The Complainant is WhatsApp LLC., United States of America (“United States”), represented by Tucker Ellis, LLP, United States.
The Respondent is Eli Bitton, Novellino, United Kingdom.
2. The Domain Name and RegistrarThe disputed domain name
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 4, 2021. On December 6, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 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 December 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 December 10, 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 December 15, 2021.
On December 25, 2021 the Respondent sent an informal message to the Center followed by a further email message on December 28, 2021.
In accordance with the Rules, paragraph 5, the due date for Response was January 4, 2022. The Respondent did not submit a formal response but sent a further message to the Center on January 4, 2022. Accordingly, the Center notified the Parties of the Commencement of Panel Appointment Process on January 18, 2022.
The Center appointed Wilson Pinheiro Jabur as the sole panelist in this matter on January 26, 2022. 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 operates the WhatsApp messaging and Voice over Internet Protocol service and mobile application (“app”) under the WHATSAPP trademark which has been in use since 2009. It is the owner, amongst several others, of the following trademark registrations (Annex 11 to the Amended Complaint):
- United States Trademark Registration No. 3,939,463 for the word mark WHATSAPP, registered on April 5, 2011, in International Class 42;
- International Trademark Registration No. 1085539 for the word mark WHATSAPP, registered on May 24, 2011, in International Classes 9 and 38; and
- European Union Trade Mark Registration No. 009986514 for the word mark WHATSAPP, registered on October 25, 2011, in International Classes 9, 38 and 42.
The disputed domain name was registered on November 26, 2019 and is currently used in connection with a webpage that advertises an app called “WhatsScan & Status Saver” to be used in connection with the Complainant’s app.
5. Parties’ Contentions A. ComplainantThe Complainant claims to be a global leader in messaging services for mobile devices with over 2 billion users in over 180 countries, having acquired considerable reputation and goodwill on a global scale. Furthermore, the Complainant points out that previous UDRP decisions have already recognized that the WHATSAPP trademark is well known and has “acquired worldwide renown”.
The Complainant asserts that the Respondent uses the disputed domain name in connection with a webpage that advertises an app called “WhatsScan & Status Saver,” which the Respondent claims to be “for whatsapp”. In addition to that, the Complainant argues that the Respondent uses the disputed domain name to advertise certain features of its app that compete with the Complainant’s services, including the use of chat and media sharing features. Additionally, the Complainant sustains that the teal green colour of the website that resolves from the disputed domain name and the app shown is similar to that used by the Complainant, thus creating a misleading impression of association with the Complainant.
According to the Complainant, the disputed domain name incorporates the WHATSAPP trademark with the addition of the descriptive terms “save” and “status”, which do not prevent a finding of confusing similarity with the Complainant’s trademark, which remains clearly recognizable in the disputed domain name.
Regarding the absence of the Respondent’s rights or legitimate interests, the Complainant argues that:
(i) it has not licensed nor authorized the Respondent to use the Complainant’s WHATSAPP trademark, nor does the Respondent have any legal relationship with the Complainant that would entitle the Respondent to use the WHATSAPP trademark;
(ii) the Respondent, named Eli Bitton, is not commonly known by the disputed domain name;
(iii) the Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services given that the Respondent is using the disputed domain name to impersonate the Complainant and trick Internet users into downloading the Respondent’s competing app; and
(iv) the Respondent’s use of the Complainant’s trademark on the webpage that resolves from the disputed domain name to offer a competing app does not confer rights or legitimate interests to the Respondent.
As to the registration and use of the disputed domain name in bad faith, 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 name;
(ii) the Respondent’s use of the disputed domain name in connection with a webpage that demonstrates actual knowledge of the Complainant and its trademark, where multiple times references are made to the Complainant, leaves no doubt as to the Respondent’s awareness of the Complainant at the time of registration;
(iii) the Respondent, by registering the disputed domain name has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s WHATSAPP trademark as to the source, sponsorship, affiliation, or endorsement of its website, pursuant to paragraph 4(b)(iv) of the Policy.
B. RespondentThe Respondent did not formally reply to the Complainant’s contentions.
On December 25, 2021 the Respondent sent an informal message to the Center saying: “Hi, I got an email and a letter in my post, can you please call me and explain to me in easier English, what you want? And have I done anything wrong.” A further email message was sent by the Respondent on December 28, 2021 stating “I Am Eli Bitton, not sure what’s going on. Please explain.” A last message was sent by the Respondent on January 4, 2022 asking to be contacted by telephone.
6. Discussion and FindingsParagraph 4(a) of the Policy sets forth the following three requirements, which have to be met for this Panel to order the transfer of the disputed domain name to the Complainant:
(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.
The Complainant must prove in this administrative proceeding that each of the aforementioned three elements is present in order to obtain the transfer of the disputed domain name.
In accordance with paragraph 14(a) of the Rules, if the Respondent does not submit a Response, in the absence of exceptional circumstances, the Panel shall decide the dispute based upon the Complaint.
A. Identical or Confusingly SimilarThe Complainant has established rights over the WHATSAPP trademark, entirely reproduced in the disputed domain name. The addition of the “save” and “status” terms does not prevent a finding of confusing similarity with the Complainant’s trademark, which remains clearly recognizable in the disputed domain name.
For the reasons above, the Panel finds that the disputed domain name is 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 name. These circumstances are:
(i) before any notice 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 individual, business, or other organization) has been commonly known by the disputed domain name, 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 name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The Respondent, in not formally 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 name.
In that sense, the Complainant has indeed stated that it has not licensed nor authorized the Respondent to use the Complainant’s WHATSAPP trademark, nor does the Respondent has any legal relationship with the Complainant that would entitle the Respondent to use the WHATSAPP trademark.
Furthermore, and according to the evidence submitted by the Complainant, the Respondent has indeed not used the disputed domain name in connection with a bona fide offering of goods or services given the webpage that resolves from the disputed domain name uses the same colours and appearance of the Complainant’s app to offer a competing app, not making however a single disclaimer or indication that the Respondent’s website is not operated by or affiliated with the Complainant, thus creating a misleading impression of association with the Complainant.
Accordingly, the Complainant has put forward a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name, which the Respondent has not rebutted.
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 name.
C. Registered and Used in Bad FaithThe Policy indicates in paragraph 4(b)(iv) that bad faith registration and use can be found in respect of a disputed domain name, where a 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 a complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the website or location or of a product or service on the website or location.
In this case, both the registration and use of the disputed domain name in bad faith can be found pursuant to Policy paragraph 4(b)(iv) in view of the Respondent’s use of the disputed domain name in connection with a competing webpage that demonstrates actual knowledge of the Complainant and its trademark, where multiple references are made to the Complainant and its messaging services, which leaves no doubt as to the Respondent’s awareness of the Complainant at the time of registration.
Other factors corroborate a finding of bad faith:
- the use of the Complainant’s distinctive green-and-white color scheme at the webpage that resolves from the disputed domain name without a single disclaimer or indication that the Respondent’s website is not operated by or affiliated with the Complainant, thus creating a misleading impression of association with the Complainant; and
- the lack of any specific information about the Respondent or the services offered via the Respondent's website or app.
For the reasons above and absent evidence to the contrary, the Panel finds that the Respondent has registered and is using the disputed domain name 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 name
Wilson Pinheiro Jabur
Sole Panelist
Date: February 9, 2022