph 4(a) of the Policy. B. Rights or Legitimate Interests Paragraph 4(c) of the Policy sets out the following circumstances which, without limitation, if found by the panel, shall demonstrate that the respondent has rights to, or legitimate interests in, a disputed domain name, for the purposes of paragraph 4(a)(ii) of the Policy: (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. As regards the first circumstance above, the disputed domain name resolved to a site offering software tools, including one that was offered by paid subscription. The Complainant submits 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 its WHATSAPP trademark, in a domain name or otherwise. Despite this, the disputed domain name wholly incorporates the Complainant’s WHATSAPP trademark while the site to which it resolved prominently displayed the Complainant’s WHATSAPP logo multiple times and used the green and white colors of the Complainant’s logo throughout. Although the top of the Respondent’s homepage text contained a disclaimer that described WhatsApptools.net as independent of the Complainant, it was in fine print and combined with a presentation of the Complainant’s genuine WhatsApp products. The website gave the overall impression that it was somehow endorsed by the Complainant, despite the disclaimer. Further, the website tools were offered to WhatsApp users, who had necessarily downloaded the Complainant’s WhatsApp messaging application and accepted the Complainant’s Terms of Service, which do not allow the types of use of that application that the tools enable. Thus, the Respondent’s website was offering tools to procure breaches of the Complainant’s Terms of Service by WhatsApp users. Accordingly, the Complainant has made a prima facie case that the Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services. As regards the second circumstance, the Respondent’s name is listed in the Registrar’s WhoIs database as “Arturo Sancho”, not the disputed domain name. There is no evidence indicating that the Respondent has been commonly known by the disputed domain name. As regards the third circumstance above, the Respondent uses the disputed domain name with a site that offers “WA Tracker” by subscription, with a free trial period. Even though the site offers other tools for free, this indicates that the Respondent is not making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain. In summary, the Panel considers that the Complainant has made a prima facie case that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent failed to rebut that prima facie case because he did not respond to the Complaint. Therefore, based on the record of this proceeding, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant has satisfied the second element in paragraph 4(a) of the Policy. C. Registered and Used in Bad Faith Paragraph 4(b) of the Policy provides that certain circumstances shall be evidence of the registration and use of a domain name in bad faith. The fourth of these is as follows: (iv) by using the [disputed] domain name, [the respondent has] intentionally attempted to attract, for commercial gain, Internet users to [the respondent’s] 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 [the respondent’s] web site or location or of a product or service on [the respondent’s] website or location. With respect to registration, the disputed domain name was registered in 2019, years after the registration of the Complainant’s WHATSAPP trademark. The disputed domain name wholly incorporates the WHATSAPP mark as its initial element. The disputed domain name resolves to a website that displays the Complainant’s logo multiple times, presents the Complainant’s products, and offers tools specifically to users of the Complainant’s WhatsApp messaging application. There is little doubt that the Respondent was aware of the Complainant at the time that he registered the disputed domain name and that he targeted the WHATSAPP trademark. With respect to use, the disputed domain name contains the phrase “WhatsApp tools” (rather than, say, “Tools for WhatsApp”) but it has never resolved to a website that offered tools developed or authorized by WhatsApp, i.e., the Complainant. Rather, the disputed domain name formerly resolved to a site offering an unauthorized third party’s tools that enabled the users of the WhatsApp messaging application to extract data from, and send messages via, that application. Further, the website overall gave the false or at least confusing impression that it was somehow endorsed by the Complainant, despite the inclusion of a disclaimer in fine print. One of the tools was offered by paid subscription. Given these circumstances, the Panel finds that the Respondent is using the disputed domain name intentionally to attract, for commercial gain, Internet users to his website by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of the Respondent’s website or of a service on the Respondent’s website, within the terms of paragraph 4(b)(iv) of the Policy. The Panel notes that the use of the disputed domain name has recently changed and that it now redirects to another domain name that resolves to the same website as before. This change of use does not alter the Panel’s conclusions; it may actually constitute a further indication of bad faith. Therefore, the Panel finds that the disputed domain name has been registered and is being used in bad faith. The Complainant has satisfied the third element in paragraph 4(a) 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 Matthew Kennedy
Sole Panelist
Date: July 12, 2021
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