The Complainant is WhatsApp Inc., United States of America (“United States”), represented by Hogan Lovells (Paris) LLP, France.
The Respondent is WhoisGuard Protected, WhoisGuard, Inc., Panama / Mohsen Moussawi, Lebanon.
The disputed domain name <cyberwhatsapp.com> is registered with NameCheap, Inc. (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 6, 2021. On January 7, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 7, 2021, 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 January 8, 2021 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 January 13, 2021.
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 January 19, 2021. In accordance with the Rules, paragraph 5, the due date for Response was February 8, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 9, 2021.
The Center appointed Reyes Campello Estebaranz as the sole panelist in this matter on March 8, 2021. 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 is a United States company, founded in 2009 and acquired by Facebook, Inc. in 2014. It operates globally under the trademark WHATSAPP, providing a mobile messaging application (or “app”) that allows users across the globe to exchange messages via smartphones. Prior decisions under the Policy have recognized the well-known character of the WHATSAPP mark1 .
The Complainant holds registered trademark rights in the mark WHATSAPP in many jurisdictions, as well as in the logo used to identify visually its app (consisting of a telephone within a green circle), being the owner of a substantial trademark portfolio, of which the following are sufficiently representative for the present proceeding:
United States Trademark No. 3,939,463, WHATSAPP, word mark, registered April 5, 2011, in class 42;
European Union Trade Mark No. 009986514, WHATSAPP, word mark, registered October 25, 2011, in classes 9, 38 and 42;
European Union Trade Mark No. 010496602, figurative mark, registered May 18, 2012, in classes 9, 38 and 42;
International Trademark No. 1085539, WHATSAPP, registered May 24, 2011, in classes 9 and 38;
International Trademark No. 1109890, figurative mark, registered on January 10, 2012, in classes 9 and 38.
The Complainant further owns numerous domain names comprising its trademark WHATSAPP, under various generic Top-Level Domains (“gTLD”) and country code Top-Level Domains (“ccTLD”), which are linked to its corporate websites in connection with its products and services, including <whatsapp.com> (registered on September 4, 2008), <whatsapp.net> (registered on February 20, 2009), <whatsapp.org> (registered on February 1, 2010), <whatsapp.info> (registered on February 31, 2010), <whatsapp.biz> (registered on February 1, 2010), <whatsapp.me> (registered on February 1, 2010), <whatsapp.es> (registered on February 1, 2010), <whatsapp.co.in> (registered on February 1, 2010), and <whatsapp.rs> (registered on February 6, 2016). The Complainant’s main website linked to <whatsapp.com> also allows Internet users to access its messaging platform online.
The disputed domain name was registered on January 3, 2017 and it is currently inactive resolving to a page with an Internet browser error message. According to evidence filed by the Complainant, the disputed domain name was previously linked to a website, in Arabic and English languages, offering a modified version of the Complainant’s app for download, which prominently displayed the WHATSAPP mark and a modified version of the Complainant’s telephone logo. This website included a link to a third party’s website, where the Respondent’s software was available for download, along with other modified versions of the Complainant’s app. The Respondent’s website further included commercial banners and pay-per-click (“PPC”) advertising, as well as a disclaimer, in English language, at the bottom, in small letters written over the black background of the site, indicating “This website is no way affiliated with, authorized, maintained, sponsored or endorsed by WhatsApp or any of its affiliated or subsidiaries. This is an independent and unofficial APP. Use at your own risk”.
Key contentions of the Complaint may be summarized as follows:
The Complainant’s app is one of the fastest growing and most popular mobile apps, with over 2 billion monthly active users worldwide (as of February 2020). Accordingly, the trademark WHATSAPP has acquired considerable reputation and goodwill worldwide, being ranked amongst Apple iTunes’ 25 most popular free mobile applications and Tech Radar’s Best Android Apps. In Annie’s Top Apps Worldwide Rankings November 2020, the Complainant’s app was ranked as the second most downloaded application worldwide. The Complainant has also made substantial investments to develop a strong presence online by being active on various social media forums, for instance its official page has over 30 million likes on Facebook, and 2.72 million followers on Twitter.
The disputed domain name incorporates the Complainant’s trademark WHATSAPP in its entirety adding the term “cyber”, which does not prevent a finding of confusing similarity, being the mark WHATSAPP clearly recognizable within the disputed domain name. Further, the addition of the gTLD “.com” may be disregarded for the purposes of assessment under the first element, as it is considered a standard registration requirement.
