The Complainant is WhatsApp Inc. of Menlo Park, California, United States of America (“United States”), represented by Hogan Lovells (Paris) LLP, France.
The Respondents are Huseyin Ugurlukilic, Ahmet Cebi, and Resul Deger of Turkey.
The disputed domain names <whatsapp-sohbet.club>, <whatsapp-sohbet.net>, <whatsapp-sohbet.online>, <whatsappsohbet.online>, <whatsapp-sohbet.xyz> and <whatsapponline.bid> are registered with NameCheap, Inc. (the “Registrars”).
The disputed domain name <busewhatsapp.com> is registered with PDR Ltd. d/b/a PublicDomainRegistry.com (the “Registrars”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 11, 2019. On February 11, 2019, the Center transmitted by email to the Registrars a request for registrar verification in connection with the disputed domain names. On February 11 and 12, 2019, the Registrars transmitted by email to the Center their verification response disclosing registrant and contact information for the disputed domain names which differed from the named Respondents and contact information in the Complaint. The Center sent an email communication to the Complainant on February 12, 2019, 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 amended Complaint on February 18, 2019.
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 the Respondents of the Complaint, and the proceedings commenced on February 19, 2019. In accordance with the Rules, paragraph 5, the due date for Response was March 11, 2019. The Center received email communications from the Respondents on February 20, 21, and 22, 2019, and March 10, 13, and 14, 2019.
The Center appointed Edoardo Fano as the sole panelist in this matter on March 15, 2019. 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.
The Panel has not received any requests from the Complainant or the Respondents regarding further submissions, waivers or extensions of deadlines, and the Panel has not found it necessary to request any further information from the Parties.
Having reviewed the communication records in the case file provided by the Center, the Panel finds that the Center has discharged its responsibility under the Rules, paragraph 2(a), “to employ reasonably available means calculated to achieve actual notice to Respondent”. Therefore, the Panel shall issue its Decision based upon the Complaint, the Policy, the Rules and the Supplemental Rules and without the benefit of a formal response from the Respondents.
The language of the proceeding is English, being the language of the Registration Agreements, as per paragraph 11(a) of the Rules.
The Complainant is WhatsApp Inc., a U.S. technology company providing one of the world’s most popular mobile messaging applications, founded in 2009 and acquired by Facebook, Inc. in 2014, owning several trademark registrations for WHATSAPP, among which:
- Turkish Trademark Registration No.2011/70159 for WHATSAPP, registered on December 28, 2012;
- European Union Trademark Registration No. 009986514 for WHATSAPP, registered on October 25, 2011;
- International Trademark Registration No.1085539 for WHATSAPP, registered on May 24, 2011.
The Complainant operates on the Internet at several websites, among which “www.whatsapp.com”, “www.whatsapp.net”, “www.whatsapp.org”, “whatsapp.biz”, “whatsapp.info”, as well as many country code extensions.
The Complainant provided evidence in support of the above.
According to the WhoIs records, the disputed domain names were registered on the following dates: <busewhatsapp.com> on May 26, 2017, <whatsapponline.bid> on July 15, 2018, <whatsapp-sohbet.club> on August 29, 2018, <whatsapp-sohbet.net> on October 18, 2017, <whatsapp-sohbet.online> on October 3, 2018, <whatsappsohbet.online> on October 20, 2018, <whatsapp-sohbet.xyz> on April 20, 2018. When the Complaint was filed, the disputed domain names were all pointing to a Turkish chatbot website featuring the same green color layout as Whatsapp and allowing Internet users to contact women and conduct sexual conversations.
The Complainant states that the disputed domain names <busewhatsapp.com>, <whatsapponline.bid> <whatsapp-sohbet.club>, <whatsapp-sohbet.net>, <whatsapp-sohbet.online>, <whatsappsohbet.online>, and <whatsapp-sohbet.xyz> are confusingly similar to its trademark WHATSAPP, since they fully incorporate the Complainant’s trademark.
Moreover, the Complainant asserts that the Respondents have no rights or legitimate interests in respect of the disputed domain names since they have not been authorized by the Complainant to use them.
The Complainant submits that the Respondents have registered the disputed domain names in bad faith, since the Complainant’s trademark WHATSAPP is renowned throughout the world in connection with an instant messaging application for mobile devices. Therefore, the Respondents had knowledge of the Complainant’s trademark at the time of registration of the disputed domain names and are using the disputed domain names to intentionally attract, for commercial gain, Internet users to their website by creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation, or endorsement of the website.
The Respondents have made no formal reply to the Complainant’s contentions. However, two of the three Respondents, namely Huseyin Ugurlukilic and Resul Deger, submitted a few email communications that the Panel considers as irrelevant, since they do not provide any substantive argument.
A respondent is not obliged to participate in a proceeding under the Policy, but if it fails to do so, reasonable facts asserted by a complainant may be taken as true, and appropriate inferences, in accordance with paragraph 14(b) of the Rules, may be drawn (see, e.g., Reuters Limited v. Global Net 2000, Inc., WIPO Case No. D2000-0441; Microsoft Corporation v. Freak Films Oy, WIPO Case No. D2003-0109; SSL International PLC v. Mark Freeman, WIPO Case No. D2000-1080; Altavista Company v. Grandtotal Finances Limited et. al., WIPO Case No. D2000-0848; Confédération Nationale du Crédit Mutuel, Caisse Fédérale du Crédit Mutuel Nord Europe v. Marketing Total S.A., WIPO Case No. D2007-0288).
