The Complainant is WhatsApp, Inc. of Menlo Park, California, United States of America ("United States"), represented by Hogan Lovells (Paris) LLP, France.
The Respondent is F. Nunley Kathie, Kathie F. Nunley of Lewes, East Sussex, United Kingdom of Great Britain and Northern Ireland ("United Kingdom"). 2. The Domain Name and Registrar
The disputed domain name (the "Domain Name") is registered with 1API GmbH (the "Registrar"). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on August 4, 2017. On August 7, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On August 9, 2017, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
The Center verified that the 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 August 16, 2017. In accordance with the Rules, paragraph 5, the due date for Response was September 5, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on September 6, 2017.
The Center appointed Nicoletta Colombo as the sole panelist in this matter on September 8, 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, WhatsApp, Inc., is a provider of WhatsApp, one of the world's most popular mobile messaging applications, which allows users across the globe to exchange messages via smartphones. Since its launch, WhatsApp has become one of the fastest growing and most popular mobile applications in the world, with over 1 million users by the end of 2009, 200 million users in April 2013, 500 million users in April 2014, 800 million users in April 2015 and 900 million users worldwide in September 2015. Today, WhatsApp has over 1 billion monthly active users worldwide (as of February 2016) in 180 countries.
The Complainant is the owner of several trademark registrations in the term WHATSAPP in many jurisdictions throughout the world like in the United States (Registration Number 3939463, registered on April 5, 2011), in Colombia (Registration Number 11063902, registered on December 21, 2011) and in the European Union (Registration Number 009986514, registered on October 25, 2011). It is also the owner of numerous domain names consisting of the WHATSAPP trademark, including, for instance, , , as well as under numerous country code Top-Level Domains ("ccTLDs") such as (Armenia), (Belgium), (Chile), (Colombia), (Ecuador), (Germany), (Hong Kong, China), (Republic of Korea), (Mexico), (New Zealand), (Spain), (Taiwan, Province of China), and (United Kingdom), and (United States).
The Respondent registered the Domain Name on November 25, 2013, and the Domain Name resolves to a website with pay-per-click ("PPC") links related to Complainant and third parties. 5. Parties' Contentions A. Complainant
The Complainant contends the following:
a) the Domain Name is confusingly similar to the trademark of the Complainant because:
- it reproduces the Complainant's trademark in its entirety;
- the presence of the suffix "." is irrelevant when assessing whether a domain name is identical or confusingly similar to a trademark as it is a functional element.
b) The Respondent has no rights or legitimate interests in respect of the Domain Name because:
- the Respondent is not a licensee of the Complainant, nor has he been otherwise authorised or allowed by the Complainant to make any use of its WHATSAPP trademark, in a domain name or otherwise.
- the Respondent cannot assert that, prior to any notice of this dispute, he was using, or had made demonstrable preparations to use, the Domain Name in connection with a bona fide offering of goods or services in accordance with paragraph 4(c)(i) of the Policy;
- the Domain Name is resolving to a website displaying the Complainant's trademark and falsely appearing to offer WhatsApp for free and other services for download, although in fact the links redirect to other websites, including some that refer to third party trademarks. The Domain Name is used to earn pay-per click (PPC) revenue by redirecting Internet users to third parties' websites and thus capitalizing on the Complainant's trademark;
- the Respondent cannot conceivably claim that he is commonly known by the Complainant's trademark, in accordance with paragraph 4(c)(ii) of the Policy, given the notoriety surrounding the WHATSAPP trademark and the fact that it is exclusively associated with the Complainant.
c) The Domain Name was registered and is being used in bad faith because:
- the Respondent was aware of the Complainant's trademark when it registered the Domain Name;
- the Respondent registered the Domain Name in order to prevent the Complainant from reflecting its well-known trademark in the corresponding domain name;
- the Respondent is using the Domain Name to intentionally attract, for commercial gain, Internet users to her website by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation or endorsement of the websites; the Respondent is deliberately using the Domain Name seeking to mislead Internet users searching for the Complainant's official website for users in Colombia and divert them to her own website;
- the Respondent's use of the Domain Name to resolve to a website displaying pay-per click links targeting the Complaint's trademark – and from which the Respondent (or a third party) is undoubtedly obtaining financial gain – clearly constitutes bad faith use as the Respondent is deliberately seeking to take advantage of the Complainant's goodwill and renown to attract traffic to her website and increase her revenues;
- under the Policy it is not necessary for the Respondent herself to have profited directly from those commercial links in order to establish bad faith use. It would be sufficient for the third parties behind the sponsored links or another third party to have profited;
- the Respondent's postal address appears to be false when searched on Google Maps (Annex 20 of the Complaint). The fact that the Respondent provided an inaccurate postal address is additional evidence of bad faith. B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings A. Identical or Confusingly Similar
The Complainant has trademark and domain names registrations for WHATSAPP in various jurisdictions. Moreover, WHATSAPP is also the company name of the Complainant. Therefore, it has been proven that the Complainant has rights in the WHATSAPP trademark.
The Domain Name incorporates the Complainant's trademark and company name in its entirety.
There are several UDRP decisions stating that confusing similarity, for the purposes of the Policy, is established when a domain name wholly incorporates a complainant's mark.
Additionally, the Panel does not typically consider, when analyzing the identity or similarity, the ccTLD suffix – in this case "." – because it is a necessary component of the Domain Name and does not give any distinctiveness (see, Crédit Industriel et Commercial S.A v. Name Privacy,WIPO Case No. D2005-0457).
Therefore, the Panel finds that the Domain Name is confusingly similar to the Complainant's trademark. B. Rights or Legitimate Interests
The Respondent has not filed any response in this case. The Panel finds that, based on the evidence provided, the Complainant has made a prima facie case that the Respondent lacks rights or legitimate interests in the Domain Name.
Specifically, on the basis of the evidence before the Panel, the Respondent has not received any license or authorization from the Complainant to use the well-known trademarks owned by the Complainant, nor have they been authorized to register and use the Domain Name.
Under these circumstances, the Panel finds that the Respondent has no rights or legitimate interests in the Domain Name. C. Registered and Used in Bad Faith
The Domain Name resolves to a website with PPC links related to the Complainant and third parties.
At the moment of the registration of the Domain Name, the Respondent must have been aware of the existence of the WHATSAPP mark, as "Whatsapp" is not a dictionary term. It is quite predictable that only someone who was familiar with the Complainant's mark would have registered a domain name inclusive of such mark.
Moreover, the Respondent's use of the Domain Name to resolve to a website displaying pay-per click links targeting the Complainant's trademark – and from which the Respondent (or a third party) is undoubtedly obtaining financial gain – clearly constitutes bad faith use (Ustream.TV, Inc. v. Vertical Axis, Inc,WIPO Case No. D2008-0598).
The Panel is of the opinion that the Respondent has registered the Domain Name with the intent to profit from the reputation of the Complainant's trademark by choosing a domain name that is confusingly similar to the Complainant's mark and to attract for commercial gain Internet users to its website by creating a likelihood of confusion with the Complainant's mark as described under paragraph 4(b)(iv) of the Policy.
Taken together with the fact that the Respondent has not filed any response in this proceeding in support of any good faith registration or use and has given a false postal address at the registration of the contested Domain Name, the Panel finds that the Complainant has demonstrated that the Domain Name has been registered and is being used in bad faith. 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 name be transferred to the Complainant.
Nicoletta Colombo
Sole Panelist
Date: September 19, 2017
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