The Complainant is WhatsApp Inc. of Menlo Park, California, United States of America ("United States"), represented by Hogan Lovells (Paris) LLP, France.
The Respondent is Chandru Printers, Praveen Chandru of Chennai, India, represented by Rabbit IP LLC, United States.
The disputed domain name <whatsappupdate.com> is registered with Name.com, Inc. (Name.com LLC) (the "Registrar").
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on July 10, 2018. On July 10, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 19, 2018, 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 received informal email communications from the Respondent on July 14, 2018 and July 17, 2018. The Parties exchanged email communications between July 24, 2018 and July 31, 2018.
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 July 20, 2018. In accordance with the Rules, paragraph 5, the due date for Response was August 9, 2018. On August 8, 2018, the Respondent requested an extension of the Response due date. On the same day, the Center granted the Respondent an additional four calendar days to respond, and confirmed the new Response due date was August 13, 2018. The Response was filed with the Center on August 13, 2018.
The Center appointed Warwick A. Rothnie as the sole panelist in this matter on August 21, 2018. 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 very widely used messaging service of the same name. The Complainant and its business were founded in 2009. It was acquired by Facebook in 2014.
According to the Complaint, by the end of 2009, the "Whatsapp" service had over one million active monthly users. It had 200 active users per month by April 2013; 500 million users by April 2014; 900 million users in September 2015 and one billion users in February 2016. In India, there were 20 million monthly active users in August 2013; 60 million monthly active users in August 2014 and 160 million active monthly users in November 2016. Also according to the Complaint, the Complainant's website at <whatsapp.com> is the 23rd most visited website in India.
Amongst other things, the Complainant owns:
(a) Indian Registered Trademark No 2149059 for WHATSAPP in respect of goods and services in International Classes 9 and 38. This trademark has been registered from May 24, 2011;
(b) European Union Trademark No. 009986514 for WHATSAPP in respect of goods and services in International Classes 9, 38 and 42. This trademark was registered on May 25, 2011;
(c) United States Registered Trademark No. 3939463 for WHATSAPP in respect of services in International Class 42. This trademark was filed on April 1, 2009 and registered in the Principal Register on April 5, 2011; and
(d) International Registration No. 1085539 for WHATSAPP in respect of goods and services in International Classes 9 and 38 based on the United States registration and designating some 28 countries.
The disputed domain name was first registered on September 18, 2012. According to the Response, the Respondent became the registrant in 2016.
Prior to November 2016, the disputed domain name does not appear to have resolved to an active website. From November 2016, the disputed domain name has resolved to an active website promoting "Whatsapp Update – The Best Whatsapp Clone". Shortly before the Complaint was filed the software and service being promoted from the website was "Zoechat", another instant messenging service. The website and screen shots featured a similar green get up and layout to that used by the Complainant for its service's website.
Paragraph 4(a) of the Policy provides that in order to divest the Respondent of the disputed domain name, the Complainant must demonstrate each of the following:
(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 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.
Paragraph 15(a) of the Rules directs the Panel to decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.
The first element that the Complainant must establish is that the disputed domain name is identical with, or confusingly similar to, the Complainant's trademark rights.
There are two parts to this inquiry: the Complainant must demonstrate that it has rights in a trademark and, if so, the disputed domain name must be shown to be identical or confusingly similar to the trademark.
The Complainant has proven ownership of the registered trademarks referred to in section 4 above. In addition, the Complainant submits, and the Panel accepts, that the Complainant's trademark is very well known around the world and has a well-established reputation, including in India.
Disregarding the generic Top-Level Domain ("gTLD") ".com", the disputed domain name includes the whole of the Complainant's trademark and adds the descriptive term "update".
The Respondent contends that this addition means that the disputed domain name is not confusingly similar to the Complainant's trademark. This argument misunderstands the nature of the test under the first requirement of the Policy. The second stage of this inquiry simply requires a visual and aural comparison of the disputed domain name to the proven trademarks. Questions such as the scope of the trademark rights, the geographical location of the respective parties and other considerations that may be relevant to an assessment of infringement under trademark law are not relevant at this stage. Such matters, if relevant, may fall for consideration under the other elements of the Policy.
As the disputed domain name includes the whole of the Complainant's trademark, recognisably as such, the Panel finds that the disputed domain name is confusingly similar to the Complainant's trademark. Accordingly, the requirement under the first limb of the Policy is satisfied.
The second requirement the Complainant must prove is that the Respondent has no rights or legitimate interests in the disputed domain name.
Paragraph 4(c) of the Policy provides that the following circumstances can be situations in which the Respondent has rights or legitimate interests in a disputed domain name:
(i) before any notice to [the Respondent] 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] (as an individual, business, or other organization) has been commonly known by the [disputed] domain name, even if [the Respondent] has acquired no trademark 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 trademark or service mark at issue.
