The Complainant is WhatsApp, LLC, United States of America (“United States”), represented by Hogan Lovells (Paris) LLP, France.
The Respondent is Domain Admin, Isimtescil.net / Whoisprotection.biz, Turkey / Mohammed Alkurdy, Evan Digital Technology Group, Turkey.
2. The Domain Names and RegistrarThe disputed domain names
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 19, 2021. On July 20, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On July 26, 2021, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on August 2, 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 August 6, 2021.
The Center sent an email communication in English and Turkish to the parties on July 26, 2021 regarding the language of the proceeding, as the Complaint has been submitted in English and the language of the registration agreements for the disputed domain names are Turkish. The Complainant submitted a request for English to be the language of the proceeding on July 26, 2021. The Respondent did provide any comments on the issue.
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 August 10, 2021. In accordance with the Rules, paragraph 5, the due date for Response was August 30, 2021. The Response was filed with the Center on August 30, 2021.
The Center appointed Emre Kerim Yardimci as the sole panelist in this matter on September 10, 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 BackgroundThe Complainant is the provider of Whatsapp, a mobile messaging application allowing users to exchange messages via smartphones. The Complainant, founded in 2009, was acquired by Facebook in 2014. As of February 2021, the Whatsapp application had over 2 billion active users worldwide. The Complainant owns, inter alia, the following trademark registrations in United States and in Turkey:
- United States trademark WHATSAPP, Reg. No. 3939463, registered on April 5, 2011, filed on April 1, 2009, covering services in International Class 42;
- United States trademark WHATSAPP, Reg. No. 4083272, registered on January 10, 2012, filed on May 22, 2011, covering products in International Class 9 and services in International Class 38;
- International Registration WHATSAPP, Reg. No. 1085539, registered on May 24, 2011, covering products in International Class 9 and services in International Class 38) (designating Turkey);
- Turkish trademark WHATSAPP, Reg. No. 2015/103320, registered on April 24, 2017, filed on December 15, 2015, covering products in International Class 9 and services in International Class 35, 36, 38, 42 and 45.
The disputed domain names
The Complainant asserts that the disputed domain names are confusingly similar to the Complainant’s trademark WHATSAPP and that the addition of the acronym of the descriptive term “non-fungible token”, i.e., “nft” does not prevent a finding of confusing similarity between the disputed domain names and the Complainant’s trademark.
The Complainant considers that the Respondent has no rights or legitimate interests in respect of the disputed domain name, mainly because the Complainant has neither licensed nor otherwise authorized the Respondent to use its marks or to register or use any domain name incorporating the trademark WHATSAPP.
Finally, in addressing the question of registration and use of the disputed domain name in bad faith, the Complainant observes that the Respondent is well-aware of the Complainant’s well-known trademark considering his response to the cease-and-desist letter sent by the Complainant prior to initiating UDRP proceedings.
The Complainant further contends that the disputed domain names
Lastly, the Complainant asserts that a privacy shield has been used for hiding the identity of the Respondent.
All of these circumstances indicate that the disputed domain names have been registered and used in bad faith.
B. RespondentThe Respondent did formally submit a response to the Complainant’s contentions, stating inter alia that:
- they have an idea to create a website that will be built on the blockchain network through NFT and that is why they called it “What’s” and “App”;
- they are not obligated to disclose their project;
- it is obvious that everyone knows about the Whatsapp application, but their goal was not to mislead and confuse;
- as they have legally registered the disputed domain names, they have the right to dispose them as they wish;
- they understand the concern of the Complainant and that is why they agree to sell them;
- they have legitimate and guaranteed rights according to international laws to express their business;
- their project radically differs from what the Complainant offers in terms of the idea, implementation, content, and even the technologies that will be used to build their projects on the Blockchain network;
- when registering the disputed domain names, the registrar did not refuse or suspend the registration of domain names.
6.1 Language of the ProceedingsPursuant to paragraph 11(a) of the Rules, 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. The Registrar has confirmed that the registration agreements are in Turkish in this case.
The Complaint was filed in English and the Complainant has requested English to be the language of the proceeding. The Respondent has not objected to the Complainant’s request on language of the proceeding and did submit its Response in English.
Having assessed the circumstances of the case, including the Complainant’s and the Respondent’s communications in English, the Panel finds there is no prejudice or unfairness to the Parties for the Decision to be rendered in English. Accordingly, the Panel decides in accordance with paragraph 11 of the Rules, the language of proceeding shall be English.
