The Complainant is WhatsApp LLC, United States of America (“United States”), represented by Tucker Ellis, LLP, United States.
The Respondent is 吴海涛 (Wu Hai Tao), China.
The disputed domain name <whatsapppayments.com> is registered with DNSPod, Inc. (the “Registrar”).
The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on April 15, 2021. On April 16, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 20, 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 April 20, 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 in English on April 22, 2021.
On April 20, 2021, the Center transmitted another email communication to the Parties in English and Chinese regarding the language of the proceeding. On April 22, 2021, the Complainant confirmed its request that English be the language of the proceeding. On April 22, 2021, the Respondent requested by email that Chinese be the language of the proceeding.
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 in English and Chinese of the Complaint, and the proceedings commenced on April 27, 2021. In accordance with the Rules, paragraph 5, the due date for Response was May 17, 2021. No further email communication was received from the Respondent. Accordingly, the Center notified the Parties that it would proceed with panel appointment on May 26, 2021.
The Center appointed Sok Ling MOI as the sole panelist in this matter on June 2, 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 company incorporated in the United States and is one of the world’s leading providers of messaging services for mobile devices. It operates the WhatsApp messaging and voice over IP service and mobile application, with over 2 billion users in over 180 countries. The WhatsApp messaging service is available in 60 different languages. In 2018, the Complainant began offering its WhatsApp Pay payment service, an in-chat feature that allows users in certain countries to make payment to other users in their contact lists.
The Complainant owns trade mark registrations for WHATSAPP in various jurisdictions, including the following:
|
Jurisdiction |
Mark |
Registration No. |
Class(es) |
Registration Date |
|
United States |
|
3,939,463 |
42 |
April 5, 2011 |
|
United States |
|
4,083,272 |
9, 38 |
January 10, 2012 |
|
European Union |
|
014814347 |
9, 35, 36, 38, 42, 45 |
April 26, 2016 |
|
European Union |
|
014988844 |
3, 14, 16, 18, 24, 25, 28, 32, 33, 39, 40, 41, 43 |
September 5, 2016 |
|
International designating inter alia China |
|
1085539 |
9, 38 |
May 24, 2011 |
The Complainant also owns the domain names <whatsapp.com>, <whatsapp.net>, <whatsapp.org> and <whatsapp.us>, among others.
The disputed domain name was registered on August 5, 2019. According to the evidence submitted by the Complainant, the disputed domain name resolves to a parking webpage featuring sponsored links to third party websites some of which offer commercial online payment services competitive to the Complainant’s business, as well as a page which attempts to install a browser plugin software onto the user’s computer.
The Complainant contends that the disputed domain name is confusingly similar to its trade mark WHATSAPP, the Respondent has no rights or legitimate interests in respect of the disputed domain name, and that the disputed domain name has been registered and is being used in bad faith. The Complainant requests for the transfer of the disputed domain name.
Except for its email communication of April 22, 2021 regarding the language of the proceeding, the Respondent did not formally reply to the Complainant’s contentions.
Pursuant to paragraph 11(a) of the Rules, unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding.
Paragraphs 10(b) and (c) of the Rules require the Panel to ensure that the proceeding takes place with due expedition and that the Parties are treated equitably and given a fair opportunity to present their respective cases.
The language of the Registration Agreement for the disputed domain name is Chinese. From the evidence on record, no agreement appears to have been entered into between the Complainant and the Respondent regarding the language issue. The Complainant filed its Complaint in English and has requested that English be the language of the proceeding. The Respondent submitted a request that Chinese be the language of the proceeding.
The Panel finds persuasive evidence in the present proceeding to suggest that the Respondent has sufficient knowledge of English. In particular, the Panel notes that:
(a) the disputed domain name is registered in Latin characters, rather than Chinese script;
(b) the disputed domain name is comprised entirely of the Complainant’s trade mark WHATSAPP plus the additional term “payments”; and
(c) according to the evidence submitted by the Complainant, the website to which the disputed domain name resolves contains contents entirely in English.
Additionally, the Panel notes that:
(a) the Center has notified the Respondent in both Chinese and English of the proceeding;
(b) the Respondent has been given the opportunity to present its case in this proceeding; and
(b) the Center has informed the Respondent that it would accept a Response in either English or Chinese.
Considering the above circumstances, the Panel finds that the choice of English as the language of the present proceeding is fair to both Parties and is not prejudicial to either one of the Parties in its ability to articulate the arguments for this case.
The Panel has taken into consideration the fact that to require the Complaint to be translated into Chinese would, in the circumstances of this case, cause an unnecessary cost burden to the Complainant and would unnecessarily delay the proceeding.
Having considered all the matters above, the Panel determines under paragraph 11(a) of the Rules that it shall accept the Complaint and all supporting materials as filed in English, that English shall be the language of the proceeding, and that the decision will be rendered in English.
Paragraph 4(a) of the Policy directs that a complainant must prove each of the following three elements to obtain an order for the disputed domain name to be cancelled or transferred:
(i) the disputed domain name is identical or confusingly similar to a trade mark or service mark in which the complainant has rights;
(ii) the respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
On the basis of the arguments and evidence introduced by the Complainant, the Panel concludes as follows:
The Panel accepts that the Complainant has rights in WHATSAPP by virtue of its use and registration of the same as a trade mark.
The disputed domain name incorporates the Complainant’s trade mark WHATSAPP in its entirety. The addition of the descriptive term “payments” does not avoid the confusing similarity between the disputed domain name and the Complainant’s trade mark. The addition of the generic Top-Level Domain (“gTLD”) “.com” does not in this case impact the analysis of whether the disputed domain name is identical or confusingly similar to the Complainant’s trade mark.
