Complainant is WhatsApp Inc. of Menlo Park, California, United States of America (“United States”) represented by Hogan Lovells (Paris) LLP, France.
Respondent is Super Privacy Service c/o Dynadot of San Mateo, California, United States. 2. The Domain Name and Registrar
The disputed domain name (the “Domain Name”) is registered with Dynadot, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 3, 2017. On May 4, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On the same day, the Registrar transmitted by email to the Center its verification response confirming that 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 Respondent of the Complaint, and the proceedings commenced on May 15, 2017. In accordance with the Rules, paragraph 5, the due date for Response was June 4, 2017. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on June 6, 2017.
The Center appointed John C McElwaine as the sole panelist in this matter on June 12, 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
Complainant is a provider of a popular mobile messaging application. The WhatsApp application allows users across the globe to exchange messages via smartphones, including iPhone, BlackBerry and Android without having to pay for short message service (“SMS”). Its main website available at also allows Internet users to access its messaging platform.
Complainant has used the WHATSAPP trademark since 2009 and owns multiple trademark registrations for WHATSAPP throughout the world, including:
United States Trademark No. 3939463, WHATSAPP, registered on April 5, 2011 (first use in commerce February 24, 2009);
United States Trademark No. 4083272, WHATSAPP, registered on January 10, 2012 (first use in commerce September 10, 2009);
International Trademark No. 1085539, WHATSAPP, registered on May 24, 2011 (classes 9 and 38);
International Trademark No. 1095940, WHATSAPP, registered on October 6, 2011 (class 38);
European Union Trade Mark No. 009986514, WHATSAPP, registered on October 25, 2011;
European Union Trade Mark No. 1095940, WHATSAPP, registered on October 6, 2011;
European Union Trade Mark No. 014814347, WHATSAPP, registered on April 26, 2016; and
European Union Trade Mark No. 014988844, WHATSAPP, registered on September 5, 2016.
The Domain Name was registered by Respondent on April 21, 2015, and currently resolves to a website that promotes an application called “WhatsApp Spy” that purports to allow users to hack and spy on WhatsApp users’ accounts and gain access to their messages, photos and videos. 5. Parties’ Contentions A. Complainant
Complainant was founded in 2009 and acquired by Facebook, Inc. in 2014. Complainant alleges that 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 by April 2013, 500 million users by April 2014, 800 million users by April 2015 and 900 million users worldwide by September 2015. As set forth above, Complainant owns numerous trademark registrations throughout the world for its WHATSAPP mark. In support of its extensive reputation and fame of its WHATSAPP mark, Complainant points out that as of February 2016, WhatsApp has over 1 billion monthly active users worldwide, is consistently ranked amongst Apple iTunes 25 most popular free mobile applications, and Complainant’s official website, available at “www.”, is regularly amongst the Top 100 most visited websites in the world, according to the web information company Alexa.
Complainant contends that WhatsApp is considered as the most popular messaging mobile application in the world, covering 109 countries including Brazil, Mexico, India, the Russian Federation, and many other countries in South America, Europe, Africa, Asia, and Oceania. Complainant points out that WhatsApp also enjoys great popularity in Montenegro. Complainant provided evidence that it is the owner of numerous domain names consisting of the WHATSAPP trademark, including, for instance, , , , as well as under numerous country code extensions such as (Montenegro), (Serbia), (European Union), (Armenia), (Belgium), (Chile), (Ecuador), (Germany), (Hong Kong), and (India), (Republic of Korea), and (Libya), (Mexico), (the Netherlands), (New Zealand), (Spain), (Taiwan), and (United Kingdom of Great Britain and Northern Ireland), and (United States).
Complainant was recently alerted to the fact that the term WATTSAPP, which is confusingly similar to its WHATSAPP trademark, had been registered under the “.me” country code Top-Level Domain (“ccTLD”) by Respondent.
Complainant asserts that the Domain Name is currently resolving to a website that seems to provide an online application allowing users to hack and spy on WhatsApp users’ accounts and gain access to their messages, photos and videos. Complainant further alleges that the “look and feel” of the website displayed at the Domain Name is similar to Complainant’s official website at “www.”. Since no payment is required to access this spy service, but users are required to fill a survey and then diverted to pages containing advertising or pay-per-click links, Complainant asserts that it is likely that the real purpose behind Respondent’s use of the Domain Name and the associated website is to attract Internet users for commercial gain, obtain their personal data via a highly doubtful survey and even potentially spread malware. Complainant notes that the ADR Center for .eu has recently ordered cancellation of the domain name , which was used by the registrant to resolve to a highly similar website providing exactly the same purported WhatsApp spy service.
