The Complainant is WhatsApp LLC, United States of America, represented by Hogan Lovells (Paris) LLP, France.
The Respondent is Domain Admin, Whois Privacy Corp., Bahamas.
The disputed domain name <update-whatsapp.net> is registered with Internet Domain Service BS Corp (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 12, 2021. On April 13, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 14, 2021, 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 April 16, 2021. In accordance with the Rules, paragraph 5, the due date for Response was May 6, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 11, 2021.
The Center appointed Harini Narayanswamy 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 the provider of the WHATSAPP mobile messaging services and products. The Complainant has trademark rights in the WHATSAPP trademarks. Its trademark registrations include but are not limited to United States trademark No. 3939463 registered on April 5, 2011, and European Union trademark No. 009986514, registered on October 25, 2011.
The disputed domain name was registered on February 18, 2016. The Respondent has redirected the disputed domain name to the Complainant’s official website at “www.whatsapp.com”.
The Complainant states it was founded in 2009 and was acquired by Facebook Inc. in 2014. The Complainant claims its popular mobile messaging application under the WHATSAPP mark has over 2 billion users worldwide as of March 2020. The Complainant asserts that it has gained considerable reputation and goodwill worldwide and is consistently ranked among the 25 most popular free mobile applications and is the fourth most downloaded application as per “App Annie’s Top Apps Worldwide Rankings” in March 2021. The Complainant owns numerous domain names under generic Top-Level Domains and also country code Top-Level Domains. It has a significant online presence, including on social media forums, the Complainant states its official Facebook page has over 32 million likes and it has 3.2 million followers on Twitter.
The Complainant states that it had sent a cease and desist letter to the Respondent on January 25, 2021, to which there was no reply. The Complainant has filed the present Complaint, based on the grounds that the disputed domain name is identical or confusingly similar to its mark, the Respondent lacks rights or legitimate interest in the disputed domain name, and the disputed domain name was registered and is being used in bad faith. The Complainant requests for transfer of the disputed domain name.
The Respondent did not reply to the Complainant’s contentions.
The Registration Agreement for the disputed domain name is between the Registrar and the Respondent. Under the Agreement, the Respondent has agreed to be bound by the Policy. A third party (Complainant) can make a complaint under the Policy, claiming that its rights have been violated due to the registration and the use of the disputed domain name.
Under paragraph 4(a) of the Policy, the Complainant has to establish three elements to obtain the remedy of transfer of the disputed domain name, these are:
(i) The disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) The Respondent lacks rights or legitimate interests in the disputed domain name; and
(iii) The disputed domain name was registered and is being used in bad faith by the Respondent.
The first element requires the Complainant to establish the disputed domain name is identical or confusingly similar to a trademark or a service mark in which it has rights.
The Complainant has provided evidence of its registered trademarks, based on which the Panel finds the Complainant has established its rights in the mark. The Complainant has argued that the combination of the WHATSAPP trademark together with the term “update” does not prevent finding confusing similarity, because the mark is clearly recognizable in the disputed domain name and also that a similar domain name <whatsappupdate.com>, was found to be confusingly similar in a prior case Whatsapp Inc. v. Chandru Printers, Praveen Chandru, WIPO Case No. D2018-1543, where the WHATSAPP trademark precedes the word “update” without the hyphen. Although the placement of the word “update” is reversed in the present disputed domain name, the Complainant has argued that the construct of the disputed domain names is similar.
Panels have found that “where 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 WIPO Overview of WIPO Panel Views, Third Edition (“WIPO Overview 3.0”), section 1.8. In the present case, the Panel finds that the WHATSAPP mark is the dominant part of and therefore recognizable within the disputed domain name. The word “update” with a hyphen prefixed to the mark, does not prevent a finding of confusing similarity with the Complainant’s WHATSAPP mark1 .
The Panel finds without any hesitation, that the Complainant has established the first element under paragraph 4(a) of the Policy, that the disputed domain name is confusingly similar to a mark in which the Complainant has proven rights.
Under the second element of paragraph 4(a) of the Policy, the Complainant is required to make a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. It is sufficient for the Complainant to make a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name, following which the burden of production to rebut such claim falls to the Respondent. See section 2.1,WIPO Overview 3.0.
The Complainant has made the following submissions that the Respondent lacks rights or legitimate interests in the disputed domain name: (i) the Respondent does not use the disputed domain name in connection with a bona fide offering of goods or services; (ii) the Respondent is not a licensee of the Complainant or authorized to use the mark, and any unauthorized use of its mark would be in contravention of the Complainant’s brand guidelines; (iii) the Respondent is not commonly known by the disputed domain name or known to have any business reflecting the disputed domain name; and, (iv) the disputed domain name is redirected to the Complainant’s website, which does not constitute a bona fide offering of goods and services and cannot be stated to be used for any legitimate noncommercial purpose or fair use, and has referred to the case Allen & Overy LLP v. Can Kulah, WIPO Case No. D2019-1147 (<allen-overy.com>).
