The Complainant is WhatsApp Inc., United States of America (“United States”), represented by Hogan Lovells (Paris) LLP, France.
The Respondent is Bert Beuker, the Netherlands.
The disputed domain name <whatsappstore.com> (“Disputed Domain Name”) is registered with Tucows Inc. (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 2, 2020. On September 2, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On the same day, the Registrar transmitted by email to the Center its verification response confirming that the 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 the Respondent of the Complaint, and the proceedings commenced on September 23, 2020. In accordance with the Rules, paragraph 5, the due date for Response was October 13, 2020. The Center received an informal email communication from Respondent on October 12, 2020. The Center sent a possible settlement email on October 12, 2020, which remained unanswered by the Parties.
The Center appointed Weston, Nicholas as the sole panelist in this matter on November 19, 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.
The Complainant operates a messaging application business with over one billion monthly active users. The Complainant holds registrations for the trademark WHATSAPP in numerous countries, which it uses to designate computer applications, software programs, websites, databases, wireless communication, mobile information access and remote data management for wireless delivery of content to computers and smartphones. United States Trademark Registration No. 3,939,463, for example, cites a first-use date of February 24, 2009, and was registered on April 5, 2011.
The Complainant owns numerous domain names that comprise of, or contain, the trademark WHATSAPP, including the domain name <whatsapp.com>, and has from 2009 operated an active website as an online resource that allows Internet users around the world to access its messaging platform and to support its mobile communications app.
The Respondent registered the Disputed Domain Name <whatsappstore.com> on June 15, 2016. The Disputed Domain Name resolves to an inactive webpage.
The Complainant cites its trademark registrations of the trademark WHATSAPP in the European Union, India and United States and other geographies as prima facie evidence of ownership.
The Complainant submits that the mark WHATSAPP is well-known and that its rights in that mark predate the registration of the Disputed Domain Name <whatsappstore.com>. It submits that the Disputed Domain Name is confusingly similar to its trademark, because the Disputed Domain Name incorporates in its entirety the WHATSAPP trademark and that the confusing similarity is not removed by the addition of the word “store”.
The Complainant contends that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name because it resolves to an inactive parking page, and contends that the Respondent has no rights or legitimate interests in the Disputed Domain Name.
Finally, the Complainant alleges that the registration and use of the Disputed Domain Name was, and currently is, in bad faith, contrary to the Policy and Rules and submits, on the issue of registration, that “the Respondent could simply not have chosen the Domain Name for any reason other than to create a false association with the Complainant” and, on the issue of use, that “passive holding of the Domain Name would not preclude a finding of bad faith”. The Complainant also submits the use is “abusive” and that refusal to transfer without a payment in excess of out-of-pocket costs also indicated bad faith.
The Respondent wrote to the Center by email dated October 12, 2020, prior to the due date for Response of October 13, 2020. This Panel accepts that communication as the Response. It is reproduced below:
“Hello,
can we talk over this?
What can you give me for serious money? I have make cost to buy the dommeinname and want to resel it to you...”whatssapp” Please make me an offer for me/it...
I have also www.whatsappstore.nl but that is not interesting for you?
Then i give you Whatsapp the Domain www.whatsappstore.com?
My Bank account is:
[bank details redacted]
Thank you for a answer to me.”
Under paragraph 4(a) of the Policy, the Complainant has the burden of proving the following:
(i) that the Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and
(iii) that the Disputed Domain Name has been registered and is being used in bad faith.
The Complainant has produced sufficient evidence to demonstrate that it has registered trademark rights in the mark WHATSAPP in numerous countries. The requirements of the first element for purposes of the Policy may be satisfied by a trademark registered in any country (see Thaigem Global Marketing Limited v. Sanchai Aree, WIPO Case No. D2002-0358).
Turning to whether the Disputed Domain Name is identical or confusingly similar to the WHATSAPP trademark, the Panel observes that the Disputed Domain Name comprises: (a) an exact reproduction of the Complainant’s trademark WHATSAPP; (b) followed by the word “store”; (c) followed by the generic Top-Level Domain (“gTLD”) “.com”.
It is well-established that the gTLD used as technical part of a domain name may be disregarded (see Autodesk v. MumbaiDomains, WIPO Case No. D2012-0286 and section 1.11 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”)). The relevant comparison to be made is with the second-level portion of the Disputed Domain Name, specifically: “whatsappstore”.
It is also well established that where a domain name incorporates a complainant’s well-known and distinctive trademark in its entirety, it may be confusingly similar to that mark despite the addition of a word, in this case, the word “store”: (see Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903; Wal Mart Stores, Inc. v. Kuchora, Kal, WIPO Case No. D2006-0033).
In the absence of any aspect of the response that addresses this issue, this Panel accepts the Complainant’s contention that the addition of the word “store” after the Complainant’s registered trademark is an additional element that does not serve to distinguish the Disputed Domain Name (see: Vodafone Group Plc v. Brendan Conlon, WIPO Case No. D2002-0822 (“the generic term “store” does not diminish the similarities between the trademark and the Disputed Domain Name”); Chanel, Inc. v. Estco Technology Group, WIPO Case No. D2000-0413 (“the addition of the generic terms “store” and “fashion” are not sufficient to avoid confusion”); Nintendo of America, Inc. v. Tasc, Inc. and Ken Lewis, WIPO Case No. D2000-1563 (“the addition of “-store” does not help to distinguish the domain name from Complainant’s trademark”).
