Complainant is WhatsApp LLC, United States of America, represented by Hogan Lovells (Paris) LLP, France.
Respondent is Bert Beuker, the Netherlands. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 19, 2021. On February 19, 2021, the Center transmitted by email to SIDN a request for registrar verification in connection with the Domain Name. On February 22, 2021, SIDN 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 Dispute Resolution Regulations for .nl Domain Names (the “Regulations”). In accordance with the Regulations, articles 5.1 and 16.4, the Center formally notified Respondent of the Complaint, and the proceedings commenced on March 2, 2021. In accordance with the Regulations, article 7.1, the due date for Response was March 22, 2021. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on March 25, 2021. The Center appointed Remco M.R. van Leeuwen as the panelist in this matter on April 21, 2021. The Panel finds that it was properly constituted. The Panelist has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required to ensure compliance with the Regulations, article 9.2. 4. Factual Background Complainant is a provider of one of the world’s most popular mobile messaging applications. Founded in 2009 and acquired by Facebook, Inc. in 2014, WhatsApp allows users across the globe to exchange messages via smartphones without having to pay for SMS. Complainant’s main website available at “www.whatsapp.com” also allows Internet users to access its messaging platform. WhatsApp has become one of the fastest growing and most popular mobile applications in the world. Complainant is the proprietor of many trademarks consisting of the term “whatsapp” in many jurisdictions throughout the world, including a European Union Trade Mark registration for the word mark WHATSAPP, registered on October 25, 2011, with registration number 009986514, for goods and services in classes 9, 38, and 42 (the “Trademark”). Reflecting its global reach, Complainant is also the proprietor of numerous domain names consisting of the Trademark, including the domain name SIDN informed the Center that the Domain Name was first registered on June 15, 2016, and that the date of the registration of the Domain Name by the current registrant is also June 15, 2016. The Domain Name resolves to a parking page. 5. Parties’ Contentions A. Complainant Complainant states that it has rights in the Trademark and that the Domain Name is confusingly similar to the Trademark. Complainant asserts that the Trademark is well known and that its rights in that mark predate the registration of the Domain Name. Complainant submits that the Domain Name is confusingly similar to the Trademark, because the Domain Name incorporates in its entirety the Trademark and that the confusing similarity is not removed by the addition of the dictionary term “store”. Complainant argues that the Trademark remains clearly recognizable in the Domain Name and that the mentioned addition does not prevent a finding of confusing similarity. Complainant contends that Respondent has no rights or legitimate interests in respect of the Domain Name because Respondent is not a licensee of Complainant, nor has he been otherwise authorised or allowed by Complainant to make any use of its Trademark, in a domain name or otherwise. Complainant contends further that the Domain Name does not resolve to an active website and that there is no evidence that Respondent has ever used the Domain Name to host an active website, hence it is being passively held. Such passive holding likewise cannot be considered as a bona fide offering of goods or services, according to Complainant. Respondent cannot credibly claim to be commonly known by the Domain Name, given the fame of the Complainant’s Trademark and the fact that it is exclusively associated with Complainant. Finally, Complainant alleges that the registration and use of the Domain Name was, and currently is, in bad faith. Complainant contends that given its global renown and its Trademark rights, which were established well prior to the registration of the Domain Name, it would be inconceivable for Respondent to establish that he did not have knowledge of the Trademark when he registered the Domain Name. Complainant therefore submits that Respondent registered the Domain Name in full knowledge of Complainant’s rights and that he simply could not have chosen the Domain Name for any reason other than to create a false association with Complainant. Complainant submits that passive holding of the Domain Name would not preclude a finding of bad faith given the overall circumstances of the case. Moreover, there is a considerable risk that Internet users will perceive that the Domain Name is owned by Complainant or that some kind of commercial relationship exists with Complainant, according to Complainant. Complainant requests the transfer of the Domain Name. B. Respondent The Center has not received a Response. 6. Discussion and Findings The Panel notes that, in accordance with article 16.4 of the Regulations, the Center has fulfilled its obligation to employ reasonably available means to achieve actual notice of the Complaint to Respondent. As Respondent has not filed a response, the Panel shall rule on the basis of the Complaint. In accordance with article 10.3 of the Regulations, the Complaint shall in that event be granted, unless the Panel considers it to be without basis in law or fact. Pursuant to article 2.1 of the Regulations, Complainant’s request to transfer the Domain Name must meet three cumulative conditions: a. the Domain Name is identical or confusingly similar to: I. a trademark, or trade name, protected under Dutch law in which Complainant has rights; or II. a personal name registered in the General Municipal Register (“gemeentelijke basisadministratie”) of a municipality in the Netherlands, or the name of a Dutch public legal entity or the name of an association