Paragraph 4(a) of the Policy lists three elements, which the Complainant must satisfy in order to succeed:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
The Complaint and the amendment to the Complaint were filed against three registrants, and the Complainant has requested consolidation of multiple respondents. No objection to this request was made by the Respondents.
Pursuant to the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 4.11.2, “[w]here a complaint is filed against multiple respondents, panels look at whether (i) the domain names or corresponding websites are subject to common control, and (ii) the consolidation would be fair and equitable to all parties. Procedural efficiency would also underpin panel consideration of such a consolidation scenario”. The Panel may consider a range of factors to determine whether consolidation is appropriate, such as examining relevant registrant contact information, and any naming patterns in the disputed domain names, or other evidence of respondent affiliation that indicate common control of the disputed domain names.
The Complainant notes that the registrants are all located in Turkey and all the disputed domain names are being useв or were previously used to point to the same Turkish chatbot website. The Panel finds that there is sufficient evidence that the disputed domain names are subject to common control, and that it would be procedurally efficient, fair and equitable to all Parties to accept the Complainant’s consolidation request. The Panel further notes that the Respondents did not object to the consolidation request. The Panel therefore accepts the Complainant’s consolidation request.
The Panel finds that the Complainant is the owner of the trademark WHATSAPP both by registration and acquired reputation and that the disputed domain names <busewhatsapp.com>, <whatsapponline.bid> <whatsapp-sohbet.club>, <whatsapp-sohbet.net>, <whatsapp-sohbet.online>, <whatsappsohbet.online>, and <whatsapp-sohbet.xyz> are confusingly similar to the trademark WHATSAPP.
Regarding the addition of the terms “buse” (meaning “kiss” in Turkish), “online” and “sohbet” (meaning “chat” in Turkish) to the disputed domain names, the Panel notes that it is now well established that the addition of terms or letters to a domain name does not necessarily distinguish the domain name from a trademark (see, e.g., Aventis Pharma SA., Aventis Pharma Deutschland GmbH v. Jonathan Valicenti, WIPO Case No. D2005-0037; Red Bull GmbH v. Chai Larbthanasub, WIPO Case No. D2003-0709; America Online, Inc. v. Dolphin@Heart, WIPO Case No. D2000-0713). The addition of the terms “buse”, “online”, and “sohbet” does not therefore prevent the disputed domain names incorporating these terms from being confusingly similar to the Complainant’s trademark.
It is also well accepted that a generic Top-Level Domain (“gTLD”), in this case “.com”, “.bid”, “club”, “.net”, “.online”, and “.xyz”, may be ignored when assessing the similarity between a trademark and a domain name (see, e.g., VAT Holding AG v. Vat.com, WIPO Case No. D2000-0607).
The Panel finds that the Complainant has therefore met its burden of proving that the disputed domain names are confusingly similar to the Complainant’s trademark, pursuant to the Policy, paragraph 4(a)(i).
The Respondents have failed to file a formal response in accordance with the Rules, paragraph 5.
The Complainant, in its Complaint and as set out above, has established a prima facie case that the Respondents have no rights or legitimate interests in the disputed domain names. It asserts that the Respondents are not using the disputed domain names for a legitimate noncommercial or fair use or in connection with a bona fide offering of goods or services.
The prima facie case presented by the Complainant is enough to shift the burden of production to the Respondents to demonstrate that they have rights or legitimate interests in the disputed domain names. However, the Respondents have not presented any evidence of any rights or legitimate interests they may have in the disputed domain names, and the Panel is unable to establish any such rights or legitimate interests on the basis of the evidence in front of it.
The Panel therefore finds that paragraph 4(a)(ii) of the Policy has been satisfied.
Paragraph 4(b) of the Policy provides that “for the purposes of paragraph 4(a)(iii) of the Policy, the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that [the respondent has] registered or has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of the complainant, for valuable consideration in excess of its documented out-of-pocket costs directly related to the domain name; or
(ii) that [the respondent has] registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that [the respondent has] engaged in a pattern of such conduct; or
(iii) that [the respondent has] registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) that by using the domain name, [the respondent has] intentionally attempted to attract, for commercial gain, Internet users to [the respondent’s] website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of [the respondent’s] website or location or of a product or service on [the respondent’s] website or location.”
Regarding the registration in bad faith of the disputed domain names, 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 and deliberately registered the disputed domain names, especially because the content of the website where the disputed domain names are or were redirected consists of the same messaging service as the Complainant and reproduces the same green layout as the Complainant.
As far as the use in bad faith is concerned, the Panel notes that, at the time of filing the Complaint, all disputed domain names pointed to a Turkish chatbot website, featuring the same green color layout as the Complainant’s Whatsapp messaging application and allowing Internet users to contact women and conduct sexual conversations.
The above suggests to the Panel that the Respondents intentionally registered and are using the disputed domain names in order to create confusion with the Complainant’s trademark and attract, for commercial gain, Internet users to their website in accordance with paragraph 4(b)(iv) of the Policy.
The Panel finds that the Complainant has presented evidence to satisfy its burden of proof with respect to the issue of whether the Respondents have registered and are using the disputed domain names in bad faith.
The Panel therefore finds that paragraph 4(a)(iii) of the Policy has been satisfied.
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 <busewhatsapp.com>, <whatsapponline.bid>, <whatsapp-sohbet.club>, <whatsapp-sohbet.net>, <whatsapp-sohbet.online>, <whatsappsohbet.online>, and <whatsapp-sohbet.xyz> be transferred to the Complainant.
Edoardo Fano
Sole Panelist
Date: March 31, 2019