Complainant is WhatsApp Inc. of Menlo Park, California, United States of America (“United States”), represented by Hogan Lovells (Paris) LLP, France.
Respondent is Moose Scheib of Birmingham, Michigan, United States.
The disputed domain names <whatsappalawyer.com>, <whatsappforlegal.com>, <whatsapplaw.com>, <whatsapplawyer.com>, <whatsapplegal.com>, and <whatsapp4legal.com> are registered with GoDaddy.com, LLC (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 12, 2019. On March 12, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On March 12, 2019, 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 March 20, 2019. In accordance with the Rules, paragraph 5, the due date for Response was April 9, 2019. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on April 10, 2019.
The Center appointed Lynda J. Zadra-Symes as the sole panelist in this matter on April 24, 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.
Complainant was founded in 2009 and acquired by Facebook, Inc. in 2014. Complainant is a provider of popular mobile messaging applications (or “apps”). Complainant’s “WhatsApp” app allows users to exchange messages for free via smartphones. Its main website at “www.whatsapp.com” also allows Internet users to access its messaging platform. As of October 2018, WhatsApp had over 1.5 billion monthly active users worldwide. WhatsApp has consistently been ranked amongst Apple iTunes’ 25 most popular free mobile applications and Tech Radar’s Best Android Apps. In 2018, App Annie’s Top Apps Worldwide Rankings ranked WhatsApp as the 4th most downloaded application worldwide.
WhatsApp’s official page on Facebook has over 29 million “likes”. In addition, WhatsApp has 2.64 million followers on Twitter.
Complainant owns numerous trademark registrations for the mark WHATSAPP in many jurisdictions, including the following:
|
United States Trademark Registration No. 3939463 |
WHATSAPP registered April 5, 2011 |
|
European Union Trade Mark No. 009986514 |
WHATSAPP registered October 25, 2011 |
|
International Registration No. 1085539 |
WHATSAPP registered May 24, 2011 |
Respondent registered the disputed domain names on November 15, 2018. The disputed domain names resolve to GoDaddy parking pages and do not appear to have been put to any active use since their registration.
On January 31, 2019, Complainant sent a cease and desist letter by registered post and email to Respondent requesting transfer of the disputed domain names. Delivery of the letter sent by post was refused. Complainant sent an email reminder to Respondent on February 12, 2019. Respondent did not reply to the first or second email.
Complainant contends that the disputed domain names are confusingly similar to Complainant’s trademark, that Respondent has no rights or legitimate interests in respect of the disputed domain names, and that the disputed domain names have been registered and used in bad faith.
Respondent did not reply to Complainant’s contentions.
In order to succeed in its claim, Complainant must demonstrate that all of the elements enumerated in paragraph 4(a) of the Policy have been satisfied:
(i) the disputed domain names are identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) Respondent has no rights or legitimate interests with respect to the disputed domain names; and
(iii) the disputed domain names have been registered and are being used in bad faith.
Paragraph 15(a) of the Rules instructs the Panel to decide a complaint “on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”.
Complainant has demonstrated that it has rights in the trademark WHATSAPP. Each of the disputed domain names incorporate Complainant’s mark in its entirety. The added terms “4legal”, “alawyer”, “forlegal”, “law”, “lawyer” and “legal” are descriptive terms for legal services and do not add any distinguishing features. Similarly, the generic Top-Level Domains (“gTLD”) “.com” does not add any distinguishing features and may be disregarded for the purposes of assessment under 4(a)(i) of the Policy.
Accordingly, the Panel finds that the disputed domain names are confusingly similar to Complainant’s trademark.
Complainant asserts that Respondent is not a licensee of Complainant and has not been otherwise authorized by Complainant to make any use of its WHATSAPP trademark mark, whether in a domain name or otherwise.
Complainant further asserts that its “WhatsApp” Brand Guidelines prohibit the unauthorized registration of domain names that could be confused with Complainant or its trademark.
There is no evidence in the record suggesting that Respondent is commonly known by the disputed domain names. There is no evidence in the record that Respondent has used or made demonstrable preparations to use the disputed domain names in connection with a bona fide offering of goods or services or that Respondent has made a legitimate noncommercial or fair use of the disputed domain names. The disputed domain names resolve to GoDaddy parking pages and do not appear to have been put to any active use. Such passive holding of domain names does not amount to a bona fide offering of goods or services under the Policy.
There is no evidence in the record that Respondent is commonly known by the disputed domain names. Respondent’s name is “Moose Scheib” which bears no resemblance to the disputed domain names.
In addition, Respondent likely chose the disputed domain names to benefit from the widespread consumer recognition in Complainant’s trademark to capitalize on Complainant’s reputation and goodwill in the WHATSAPP trademark.
The Panel finds that Complainant has satisfied the requirement of paragraph 4(a)(ii) of the Policy.
Complainant has submitted ample evidence that its WHATSAPP trademark is well-known throughout the world. It is inconceivable that Respondent was unaware of the existence of Complainant’s trademark at the time of registration of each of the disputed domain names.
By registering the disputed domain names incorporating Complainant’s mark Respondent has demonstrated a knowledge of and familiarity with Complainant’s trademark. The evidence of record indicates that Respondent has registered the six disputed domain names to create a likelihood of confusion with Complainant’s mark and take advantage of Internet traffic generated by Complainant’s prospective customers. Respondent’s registration of the six disputed domain names, each containing Complainant’s well-known trademark, also shows that Respondent has engaged in a bad-faith pattern of abusive domain-name registration, preventing Complainant from reflecting its mark in corresponding domain names (see section 3.1.2 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Jurisprudential Overview 3.0”)).
Accordingly, the Panel finds that Respondent has registered and used the disputed domain name in bad faith.
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 <whatsappalawyer.com>, <whatsappforlegal.com>, <whatsapplaw.com>, <whatsapplawyer.com>, <whatsapplegal.com>, and <whatsapp4legal.com> be transferred to Complainant.
Lynda J. Zadra-Symes
Sole Panelist
Date: May 9, 2019