The Respondent has no rights or legitimate interests in the disputed domain name being unable to invoke any of the circumstances set out in paragraph 4(c) of the Policy:
(i) The Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services, and the registration and use of the disputed domain name do not conform to the Complainant’s Brand Guidelines and Business Terms of Service. Although the Respondent is not a licensee and has no authorization to use the mark WHATSAPP, the Respondent is using this mark in an attempt to create a misleading impression of association with the Complainant and its reputed trademark for a commercial gain. Prior decisions under the Policy have held that providing unauthorized versions of the Complainant’s app does not amount to a bona fide offering of goods or services.
(ii) The disputed domain name was registered using a privacy service, but according to the identity revealed by the Registrar, the Respondent’s name bears no resemblance to the disputed domain name.
(iii) The Respondent is not making a legitimate noncommercial or fair use of the disputed domain name, as it is actively promoting the downloading and use of an app that may be used to send unsolicited electronic communications (spam), for phishing, or for other unauthorized activities, and it is seeking to generate revenue from commercial banners and PPC links.
The disputed domain name was registered and is being used in bad faith. Due to the well-known character of the trademark WHATSAPP, the Respondent must have been aware of the existence of this mark at the time of the disputed domain name registration. The Respondent’s website content and the disclaimer included in this site corroborate actual knowledge of the Complainant’s trademark. The Respondent intended to create an unauthorized impression of affiliation with or endorsement by the Compliant, in an attempt to benefit from the Complainant’s trademark reputation and to attract Internet users for commercial gain. Further, the Respondent’s website included commercial banners as well as PPC links, and offered software that expressly violates the Complainant’s Terms of Service and may be used to send unsolicited electronic communications (spam), for phishing, or for other unauthorized activities. The discreet inclusion of a disclaimer at the bottom of this site does not serve to legitimize the Respondent’s activities and cannot be sufficient to remove the confusion. Additional evidence of bad faith are the use of a privacy service to conceal the Respondent’s identity and the lack of response to the Complainant’s cease and desist letter (dated December 2, 2020).
The Complainant has cited previous decisions under the Policy as well as various sections of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, (“WIPO Overview 3.0”) that it considers supportive of its position.
The Complainant requests the transfer of the disputed domain name.
The Respondent did not reply to the Complainant’s contentions.
The Complainant has made the relevant assertions as required by the Policy and the dispute is properly within the scope of the Policy. The Panel has authority to decide the dispute examining the three elements in paragraph 4(a) of the Policy, taking into consideration all of the relevant evidence, annexed material and allegations, and performing some limited independent research under the general powers of the Panel articulated, inter alia, in paragraph 10 of the Rules.
The Complainant indisputably has rights in the registered trademark WHATSAPP, both by virtue of its numerous trademark registrations and as a result of its global goodwill and reputation. The disputed domain name incorporates the WHATSAPP mark in its entirety adding the term “cyber” as a prefix, which does not prevent a finding of confusing similarity. The Complainant’s trademark is recognizable in the disputed domain name and the gTLD “.com” is a technical requirement, generally disregarded for the purpose of the analysis of the confusing similarity. See sections 1.7, 1.8, and 1.11, WIPO Overview 3.0.
Accordingly, this Panel finds that the disputed domain name is confusingly similar to the Complainant’s trademark, and the first element of the Policy under paragraph 4(a)(i) has been satisfied.
Although the Complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, prior UDRP panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is primarily if not exclusively within the knowledge of the Respondent. Thus, the consensus view is that paragraph 4(c) of the Policy shifts to the Respondent the burden of coming forward with evidence of rights or legitimate interests in the disputed domain name, once the Complainant has made a prima facie showing indicating the absence of such rights or legitimate interests.
The Complainant’s above-noted assertions and evidence in this case effectively shift the burden to the Respondent of producing evidence of rights or legitimate interests in the disputed domain name, providing the circumstances of paragraph 4(c) of the Policy, without limitation, that may establish rights or legitimate interests in the disputed domain name in order to rebut the Complainant’s prima facie case. However, the Respondent has not replied to the Complainant’s contentions, not providing any explanation or evidence of rights or legitimate interests in the disputed domain name.
A core factor in assessing fair use of the disputed domain name is that it does not falsely suggest affiliation with the Complainant’s trademark. See section 2.5, WIPO Overview 3.0. The disputed domain name incorporates the Complainant’s trademark in its entirety adding a term (“cyber”) related to technology that may point to the Complainant, its reputed trademark, and its app. Therefore, the Panel considers that there is a risk of implied affiliation.
