Complainant is WhatsApp Inc., United States of America (“United States”), represented by Hogan Lovells (Paris) LLP, France.
Respondent is Whois Privacy Service, United States / Raj Lakkaraju, Ptechpeople, United States.
The disputed domain name <whatsappdeals.com> is registered with Amazon Registrar, Inc. (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 22, 2020. On May 22, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 26, 2020, 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 June 2, 2020, 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 June 5, 2020.
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 Respondent of the Complaint, and the proceedings commenced on June 8, 2020. In accordance with the Rules, paragraph 5, the due date for Response was June 28, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 29, 2020.
The Center appointed Brian J. Winterfeldt as the sole panelist in this matter on July 15, 2020. 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 the provider of the cross-platform instant messaging application for smartphones known as WhatsApp. The application had approximately 2.5 billion active users worldwide from April 2013 to March 2020. Complainant owns various trademark registrations for its WHATSAPP mark (“Complainant’s Mark”), including United States registration number 3,939,463 (registered on April 5, 2011). Complainant also owns and operates numerous domain names incorporating its WHATSAPP mark, including, for instance, <whatsapp.com>, <whatsapp.net>, <whatsapp.org>, <whatsapp.biz>, <whatsapp.info>, <whatsapp.us> and <whatsapp.de>, among others. The WHATSAPP mark has been recognized as famous by at least one prior UDRP panel. See WhatsApp Inc. v. Francisco Costa, WIPO Case No. D2015-0909.
The disputed domain name <whatsappdeals.com> was registered on July 31, 2018 and does not resolve to an active website. Complainant sent various letters to Respondent stating that the disputed domain name was registered without Complainant’s authorization and requesting that it be transferred to Complainant. Respondent never answered any of the communications sent by Complainant.
Complainant contends that the disputed domain name is confusingly similar to Complainant’s WHATSAPP mark because it reproduces identically the WHATSAPP mark. Complainant argues that the addition of the term “deals” in the disputed domain name is insufficient to distinguish the disputed domain name from Complainant’s Mark since “deals” is a dictionary term.
Complainant also alleges that Respondent has no rights or legitimate interests in the disputed domain name. Complainant alleges that Respondent is not commonly known by the disputed domain name, is not associated or affiliated with Complainant in any way and was never licensed or authorized to use Complainant’s Mark. Furthermore, Complainant argues Respondent is not making a legitimate noncommercial or fair use of the disputed domain name since it falsely suggests an affiliation with Complainant and the passive holding of a domain name cannot confer any rights or legitimate interests to the disputed domain name.
Lastly, Complainant alleges that Respondent registered and used the disputed domain name in bad faith. According to Complainant, Respondent must have had constructive or actual knowledge of Complainant’s rights in the WHATSAPP mark given its worldwide notoriety and the existence of its active United States trademark registration at the moment of the disputed domain name’s registration. Complainant further argues that Respondent’s passive holding of the disputed domain name should not prevent a finding of bad faith because Respondent has submitted no evidence of actual or contemplated good-faith use, has taken active steps to conceal his or her identity behind a privacy service, and there is no plausible good faith use to which the disputed domain name could be put.
Respondent did not reply to Complainant’s contentions.
Under paragraph 4(a) of the Policy, to succeed Complainant must satisfy the Panel that:
(i) the disputed 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 disputed domain name; and
(iii) the disputed domain name was registered and is being used in bad faith.
Furthermore, section 4.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) states:
“Does a respondent’s default/failure to respond to the complainant’s contentions automatically result in the complaint succeeding?
Noting the burden of proof on the complainant, a respondent’s default (i.e., failure to submit a formal response) would not by itself mean that the complainant is deemed to have prevailed; a respondent’s default is not necessarily an admission that the complainant’s claims are true.” Thus, even though Respondent has failed to address Complainant’s contentions, the burden remains with Complainant to establish the three elements of paragraph 4(a) of the Policy by a preponderance of the evidence. See, e.g., The Knot, Inc. v. In Knot We Trust LTD, WIPO Case No. D2006-0340.
Ownership of a nationally registered trademark constitutes prima facie evidence that the complainant has the requisite rights in a mark for purposes of paragraph 4(a)(i) of the Policy. WIPO Overview 3.0, section 1.2.1. Complainant has provided evidence that it has rights in the WHATSAPP mark through its various national and international registrations.
With Complainant’s rights in the WHATSAPP mark established, the remaining question under the first element of the Policy is whether the disputed domain name (typically disregarding the generic Top-Level Domain (“gTLD”) in which the domain name is registered) is identical or confusingly similar to Complainant’s Mark. It is well accepted that the first element functions primarily as a standing requirement and that the threshold test for confusing similarity involves a “reasoned but relatively straightforward comparison between the complainant’s trademark and the disputed domain name”. WIPO Overview 3.0, section 1.7. It is furthermore well established that a domain name that wholly incorporates a trademark may be confusingly similar to that trademark for purposes of the Policy despite the addition of a descriptive word or suffix. See Allianz Global Investors of America, L.P. and Pacific Investment Management Company (PIMCO) v. Bingo-Bongo, WIPO Case No. D2011-0795. As stated in section 1.8 of the WIPO Overview 3.0, “[w]here 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”. See Hoffmann-La Roche Inc. v. Wei-Chun Hsia, WIPO Case No. D2008-0923.