or foundation registered in the Netherlands under which complainant undertakes public activities on a permanent basis; and b. Respondent has no rights to or legitimate interests in the Domain Name; and c. the Domain Name has been registered or is being used in bad faith. Considering these conditions, the Panel rules as follows. A. Identical or Confusingly Similar Complainant has submitted a copy of the registration of the Trademark demonstrating that Complainant is the holder of the Trademark. The Trademark consists of the word mark WHATSAPP. The Trademark is protected under Dutch law. The unrebutted evidence provided in the Complaint regarding the Trademark constitutes prima facie evidence that Complainant has trademark rights for purposes of the Regulations, and accordingly the Panel will review the Complaint on this basis. Turning to whether the Domain Name is identical or confusingly similar to the Trademark, the Panel observes that the Domain Name comprises: (a) an exact reproduction of the Trademark; (b) followed by the word “store”; (c) followed by the country code Top-Level Domain “.nl”. The Panel notes that it is established “.nl” case law that the country code Top-Level Domain “.nl” may be disregarded in assessing confusing similarity between the relevant trademark on the one hand, and the disputed domain name on the other hand (see, e.g., Caterpillar Inc. v. H. van Zuylen Materieel,WIPO Case No. DNL2011-0073; Roompot Recreatie Beheer B.V. v. Edoco LTD,WIPO Case No. DNL2008-0008). It is also well established that where a domain name incorporates a complainant’s well-known and distinctive trademark in its entirety, it is deemed confusingly similar to that mark irrespective of the addition of a word, in this case, the word “store” (see Oki Data Americas, Inc. v. ASD, Inc.,WIPO Case No. D2001-0903, and section 1.8 of WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”)). 1 Consequently, the Panel finds that the Domain Name is confusingly similar to the Trademark for purposes of the Regulations. Therefore, the first requirement of article 2.1(a)(I) of the Regulations is met. B. Rights or Legitimate Interests Article 2.1(b) of the Regulations requires Complainant to demonstrate that Respondent has no rights to or legitimate interests in the Domain Name. This condition is met if Complainant makes out a prima facie case that Respondent has no such rights or legitimate interests and if Respondent fails to rebut this with appropriate allegations or evidence demonstrating rights to or legitimate interests in the Domain Name (see, e.g., Technische Unie B.V. and Otra Information Services v. Technology Services Ltd.,WIPO Case No. DNL2008-0002). Complainant alleges that Respondent lacks rights to or legitimate interests in the Domain Name for the reasons set out in section 5.A above. The Panel finds that Complainant has fulfilled the obligation to establish prima facie that Respondent has no rights to or legitimate interests in the Domain Name. Having failed to submit a response, Respondent has not attempted to refute the arguments of Complainant to show rights to or legitimate interests in the Domain Name. The Panel could not establish any indication that any of the circumstances as described in article 3.1 of the Regulations apply, or that Respondent in any plausible other way has rights to or legitimate interests in the Domain Name. Consequently, the Panel concludes that Complainant has met the second requirement of article 2.1(b) of the Regulations. C. Registered or Used in Bad Faith Article 2.1(c) of the Regulations requires Complainant to demonstrate that the Domain Name has been registered or is being used in bad faith. Article 3.2 of the Regulations sets out certain non-exhaustive circumstances to be construed as evidence of both of these requirements. The Panel finds that the evidence in the case shows Respondent has registered and used the Domain Name in bad faith. When Respondent registered the Domain Name, the Trademark had already been registered and was being used by Complainant for its products and services. Considering the distinctiveness and reputation of the Trademark and Complainant’s prior rights, the Panel finds that Respondent knew or should have known of Complainant’s rights at the time of registration of the Domain Name. This is also suggested by the fact that Respondent registered a domain name which includes Complainant’s Trademark in its entirety. According to Complainant, at the time the Complaint was filed, the Domain Name did not resolve to an active website. The Domain Name linked to a parking page at the time the Panel drafted this decision. It is well established that non-use of a domain name does not prevent a finding of bad faith use under the doctrine of passive holding (see section 3.3 of WIPO Overview 3.0). Here, the circumstances of the case, including the incorporation of Complainant’s Trademark as a whole in the Domain Name, the Trademark’s wide renown, and Respondent’s failure to submit a response, support a finding of bad faith. This conclusion is reinforced by the fact that it is established that terms with an “inherent Internet connotation” (e.g. The Panel finds that the bad faith requirement of article 2.1(c) of the Regulations has been met. 7. Decision For all the foregoing reasons, in accordance with articles 1 and 14 of the Regulations, the Panel orders that the Domain Name Remco M.R. van Leeuwen 1 In view of the fact that the Regulations are to an extent based on the Uniform Domain Name Dispute Resolution Policy (“UDRP”), it is well established that both cases decided under the Regulations and cases decided under the UDRP, and therefore WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), are relevant to this proceeding (see, e.g., Aktiebolaget Electrolux v. Beuk Horeca B.V.,WIPO Case No. DNL2008-0050).
Panelist
Date: May 10, 2021
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