With respect to the first element of the Policy, Complainant alleges that it has registered numerous trademarks consisting of the term WHATSAPP in many jurisdictions throughout the world, including in the United States and European Union, in connection with instant messaging services. Complainant contends that, despite a visual difference arising from the variation in the spelling of the Domain Name and its WHATSAPP mark, there is still a phonetic identity of the terms “WATT” and “WHAT”. Complainant asserts that this phonetic identity should be sufficient to meet the threshold required for confusing similarity.
With respect to the second element of the Policy, Complainant asserts that Respondent is not commonly known by the name “WattsApp” and there is no relationship between Complainant and Respondent which might give rise to any license, permission, or other right by which Respondent could own or use any domain name incorporating Complainant’s WHATSAPP mark. Moreover, Complainant contends that Respondent’s use of the Domain Name does not constitute a legitimate noncommercial or fair use of the Domain Name and that Respondent is using the Domain Name to divert Internet traffic to a website seemingly providing, free of charge, a WhatsApp spy service, and where such users are required to fill out a survey and then diverted to pages containing advertising or pay-per-click links. Complainant reiterates its concerns that the real intention behind Respondent’s use of the Domain Name is to illegally collect users’ personal data and, in the worst case, spread malware or attack their computer systems.
With respect to the third element of the Policy, Complainant asserts that because of the WHATSAPP mark’s renown and goodwill worldwide, it is inconceivable for Respondent to argue that it did not have knowledge of Complainant’s WHATSAPP mark at the time of registration of the Domain Name on April 21, 2015. As to use in bad faith, Complainant asserts that Respondent is using the Domain Name to intentionally attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with Complainant’s trademark as to the source, sponsorship, affiliation or endorsement of its website, in accordance with paragraph 4(b)(iv) of the Policy. In addition, Complainant further argues that the confusion of the Domain Name is reinforced as the website displayed at the Domain Name was designed with a similar “look and feel” to the Complainant’s official website and, in particular, purports to provide a spy service on WhatsApp users’ accounts by gaining access to their messages, photos and videos. It is asserted that these factors further suggest that Respondent’s intention is to use the Domain Name to create a false association with Complainant’s WHATSAPP mark so as to attract traffic to the website at the Domain Name.
Additionally, Complainant points out that the website at the Domain Name entices users to submit personal information, contains pay-per-click advertisements and links to pornographic materials, all of which actions have been held by prior panel to constitute bad faith. B. Respondent
Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings
Even though Respondent has defaulted, paragraph 4(a) of the Policy requires that, in order to succeed in this UDRP proceeding, Complainant must still prove its assertions with evidence demonstrating:
(i) the Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights;
(ii) Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) the Domain Name has been registered and is being used in bad faith.
Because of Respondent’s default, the Panel may accept as true the factual allegations stated within the Complaint, and may draw appropriate inferences therefrom (see St. Tropez Acquisition Co. Limited. v. AnonymousSpeech LLC and Global House Inc.,WIPO Case No. D2009-1779; Bjorn Kassoe Andersen v. Direction International,WIPO Case No. D2007-0605; see also paragraph 5(f) of the Rules (“If a Respondent does not submit a response, in the absence of exceptional circumstances, the Panel shall decide the dispute based upon the complaint”). Having considered the Complaint, the Policy, the Rules, the Supplemental Rules and applicable principles of law, the Panel’s findings on each of the above cited elements are as follows. A. Identical or Confusingly Similar
Paragraph 4(a)(i) of the Policy requires Complainant show that the Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights.
Complainant has established rights in the WHATSAPP mark as evidenced by its trademark registrations, its long-standing use of the WHATSAPP mark in connection with a mobile messaging application and services, and the significant user base of WhatsApp.
