ARBITRATION AND MEDIATION CENTER ADMINISTRATIVE PANEL DECISION WhatsApp LLC v. Paul Borja, EA3000, and Host Master, Njalla Okta LLC Case No. D2025-0923 1. The Parties The Complainant is WhatsApp LLC, United States of America (“United States”), represented by Hogan Lovells (Paris) LLP, France. The Respondents are Paul Borja, Peru, represented by IIuris “L & S” Consulting Legal Firm, Peru, and Host Master, Njalla Okta LLC, Saint Kitts and Nevis. 2. The Domain Names and Registrar The disputed domain names and are registered with Name.com, Inc. (“Name.com”), while the disputed domain name is registered with Tucows Domains Inc. (“Tucows”). 3. Procedural History The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 6, 2025, initially only in regard to the domain name. On March 6, 2025, the Center transmitted by email to Name.com a request for registrar verification in connection with the disputed domain name. On March 6, 2025, Name.com 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 (Redacted for Privacy / Domain Protection Services, Inc.) and contact information in the Complaint. The Center sent an email communication to the Complainant on March 7, 2025, providing the registrant and contact information disclosed by Name.com, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on March 17, 2025, in which it requested the addition of the domain name into the dispute. On March 18, 2025, the Center transmitted by email to Name.com a request for registrar verification in connection with the added domain name. On March 21, 2025, Name.com transmitted by email to the Center its verification response confirming the registrant and contact information for the added domain name. 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”).
page 2 In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on March 24, 2025. In accordance with the Rules, paragraph 5, the due date for Response was April 17, 2025. The Response was filed with the Center on April 17, 2025. The Center appointed Edoardo Fano as the sole panelist in this matter on April 24, 2025. 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. On April 25, 2025, the Center received a second amended Complaint from the Complainant requesting the addition of the disputed domain name (the “Additional Domain Name”). O April 29, 2025, the Center transmitted the Complainant’s second amended Complaint to the Panel. On the same date, the Panel ordered the Center to transmit to Tucows a request for registrar verification in connection with the Additional Domain Name. On April 29, 2025, the Center transmitted by email to Tucows a request for registrar verification in connection with the Additional Domain Name. On April 29, 2025, Tucows transmitted by email to the Center its verification response disclosing registrant and contact information for the Additional Domain Name which differ from the named Respondent (“Redacted for Privacy / Domain Protection Services, Inc., Paul Borja”). In order to ensure that the Parties are treated with equality and that each Party is given a fair opportunity to present its case, on May 6, 2025 the Panel, pursuant to paragraphs 10(a) and 10(b) of the Rules, issued the Administrative Panel Procedural Order No. 1 (“Procedural Order No. 1”) and ordered that the Complainant shall have until May 11, 2025, to amend the Complaint adding the Tucows-disclosed registrant for the Additional Domain Name as formal Respondent and provide relevant arguments or evidence demonstrating that all named Respondents are, in fact, the same entity and/or that all domain names are under common control, and/or the Respondents would have until May 16, 2025, to respond to the Complainant’s submission. The Complainant filed a third amended Complaint on May 9, 2025, with a request of a consolidation of multiple Respondents, and on May 15, 2025, the Respondent Borja filed its Response. On May 26, 2025, the Panel, pursuant to its powers articulated under paragraphs 10 and 12 of the Rules, after consideration of the Complainant’s submission dated May 9, 2025, and the Respondent Borja’s submissions dated May 15, 2025, decided to accept the Complainant’s request to add the Additional Domain Name to the current proceeding. Accordingly, the Panel issued the Administrative Panel Procedural Order No. 2 (“Procedural Order No. 2”) and instructed the Center to forward the Notification of the Complaint and Commencement of Administrative Proceedings dated March 24, 2025, the Complainant’s submission of the second amended Complaint with annexes dated April 25, 2025, the Complainant’s submission of the third amended Complaint with annexes dated May 9, 2025, and the Respondent Borja’s submissions dated April 17, 2025, and May 15, 2025, to the Respondent B, the registrant of the Additional Domain Name, by email, together with a hard copy of that Procedural Order No. 2 by courier to the Respondent B, to which was given the possibility to participate in the current proceeding, and to submit by email, copying the Complainant and the Respondent Borja, any comments on the documents forwarded by the Center by June 5, 2025. The Respondent Host Master did not submit any response or comment. The language of the proceeding is English, being the language of the Registration Agreements, as per paragraph 11(a) of the Rules. 4. Factual Background The Complainant is WhatsApp Inc., a United States technology company providing one of the world’s most popular mobile messaging applications, founded in 2009 and acquired by Meta Platforms, Inc. (formerly known as Facebook, Inc.) in 2014, owning several trademark registrations for WHATSAPP, among which:
