The Complainant is WhatsApp Inc. of Menlo Park, California, United States of America, represented by Hogan Lovells (Paris) LLP, France.
The Respondent is Envious Technology Pty Ltd, Hampton, Victoria, Australia, represented internally. 2. The Domain Name and Registrar
The disputed domain name is registered with Tucows Inc. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 10, 2017. On the same date, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 10, 2017 and August 14, 2017, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the Respondent’s contact details.
The Center verified that the Complaint satisfied the formal requirements of the .au Dispute Resolution Policy (the “Policy” or “.auDRP”), the Rules for .au Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for .au Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on September 5, 2017. In accordance with the Rules, paragraph 5(a), the due date for Response was September 25, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 26, 2017.
On October 2, 2017, the Respondent filed an email by way of response with the Center.
The Center appointed Alistair Payne as the sole panelist in this matter on October 6, 2017. 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 Background
The Complainant is the provider of a very well-known mobile messaging service and was founded in 2009. As of 2016 there were more than 1 billion monthly active users of the service worldwide. By June 2013, 1.1 million iPhone users were using the Complainant’s service in Australia and the Complainant currently has 3.1 million active users in that country. The Complainant owns numerous trade mark registrations worldwide for its WHATSAPP mark including Australian trade mark 1442974 registered on May 24, 2011. It also owns numerous domain name registrations that incorporate its WHATSAPP mark, including , and .
The Respondent is a home technology and automation retailer founded in 2005. It registered the disputed domain name on May 9, 2013. The disputed domain name formerly resolved to a minimal website displaying the message “What’s a PP? An illustrated story of discovery” and an illustration of a child and two children’s toy blocks. It currently resolves to a parking page that displays the message “ is parked with PANTHUR”. 5. Parties’ Contentions A. Complainant
The Complainant submits that its WHATSAPP mark has acquired considerable goodwill and reputation worldwide and in Australia and numerous prior UDRP panels have recognized the strength of its mark. It submits that it owns registered trade mark rights in the WHATSAPP mark as set out above and that the disputed domain name is identical to its mark in circumstances that UDRP panels generally find that the country code level element “.” is irrelevant to this analysis.
The Complainant submits that the Respondent was not eligible to register the disputed domain name under the “The Domain Name Eligibility and Allocation Policy Rules” for “.” domain names because the disputed domain name is not either an exact match abbreviation or acronym of the Respondent’s name or trade mark, or not of a category that makes it closely and substantially connected to the Respondent. The Complainant further submits that it has not licensed or authorised the Respondent to use its WHATSAPP mark and that there is no evidence that the Respondent is commonly known by the mark or has used or made demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods or services. It says that the Respondent’s current lack of use of the disputed domain name is a strong indication of its lack of rights and legitimate interests and that the Respondent’s prior minimal use of a website at the disputed domain name amounts to no more than an attempt to create the appearance of a legitimate interest.
The Complainant notes that it sent a cease-and-desist letter to the Respondent prior to commencing these proceedings and received a response in which the Respondent maintains that it registered the disputed domain name for a private project and that the initial message on the parking page to which the disputed domain name resolved should be read as “What’s a P-P” which is quite different to “WHATSAPP”. The Respondent’s representative noted in its letter of October 28, 2016 that no trading had taken place under the mark and that they had had a number of commercial approaches to purchase the disputed domain name but had rejected them because they referred to retain it. The Respondent also noted that neither was it trading in the goods or services for which the mark was registered. The Respondent then suggested that they would be prepared to engage in commercial discussions with the Complainant for the purchase of the disputed domain name. The Complainant replied in terms that it was not prepared to pay for domain names that exactly matched its trade mark and in circumstances that the disputed domain name was registered in May 2013 when the Complainant had owned registered rights in Australia since 2011. Following receipt of this response the Respondent removed the website to which the disputed domain name resolved. The Complainant submits that the Respondent’s offer to sell the disputed domain name here is not a bona fide offering of goods or services under paragraph 4(c)(i) of the Policy and that it is apparent that the Respondent initially put content on the initial website to which the disputed domain name resolved in order create an appearance of legitimate interest when it was really seeking to sell it to the Complainant for profit. This says the Respondent is not consistent with either legitimate use, bona fide intentions or noncommercial fair use.
In relation to registration in bad faith the Complainant notes that the Complainant’s WHATSAPP mark is highly distinctive and has been widely used throughout the world since 2009 and by the time of the registration of the disputed domain name in 2013 the Complainant’s application had 1 million active iPhone users in Australia. The Complainant therefore says that it is inconceivable that the Respondent was not aware of the Complainant’s use and rights in the WHATSAPP mark and that registration of the disputed domain name with such knowledge constitutes strong evidence of bad faith. In addition, the Complainant submits that the Respondent registered the disputed domain name in order to prevent the Complainant from reflecting its trade mark in the corresponding domain name in accordance with paragraph 4(b)(ii) of the Policy. It says that the Respondent must have been aware of the Complainant’s potential interest in registering its mark as a domain name in Australia and deliberately registered the disputed domain name in order to deny the Complainant this opportunity and to misappropriate goodwill to itself. Further the Complainant submits that the Respondent registered the disputed domain name primarily for the purpose of selling, renting, or otherwise transferring it to the Complainant or other person for valuable consideration in excess of its documented out-of-pocket costs under paragraph 4(b)(i) of the Policy.
