Complainant is WhatsApp Inc., United States of America (“United States”), represented by Hogan Lovells (Paris) LLP, France.
Respondent is Domain Privacy Service FBO Registrant, United States / Ben Gleibs, United States.
The disputed domain name <whatsappgodfree.com> (the “Domain Name”) is registered with FastDomain, Inc. (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 25, 2019. On June 25, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On June 25, 2019, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on June 28, 2019, providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on July 1, 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 Respondent of the Complaint, and the proceedings commenced on July 3, 2019. In accordance with the Rules, paragraph 5, the due date for Response was July 23, 2019. Four informal email communications from Respondent were received by the Center on July 3, 22, and 24 2019, respectively. No further Response was submitted. The Center notified the Parties that it would proceed to panel appointment on July 24, 2019.
The Center appointed Ingrīda Kariņa-Bērziņa as the sole panelist in this matter on August 1, 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 is a United States technology company providing one of the world’s most popular mobile messaging applications. Founded in 2009 and acquired by Facebook, Inc. in 2014, Complainant allows Internet users to access its messaging platform via smartphones or through its main website at “whatsapp.com”. As of January 2019, Complainant’s app had over 1.5 billion monthly active users.
Complainant is the proprietor of numerous trademark registrations for the WHATSAPP mark (the “Mark”), including the following:
- United States trademark No. 3939463 for WHATSAPP, registered on April 5, 2011;
- European Union trademark No. 009986514 for WHATSAPP, registered on October 25, 2011;
- International trademark No. 1085539 for WHATSAPP, registered on May 24, 2011.
In addition to its main website, Complainant has registered numerous domain names containing the Mark, including <whatsapp.net>, <whatsapp.org>, <whatsapp.biz>, <whatsapp.info>, and under numerous country code extensions.
Respondent registered the Domain Name on February 7, 2019. The Domain Name resolves to an active website offering Internet users to send a message to be placed on the Western Wall in Jerusalem, primarily for a fee. The website states that this service is offered by an entity calling itself “Whatsapgod” (the Mark but with only one “p”).
In respect of the first element, Complainant alleges that it has well-established rights in the Mark. The Domain Name is confusingly similar to the Mark, since the Domain Name incorporates the Mark in its entirety. Since the Mark is recognizable within the Domain Name, the addition of other terms, such as “god free,” does not prevent a finding of confusing similarity under this element. The “.com” suffix is irrelevant when assessing confusing similarity under this element.
In respect of the second element, Complainant alleges that Respondent has no rights or legitimate interests in the Domain Name. Respondent is not a licensee of Complainant, nor has Respondent been otherwise authorized or allowed by Complainant to make any use of the Mark in a domain name or otherwise. Respondent is unable to invoke any of the circumstances set out in paragraph 4(c) of the Policy to demonstrate rights or legitimate interests in the Domain Name, namely, Respondent cannot assert use of the Domain Name in connection with a bona fide offering of goods or services prior to any notice of the present dispute. Respondent is not commonly known by the Domain Name. Respondent cannot assert that he has made or is currently making a legitimate non-commercial or fair use of the Domain Name.
In respect of the third element, Complainant alleges that the Mark is highly distinctive and well-known throughout the world. It has been continuously and extensively used since 2009 in connection with a mobile application and has acquired goodwill and renown worldwide. In such circumstances, it would be inconceivable for Respondent to argue that he did not have knowledge of Complainant’s Mark when registering the Domain Name. Respondent references his own “WhatsApp” number on the website to which the Domain Name resolves, thereby demonstrating awareness of Complainant at the time of registration. Such bad faith is further demonstrated by the use of privacy services.
Complainant alleges that Respondent’s use of the Domain Name is to intentionally attract, for commercial gain, Internet users to his website by creating a likelihood of confusion with Complainant’s Mark as to the source, sponsorship, affiliation or endorsement of the website. The Domain Name is being used to redirect Internet users to a website promoting paid services for delivering prayer messages to the Kotel (Western Wall) in Jerusalem. Such use is evidence of bad faith.
As stated above, Respondent did not reply to Complainant’s contentions, but sent four informal email communications to the Center, the essence of which were to inquire about the possibility to sell the Domain Name.
Given the facts in the case file and Respondent’s failure to file a response, the Panel accepts as true the reasonable contentions in the Complaint. Nevertheless, paragraph 4(a) of the UDRP requires Complainant to make out all three of the following:
(i) The Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights;
(ii) Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) Respondent has registered and is using the Domain Name in bad faith.
Complainant has provided evidence establishing that it has trademark rights in the Mark, through at least United States, international and European Union trademark registrations, thereby satisfying the threshold requirement of having trademark rights for purposes of standing to file a UDRP case. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.2.1.