The Respondent has not taken part in these proceedings or provided any reasons for use of the WHATSAPP mark in the disputed domain name. The Panel finds based on the facts and circumstances here that the use of the Complainant’s mark in the disputed domain name by the Respondent, is likely to mislead Internet users. The disputed domain name consists of the Complainant’s mark in its entirety, coupled together with the term “update”, a dictionary term often descriptive of the updates mobile carriers provide. Accordingly, the construction of the disputed domain name is such to carry a risk of implied affiliation, which in the absence of a legitimate explanation cannot constitute fair use. See section 2.5.1, WIPO Overview 3.0.
In the absence of any credible reason for registration of the disputed domain name bearing the Complainant’s mark and the fact that the disputed domain name is redirected to the Complainant’s website, the reasonable inference is that the Respondent has registered the disputed domain name for purposes of deriving mileage from the Complainant’s trademark. Such use of the disputed domain name does not support a finding of the Respondent’s rights or legitimate interests in the disputed domain name.
The Panel accordingly finds that the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name which has not been rebutted. The second requirement under paragraph 4(a) of the Policy has been fulfilled by the Complainant.
The third element requires the Complainant to establish the disputed domain name has been registered and is being used in bad faith by the Respondent.
The Complainant has asserted that bad faith registration of the disputed domain name is evident due to WHATSAPP mark being well known, and it is unlikely that the Respondent was unaware of the Complainant’s rights in the mark. Further, the disputed domain name was registered to target Complainant’s mark. Regarding bad faith use, the Complainant has argued that in prior cases where a respondent had redirected the domain name to a complainant’s website, bad faith use has been found under similar circumstances. The Complainant has also submitted that there are additional circumstances in the present case to infer bad faith, such as the use of privacy services by the Respondent, and the failure of the Respondent to reply to the Complainant’s cease and desist letter.
The Panel finds there is sufficient material to find the Respondent ought to have been aware of the Complainant’s rights in the WHATSAPP mark. First, the Complainant clearly has prior rights in the mark. Second, it has an established worldwide reputation which is evident from the sheer number of users worldwide and the download figures, which demonstrates the reputation associated with the WHATSAPP trademark. Third, the inherent strength of the mark, which is a coined term. Fourth, the fact that the disputed domain name is redirected to the Complainant’s website is itself an indication that the Respondent knew of the Complainant and of its rights in its mark. These facts and circumstances taken together support a finding that that the Respondent has intentionally registered the disputed domain name that targets the WHATTSAPP mark. The registration of the disputed domain name is found to be made in bad faith.
The word “update” is commonly used with mobile applications, and the disputed domain name would mislead the Complainant’s existing customers who encounter the Respondent’s domain name. Furthermore, as the Respondent has redirected the disputed domain name to the Complainant’s website, users are being diverted to the Complainant’s website, but through the disputed domain name which is not in any way connected to the Complainant. Panels have found that a respondent redirecting a domain name to the complainant’s website can constitute bad faith, insofar as the respondent retains control over the redirection, thus creating a real or implied ongoing threat to the complainant. See section 3.1.4, WIPO Overview 3.0. The Panel concludes based on the facts and circumstances here, that the Respondent has targeted the Complainant’s trademark to capitalize on the fame and reputation associated with the mark.
The Complainant’s assertions remain uncontroverted, and it is apparent from the circumstances described, that the Respondent uses the disputed domain name to create confusion in the minds of Internet users. Such use of the disputed domain name amounts to misleading people who are interested in the Complainant’s, products, services, and business, which is recognized as bad faith use under the Policy. The overall circumstances therefore point to bad faith use of the disputed domain name by the Respondent.
The Panel accordingly finds that the Complainant has fulfilled the third element under paragraph 4 (a) of the Policy, 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 <update-whatsapp.net> be transferred to the Complainant.
Harini Narayanswamy
Sole Panelist
Date: June 16, 2021
1 Given the nature of the WHATSAPP mark, which is an inherently unique and strong mark, coupled with the Complainant’s extensive use of the mark and the global reputation associated with the mark, there are several UDRP cases that have held that the WHATSAPP mark with any other word term, or even a phonetic variation of the mark does not deter a finding confusing similarity. See for instance WhatsApp Inc. v. Fransico Costa, WIPO Case No. D2015-1708 (<webwazzup.com>) for use of a phonetic similar variant of the mark in a domain name, and WhatsApp Inc. v. Burt Beuker, WIPO Case No. D2020-2293 (<whattsappstore.com>) where the WHATSAPP mark with the word “store” was found confusingly similar to the mark.