The Complainant is WhatsApp, LLC, United States of America (“United States”), represented by Hogan Lovells (Paris) LLP, France.
The Respondent is 王 勇 (Wang Yong), China.
2. The Domain Names and RegistrarThe disputed domain names
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 4, 2021. On September 7, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On September 9, 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 September 16, 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 20, 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 28, 2021. In accordance with the Rules, paragraph 5, the due date for Response was October 18, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 22, 2021.
The Center appointed Wilson Pinheiro Jabur as the sole panelist in this matter on November 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 in the business of mobile messaging applications. Founded in 2009 it was acquired by Facebook, Inc. in 2014. It is the owner, amongst several others, of the following trademark registrations and applications:
- Chinese Trademark Registration No. 21470703A for the word mark WHATSAPP, registered on December 21, 2017, in international class 45;
- United States Trademark Registration No. 3939463 for the word mark WHATSAPP, registered on April 5, 2011, in international class 42; and
- International Trademark Registration No. 1085539 for the word mark WHATSAPP registered on May 24, 2011, in international classes 9 and 38.
The disputed domain names are the following and are presently used in connection with:
Disputed Domain Name Registration Date Present Use
December 8, 2020
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<2021-whatsappa5.bar>
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<2021-whatsappuy.bar>
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5. Parties’ Contentions A. ComplainantThe Complainant claims to be one of the fastest growing and most popular mobile applications in the world, having over 2 billion monthly active users worldwide (as of 2021), being WHATSAPP a “well-known trademark throughout the world, including in China, where the Respondent is based” (WhatsApp Inc. v. Yingjie Liu,WIPO Case No. D2019-3167).
According to the Complainant, the WHATSAPP trademark is clearly recognizable as the leading element of the disputed domain names, the addition of other terms or combination of letters and numbers not preventing a finding of confusing similarity under the Policy.
Regarding the absence of the Respondent’s rights or legitimate interests, the Complainant argues that:
(i) the Respondent is not a licensee of the Complainant and has not been authorized or allowed by the Complainant to make any use of the WHATSAPP trademark;
(ii) the Respondent is not using the disputed domain names in connection with a bona fide offering of goods or services given that the disputed domain names do not resolve to active webpages and are therefore being passively held; and
(iii) the Respondent is not commonly known by the disputed domain names, nor has the Respondent ever secured or attempted to secure any trademarks for WHATSAPP around the world.
As to the registration and use of the disputed domain names the Complainant states that:
(i) the Complainant’s trademark is highly distinctive and well known throughout the world, being inconceivable for the Respondent to argue that he did not have knowledge of the Complainant’s WHATSAPP trademark when he registered the disputed domain names in 2020 and 2021;
(ii) the Respondent has engaged in a pattern of conduct within the meaning of paragraph 4(b)(ii) of the Policy by registering 154 domain names targeting the Complainant’s trademark;
(iii) given the inherently distinctive character of the WHATSAPP trademark, the Respondent could simply not have chosen the disputed domain names for any reason other than to take unfair advantage of the Complainant’s goodwill and reputation; and
(iv) given the overwhelming renown and popularity of the Complainant’s WHATSAPP trademark worldwide, and the nature of the disputed domain names, which are confusingly similar therewith, there simply cannot be any actual or contemplated good faith use of the disputed domain names as this would invariably result in misleading diversion and taking unfair advantage of the Complainant’s rights (as in Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003).
B. RespondentThe Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings A. Identical or Confusingly SimilarThe Complainant has established rights over the WHATSAPP trademark.
All of the disputed domain names incorporate the trademark in its entirety.
The addition of other terms, numbers and letters such as “chat”, “2021”, “comm”, etc., do not prevent a finding of confusing similarity with the WHATSAPP trademark under the Policy, which, as recognized by past UDRP panels involves a “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” (WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, “WIPO Overview 3.0”, section 1.7).
For the reasons above, the Panel finds that the disputed domain names are confusingly similar to the Complainant’s trademarks.