In comparing Complainant’s Mark with the Domain Name, the Panel finds that the Domain Name <whatsappgodfree.com> wholly incorporates and is confusingly similar to Complainant’s Mark.
Regarding the effect of the added words “god free,” this Panel finds that they do not preclude a finding of confusing similarity. As previous Panels have found, “the similarity of the trademark and the domain name depends on many factors, including the relative distinctiveness of the trademark and the non-trademark elements of the domain name, and whether the non-trademark elements detract from or contradict the function of the trademark as an indication of origin.” (see, for example, Pfizer Inc v. The Magic Islands,WIPO Case D2003-0870, and WhatsApp Inc. v. Huseyin Ugurlukilic, Ahmet Cebi, Resul Deger,WIPO Case D2019-0311. In this case, the Mark is a wholly invented term and is highly distinctive. It has acquired considerable reputation through longstanding and consistent use. The addition of the terms “god free” does nothing to distinguish the Domain Name from the Mark.
It is the well-established view of UDRP panels that the addition of a gTLD to the Domain Name does not prevent the Domain Name from being confusingly similar to Complainant’s trademark (see WIPO Overview 3.0, section 1.11.1, and cases cited thereunder).
Accordingly, the Panel finds that Complainant has established the first element under paragraph 4(a) of the Policy.
The Panel finds that the evidence submitted by Complainant establishes a prima facie case that Respondent has no rights or legitimate interests in the Domain Name. The Panel finds that the materials in the case file indicate that Respondent is not an agent or an employee of Complainant, nor is Respondent a licensee or a subsidiary thereof. There is no evidence that Respondent is commonly known by the Domain Name. Complainant’s rights in the trademark predate the registration of the Domain Name by a number of years.
The circumstances clearly indicate that Respondent has no rights or legitimate interests of the case. First, the nature of the Domain Name (comprising Complainant’s Mark and an additional term) cannot constitute fair use because it effectively impersonates or suggest sponsorship or endorsement by Complainant, the mark owner (see WIPO Overview 3.0, section 2.5.1.). Second, the Domain Name resolves to a website purporting to offer both free and fee-based services by a provider calling itself “Whatsapgod” or “#Wtsapgod” (in both instances with one “p”). The use of the Domain Name and the appearance of a similar term on the website itself are indicative of commercial activity. The incorporation of Complainant’s Mark is apparent. Such a use cannot support a finding of rights or legitimate interests in the Domain Name.
Once Complainant has made out a prima facie case under paragraph 4(a)(ii) of the Policy showing that Respondent has no rights or legitimate interests in the Domain Name, the burden of production shifts to Respondent (see L’Oreal v. Zhao Jiafei, WIPO Case No. D2015-1458). Respondent, in failing to file a response, has not submitted any evidence or arguments demonstrating such rights or legitimate interests, nor has it rebutted any of Complainant’s contentions. There is no information available that would support a finding of a fair use of Complainant’s Mark.
The Panel finds that Complainant has established the second element under paragraph 4(a) of the Policy.
The Panel finds that the evidence in the record demonstrates that Respondent chose the Domain Name deliberately for the purpose of creating an association with Complainant. Complainant’s rights in the Mark predate the registration of the Domain Name by nearly a decade. Complainant’s Mark is highly distinctive and widely known. The Domain Name contains Complainant’s Mark in its entirety with the addition of the term “god free.” Respondent’s website states that the messaging services are offered by an entity or organization calling itself “Whatsapgod” or “#Wtsapgod” and asserting that “#Wtsapgod believes that the inserting a note in the holiest place on earth-the kotel (western wall) is the best way to private message god & ask him whatever you want.” Complainant is one of the world’s leading providers of messaging services. There can be no doubt that Respondent chose the Domain Name in full awareness of Complainant’s Mark.
Further, the website references Complainant by informing Internet visitors of the “Whatsapp” number that they may contact to reach Respondent. In the view of the Panel, such circumstances, taken together, indicate that Respondent used the Domain Name for the purpose of exploiting Complainant’s highly distinctive mark. In particular, the Panel finds that the registration of the Domain Name that identical or confusingly similar to the widely known Mark supports a finding of bad faith. Complainant’s Mark is being used in both the Domain Name and on the website to which it resolves in a manner that demonstrates an intention to attract Internet users to this website (see WIPO Overview 3.0, section 3.1.4).
Finally, additional circumstances further support a finding of bad faith: Respondent’s failure to file a substantive response, Respondent’s use of privacy services, and Respondent’s informal correspondence with the Center containing offers to sell the Domain Name absent any evidence of an independent right or legitimate interest in the Domain Name (see WIPO Overview 3.0, section 3.1.1).
The Panel finds that Complainant has established the third element under paragraph 4(a) of the Policy.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name <whatsappgodfree.com> be transferred to Complainant.
Ingrīda Kariņa-Bērziņa
Sole Panelist
Date: August 15, 2019