The Complainant is WhatsApp LLC, United States of America (“United States”), represented by Tucker Ellis, LLP, United States.
The Respondent is Private Registration, NameBrightPrivacy.com, United States / Aykut Doğan, Turkey. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 21, 2021. On May 21, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 24, 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 27, 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 on May 31, 2021. 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 June 11, 2021. In accordance with the Rules, paragraph 5, the due date for Response was July 1, 2021. The Center received informal emails from the Respondent on May 27, May 31, June 1, June 20, and August 7, 2021. Accordingly, on August 9, 2021, the Center informed the Parties it would proceed to appoint a Panel. The Center appointed Tuukka Airaksinen as the sole panelist in this matter on August 12, 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 operates the WhatsApp messaging and voice-over-IP service and mobile application. The Complainant is a global leader is messaging services for mobile devices, with over 2 billion people in over 180 countries using WhatsApp. In 2018, the Complainant began offering its WhatsApp payment service, an in-chat feature that allows users in Brazil and India to make payments to users in their contact lists. The Complainant is the owner of the trademark WHATSAPP, registered is many countries all over the world, for example as a European Trade Mark No. 9986514, registered on October 25, 2011. The disputed domain name was registered on September 23, 2020. The Complainant provided evidence that the disputed domain name previously resolved to a website offering the disputed domain name for sale. Currently, the disputed domain name does not resolve to an active website. 5. Parties’ Contentions A. Complainant The Complainant contends that the disputed domain name contains the Complainant’s trademark with the addition of the descriptive term “pay”. The Complainant promotes and provides its own payment services. Accordingly, the disputed domain name adds a term descriptive of and relevant to the Complainant’s services. The disputed domain name is therefore confusingly similar with the Complainant’s trademark. The Respondent has no rights or legitimate interests in the disputed domain name. The Respondent is not known by the disputed domain name or the Complainant’s mark. The Complainant has not licensed or otherwise authorized the Respondent to use the Complainant’s trademark. The Respondent has no legitimate interests in the disputed domain name. The Respondent’s registration of the disputed domain name after the Complainant’s launch of its payment services strongly suggests that the disputed domain name was registered to make an undue profit based on the Complainant’s rights. The Respondent is using the disputed domain name to direct it to a commercial landing page offering the disputed domain name for sale. Any proposed sale price is very likely to exceed the Respondent’s out-of-pocket costs directly related to the disputed domain name. B. Respondent The Respondent contends that vacant domain names can be purchased legally by institutions or individuals, on condition that the fee is paid. Therefore, there has not occurred an illegal transaction regarding the purchase of the disputed domain name. The disputed domain name was purchased from another investor, but the brand has never been put in a bad situation and nothing has occurred to discredit the brand. The disputed domain name has never been redirected somewhere else and no website has ever been set up on behalf of the disputed domain name. The Respondent has offered to transfer the disputed domain name to the Complainant. 6. Discussion and Findings In order to obtain the transfer of a domain name, a complainant must prove the three elements of paragraph 4(a) of the Policy, regardless of whether the respondent files a response to the complaint or not. The first element is that the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights. The second element a complainant must prove is that the respondent has no rights or legitimate interests in respect of the domain name. The third element a complainant must establish is that the domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar Paragraph 4(a)(i) of the Policy requires that the Complainant establish that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights. Consequently, the Complainant must prove that it has rights to a trademark, and that the disputed domain name is identical or confusingly similar to this trademark. According to section 1.11 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), “The applicable Top Level Domain (‘TLD’) in a domain name (e.g., ‘.com’, ‘.club’, ‘.nyc’) is viewed as a standard registration requirement and as such is disregarded under the first element confusing similarity test”. Furthermore, “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. The nature of such additional term(s) may however bear on assessment of the second and third elements”. See section 1.8 of the WIPO Overview 3.0. The disputed domain name is otherwise identical with the Complainant’s trademark, with