WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

WhatsApp Inc. v. Migue Guerrero, Marketing y Webs Guerrero L

Case No. D2018-1631

1. The Parties

The Complainant is WhatsApp Inc. of Menlo Park, California, United States of America, represented by Hogan Lovells (Paris) LLP, France.

The Respondent is Migue Guerrero, Marketing y Webs Guerrero L of San Fernando, Cadiz, Spain.

2. The Domain Name and Registrar

The disputed domain names <comohackearwhatsapp.net>, <espiarconversacionesdewhatsapp.com>, <espiar-whatsapp.com>, <solowhatsapp.net>, <spy-whatsapp.com>, <wasap-web.com> and <whatsapps-free.com> are registered with Name.com, Inc. (Name.com LLC) (the "Registrar").

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on July 18, 2018. On July 19, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. 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 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 24, 2018. In accordance with the Rules, paragraph 5, the due date for Response was August 13, 2018. The Respondent submitted on July 24, 2018 his online Response to the Complaint consenting to the transfer or cancellation of the disputed domain names.

On July 25, 2018 the Center sent a message to the Parties inquiring whether they wished to explore settlement options to what the Complainant replied on August 2nd, 2018 stating that the procedure should run its course and requesting a full decision be rendered.

The Center appointed Wilson Pinheiro Jabur as the sole panelist in this matter on August 13, 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.

4. Factual Background

The Complainant is in the business of mobile messaging applications. Founded in 2009 it was acquired by Facebook, Inc. in 2014. It is the owner, amongst several others, of the following trademark registrations and applications:

- European Union Trademark Registration No. 009986514 for the word mark WHATSAPP, registered on May 25, 2011, in international classes 9, 38 and 42;

- European Union Trademark Registration No. 01095940 for the mark WHATSAPP and device, registered on October 6, 2011, in international class 38;

- European Union Trademark Registration No. 010496602 for the figurative trademark, registered on May 18, 2012, in international classes 9, 38 and 42;

- United States Trademark Registration No. 3939463 for the word mark WHATSAPP, registered on April 5, 2011, in international class 42; and

- International Trademark Registration No. 1085539 for the word mark WHATSAPP registered on May 24, 2011, in international classes 9 and 38.

The disputed domain names in dispute are the following and are presently used in connection with:

According to the evidence provided by the Complainant, the disputed domain names resolved to websites with information about the Complainant's mobile application "WhatsApp", and on the majority of the websites information on how to hack or spy a "WhatsApp" account.

5. Parties' Contentions

A. Complainant

The Complainant claims to be one of the fastest growing and most popular mobile applications in the world, having over 1.5 billion monthly active users worldwide (as of February 2018), having acquired considerable reputation and goodwill on a global scale.

Furthermore, the Complainant points out that previous UDRP decisions have already recognized that the WHATSAPP trademark is well known and has "acquired worldwide renown".

According to the Complainant, the disputed domain names incorporate the WHATSAPP trademark (or the variation "wasap") bearing, in some of the cases, the addition of generic terms in English or Spanish such as "espiar" (to "spy" in Spanish), "solo", "spy", "web", "free", "como hackear" ("how to hack" in Spanish) and "espiar conversaciones de" ("to spy on conversations"), which are under the Complainant's view confusingly similar to its trademark.

Furthermore, at the time of the submission of the Complaint, several of the disputed domain names were resolving to webpages featuring the Complainant's figurative trademark (Annexes 9-2, 9-3 and 9-4 to the Complaint).

Regarding the absence of the Respondent's rights or legitimate interests, the Complainant argues that:

(i) the Respondent is not a licensee of the Complainant and has not been authorized or allowed by the Complainant to make any use of the WHATSAPP trademark;

(ii) the Respondent is not using the disputed domain names in connection with a bona fide offering of goods or services given the webpages that resolved to some of the disputed domain names prominently displayed pay-per-click links, and others resolved, at the time the Complaint was made to different websites promoting various purported "WhatsApp spy software" which appears to have a deceptive nature as it purportedly allows its users to hack others' mobile telephones and remotely gain access to their messages, photos and videos simply based on their telephone numbers and without access to the mobile telephone in question, which is technically not possible;

(iii) the Respondent is not commonly known by the disputed domain names; and

(iv) given the overwhelming renown and popularity of the Complainant's WHATSAPP trademark worldwide, it is simply not possible to conceive of any plausible actual or contemplated active use of the disputed domain names by the Respondent that would not be illegitimate.

As to the registration and use of the disputed domain names the Complainant states that:

(i) the Complainant's trademark is highly distinctive and well known throughout the world, being inconceivable for the Respondent to argue that he did not have knowledge of the Complainant's WHATSAPP trademark when he registered the first disputed domain name in 2014.