As discussed in the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), paragraph 1.9, the consensus view is that “a domain name which consists of a common, obvious, or intentional misspelling of a trademark is considered by panels to be confusingly similar to the relevant mark for purposes of the first element”. Similarly, previous UDRP panels have consistently held that “a mere addition or a minor misspelling of Complainant’s trademark does not create a new or different mark in which Respondent has legitimate rights”. Express Scripts, Inc. v. Whois Privacy Protection Service, Inc. / Domaindeals, Domain Administrator,WIPO Case No. D2008-1302 (“Such insignificant modifications to trademarks is commonly referred to as ‘typosquatting’ or ‘typo-piracy,’ as such conduct seeks to wrongfully take advantage of errors by users in typing domain names into their web browser’s location bar.”) Here, the Domain Name is arguably visually similar to the WHATSAPP mark differing only by the removal of the letter “h” and the addition of another letter “t”. However, the term “watts” and “whats” are phonetically virtually identical. Many previous UDRP panels have recognized that phonetic similarity is a significant factor in finding of confusing similarity under the first element of the Policy. WhatsApp Inc. v. Francisco Costa,WIPO Case No. D2015-1708 (citing other cases). Moreover, this analysis is expressly supported by WIPO Overview 3.0, paragraph 1.7, which instructs that panelist may undertake an “aural or phonetic comparison of the complainant’s trademark and the disputed domain name to ascertain confusing similarity.”
Based upon the foregoing, the Panel finds that Complainant has met its burden of showing that the Domain Name is confusingly similar to Complainant’s trademark. B. Rights or Legitimate Interests
Under the Policy, paragraph 4(a)(ii), Complainant has the burden of establishing that Respondent holds no rights or legitimate interests in the Domain Name. A complainant need only make a prima facie showing on this element, at which point the burden of production shifts to respondent to present evidence that it has some rights or legitimate interests in the disputed domain name. See Vicar Operating, Inc. v. Domains by Proxy, Inc. / Eklin Bot Systems, Inc.,WIPO Case No. D2010-1141; seealso Nicole Kidman v. John Zuccarini, d/b/a Cupcake Party,WIPO Case No. D2000-1415; Inter-Continental Hotels Corporation v. Khaled Ali Soussi,WIPO Case No. D2000-0252. Respondent may establish a right or legitimate interest in the Domain Name by demonstrating in accordance with paragraph 4(c) of the Policy any of the following:
“(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.”
Complainant contends there has never been a relationship between Complainant and Respondent that would give rise to any license, permission or authorization for Respondent to use or register the Domain Name. Although Respondent has been properly notified of the Complaint by the Center, Respondent failed to submit any response. The silence of a respondent may support a finding that it has no rights or legitimate interests in respect of the domain name. See Alcoholics Anonymous World Services, Inc., v. Lauren Raymond,WIPO Case No. D2000-0007; Ronson Plc v. Unimetal Sanayi ve Tic.A.S.,WIPO Case No. D2000-0011. Additionally, previous UDRP panels have found that when respondents have not availed themselves of their rights to respond to complainant, it can be assumed in appropriate circumstances that respondents have no rights or legitimate interests in the domain name at issue. See AREVA v. St. James Robyn Limoges,WIPO Case No. D2010-1017; Nordstrom, Inc. and NIHC, Inc. v. Inkyu Kim,WIPO Case No. D2003-0269.
Under paragraph 4(c) of the Policy, a respondent’s rights or legitimate interests to a domain name may be established by demonstrating any of the following three conditions: (i) before any notice to respondent of the dispute, respondent’s use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or (ii) respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if respondent has acquired no trademark or service mark rights; or (iii) respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue. The Panel finds that Respondent would not be able to show rights or legitimate interests under any of the three conditions.
The website at the Domain Name seeks to obtain information from visitors enticing them to visit the website by offering an application or service that purports to allow people to spy upon other WhatsApp users. In addition, the website’s users are required to fill out a survey and then diverted to pages containing advertising or pay-per-click links. The website is also designed to give the false impression that it is somehow affiliated with or sponsored by Complainant. The foregoing factors are not sufficient to rise to the level of a bona fide offering of goods or services. See Invesco Canada Ltd. v. Shiari Chen / Whoisguard Protected, WhoisGuard Inc.,WIPO Case No. D2015-2178 (“use of the disputed domain name to divert Internet traffic to a ‘Scam Website’ that seeks to elicit sensitive personal information from visitors does not provide a legitimate interest in the disputed domain name”).