As far as use in bad faith is concerned, the Complainant points to the Respondent’s initial use of a parking page with the message “What’s a PP” displayed and its removal of this page after receiving a cease-and-desist letter and the rejection of its suggestion that the Complainant might purchase the disputed domain name from it. It says that the Respondent has a history of infringing third party marks and notes that the Respondent currently owns the domain names and which do not resolve to any website. Finally, the Complainant submits that the Respondent’s current use of the disputed domain name to resolve to a parking page does not cure its bad faith as the disputed domain name is simply being held passively which in all the circumstances here, including the strength of the Complainant’s mark, the offer to sell to the Complainant and the pattern of abusive registrations amounts to bad faith use. B. Respondent
The Respondent did not reply to the Complaint by the due date for response but did submit an email on October 2, 2017. 6. Discussion and Findings
The Respondent submitted an email by way of response eight days after the due date for response with no explanation of exceptional circumstances that the Panel should take into account in deciding whether to include the response in the record, or not. The Complainant then made a supplemental filing on October 13, 2017 by way of reply.
Previous panels have treated the due date for response strictly. Without evidence of exceptional circumstances as a basis for admission of the late response the Panel is not prepared to deviate from this approach. As a consequence the Respondent’s email of October 2, 2017 will not be accepted into the record and it follows that the Panel will also not accept the Complainant’s supplemental filing into the record. A. Identical or Confusingly Similar
The Complainant has demonstrated that it owns numerous trade mark registrations for its WHATSAPP mark, including, in particular, Australian trade mark 1442974 registered on May 24, 2011. The disputed domain name wholly incorporates the Complainant’s mark and the element of the disputed domain name before “” is identical to it. The Panel therefore finds that the Complaint succeeds under the first element of the Policy. B. Rights or Legitimate Interests
The Panel accepts the Complainant’s evidence of the very significant degree of renown that has attached to its WHATSAPP mark since 2009 both throughout the world and in Australia. In addition, the Panel notes that the mark is a coined term and therefore quite distinctive. In these circumstances it seems very unlikely that the Respondent was unaware of the Complainant’s use of the WHATSAPP mark by 2013 when it registered the disputed domain name, or that it conceived the disputed domain name independently and for its own business purposes.
The Respondent’s initial web page displayed the message “What’s a P-P”. There was no indication on the web page or in the record that this was in relation to a bona fide offering of goods or services, or an independent business, or that the Respondent was known by or traded under the disputed domain name or this phrase. It appears to the Panel that this phrase was put on the website by the Respondent to try to create a veneer of legitimacy when in fact it was merely holding the disputed domain name for its own purposes. That the Respondent removed this page following receipt of the Complainant’s cease-and-desist letter and the Complainant’s rejection of its proposal to purchase the disputed domain name suggests that the Respondent decided better of this course. In these circumstances the fact that the Respondent subsequently held the disputed domain name passively does not alter the position that the Respondent’s conduct is not consistent with a demonstration of legitimate rights or interests in the disputed domain name.
In view of the Complainant’s assertions that it has neither licensed nor authorised the Respondent to use its WHATSAPP mark and considering also that there is no evidence that the Respondent is commonly known by the mark or name or has used or made demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods or services, the Panel finds that the Complainant has made out a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name. As the Respondent has not rebutted this case the Complaint also succeeds under this element of the Policy. C. Registered or Subsequently Used in Bad Faith
When the disputed domain name was registered in May 2013 the Complainant’s WHATSAPP mark and messaging application was already very well known worldwide and in Australia. By this date the evidence produced by the Complainant indicates that it owned registered trade mark rights in Australia and elsewhere and had a significant Internet presence. In these circumstances and considering the coined and distinctive nature of the mark it seems to the Panel highly likely that the Respondent was aware of the Complainant’s business and mark and registered the disputed domain name with knowledge of its own ends and therefore in bad faith.
The Respondent’s initial use of the disputed domain name to resolve to a web page featuring the message “What’s a PP” and its subsequent removal of this page and passive holding following receipt of the cease-and-desist letter and the rejection of its proposal that the Complainant should purchase the disputed domain name from it is indicative of a strong likelihood that the Respondent registered the disputed domain name in 2013 with a view to its resale at a substantial profit. That there is no evidence that the Respondent had developed any bona fide business in connection with the disputed domain name or was commonly known by it and the fact that it has subsequently held the disputed domain name passively to resolve to a blank parking page and has not developed any business offering in relation to the disputed domain name, only serves to reinforce this inference.
In summary the Panel infers that the Complainant most likely saw an opportunity to register the disputed domain name in Australia in 2013 in full knowledge of the Complainant’s business and mark but with a view of getting in first so as to somehow using it to take advantage of or to trade on the Complainant’s goodwill or in the alternative of making a profit on resale of the disputed domain name. Under paragraph 4(b)(ii) of the Policy, registering a domain name in order to prevent a complainant from reflecting its trade mark in the corresponding domain name is evidence of registration and use in bad faith. Under paragraph 4(b) (i) of the Policy registering a domain name primarily for the purpose of selling, renting, or otherwise transferring it to the Complainant or other person for valuable consideration in excess of its documented out-of-pocket costs is also deemed to be evidence of registration and use in bad faith.
As a result, the Panel finds that the Respondent has both registered and used the disputed domain name in bad faith and the Complaint succeeds under this element of the Policy. 7. Decision
For all 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 be transferred to the Complainant.
Alistair Payne
Sole Panelist
Date: October 18, 2017
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