These are illustrative only and are not an exhaustive listing of the situations in which a respondent can show rights or legitimate interests in a domain name.
The onus of proving this requirement, like each element, falls on the Complainant. UDRP panels have recognized the difficulties inherent in proving a negative, however, especially in circumstances where much of the relevant information is in, or likely to be in, the possession of the respondent. Accordingly, it is usually sufficient for a complainant to raise a prima facie case against the respondent under this head and an evidential burden will shift to the respondent to rebut that prima facie case. See e.g., WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0"), section 2.1.
The Complainant states that it has not authorised the Respondent to use the disputed domain name. Nor is the Respondent affiliated with it. The disputed domain name is not derived from the Respondent's name. It is also plainly being used in connection with commercial activity. It is being used to promote the sale of an instant messaging service in competition with the Complainant's offering.
In the circumstances, these matters are sufficient to raise a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name.
The Respondent contends that it is using the disputed domain name in connection with a good faith offering of goods and services. It says the disputed domain name is different to the Complainant's trademark and not confusingly similar to that trademark, but completely distinctive. It also says its business is restricted to India and it does not deal internationally. It offers more advanced services than those offered by the Complainant.
First, the Panel does not accept that the addition of the descriptive word "update" to the Complainant's trademark makes the disputed domain name "completely" distinctive from the Complainant's trademark. On the contrary, many users viewing the disputed domain name would naturally assume some association or connection with the Complainant.
Secondly, the Respondent claims it has acquired distinctiveness in the term "whatsaupp update" in its own right on the basis of its use and promotion since 2016. The Respondent does not provide any figures by way of number of "hits" on its website, number of customers, its revenues or advertising expenditures over this period. In any event, it cannot be suggested on the evidence in this proceeding that the Complainant has abandoned its rights or acquiesced in the Respondent's conduct to such an extent that it can no longer assert them against the Respondent. Most trademark systems do not allow an assiduous infringer to claim rights from their wrongdoing against the trademark owner.
Thirdly, even if one were to accept that the Respondent's business is limited to India and it does not trade internationally, the Respondent's argument does not take into account that the Complainant has a trademark registered in India covering the very goods and services the Respondent is offering. As the Complainant points out, panels have repeatedly held that use of a confusingly similar domain name to market goods or services in competition with the complainant's trademark does not qualify as a good faith offering under the Policy.
Accordingly, the Panel finds that the Complainant has established that the Respondent does not have rights or legitimate interests in the disputed domain name under the Policy.
Under the third requirement of the Policy, the Complainant must establish that the disputed domain name has been both registered and used in bad faith by the Respondent. These are conjunctive requirements; both must be satisfied for a successful complaint: See e.g., Burn World-Wide, Ltd. d/b/a BGT Partners v. Banta Global Turnkey Ltd., WIPO Case No. D2010-0470.
Generally speaking, a finding that a domain name has been registered and is being used in bad faith requires an inference to be drawn that the respondent in question has registered and is using the disputed domain name to take advantage of its significance as a trademark owned by (usually) the complainant.
The Respondent claims it was not aware of the Complainant's rights when it registered the disputed domain name and it did not register the disputed domain name with an intention to profit or otherwise abuse the Complainant's trademark rights.
The Panel would find those claims very hard to accept given the very extensive use and promotion of the Complainant's services and its trademark including in India in particular. The Respondent's claims would seem most unlikely, to say the least.
Matters do not stand there, however. First, the website to which the disputed domain name resolves since the Respondent became the registrant refers to its product and services as "a Whatsapp clone". Moreover, as the Complainant points out, the website and screenshots of the Respondent's app resemble the get-up and layout including colour scheme of the get-up used by the Complainant for its service. Plainly, the Respondent was and is well aware of the Complainant's product. Thirdly, the Respondent does not suggest that it undertook any trademark searches or made any other investigations to ensure it would not be impinging on other parties' rights.
Having regard to these matters, the Panel agrees with the panelist in Groupon Inc. v. Kunal Pandya, NCrypted Technologies, WIPO Case No. D2014-1606 who ruled that the domain name <grouponclones.com> took unfair advantage of the goodwill associated with the complainant's trademark. Here, as in that case, the registration of the disputed domain name and its subsequent use took unfair advantage of the Complainant's trademark to offer services in competition with the Complainant.
The Panel finds therefore that the Complainant has also established that the Respondent registered and has been using the disputed domain name in bad faith. Thus, the Complainant has established the third requirement under 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 <whatsappupdate.com> be transferred to the Complainant.
Warwick A. Rothnie
Sole Panelist
Date: September 4, 2018