the exception that the word “pay” is also included in the disputed domain name. The addition of the descriptive term “pay” does not prevent a finding of confusing similarity between the Complainant’s trademark and the disputed domain name. This means that the disputed domain name is confusingly similar to the Complainant’s trademark and hence the first element of the Policy has been fulfilled. B. Rights or Legitimate Interests Paragraph 4(a)(ii) of the Policy requires that the Complainant establish that the Respondent has no rights or legitimate interests to the disputed domain name. The Complainant has put forward a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. The Complainant has credibly submitted that the Respondent is neither affiliated with the Complainant in any way, nor has it been authorized by the Complainant to use and register the disputed domain name, that the Respondent has no prior rights or legitimate interests in the disputed domain name, and that the Respondent has not made and is not making a legitimate noncommercial or fair use of the disputed domain name and is not commonly known by the disputed domain name in accordance with paragraph 4(c)(ii) of the Policy. Paragraph 4(c) of the Policy lists examples of what shall be deemed as rights or legitimate interests in a domain name. Section 2 of the WIPO Overview 3.0 summarizes consensus UDRP panel views on some of the most common topics concerning rights or legitimate interests in domain names. The Respondent submits that vacant domain names can be legally purchased by anyone and that no damage has been caused to the Complainant’s trademark. However, merely the fact that a domain name is available for registration does not in itself mean that the domain name could not infringe on a third party’s rights. The Respondent’s submission, without any other evidence, cannot therefore vest the Respondent with rights or legitimate interests to the disputed domain name. The Panel also finds that the nature of the disputed domain name carries a high risk of implied affiliation with the Complainant’s trademark. See section 2.5.1 of the WIPO Overview 3.0. Considering the Complainant’s above contentions, which have not been sufficiently rebutted by the Respondent, as well as the Panel’s findings below, the Panel finds that there are no circumstances that provide the Respondent with any rights or legitimate interests in the disputed domain name. Therefore, the Panel finds that the second element of the Policy is fulfilled. C. Registered and Used in Bad Faith Paragraph 4(a)(iii) of the Policy requires that the Complainant establish that the disputed domain name has been registered and is being used in bad faith. Paragraph 4(b) of the Policy provides that the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith: “(i) circumstances indicating that [the respondent has] registered or has 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 [the respondent’s] documented out-of-pocket costs directly related to the domain name; or (ii) [the respondent has] 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 [the respondent has] engaged in a pattern of such conduct; or (iii) [the respondent has] registered the domain name primarily for the purpose of disrupting the business or competitor; or (iv) by using the 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] website or location or of a product or service on [the respondent’s] website or location.” Considering that the Complainant has been using and registering its trademark worldwide for many years, and that the trademark has been held by previous UDRP panels to be well known, it is evident that the Respondent must have been aware of the Complainant’s trademark when registering the disputed domain name. Accordingly, the Panel finds that the disputed domain name was registered in bad faith. Currently the disputed domain name does not resolve to an active website but earlier it directed to a website where domain names were offered for sale. Noting, inter alia, the nature of the disputed domain name, comprising the Complainant’s trademark with a related term, and the strong international reputation of the trademark, the Panel finds it most likely that the Respondent’s aim in registering and using the disputed domain name to resolve to a website offering the disputed domain name for sale was to unfairly profit from or otherwise exploit the Complainant’s trademark. Furthermore, the fact that disputed domain name is not currently in active use does not prevent the finding of bad faith under the doctrine of passive holding. See section 3.3 of WIPO Overview 3.0. Considering that the Panel has found that the Complainant’s trademark is well known, the Respondent has not provided any evidence of actual or contemplated good-faith use, there are no obvious good faith or legitimate uses to which the disputed domain name may be put, the Panel considers, on balance, that the disputed domain name has been registered and is being used in bad faith. Therefore, the Panel finds that the third element of the Policy is fulfilled. 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, Tuukka Airaksinen
Sole Panelist
Date: August 26, 2021
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