6.2 Discussion and FindingsPursuant to paragraph 4(a) of the Policy, the Complainant is required to prove the presence of each of the following three elements to obtain the remedy it has requested:
(i) the disputed domain names are 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 names; and
(iii) the disputed domain names have been registered and are being used in bad faith.
A. Identical or Confusingly SimilarParagraph 4(a)(i) of the Policy requires the Complainant to show that the disputed domain names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights.
A registered trademark provides a clear indication that the rights in the mark shown on the trademark certificate belong to its respective owner. The Complainant holds several trademark registrations for WHATSAPP.
The disputed domain names integrate the Complainant’s WHATSAPP trademark entirely and the addition of the acronym of the descriptive term “non-fungible token”, i.e., “nft”, does not prevent a finding of confusing similarity.
As regards the generic Top-Level Domains “.com”, “.net”, and “click”, such are typically disregarded under the confusing similarity test.
Consequently, the Panel finds that the Complainant has shown that the disputed domain names are confusingly similar to a trademark in which the Complainant has rights and satisfied the requirement under paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate InterestsThe onus is on the Complainant to make out at least a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain names, and it is then for the Respondent to rebut this case.
The Panel accepts the Complainant’s submissions that the Respondent does not appear to be known by the disputed domain names, has not used or made demonstrable preparations to use the disputed domain names in connection with a bona fide offering of goods or services, is not making a legitimate noncommercial or fair use of the disputed domain names, and has no consent from the Complainant to use its trademark.
The Respondent has filed a Response.
The Panel is not convinced that the Respondent is known by these disputed domain names. The Respondent did not submit any evidence that they made preparations to use the disputed domain names in connection with a bona fide offering of goods or services. The fact that the Respondent has offered some of the disputed domain names for sale on the resolving websites and the fact that the Respondent is ready to sell its disputed domain names for more than out-of-packet expenses to the Complainant in these circumstances tends to suggest that the Respondent’s alleged project may be a pretextual attempt to avoid an adverse finding under the Policy.
The Panel is not satisfied with the explanation of the Respondent as to how it has rights or legitimate interests in the disputed domain name, and the Panel finds it telling that the Respondent is unwilling or unable to provide any evidence to support its claims in the context of the present proceeding.
Furthermore, the Panel notes that WHATSAPP is a coined trademark, and not a dictionary term (even if “what’s” and “app” are separately dictionary terms, the combination of these two words is not common except as a reference to Complainant’s trademark, not being credible that someone would have registered these for their value as a combination of dictionary terms). The Panel finds it likely that the Respondent must have chosen the disputed domain names due to their similarity with the Complainant’s WHATSAPP trademark.
In the Panel’s view the Complainant has made out its prima facie case under this element of the Policy. In the circumstances of this case, and in view of the Panel’s discussion below, the Panel finds that the second element of the Policy has been established.
C. Registered and Used in Bad FaithAt the time of registration of the disputed domain names, which occurred in 2021, the Complainant’s trademark WHATSAPP was a well-known trademark for a long time. As the Complainant submits, it is inconceivable beyond any doubt that the Respondent would not have known of the Complainant’s trademark. The Respondent did not oppose such arguments.
The incorporation of a well-known trademark into a domain name by a registrant having no plausible explanation for doing so may be, in and of itself, an indication of bad faith (Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co.,WIPO Case No. D2000-0163; General Electric Company v. CPIC NET and Hussain Syed,WIPO Case No. D2001-0087; Microsoft Corporation v. Montrose Corporation,WIPO Case No. D2000-1568).
The Respondent has registered the disputed domain names but has not put them to any material use.
Thus, the Respondent is holding the disputed domain names passively. It has long been generally held in UDRP decisions that the passive holding of a domain name that incorporates a well-known trademark, without obvious use for an Internet purpose, does not necessarily prevent a finding of bad faith in line with the requirements of paragraph 4(a)(iii) of the Policy (Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003).
Moreover, the Complainant sent a cease-and-desist letter to the Respondent where the Respondent made an offer to sell the disputed domain names to the Complainant in his response to the cease-and-desist letter. On the other side, the disputed domain names
Accordingly, the Panel finds that the requirements of paragraph 4(a)(iii) of the Policy have been met by the Complainant.
7. DecisionFor the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain names,
Emre Kerim Yardimci
Sole Panelist
Date: October 12, 2021