Complainant is WhatsApp Inc., United States of America (“United States”), represented by Hogan Lovells (Paris) LLP, France.
Respondent is Cavin Dace, United Arab Emirates. 2. The Domain Names and Registrar
The disputed domain names , , , , , , , , , , and are registered with NameCheap, Inc. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 25, 2019, initially in relation only to the disputed domain name . On June 25, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name . On June 25, 2019, 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. On July 1, 2019, the Center sent an email communication to Complainant providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. On July 3, 2019, Complainant filed an amended Complaint containing 10 newly added disputed domain names. On July 4, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the 10 newly added disputed domain names. On July 4, 2019, the Registrar transmitted by email to the Center its verification response confirming that the named Respondent was the registrant of the disputed domain names.
The Center verified that the Complaint together with the amended 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 July 10, 2019. In accordance with the Rules, paragraph 5, the due date for Response was July 30, 2019. Respondent did not submit any response. On July 31, 2019, the Center notified Respondent’s default.
On August 6, 2019, the Center appointed Roberto Bianchi as the sole panelist in this matter. 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, founded in 2009, is the provider of a popular mobile messaging application. In 2014, Complainant was acquired by Facebook, Inc.
Complainant owns numerous trademark registrations for WHATSAPP, including the following:
WHATSAPP, United Arab Emirates Trademark Registration No. 157827, registered on April 30, 2012, covering goods in Class 9.
WHATSAPP, United States Trademark Registration No. 3939463, registered on April 5, 2011, filed on April 1, 2009, covering application service provider, etcetera, in International Class 42.
WHATSAPP, European Union Trademark Registration No. 009986514, registered on October 25, 2011, filed on May 23, 2011, covering various apparatus and instruments, etcetera, in Class 9; telecommunications and various telecommunication services, etcetera, in Class 38; scientific and technological services, etcetera, in Class 42.
WHATSAPP, International Trademark Registration No. 1085539, registered on May 24, 2011, covering instant messaging software and other software in Class 9; telecommunication services, etcetera, in Class 38, based on United States trademark application No. 85326910, filed on May 22, 2011.
Complainant also owns numerous domain names consisting of the WHATSAPP trademark, including, , , , , , , , , , , , , , , , , , >, , , , , , , and .
The disputed domain names , , , , , , , , , and were registered on January 18, 2019. The disputed domain name was registered on October 18, 2018.
Presently, none of the disputed domain names resolve to an active website. Each attempt to connect a browser to the corresponding website returns a text stating, “Sorry! If you are the owner of this website, please contact your hosting provider…: It is possible you have reached this page because: The IP address has changed. …There has been a server misconfiguration…The site may have moved to a different server. (SIC)” 5. Parties’ Contentions A. Complainant
Complainant contends as follows:
Based on its numerous trademark registrations, Complainant has established trademark rights in the term WHATSAPP. The disputed domain names are confusingly similar to the trademarks in which Complainant has rights. Except for , the disputed domain names incorporate Complainant’s WHATSAPP trademark in its entirety. The disputed domain name incorporates a typosquatted version of Complainant’s WHATSAPP trademark (the last letter “p” is missing), which is visually similar to Complainant’s trademark. Suffixes such as “.pw”, are irrelevant when assessing whether a domain name is identical or confusingly similar to a trademark, as it is a functional element.
Respondent has no rights or legitimate interests in the disputed domain names. Respondent is unable to invoke any of the circumstances set out in paragraph 4(c) of the Policy, in order to demonstrate rights or legitimate interests in the disputed domain names.
Respondent is not a licensee of Complainant, nor has it been otherwise authorized or allowed by Complainant to use the WHATSAPP trademark, in a domain name or otherwise. The disputed domain name was previously used by Respondent to point to a website featuring Complainant’s distinctive logo and promoting purported marketing services via WhatsApp bulk messages. Such use cannot be considered as a bona fide offering of goods and services under the Policy, as Respondent was clearly trading on Complainant’s reputation and goodwill by diverting traffic to the website previously associated with the disputed domain name . See, for example, WhatsApp Inc. v. Contact Privacy Inc. Customer 0153186272 / MOHD WILDAN AMIR MUSA,WIPO Case No. D2019-0456 (where the panel considered that the use of the disputed domain name to promote software for bulk messaging via WhatsApp “indicates an attempt to benefit from the reputation of the Complainant’s trademark and to attract Internet users for commercial gain”).
