The Complainant is Whatsapp LLC, United States of America, represented by Tucker Ellis, LLP, U.S.
The Respondent is Kenneth Chow, China.
2. The Domain Name and RegistrarThe disputed domain name
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 3, 2021. On September 6, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 7, 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 September 8, 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 September 13, 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 September 15, 2021. In accordance with the Rules, paragraph 5, the due date for Response was October 5, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 6, 2021.
The Center appointed Theda König Horowicz as the sole panelist in this matter on October 19, 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 a global leader in messaging services for mobile devices which is active in many countries. Its system enables users to send text messages and voice messages, make voice and video calls, and share images, documents, user locations, and other content with one another.
The Complainants owns the exclusive rights to the WHATSAPP trademarks and service marks which it has used for over ten years, including:
U.S. Trademark Registration No 3,939,463 registered on April 5, 2011
International Trademark Registration No 1085539 registered on May 24, 2011 (which covers China among other countries)
The disputed domain name was registered on October 26, 2012. The disputed domain name is linked to a webpage of the Registrar indicating that it may be for sale.
5. Parties’ Contentions A. ComplainantThe Complainant contends that the disputed domain name is confusingly similar to its trademark as it misappropriates all of the textual components from its WHATSAPP trademark, such that an ordinary internet user who is familiar with the WHATSAPP trademark would, upon seeing the domain name, think an affiliation exists between that domain name and Complainant’s trademark. The addition of the descriptive term “connect” in the disputed domain name does not serve sufficiently to distinguish or differentiate the disputed domain name from the Complainant’s trademark, especially as [connect] is descriptive of and relevant to Complainant’s services.
The Complainant asserts that the Respondent has no rights or legitimate in the disputed domain name for the following reasons:
(i) the Complainant has not licensed or authorized the Respondent to use Complainant’s WhatsApp trademark;
(ii) the Respondent does not have any legal relationship with the Complainant that would entitle him to use the WhatsApp trademark;
(iii) the Respondent is not known by the disputed domain name;
(iv) the Respondent is using the disputed domain name to direct to a commercial landing page that offers the disputed domain name for sale.
Under the circumstances, the Complainant notably finds that the Respondent is not making a bona fide offering of goods or services at the disputed domain name particularly given the notoriety of the Complainant’s WhatsApp trademark.
The Complainant alleges that the Respondent has registered and is using the disputed domain name in bad faith. In this context, the Complainant underlines that the Respondent unduly registered another domain name containing a famous trademark and the order was given by the Panel to transfer it. Furthermore, the notoriety of the WHATSAPP trademark, which is closely linked to the Complainant, renders is it very unlikely that the disputed domain name was registered in good faith. Additionally, the disputed domain name is linked to a webpage offering the disputed domain name for sale.
B. RespondentThe Respondent did not reply to the Complainant’s contentions.
6. Discussion and FindingsUnder the Policy, in order to prevail, a complainant must prove the following three elements for obtaining the transfer of a domain name:
(i) that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights;
(ii) that the respondent has no rights or legitimate interests in 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 SimilarThe Complainant showed trademark rights in WHATSAPP through several trademark registrations worldwide, including the U.S., China, and the European Union.
According to section 1.7, of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, (“WIPO Overview 3.0”), the standing test for confusing similarity involves a reasoned but relatively straightforward comparison between the complainant’s trademark and the disputed domain name. This test typically involves a side-by-side comparison of the domain name and the textual components of the relevant trademark to assess whether the mark is recognizable within the disputed domain name. In cases where a domain name incorporates the entirety of a trademark, or where at least a dominant feature of the relevant mark is recognizable in the domain name, the domain name will normally be considered confusingly similar to that mark for purposes of UDRP standing.
The disputed domain name contains the WHATSAPP trademark in its entirety. The mere addition of the descriptive term “connect” does not prevent a finding of confusing similarity.
Under these circumstances, the Panel concludes that the disputed domain name is confusingly similar to the Complainants’ mark.
B. Rights or Legitimate InterestsParagraph 4(c) of the Policy contains a non-exhaustive list of circumstances that may demonstrate when a respondent has rights or legitimate interests in the use of a domain name. The list includes:
(i) the use of the domain name in connection with a bona fide offering of goods or services;
(ii) being commonly known by the domain name; or
(iii) the making of a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers.
Once the Complainant establishes a prima facie case against the Respondent under this ground, the burden of production shifts to the Respondent to rebut it. See section 2.1, WIPO Overview 3.0.
The Complainant made sufficient statements in order to demonstrate that the Respondent would have no rights or legitimate interests into the disputed domain name.
In particular, the Panel notes that the case file does not show that the Respondent would be known as “whatsappconnect” or that a legitimate business would be run by the Respondent under the disputed domain name.
Based on the above, the Panel considers that the Complainant has made a prima facie case and the burden of production shifts to the Respondent who has chosen not to reply.
As already stated before, nothing is contained in the case file which would show that the disputed domain name has been legitimately used by the Respondent or that that the Respondent would have any rights or legitimate interests in the disputed domain name. Furthermore, the nature of the disputed domain name, incorporating the Complainant’s well-known trademark and a descriptive term associated with the Complainant’s services, carries a risk of implied affiliation (see section 2.5.1, WIPO Overview 3.0).
Consequently, the Panels finds that the Complainants have established their case under paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad FaithThe Complainant has shown that its WHATSAPP trademark has been registered and used since several years in many countries, before the registration of the disputed domain name in 2012. It is undisputed and of public knowledge that the said trademark is widely used worldwide and extremely popular. The WHATSAPP trademark has obviously acquired a high distinctiveness to distinguish the services of the Complainant.
Hence, the Panel finds that the Respondent knew or should have known of the Complainant’s trademark and deliberately registered the confusingly similar disputed domain name (see section 3.2.2, WIPO Overview 3.0). This finding is reinforced given the construction of the disputed domain name, namely the addition of the affiliated term “connect” to the Complainant’s trademark.
The disputed domain name resolves to a landing webpage where it is mentioned that the disputed domain name may be for sale, which is an indication that the Respondent passively holds the disputed domain name aiming at a potential commercial gain.
The Panel further notes that the Respondent has chosen to remain silent within these proceedings, which is further indication of bad faith in the present circumstances.
In light of the above, the Panel finds that the Respondent has registered and used the disputed domain name in bad faith and that the Complainant has established their case under paragraph 4(a)(iii) of the Policy.
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 name,
Theda König Horowicz
Sole Panelist
Date: November 9, 2021