The evidence provided by the Complainant further shows that the disputed domain name was temporally linked to a website, which content included various references to the Complainant’s trademark WHATSAPP as well as a modified version of its telephone logo within a green circle. The Panel considers that this use of the disputed domain name contributes to a risk of affiliation and confusion, which is not avoided by the disclaimer, in English language, included at the bottom of this site in small letters. This disclaimer may easily go unnoticed and/or not be understood by the Arabic Internet users to whom the site is addressed.
The Panel further notes that the website that was linked to the disputed domain name offered a modified version of the Complainant’s app that may be used to send unsolicited electronic communications (spam), for phishing, or for other unauthorized activities, and included commercial banners as well as PPC links. This content does not amount to a bona fide offering of goods or services. See sections 2.9 and 2.13, WIPO Overview 3.0.
Furthermore, the Panel considers remarkable the Respondent’s attitude choosing not to reply to the Complainant’s cease and desist letter or to the Complaint, and apparently taking down the website linked to the disputed domain name.
All these circumstances lead the Panel to conclude that the Complainant has established a prima facie case, not rebutted by the Respondent, and all cumulative facts and circumstances of this case point to consider that the Respondent lacks any rights or legitimate interests in the disputed domain name.
Therefore, the second element of the Policy under paragraph 4(a)(ii) has been established.
The Policy, paragraph 4(a)(iii), requires that the Complainant establishes that the disputed domain name has been registered and is being used in bad faith.
The applicable standard of proof in UDRP cases is the “balance of probabilities” or “preponderance of the evidence”, being the Panel prepared to draw certain inferences in light of the particular facts and circumstances of the case. See section 4.2, WIPO Overview 3.0.
The Panel notes that the trademark WHATSAPP has extensive presence over the Internet and is worldwide used and well known, being inconceivable that the Respondent did not have knowledge of this trademark at the time of registration of the disputed domain name. Furthermore, all cumulative circumstances of this case point to bad faith registration and use of the disputed domain name:
(i) the disputed domain name incorporates the WHATSAPP mark in its entirety, adding a term that may refer to the Complainant’s business and its app, which enhances the intrinsic likelihood of confusion and affiliation;
(ii) the Complainant’s trademark is well known worldwide;
(iii) the Complainant operates globally including the country (Lebanon) where the Respondent is located according to the WhoIs record of the disputed domain name;
(iv) the Respondent used a privacy registration service;
(v) the website that was linked to the disputed domain name targeted the Complainant and its app, including the WHATSAPP mark and a modified version of the Complainant’s logo in green color to purportedly promote the downloading of a modified version of the Complainant’s app;
(vi) the website that was linked to the disputed domain name included commercial banners and PPC links;
(vii) the Respondent did not reply to the cease and desist letter or to the Complaint, not offering any explanation of any rights or legitimate interests in the disputed domain name and not coming forward to deny the Complainant’s assertions of bad faith; and
(viii) the Respondent’s reaction to the cease and desist letter and to the Complaint has apparently been taking down the website that was linked to the disputed domain name.
It is further to be noted that the current non-use of the disputed domain name does not prevent a finding of bad faith under the doctrine of passive holding. See section 3.3, WIPO Overview 3.0.
In light of the above, taking into consideration all cumulative facts and circumstances of this case, on the balance of probabilities, the Panel considers that the disputed domain name was registered and is being used in bad faith, with the intention of obtaining a free ride on the established reputation of the Complainant. The disputed domain name was registered and used targeting the Complainant and its reputed trademark, intentionally creating a likelihood of confusion as to the affiliation or association to misleadingly attract Internet users to the Respondent’s website to promote its modified version of the Complainant’s app and to obtain any sort of benefic derived from commercial banners and promotional PPC links. It is further probable that the Respondent acted in bad faith with the intention to obtain sensitive private information from its websites’ visitors or through emails connected to the disputed domain name.
Accordingly, the Panel concludes that the Complainant has met its burden of establishing that the disputed domain name has been registered and is being used 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 name <cyberwhatsapp.com> be transferred to the Complainant.
Reyes Campello Estebaranz
Sole Panelist
Date: March 17, 2021
1 See WhatsApp Inc. v. Francisco Costa, WIPO Case No. D2015-0909; WhatsApp, Inc. v. Abdallah Almqbali, WIPO Case No. D2016-1287; 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; WhatsApp Inc. v. Contact Privacy Inc. Customer 0153186272 / MOHD WILDAN AMIR MUSA, WIPO Case No. D2019-0456; and WhatsApp Inc. v. Luis Raffael Sanchez De La Cruz, WIPO Case No. D2019-2485.