The disputed domain names , , , , , , , , , and are being passively held by Respondent. This circumstance does not confer any rights or legitimate interests.
Respondent is not commonly known by the disputed domain names in accordance with paragraph 4(c)(ii) of the Policy, given the notoriety surrounding Complainant’s trademarks and their exclusive association with Complainant.
Given the previous abusive use of the disputed domain name as described above, Respondent has not made nor is currently making a legitimate noncommercial or fair use of the disputed domain name pursuant to paragraph 4(c)(iii) of the Policy. The fact that the disputed domain names falsely suggest affiliation with Complainant will generally exclude any possible fair use as per section 2.5 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).
The disputed domain names were registered and are being used in bad faith. Complainant’s WHATSAPP trademark is highly distinctive and well known throughout the world. It has continuously and extensively been used since 2009 in connection with an instant messaging “app” for mobile devices and has rapidly acquired considerable goodwill and renown worldwide. See WhatsApp Inc. v. Francisco Costa,WIPO Case No. D2015-0909 (where the panel found that the WHATSAPP trademark had acquired “worldwide renown [...] amongst mobile applications” and an “impressive number of users... since the launch of the WhatsApp services in 2009”).
Given Complainant’s renown and goodwill worldwide, its popularity and trademark rights, it would be inconceivable for Respondent to argue that he did not have knowledge of Complainant’s WHATSAPP trademark when he registered the disputed domain name in 2018. Respondent’s subsequent use of the disputed domain name to point to a website referring to Complainant leaves no doubt as to Respondent’s awareness of Complainant at the time of registration.
Complainant therefore submits that Respondent registered the disputed domain names in bad faith.
Respondent has engaged in a pattern of conduct within the meaning of paragraph 4(b)(ii) of the Policy by registering 12 domain names incorporating Complainant’s WHATSAPP trademarks (i.e. the 11 disputed domain names and the domain name ) for the purpose of preventing Complainant from reflecting its trademarks in corresponding domain names.
Respondent could simply not have chosen the disputed domain names for any reason other than to take unfair advantage of Complainant’s goodwill and reputation, i.e., in bad faith.
Respondent was using the disputed 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 the website, in accordance with paragraph 4(b)(iv) of the Policy. Given the nature of the Domain Name , which is confusingly similar to Complainant’s WHATSAPP trademark, and its previous use to point to a website featuring a logo having the same “look and feel” as WhatsApp’s distinctive logo, WhatsApp users would almost certainly be confused at the first sight of the associated website. Such use of the disputed domain name to point Internet users to the Respondent’s own website promoting its marketing services, obviously for commercial gain, clearly indicates bad faith in accordance with paragraph 4(b)(iv) of the Policy.
Furthermore, Respondent was using the disputed domain name in connection with spamming activities via WhatsApp. Usually, such use is found to be in bad faith under the Policy
The disputed domain name is no longer resolving further to Complainant’s request. The disputed domain names , , , , , , , , , and are being passively held by Respondent. This does not does not prevent a finding of bad faith, given Complainant’s reputation worldwide. See Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003. B. Respondent
Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings A. Identical or Confusingly Similar
By submitting printouts taken from the corresponding official databases, Complainant has satisfied the Panel that it has rights in the WHATSAPP trademark for purposes of Policy paragraph 4(a)(i). See section 4 above.
The Panel notes that in the disputed domain names, Complainant’s trademark WHATSAPP is incorporated in its entirety except for the disputed domain name , where the second instance of the letter “p” of the mark is missing. This omission is visually minimal and aurally irrelevant. In some of the disputed domain names, dictionary or descriptive terms were added, such as the prefix “i” or the suffixes “basic”, “claim”, “online”, “prize”, while in the rest of the disputed domain names the added terms “europe”, “uae”, “usa” and “uk” are geographic. In the view of the Panel, none of these additions would prevent a finding of confusing similarity with Complainant’s mark. See WIPO Overview 3.0, section 1.8 (“Where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element.”)