page 3 - United States Trademark Registration No. 3,939,463 for WHATSAPP, registered on April 5, 2011; - European Union Trademark Registration No. 009986514 for WHATSAPP, registered on October 25, 2011; - International Trademark Registration No. 1085539 for WHATSAPP, registered on May 24, 2011; - International Trademark Registration No. 1109890 for the figurative logo registered on January 10, 2012. The Complainant operates on the Internet at several websites, among which “www.whatsapp.com”, “www.whatsapp.net”, “www.whatsapp.org”, “www.whatsapp.biz”, and “www.whatsapp.info”, as well as many country code extensions. The Complainant provided evidence in support of the above. The Respondent is Paul Borja, based in Peru and operating from 2020 a SaaS tool for marketing and automation of clicks and keystrokes, complementary to WhatsApp, aimed at businesses, marketers and agencies. The other Respondent is Host Master, Njalla Okta LLC, based in Saint Kitts and Nevis. The disputed domain names were registered on the following dates: on May 4, 2020, on March 6, 2025, and on March 13, 2025. The disputed domain names and resolve to almost identical websites in Spanish and Portuguese that offer paid subscriptions to services to assist WhatsApp users, including software enabling users to “automate” the Complainant's WhatsApp application by providing additional features, including a bulk messaging feature, prominently displaying the Complainant's trademark and logo. The disputed domain name redirects to the website hosted at the disputed domain name . On January 29, 2025, the Complainant's representatives sent a cease-and-desist letter to the Respondent Borja via email in relation to the disputed domain name , without receiving any reply. 5. Parties’ Contentions A. Complainant The Complainant contends that it has satisfied each of the elements required under the Policy for a transfer of the disputed domain names. Notably, the Complainant states that the disputed domain names are confusingly similar to its trademark WHATSAPP, as they are visually and phonetically similar to the latter. Further to section 6.1 below, the Complainant argues that the disputed domain names are under common control and thus addresses the Respondents in the singular. The Complainant asserts that the Respondent has no rights or legitimate interests in respect of the disputed domain names since it has not been authorized by the Complainant to register the disputed domain names or to use its trademark within the disputed domain names, it is not commonly known by the disputed domain names and it is not making either a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain names. The disputed domain names resolve to almost identical websites in Spanish and Portuguese that purportedly offer paid subscriptions to services to assist WhatsApp users, including software enabling users to “automate” the Complainant's WhatsApp application by providing additional features, including a bulk messaging feature, prominently displaying the Complainant's trademark and logo, and featuring a green and white color scheme similar to that used by the Complainant, in breach of the Complainant’s WhatsApp Business Terms of Service as well as WhatsApp Brand Assets and Guidelines.
page 4 The Complainant submits that the Respondent has registered the disputed domain names in bad faith, since the Complainant’s trademark WHATSAPP is renowned throughout the world in connection with an instant messaging application for mobile devices. Therefore, the Respondent targeted the Complainant’s trademark at the time of registration of the disputed domain names and the Complainant contends that the use of the disputed domain names to attract, for commercial gain, Internet users to the Respondent’s websites, by creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s websites, qualifies as bad faith registration and use. Finally, the Complainant, noting that the disputed domain names are being used to promote software enabling bulk messaging, asserts that there is an appreciable risk that such software may be used to send unsolicited electronic communications (spam), for phishing, or for other unauthorized activities. B. Respondents The Respondent Borja denies to be the registrant of the disputed domain name and to exercise legal or functional control over this disputed domain name, that the redirection of the disputed domain name to the disputed domain name was an unintentional technical issue caused by a configuration error by one of the SEO companies the Respondent hired to optimize its website and one of its employees, and contends that the Complainant has not satisfied all three of the elements required under the Policy for a transfer of the disputed domain names and . Notably, the Respondent Borja states that the disputed domain names and are different from the Complainant’s trademark because of conceptual, visual and phonetic differences. The Respondent Borja asserts to have rights and legitimate interests in the disputed domain names and , because it has operated a fully legitimate commercial business since May 2020, clearly stating its non-affiliation with the Complainant, and offering software complementary to WhatsApp. This software enables bulk messaging, CRM, chatbots, and automation, adding value to WhatsApp users without directly competing with the Complainant. The Respondent Borja submits that the disputed domain names and have not been registered and used in bad faith, as the disputed domain name was registered in May 2020, that is five years before the present Complaint, with the legitimate commercial purpose of helping entrepreneurs and small businesses maintain their sales and operations during the COVID-19 pandemic, at a time when physical commerce was severely impacted by mobility restrictions and closures, while the disputed domain name was registered in March 2025, that is after the Complaint was filed, but as a defensive measure to protect the “whatzaper” brand during the dispute, not with bad faith intent. Finally, the Respondent Borja requests the Panel to issue a finding of Reverse Domain Name Hijacking (“RDNH”) since the Complainant took external actions that interfered with the proceeding and the Respondent Borja’s ability to operate its legitimate business, when the Complainant contacted the Respondent Borja’s hosting provider, requesting the suspension of hosting for the disputed domain name, by alleging trademark infringement and consumer confusion. The Respondent Host Master has made no reply to the Complainant’s contentions and is in default. In reference to paragraphs 5(f) and 14 of the Rules, no exceptional circumstances explaining the default have been put forward or are apparent from the record. A respondent is not obliged to participate in a proceeding under the Policy, but if it fails to do so, reasonable facts asserted by a complainant may be taken as true, and appropriate inferences, in accordance with paragraph 14(b) of the Rules, may be drawn. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) section 4.3.