Consequently, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s trade mark.
Accordingly, the Complainant has satisfied the requirements of the first element under paragraph 4(a) of the Policy.
Under paragraph 4(a)(ii) of the Policy, a complainant bears the burden of proof to establish that the respondent lacks rights or legitimate interests in the disputed domain name. However, once the complainant makes a prima facie showing under paragraph 4(a)(ii) of the Policy, the burden of production shifts to the respondent to come forward with evidence in support of its rights or legitimate interests in the disputed domain name. The respondent may establish its rights in the disputed domain name by demonstrating any of the following, without limitation, under paragraph 4(c) of the Policy:
(i) before any notice to it of the dispute, the respondent’s use of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; or
(ii) the respondent has been commonly known by the disputed domain name, even if it has acquired no trade mark or service mark rights; or
(iii) the respondent is making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.
See Taylor Wimpey PLC, Taylor Wimpey Holdings Limited v. honghao Internet foshan co, ltd, WIPO Case No. D2013-0974.
The Complainant has confirmed that the Respondent is not in any way affiliated with the Complainant or otherwise authorized or licensed to use the WHATSAPP trade mark or to seek registration of any domain name incorporating the trade mark. The Respondent appears to be an individual by the name of “吴海涛 (Wu Hai Tao)”. There is no evidence suggesting that the Respondent is commonly known by the disputed domain name or has acquired any trade mark rights in the term “Whatsapp”.
According to the evidence submitted by the Complainant, the disputed domain name resolves to a parking webpage featuring sponsored links to third party websites some of which offer commercial online payment services competitive to the Complainant’s business, as well as a page which attempts to install a browser plugin software onto the user’s computer. Presumably, the Respondent receives pay-per-click (PPC) fees from the linked websites. UDRP panels have found that the use of a domain name to host a parked page comprising PPC links does not represent a bona fide offering where such links compete with or capitalize on the reputation and goodwill of the complainant’s mark or otherwise mislead Internet users. See section 2.9 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).
The Panel is satisfied that the Complainant has made out a prima facie case showing that the Respondent lacks rights or legitimate interests in the disputed domain name. The burden of production thus shifts to the Respondent to come forward with evidence of its rights or legitimate interests in the disputed domain name. Since the Respondent’s email communication of April 22, 2021 is related to the language of the proceeding only, the prima facie case has not been rebutted.
Consequently, the Panel finds that the Respondent lacks rights or legitimate interests in the disputed domain name.
Accordingly, the Complainant has satisfied the requirements of the second element under paragraph 4(a) of the Policy.
Paragraph 4(b) of the Policy sets out four circumstances which, without limitation, shall be evidence of the registration and use of the disputed domain name in bad faith, namely:
(i) circumstances indicating that the respondent has registered or acquired the disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trade mark or service mark or to a competitor of the complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the disputed domain name; or
(ii) the respondent has registered the disputed domain name in order to prevent the owner of the trade mark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or
(iii) the respondent has registered the disputed domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the disputed domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to the respondent’s website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on the respondent’s website or location.
The Panel accepts that the Complainant’s WHATSAPP trade mark is distinctive and well known internationally. As such, a presumption arises that the Respondent was aware of the Complainant and its trade mark when it registered the disputed domain name. UDRP panels have consistently found that the mere registration of a domain name that incorporates a complainant’s well-known trade mark plus a descriptive term by an unaffiliated entity can by itself create a presumption of bad faith. See section 3.1.4 of the WIPO Overview 3.0. Furthermore, the Respondent had registered the disputed domain name not long after the Complainant’s launch of its payment services.
According to the evidence submitted by the Complainant, the disputed domain name resolves to a parking webpage featuring sponsored links to third party websites some of which offer commercial online payment services competitive to the Complainant’s business, as well as a page which attempts to install a browser plugin software onto the user’s computer. The consensus view of previous UDRP panels is that a domain name registrant is normally deemed responsible for content appearing on a website at its domain name, even if such registrant may not be exercising direct control over such content - for example, in the case of advertising links appearing on an “automatically” generated basis. The Panel notes the presumption that the Respondent or a third party stands to profit or make a “commercial gain” from advertising revenue by such an arrangement trading on third-party trade marks. In the Panel’s opinion, such links clearly seek to capitalize on the trade mark value of the Complainant’s WHATSAPP trade mark resulting in misleading diversion.
The Panel determines that the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s mark as to source, sponsorship, affiliation, or endorsement of the Respondent’s website. As such, the Panel is satisfied that the Respondent has registered and is using the disputed domain name for mala fide purposes and commercial gain, and the Panel finds that the circumstances referred to in paragraph 4(b)(iv) of the Policy are applicable to the present case.
The Respondent has not filed a formal response to deny the Complainant’s allegations of bad faith. In view of the Panel’s above finding that the Respondent lacks rights or legitimate interests in the disputed domain name, and taking into account all the circumstances, the Panel concludes that the Respondent has registered and used the disputed domain name in bad faith.
Further, the Panel notes that the Respondent has also been the respondent in previous UDRP proceedings, for example, Instagram, LLC v. Wu Hai Tao (吴海涛), WIPO Case No. D2020-2040.
Accordingly, the Complainant has satisfied the requirements of 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 disputed domain name <whatsapppayments.com> be transferred to the Complainant.
Sok Ling MOI
Sole Panelist
Date: July 11, 2021