The Complainant is WhatsApp Inc., United States of America (“United States”), represented by Hogan Lovells, France.
The Respondent is WhoisGuard Protected, WhoisGuard, Inc., Panama / Don Stanley, United States. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 7, 2021. On January 7, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 7, 2021, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on January 19, 2021, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on January 22, 2021. The Center verified that the Complaint, together with the amendment to the Complaint, satisfied the formal requirements of the .IO Domain Name Dispute Resolution Policy (the “Policy”), the Rules for .IO Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for .IO 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 February 9, 2021. In accordance with the Rules, paragraph 5, the due date for Response was March 1, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 3, 2021. The Center appointed William F. Hamilton as the sole panelist in this matter on March 11, 2021. 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. The application allows users across the globe to exchange messages via smartphones. WhatsApp has over 2 billion monthly active users worldwide. The Complainant is the owner of several trademark registrations for the mark WHATSAPP (the “Mark”) in many jurisdictions throughout the world including: - United States Trademark Registration No. 3939463, WHATSAPP, registered on April 5, 2011; The Complainant is the owner of numerous domain names incorporating of the Mark including The Respondent registered the disputed domain name on July 8, 2013. When the Complaint was filed, the disputed domain name resolved to a pay-per-click website. Currently, the disputed domain name does not resolve to an active website. 5. Parties’ Contentions A. Complainant The Complainant asserts the disputed domain name is confusingly similar to the Mark because the disputed domain name is composed entirely of the Mark and a country code Top-Level Domain (“ccTLD”) “.io”. The Complainant asserts that the Complainant never authorized the Respondent to use the Mark, that the Respondent is not commonly known by the Mark, and that the Respondent has never engaged in any bona fide commercial activity in connection with the Mark. The Complainant also asserts the Respondent has registered and used the disputed domain name in bad faith to lure unsuspecting Internet users to the Respondent’s website for commercial gain or other nefarious purposes. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings Under paragraph 4(a) of the Policy, to succeed the Complainant must satisfy the Panel that: (i) the disputed domain name is 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 name; and (iii) the disputed domain name was registered or is being used in bad faith. A. Identical or Confusingly Similar The disputed domain name is composed merely by appending to the Mark the ccTLD “.io”. A domain name, which wholly incorporates a complainant’s registered mark is sufficient to establish confusing similarity for the purposes of the Policy. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.71 . The ccTLD, in this case “.io”, may be disregarded for the purposes of assessment under the first element, as it is viewed as a standard registration requirement. See WIPO Overview 3.0, section 1.11.1; WhatsApp, Inc. v. F. Nunley Kathie, Kathie F. Nunley,WIPO Case No. DCO2017-0027; WhatsApp Inc. v. Private Person / Mario Rieger,WIPO Case No. DRO2017-0005. The Complainant has met its burden under paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests The Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name. The Complainant has specifically disavowed providing the Respondent with permission to use the disputed domain name or the Mark. There is no evidence that the Respondent has conducted any bona fide business under the disputed domain name or is commonly known by the disputed domain name. The Respondent has failed to come forth with any evidence showing any rights or legitimate interests in the disputed domain name. The Respondent did not formally respond to either the Complaint or the Complainant’s cease and desist letter. Moreover, the Panel finds that the disputed domain name carries a high risk of implied affiliation. See WIPO Overview 3.0, section 2.5.1. The Complainant has met its burden under paragraph 4(a)(ii) of the Policy. C. Registered or Used in Bad Faith The Panel finds the disputed domain name was registered and used in bad faith. Given the uniqueness and worldwide reach of the Complainant’s Mark and services, the Respondent was undoubtedly aware of the Mark when the registering and using the disputed domain name. WhatsApp, Inc. v. Domain Manager, SHOUT marketing SL, and Gonzalo Gomez Rufino, River Plate Argentina, and Gonzalo Gomez Rufino, SHOUT Marketing SL,WIPO Case No. D2018-1581; WhatsApp Inc. v. Francisco Costa, WIPO Case No. D2015-0909. The Panel finds that the Respondent intentionally attempted to falsely lure and attract Internet users to the Respondent’s website for commercial gain. The confusingly similar disputed domain name resolved to a website offering links to various products and services apparently competing with the Complainant. The fact that the disputed domain name currently does not resolve to an active website does not prevent a finding of bad faith. Given the Complainant’s distinctive and well-known Mark, it is difficult to conceive of any use that the Respondent might make of the disputed domain name without the Complainant’s consent that would not involve bad faith. Telstra Corporation Limited v. Nuclear Marshmellows,WIPO Case No. D2000-0003. It is abundantly clear that the Respondent registered the disputed domain name in bad faith and used the disputed domain name to trade on the Complainant’s Mark. Facebook, Inc. and WhatsApp Inc. v. Registration Private, Domains By Proxy, LLC / Nanci Nette,WIPO Case No. D2019-2223. The Complainant has met its burden under paragraph 4(a)(iii) of the Policy. 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 William F. Hamilton 1 Noting the substantial substantive similarities between the Policy and the Uniform Domain Name Dispute Resolution Policy (“UDRP”), the Panel has referred to prior UDRP cases and the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), where appropriate.
- European Union Trade Mark No. 009986514, WHATSAPP, registered on October 25, 2011; and
- International Registration No. 1085539, WHATSAPP, registered on May 24, 2011.
Sole Panelist
Date: March 25, 2021
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