page 5 6. Discussion and Findings 6.1. Procedural issue – Consolidation of Multiple Respondents The third amended Complaint was filed in relation to nominally different domain name registrants. The Complainant alleges that the domain names registrants are under common control. The Complainant requests the consolidation of the Complaint against the multiple disputed domain name registrants pursuant to paragraph 10(e) of the Rules. The registrant of the disputed domain names and (Respondent Borja) denied to be the registrant of the disputed domain name and to exercise legal or functional control over this domain, while the registrant of the disputed domain name (Respondent Host Master) did not comment on the Complainant’s request. Paragraph 3(c) of the Rules states that a complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name holder. In addressing the Complainant’s request, the Panel will consider whether (i) the disputed domain names or corresponding websites are subject to common control; and (ii) the consolidation would be fair and equitable to all Parties. WIPO Overview 3.0, section 4.11.2. As regards common control, the Panel notes that Respondent Host Master seems to be a service provider1, that all the disputed domain names follow a very similar naming pattern, and that the disputed domain name , registered under Respondent Host Master, redirects to the website hosted at the disputed domain name , registered by Respondent Borja. The Panel finds that the Respondent’s explanation regarding the supposedly “random” redirection of to seems implausible in the circumstances. As regards fairness and equity, the Panel sees no reason why consolidation of the disputes would be unfair or inequitable to any Party. Accordingly, the Panel decides to consolidate the disputes regarding the nominally different disputed domain names registrants (referred to below as “the Respondent”) in a single proceeding. 6.2. Substantive Issues Paragraph 4(a) of the Policy lists three elements, which the Complainant must satisfy in order to succeed: (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 Similar It is well accepted that the first element functions primarily as a standing requirement. The standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between the Complainant’s trademark and the disputed domain names. WIPO Overview 3.0, section 1.7. Based on the available record, the Panel finds the Complainant has shown rights in respect of a trademark or service mark for the purposes of the Policy. WIPO Overview 3.0, section 1.2.1. 1 https://njal.la/about/.
page 6 The Panel finds the mark is recognizable within the disputed domain names; they are essentially a misspelling of the mark. Accordingly, the disputed domain names are confusingly similar to the mark for the purposes of the Policy. WIPO Overview 3.0, section 1.7. Although the disputed domain names are not an exact replication of the Complainant’s trademark, the content of the associated websites affirms the Respondent’s intent to cause confusion with the Complainant’s trademark and, thus, confirms the Panel’s finding of confusing similarity. Although the content of the website associated with a domain name is usually disregarded by UDRP panels when assessing confusing similarity, in some instances UDRP panels have taken note of the content of the website to confirm confusing similarity where it appears prima facie that the respondent seeks to target a trademark through the dispute domain name. See WIPO Overview 3.0, section 1.15. While the addition of other letters, here the combination of “er” following the typo of the relevant mark, may bear on assessment of the second and third elements, the Panel finds the addition of such letters does not prevent a finding of confusing similarity between the disputed domain names and the mark for the purposes of the Policy, but in fact reinforce the finding. WIPO Overview 3.0, section 1.8. It is also well accepted that a generic Top-Level Domain (“gTLD”), in this case “.com”, is typically ignored when assessing the similarity between a trademark and a domain name. WIPO Overview 3.0, section 1.11.1. The Panel finds the first element of the Policy has been established. B. Rights or Legitimate Interests Paragraph 4(c) of the Policy provides a list of circumstances in which the respondent may demonstrate rights or legitimate interests in a disputed domain name. While the overall burden of proof in UDRP proceedings is on the complainant, UDRP panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the often-impossible task of “proving a negative”, requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain names. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element. WIPO Overview 3.0, section 2.1. Having reviewed the present record, the Panel finds the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain names. All the disputed domain names resolve to almost identical websites in Spanish and Portuguese that offer paid subscriptions to services purportedly to assist WhatsApp users, including software enabling users to “automate” the Complainant's WhatsApp application by providing additional features, including a bulk messaging feature, displaying the Complainant's trademark and logo, and featuring a green and white color scheme similar to that used by the Complainant. The Respondent has sought to rebut the Complainant’s prima facie showing by reference to its business as described above. It is clear that the Respondent is providing a genuine service; the question that then arises is whether the Respondent has done so in a manner that unfairly capitalizes on the Complainant’s mark and gives the wrong impression to users that it is somehow authorized to do so by the Complainant. In terms of the WIPO Overview 3.0, this is summarized as follows: “where a domain name consists of a trademark plus an additional term (at the second- or top-level), UDRP panels have largely held that such composition cannot constitute fair use if it effectively impersonates or suggests sponsorship or endorsement by the trademark owner.” WIPO Overview 3.0, section 2.5.1. Here, it is clear that the Respondent seeks to invoke the Complainant’s mark. It is also clear that the addition of “er” is intended to create a term which suggests that the use is one that uses the Complainant’s
page 7 service. From inspection of the Respondent’s websites, the Panel finds that the use of the Complainant’s trademark and logo on the homepages, and in fact, the Panel notes that at the time of the filing of the Complaint, the disputed domain names did not bear any disclaimers as to their lack of relationship with the Complainant. The Panel notes that, as indicated by the Respondent in its Response, the Respondent has added disclaimers consisting of a declaration of non-affiliation with the Complainant that has to be found under “Terms and Conditions” and in the FAQ section and on the front page of the website. However, these disclaimers were added after the Complaint had been filed and in clear contradiction with this declaration, the Panel notes that at the bottom of the homepage in the websites at the disputed domain names there are indicated the symbol ® beside the term “Whatzaper” (usually meaning “registered trademark”) and the wording “All rights reserved”. Moreover, the Respondent is providing services that circumvent the authorized use of the Complainant’s product in a way that impermissibly gives the impression that they are nevertheless approved. The Panel notes in this regard not only that the Complainant provides marketing tools under its mark, but that third parties do also but with reference to their own marks which do not invoke an association with the Complainant. Overall (or “holistically” as has been said by one panel (Everytown for Gun Safety Action Fund, Inc. v. Contact Privacy Inc. Customer 1249561463 / Steve Coffman, WIPO Case No. D2022-0473), the Panel concludes that the invocation of the Complainant’s mark in the disputed domain names is not a mere referential use, but one that stretch beyond fair use and which give the impression of a non-existent affiliation with the Complainant. The Panel therefore concludes that the disputed domain names are not being used in connection with a bona fide offering of goods or services. The Panel finds the second element of the Policy has been established. C. Registered and Used in Bad Faith The Panel notes that for the purposes of paragraph 4(a)(iii) of the Policy, paragraph 4(b) of the Policy establishes circumstances, in particular but without limitation, that if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith. Paragraph 4(b) of the Policy sets out a list of non-exhaustive circumstances that may indicate that a domain name was registered and used in bad faith, but other circumstances may be relevant in assessing whether a respondent’s registration and use of a domain name is in bad faith. WIPO Overview 3.0, section 3.2.1. In the present case, regarding the registration in bad faith of the disputed domain names, the reputation of the Complainant’s trademark WHATSAPP in the field of instant messaging apps for mobile devices is clearly established and the Panel finds that the Respondent knew of the Complainant and deliberately registered the disputed domain names due to the likelihood of confusion with the Complainant’s mark, especially because the disputed domain names redirect to websites on which the Complainant’s trademark and logo are reproduced, allegedly offering paid subscriptions to services to assist WhatsApp users. The Panel further notes that the Respondent is trying to to attract, for commercial gain, Internet users to the its websites, with the purpose of intentionally attempting to create a likelihood of confusion with the Complainant’s trademark as to the disputed domain names’ source, sponsorship, affiliation or endorsement, an activity clearly detrimental to the Complainant’s business. WIPO Overview 3.0, sections 3.1.4 and 3.4. Having reviewed the record, the Panel finds that the Complainant has established the third element of the Policy.
page 8 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 names , and be transferred to the Complainant. /Edoardo Fano/ Edoardo Fano Sole Panelist Date: June 25, 2025
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