The Panel finds that the disputed domain names are confusingly similar to Complainant’s trademark WHATSAPP. B. Rights or Legitimate Interests
By submitting a screenshot dated April 10, 2019, Complainant has shown that the disputed domain name was previously used in a website displaying a logo confusingly similar to Complainant’s logo, and offering Internet users to “get unlimited clients”. This website was purportedly apt to “deliver bulk WhatsApp messages to any area, city or country” for marketing purposes. Annex 8 to the Complaint. On this website, Respondent presented itself as Complainant, notably by signing its offering as “WhatsApp Marketing”. In the view of the Panel, by using the disputed domain name as shown, Respondent has deliberately created confusion as to the source of its offering. This does not qualify as a bona fide offering of services pursuant to Policy paragraph 4(c)(i), or as a fair or legitimate noncommercial use without intent for commercial gain to misleadingly divert consumers under Policy paragraph 4(c)(iii).
Presently, none of the disputed domain names resolves to any active website.
The Panel also notes that according to the relevant WhoIs data, the registrant of the disputed domain names is “Cavin Dace”. Nothing suggests that Respondent is known by any of the disputed domain names, especially considering the worldwide fame and renown of Complainant’s trademark. Thus, Policy paragraph 4(c)(ii) clearly does not apply.
In sum, Complainant has successfully made a prima facie case that Respondent lacks rights or legitimate interests in the disputed domain names. Since Respondent failed to present the Panel with any explanation or reasons for having registered the disputed domain names, or for its use (including passive use), the Panel concludes that Respondent does not have any rights or legitimate interests in the disputed domain names. C. Registered and Used in Bad Faith
The Panel notes that Complainant registered its trademark WHATSAPP, including in the United Arab Emirates – the country of residence of Respondent – several years before Respondent registered the disputed domain names. See section 4 above. In particular, Complainant also has shown that its website is the 14th most visited website in the United Arab Emirates. Annex 5 to the Complaint.
The Panel also notes that the WHATSAPP trademark is well known and famous, a fact that several prior UDRP panels have recognized. See e.g. WhatsApp, Inc. v. Whois Agent, Whois Privacy Protection Service, Inc. / Mohammed Alkalbani, Ops Alkalbani, M. Rashid Alkalbani,WIPO Case No. D2016-2299 (“The Respondent’s knowledge of the WHATSAPP mark is particularly obvious, given the worldwide renown it has acquired amongst mobile applications, the impressive number of users it has gathered since the launch of the WhatsApp services in 2009”). See also WhatsApp Inc. v. Huseyin Ugurlukilic, Ahmet Cebi, Resul Deger,WIPO Case No. D2019-0311 (“the reputation of the Complainant’s trademark WHATSAPP in the field of instant messaging apps for mobile devices is clearly established and the Panel finds that the Respondents knew or should have known of the Complainant”). This means that Respondent clearly had in mind and targeted Complainant at the time of registering the disputed domain names. Considering the circumstances of this case, the registration of the disputed domain names was in bad faith.
Complainant also has shown that previously, the website at the disputed domain name was used to offer a service purportedly apt to “deliver bulk WhatsApp messages to any area, city or country” for marketing purposes, which would allow Internet users to “get unlimited clients”. In offering such services, Respondent availed itself of a logo confusingly similar to Complainant’s trademarked logo. Annex 8 to the Complaint. In the Panel’s view, by using the disputed domain name as shown, Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of its website or of a service on its website, according to Policy paragraph 4(b)(iv). Eventually, the disputed domain name ceased to resolve to any website.
Presently, all of the disputed domain names are being passively held. The Panel considers that the following relevant facts and circumstances make the doctrine of Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003, applicable:
a) the worldwide recognition and fame of the WHATSAPP mark and application,
b) the confusing similarity of all the disputed domain names with the WHATSAPP mark,
c) Respondent’s only active use of one of the disputed domain names was creating confusion with Complainant for commercial gain,
d) Respondent failed to present any arguments in its own favor, and
e) Respondent seems to have provided a false or incomplete address at the time of registering the disputed domain names1 .
Under these circumstances, it is not possible to conceive of any plausible actual or contemplated active use of the disputed domain names by Respondent that would not be in bad faith.
For the above reasons, the Panel finds that the disputed domain names were registered and are 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 names, , , , , , , , , , , and be transferred to Complainant.
Roberto Bianchi
Sole Panelist
Date: August 20, 2019
1 The courier entrusted with delivering the Written Notice of the Complaint in hardcopy reported to the Center that Respondent has a “bad address”.
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