(ii) the Respondent's subsequent use of the disputed domain names to resolve to websites promoting purported spy software targeting WhatsApp leaves no doubt as to the Respondent's awareness of the Complainant at the time of registration;

(iii) the Respondent has engaged in a pattern of conduct within the meaning of paragraph 4(b)(ii) of the Policy by registering a good number of other domain names infringing upon third parties' trademark rights (such as <hackearface-book.com>, <hackhackfacebook.com>, <fcbkhack.com>, <hackearinstagram.com> and <spotifypremiumgratis.net>);

(iv) given the inherently distinctive character of the WHATSAPP trademark, the Respondent could simply not have chosen the disputed domain names for any reason other than to take unfair advantage of the Complainant's goodwill and reputation;

(v) the Respondent has used some of the disputed domain names in connection with pay-per-clicklinksand has been using them for commercial gain, by creating a likelihood of confusion with the Complainant's trademark as to the source, sponsorship, affiliation, or endorsement of the websites, in accordance with paragraph 4(b)(iv) of the Policy;

(vi) the Respondent's use of a privacy service for the registration of two of the disputed domain names constitutes an additional indication of bad faith as such privacy registration has been deliberately used to facilitate the Respondent's promotion of purported spy software targeting the Complainant's users; and

(vii) given the overwhelming renown and popularity of the Complainant's WHATSAPP trademark worldwide, and the nature of the disputed domain names, which are confusingly similar therewith, there simply cannot be any actual or contemplated good faith use of the disputed domain names as this would invariably result in misleading diversion and taking unfair advantage of the Complainant's rights (as in Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003).

B. Respondent

The Respondent replied to the Complaint stating that the Complainant should be the legitimate owner of the disputed domain names and consenting to the transfer or cancellation thereof.

6. Discussion and Findings

A. Identical or Confusingly Similar

The Complainant has established rights over the WHATSAPP trademark.

Six of the disputed domain names incorporate the trademark in its entirety and the seventh disputed domain name (i.e. <wasap-web.com>) is phonetically and visually similar to the Complainant's WHATSAPP trademark.

The addition of descriptive terms relating to hacking, spying or the Internet, do not prevent a finding of confusing similarity with the WHATSAPP trademark.

For the reasons above, the Panel finds that the disputed domain names are confusingly similar to the Complainant's trademarks.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy provides a non-exclusive list of circumstances that may indicate the Respondent's rights or legitimate interests in the disputed domain names. These circumstances are:

(i) before any notice of the dispute, the Respondent's use of, or demonstrable preparations to use, the disputed domain names or a name corresponding to the disputed domain names in connection with a bona fide offering of goods or services; or

(ii) the Respondent (as individuals, businesses, or other organizations) has been commonly known by the disputed domain names, in spite of not having acquired trademark or service mark rights; or

(iii) the Respondent is making a legitimate noncommercial or fair use of the disputed domain names, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

According to the evidence submitted by the Complainant, the Respondent has indeed not used the disputed domain names in connection with a bona fide offering of goods or services given the webpages that resolved to some of the disputed domain names prominently displayed pay-per-click links, and others resolved, at the time the Complaint was made to different websites promoting various purported "WhatsApp" spy software, some of them depicting the Complainant's trademarks.

Furthermore, the Complainant has indeed stated that the Respondent has not been authorized or allowed by the Complainant to make any use of the WHATSAPP trademark, nor has he been commonly known by the disputed domain names.

Such facts are corroborated by the Respondent's express recognition that the Complainant should be the legitimate owner of the disputed domain names and further indicate that he indeed lacks a rights or legitimate interests in the disputed domain names.

Under these circumstances and absent evidence to the contrary, the Panel finds that the Respondent does not have rights or legitimate interests with respect to the disputed domain names.

C. Registered and Used in Bad Faith

The Policy indicates in paragraph 4(b)(iv) that bad faith registration and use can be found in respect of a disputed domain name, where a 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 a complainant's mark as to the source, sponsorship, affiliation, or endorsement of the website or location or of a product or service on the website or location.

In this case, both the registration and use of the disputed domain names in bad faith can be found pursuant to Policy paragraph 4(b)(iv) in view of the reproduction of the Complainant's trademarks in some of the webpages that resolved from the disputed domain names promoting various purported "WhatsApp spy software" which appears to have a deceptive nature as they purportedly allow their users to hack others' mobile telephones and remotely gain access to their messages, photos and videos simply based on their telephone numbers and without access to the mobile telephone in question, what seems technically not possible.

Other factors corroborate a finding of bad faith:

a. the fact that the Respondent has engaged in what appears to be a pattern of registering well-known trademarks as domain names;

b. the Respondent reproduced the Complainant's well-known logo in some of the webpages to which Internet users were redirected;

c. by having registered a number of domain names, the Respondent engaged in a pattern of conduct preventing the Complainant from reflecting its marks in the disputed domain names.

Taking into account all of the above, the fact that some of the disputed domain names currently do not resolve to active websites does not prevent a finding of bad faith.

For the reasons above, the Panel finds that the Respondent has registered and used the disputed domain names in bad faith.

7. Decision

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 names, <comohackearwhatsapp.net>, <espiarconversacionesdewhatsapp.com>, <espiar-whatsapp.com>, <solowhatsapp.net>, <spy-whatsapp.com>, <wasap-web.com> and <whatsapps-free.com> be transferred to the Complainant.

Wilson Pinheiro Jabur
Sole Panelist
Date: September 5, 2018