The Panel finds that the Complainant has established paragraph 4(a)(i) of the Policy.
Paragraph 4(c) of the Policy lists the ways that the Respondent may demonstrate rights or legitimate interests in the Disputed Domain Name. The Policy also places the burden on the Complainant to establish the absence of the Respondent’s rights or legitimate interests in the Disputed Domain Name. Because of the inherent difficulties in proving a negative, the consensus view is that the Complainant need only put forward a prima facie case that the Respondent lacks rights or legitimate interests. The burden of production then shifts to the Respondent to rebut that prima facie case (see World Wrestling Federation Entertainment, Inc v. Ringside Collectibles, WIPO Case No. D2000-1306; see WIPO Overview 3.0, section 2.1.
The Complainant contends that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name because (i) the Disputed Domain Name is parked and; (ii) Respondent has not acquired or owned any trademark or service mark rights in the name WHATSAPP, and has not been commonly known by the name WHATSAPP; and (iii) Respondent is not making a legitimate noncommercial or fair use of the Disputed Domain Name without intent for commercial gain to misleadingly divert consumers.
On any objective view, the Respondent is not a reseller with a legitimate interest in a domain name incorporating the Complainant’s mark, such that it could meet the tests set out in Oki Data Americas, Inc. v. ASD, Inc., supra. The composition of the Disputed Domain Name, in this Panel’s view, carries “a high risk of affiliation” that other UDRP panels have not considered fair use as it “effectively impersonates or suggests sponsorship or endorsement by the trademark owner” (see WIPO Overview 3.0, section 2.5.1).
This Panel finds that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name and notes that the Disputed Domain Name resolves only to a parking page. In the absence of any submissions helpful to the Respondent in the Response, this Panel accepts the Complainant’s submission that “the 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 Domain Name.”
The Panel finds that the Complainant has established the second element of the Policy.
The third element of the Policy that the Complainant must also demonstrate is that the Disputed Domain Name has been registered and used in bad faith. Paragraph 4(b) of the Policy sets out certain circumstances to be construed as evidence of both of these conjunctive requirements.
The Panel finds that the evidence in the case shows the Respondent registered and has used the Disputed Domain Name in bad faith.
On the issue of registration, the trademark WHATSAPP is such a famous mark for software that it would be inconceivable that the Respondent might have registered the mark without knowing of it (see Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003; WhatsApp, Inc. v. Nasser Bahaj, WIPO Case No. D2016-0581 (“the trademark WHATSAPP is well-known”); WhatsApp, Inc. v. Domain Manager, SHOUT marketing SL, and Gonzalo Gomez Rufino, River Plate Argentina, and Gonzalo Gomez Rufino, SHOUT Marketing SL, WIPO Case No. D2018-1581 (“Complainant’s trademark WHATSAPP has become well-known around the world”); WhatsApp Inc. v. Emrecan Yildirimlar, WIPO Case No. D2019-0895 (“Complainant’s well-known WHATSAPP trademark”).
This Panel accepts, as the basis of a further finding of bad faith, the Complainant’s submission that “the Respondent registered the Disputed Domain Name in full knowledge of the Complainant’s rights.”
Furthermore, the Response offers two domain names for resale (“I want to resel it to you”) that the Respondent had registered containing the Complainant’s trademark, which appears to be more than a coincidence (see WhatsApp Inc. v. Chandru Printers, Praveen Chandru, WIPO Case No. D2018-1543 (“Plainly, the Respondent was and is well aware of the Complainant’s product”).
On the issue of use, the Complainant’s evidence is that the Disputed Domain Name does not currently resolve to an active website. Previous UDRP panels have found that the non-use of a domain name would not prevent a finding of bad faith under the doctrine of passive holding. “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” (See WIPO Overview 3.0, section 3.3). This Panel notes that the factors are not exhaustive and the evidence is that three of the four factors are present in this proceeding.
In the absence of any evidence to the contrary, this Panel accepts the Complainant’s evidence and finds that the Respondent has taken the Complainant’s trademark WHATSAPP and incorporated it in the Disputed Domain Name along with the word “store”, without the Complainant’s consent or authorization, for the purpose of capitalizing on the reputation of the trademark to infringe upon the Complainant’s rights.
Further, the Complainant’s case also relies on the provisions of paragraph 4(b)(i) of the Policy, namely that there are circumstances indicating that the Respondent registered the Disputed Domain Name with intent to sell it to the Complainant or a competitor for an amount in excess of its out-of-pocket costs; in this case, the Respondent has requested “serious money” for the transfer of the Disputed Domain Name. In order to succeed, the Complainant would be required to show that trademark rights were being specifically targeted or singled out by the Respondent. This Panel infers from the Response, and has already found, that the Respondent must have had the Complainant or a competitor in mind when it registered the Disputed Domain Name.
Accordingly, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(iii) 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, <whatsappstore.com> be transferred to the Complainant.
Nicholas Weston
Sole Panelist
Date: November 29, 2020