B. Rights or Legitimate InterestsParagraph 4(c) of the Policy provides a non-exclusive list of circumstances that may indicate the Respondent’s rights or legitimate interests in the disputed domain names. These circumstances are:
(i) before any notice of the dispute, the Respondent’s use of, or demonstrable preparations to use, the disputed domain names or a name corresponding to the disputed domain names 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 names, in spite of not having acquired trademark or service mark rights; or
(iii) the Respondent is making a legitimate noncommercial or fair use of the disputed domain names, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The Respondent, in not responding to the Complaint, has failed to invoke any of the circumstances, which could demonstrate, pursuant to paragraph 4(c) of the Policy, any rights or legitimate interests in the disputed domain names. This entitles the Panel to draw any inferences from such default as it considers appropriate, pursuant to paragraph 14(b) of the Rules. Nevertheless, the burden of proof is still on the Complainant to make at least a prima facie case against the Respondent under the second UDRP element.
In that sense, and according to the evidence submitted, the Complainant has made a prima facie case against the Respondent, which has not been commonly known by the disputed domain names and neither has been authorized or allowed by the Complainant to make any use of the WHATSAPP trademark.
Also, the absence of any indication that the Respondent has rights in a term corresponding to the disputed domain names, or any possible link between the Respondent and the dozens of disputed domain names that could be inferred from the details known of the Respondent or to a webpage relating to the disputed domain names, corroborate with the Panel’s finding of the absence of rights or legitimate interests.
Another element to consider is the fact that no active use of the disputed domain names appear to have taken place which makes it even more difficult to conceive which rights or legitimate interests the Respondent would have in dozens of domain names that reproduce in its entirety the Complainant’s trademark.
Under these circumstances and absent evidence to the contrary, the Panel finds that the Respondent does not have rights or legitimate interests with respect to the disputed domain names.
C. Registered and Used in Bad FaithThe Policy indicates in paragraph 4(b) that bad faith registration and use can be found in view of:
(i) circumstances indicating that the Respondent has registered or acquired the disputed domain names primarily for the purpose of selling, renting, or otherwise transferring them to the Complainant who is the owner of a trademark relating to the disputed domain names or to a competitor of the Complainant, for valuable consideration in excess of the Respondent’s documented out-of-pocket costs directly related to the disputed domain names; or
(ii) the Respondent has registered the disputed domain names in order to prevent the owner of the trademark or service mark from reflecting the mark in corresponding domain names, provided that the Respondent has engaged in a pattern of such conduct; or
(iii) the Respondent has registered the disputed domain names primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the disputed domain names, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the Respondent’s website or other location, by creating a likelihood of confusion with the Complainants’ 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.
Past UDRP panels have already dealt with the question of whether the “passive holding” of a domain name could constitute bad faith. Section 3.3 of the WIPO Overview 3.0 states that “[f]rom the inception of the UDRP, panelists have found that the non-use of a domain name (including a blank or ‘coming soon’ page) would not prevent a finding of bad faith under the doctrine of passive holding. While panelists will look at the totality of the circumstances in each case, factors that have been considered relevant in applying the passive holding doctrine include: (i) the degree of distinctiveness or reputation of the complainant’s mark, (ii) the failure of the respondent to submit a response or to provide any evidence of actual or contemplated good-faith use, (iii) the respondent’s concealing its identity or use of false contact details (noted to be in breach of its registration agreement), and (iv) the implausibility of any good faith use to which the domain name may be put”.
In the present case, the passive holding of the over 150 disputed domain names by the Respondent amounts to the Respondent acting in bad faith, given that the Respondent has provided no evidence whatsoever of any actual or contemplated good faith use of the disputed domain names.
In addition to that, and as decided in past cases under the Policy, it is not possible to conceive of any plausible actual or contemplated active use of the over 150 disputed domain names by the Respondent that would not be illegitimate, such as by being a passing off, an infringement of consumer protection legislation, or an infringement of the Complainant’s rights under trademark law.
Another factor corroborates the finding of the Respondent’s bad faith conduct in this case: the use of a false address in the WhoIs data and, consequently, the Center not being able to have the communication delivered to it.
For the reasons above, the Panel finds that the Respondent has registered and used the disputed domain names in bad faith.
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
Wilson Pinheiro Jabur
Sole Panelist
Date: November 24, 2021