Here, Complainant’s WHATSAPP mark is fully and identically incorporated in the disputed domain name. The inclusion of the dictionary term “deals” does nothing to prevent a finding of confusing similarity under the first element. The Panel therefore finds that Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy in establishing its trademark rights and showing that the disputed domain name is confusingly similar to Complainant’s WHATSAPP mark.
Under the Policy, a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests in the domain name. Once such a prima facie case is made, the respondent carries the burden of production of demonstrating rights or legitimate interests in the domain name. If the respondent fails to do so, the complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy. See WIPO Overview 3.0, section 2.1.
Paragraph 4(c) of the Policy lists the ways that a respondent may demonstrate rights or legitimate interests in the domain name:
(i) before any notice of the dispute, the respondent’s use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) the respondent (as an individual, business or other organization) has been commonly known by the domain name, even if it has acquired no trademark or service mark rights; or
(iii) the respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The Panel finds that the Complainant has made out a prima facie case. In particular, Respondent has not submitted any arguments or evidence to rebut Complainant’s contention that it has never authorized, licensed or permitted Respondent to use the WHATSAPP mark in any way. Respondent is also not using the disputed domain name in connection with any bona fide offering of goods or services, nor is Respondent making a legitimate noncommercial or fair use of the disputed domain name because the disputed domain name does not resolve to any active website. Facebook, Inc. v. Mirza Azim, WIPO Case No. D2016-0950, citing KOC Holding A.S. v. VistaPrint Technologies Ltd, Domain Administrator, VistaPrint, WIPO Case No. D2015-1910; Volkswagen AG v. Nowack Auto und Sport - Oliver Nowack, WIPO Case No. D2015-0070; Deutsche Lufthansa AG v. Mustermann Max, Muster AG, WIPO Case No. D2015-1320.
Therefore, the Panel concludes that Respondent does not have rights or a legitimate interests in the disputed domain name within the meaning of Policy paragraph 4(a)(ii).
From the inception of the UDRP, panelists have found that the non-use of a domain name (including a blank or “coming soon” page) would not prevent a finding of bad faith under the doctrine of passive holding. WIPO Overview 3.0, section 3.3. While panelists will look at the totality of the circumstances in each case, factors that have been considered relevant in applying the passive holding doctrine include: (i) the degree of distinctiveness or reputation of the complainant’s mark, (ii) the failure of the respondent to submit a response or to provide any evidence of actual or contemplated good-faith use, (iii) the respondent’s concealing its identity or use of false contact details (noted to be in breach of its registration agreement), and (iv) the implausibility of any good faith use to which the domain name may be put. Id.
In this case, bad faith can be found in the registration and use of the disputed domain name. Complainant provided ample evidence to show the widespread use and numerous registrations of the WHATSAPP mark that long predate Respondent’s registration of the disputed domain name. Therefore, Respondent was likely aware of the WHATSAPP trademark when it registered the disputed domain name, or knew or should have known that it was identical or confusingly similar to Complainant’s Mark. See WIPO Overview 3.0, section 3.2.1; see also TTT Moneycorp Limited v. Privacy Gods / Privacy Gods Limited, WIPO Case No. D2016-1973. Moreover, UDRP panels have consistently found that the mere registration of a domain name that is identical or confusingly similar (particularly domain names comprising typos or incorporating the mark plus a descriptive term) to a famous or widely-known trademark by an unaffiliated entity can by itself create a presumption of bad faith. WIPO Overview 3.0, section 3.1.4, see also Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co., WIPO Case No. D2000−0163. Here, the disputed domain name completely incorporates the WHATSAPP mark and merely adds the dictionary term “deals”, meaning that bad faith registration and use of the disputed domain name can be presumed.
Furthermore, the passive holding doctrine applies in this case given the undeniable fame and worldwide notoriety of Complainant’s Mark, Respondent’s failure to come forward with any evidence of a conceivable good faith use for the disputed domain name, Respondent’s concealment of his or her identity, and the implausibility of any conceivable good faith basis to which the disputed domain could be put by Respondent. The Panel finds it more likely that Respondent selected the disputed domain name with the intention to take advantage of Complainant's reputation by registering a domain name fully containing the Complainant’s Mark with the intent to ultimately use the domain name for an illegitimate purpose, such as to attract Internet users to the online location for Respondent’s commercial gain. See e.g. Koc Holding A.S. VistaPrint Technologies Ltd., WIPO Case No. D2015-0886; Madonna Ciccone, p/k/a Madonna v. Dan Parisi / "Madonna.com", WIPO Case No. D2000-0847).
For these reasons, this Panel finds that Respondent’s registration and use of the disputed domain name were in bad faith, pursuant to paragraph 4(b) 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 disputed domain name <whatsappdeals.com> be transferred to Complainant.
Brian J. Winterfeldt
Sole Panelist
Date: July 29, 2020