Similarly, the use of the Domain Name is not fair use of the Domain Name. Instead, the Domain Name is being used to attract Internet users for commercial gain and the links on the website are likely to tarnish the WHATSAPP mark. Lastly, there is no evidence that Respondent is commonly known by the Domain Name.
Complainant has made a prima facie showing of Respondent’s lack of rights and legitimate interests and Respondent has failed to come forward to rebut that showing. The Panel has analyzed whether Respondent may possess rights or legitimate interest to the Domain Name. As provided for by paragraph 14 of the Rules, the Panel may draw such inference from Respondent’s default as it considers appropriate. For all these reasons, the Panel accepts that the second element of the Policy is established by Complainant, and Respondent has no rights or legitimate interests in respect of the Domain Name as set forth in the Policy, paragraph 4(a)(ii). C. Registered and Used in Bad Faith
Under paragraph 4(a)(iii) of the Policy, Complainant must show that Respondent registered and is using the Domain Name in bad faith. A non-exhaustive list of factors constituting bad faith registration and use is set out in paragraph 4(b) of the Policy.
Bad faith registration can be found where respondents “knew or should have known” of complainant’s trademark rights and nevertheless registered a domain name in which he had no right or legitimate interest. See Accor S.A. v. Kristen Hoerl,WIPO Case No. D2007-1722. Here, Complainant’s WhatsApp mobile application is one of the most used and well-known messaging platforms. Complainant has years of use of the mark and hundreds of thousands of users. Based on Complainant’s submissions, which were not rebutted by Respondent, Respondent must have known of Complainant’s famous WHATSAPP mark when it registered the Domain Name and created a website that was meant to trade off the good will and reputation of Complainant or otherwise create a false association with Complainant. See WhatsApp Inc. v. Francisco Costa,WIPO Case No. D2015-0909 (finding that “it is likely improbable that Respondent did not know about Complainant’s WHATSAPP trademark at the time it registered the Disputed Domain Name considering the worldwide renown it has acquired amongst mobile applications, and the impressive number of users it has gathered since the launch of the WhatsApp services in 2009”.) With no response from Respondent, this claim is undisputed.
Respondent’s use of the Domain Name is intended to take advantage of the fame and reputation of the WHATSAPP mark in order to attract Internet users to Respondent’s website which contains pages of advertising or pay-per-click links. In addition, the content of the website displayed at the Domain Name establishes that Respondent has targeted Complainant’s goodwill and reputation for Respondent’s pecuniary benefit. Such facts establishes bad faith registration and use pursuant to paragraph 4(b)(iv) of the Policy. See Lego Juris A/S v. Whois Privacy Services Pty Ltd / Dzone Inc., Yeonju Hong,WIPO Case No. D2012-2442 (finding that respondent was using the domain name as a parked pay-per-click page and was, thus, intentionally attempting to attract, for commercial gain, Internet users by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation or endorsement of its website).
There is also substantial authority that registration of a domain name that is confusingly similar to a well-known trademark by any entity that has no relationship to that mark, is itself sufficient evidence of bad faith registration and use. See Allianz, Compañía de Seguros y Reaseguros S.A. v. John Michael,WIPO Case No. D2009-0942 (“the Panel concurs with previous WIPO UDRP decisions holding that registration of a well-known trademark as a domain name is a clear indication of bad faith in itself, even without considering other elements”), citing, Veuve Cliquot Ponsardin, Maison Fondee en 1772 v. The Polygenix Group Co.,WIPO Case No. D2000-0163; Pepsico, Inc. v. “null,” aka Alexander Zhavoronkov,WIPO Case No. D2002-0562; Pepsico, Inc. v. Domain Admin,WIPO Case No. D2006-0435. Based on Complainant’s submissions, it is clear that Respondent must have known of Complainant’s WHATSAPP mark at the time of registration of the Domain Name, and therefore Respondent registered and used the Domain Name in bad faith. With no Response from Respondent, this claim is undisputed.
For these reasons, the Panel holds that Complainant has met its burden of showing that Respondent registered and is using the Domain Name 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 Domain Name, , be transferred to Complainant.
John C McElwaine
Sole Panelist
Date: June 26, 2017
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