The Complainant is WhatsApp Inc. and Instagram, LLC of Menlo Park, California, United States of America (“United States”), represented by Hogan Lovells (Paris) LLP, France.
The Respondent is Naim Wekking of Ambala, Haryana, India / Jack Worli of Mahim (West), Maharashtra, India.
The disputed domain names <whatappvideoonline.com> and <ɪnstagram.com> [xn--nstagram-9ud.com] are registered with Name.com, Inc. (Name.com LLC) and GoDaddy.com, LLC (the “Registrars”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 18, 2019. On January 21, 2019, the Center transmitted by email to the Registrars a request for registrar verification in connection with the disputed domain names. On January 21 and 22, 2019, the Registrars transmitted by email to the Center their verification response confirming that the Respondents are 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 January 23, 2019. In accordance with the Rules, paragraph 5, the due date for Response was February 12, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 13, 2019.
The Center appointed Ada L. Redondo Aguilera as the sole panelist in this matter on February 20, 2019. 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 Complainants in this administrative proceeding are two companies: WhatsApp Inc., an American corporation with its principal place of business in California, United States, and Instagram, LLC, which also has its principal business place in California, United States.
Both of the Complainants are companies that are wholly-owned subsidiaries of Facebook, Inc. and argue that as one of the reasons why they have jointly filed the Complaint and submitted in these proceedings a request for consolidation of their dispute.
The Complainants also requested for consolidation of the Respondents and claim that both identified individuals whom appear as holders of the disputed domain names, act as the same person or with the same interests. In order to obtain that consolidation, the Complainants presented WhoIs information demonstrating that the Respondent for the domain name <whatappvideoonline.com.com> is Jack Worli, an individual based in India (the First Respondent), and the Respondent for the disputed domain name <ɪnstagram.com> [xn--nstagram9ud.com] is Naim Wekking, also an individual based in India (the Second Respondent).
According to the Complainant, there is a connection between the First and Second Respondents. The Complaint argues that they are either one and the same person or acting jointly, and for reasons of fairness and equity, the Complainant submits that it is justified in bringing a single Complaint against the two Respondents and that they should be treated as one and the same.
The dispute concerns the following two disputed domain names:
<whatappvideoonline.com.com> registered on November 16, 2016; and
<ɪnstagram.com> [xn--nstagram-9ud.com] registered on July 21, 2018.
At the time of the filing of the Complaint, the disputed domain names were being used for phishing schemes and to spread malware. Currently, the disputed domain name <whatappvideoonline.com.com> resolves to a pay-per-click (“PPC”) website and the disputed domain name <ɪnstagram.com> [xn--nstagram-9ud.com], does not resolve to an active website.
The registrar with which the disputed domain name <whatappvideoonline.com.com> is registered is GoDaddy.com, LLC, and the registrar with which the disputed domain name <ɪnstagram.com> [xn--nstagram-9ud.com] is registered is Name.com, Inc.
The Complainants have provided evidence that they are the owners of their trademarks, including the trademarks WHATSAPP and INSTAGRAM (e.g. United States reg. no. 3939463 for WHATSAPP, registered on April 5, 2011; and, United States reg. no. 4146057 for INSTAGRAM, registered on May 22, 2012).
The Respondents were notified by the Center of this UDRP proceeding and did not answer.
The Complainants have asserted that the three elements required under paragraph 4(a) of the Policy for a transfer of the two disputed domain names are present in this case.
The Respondents did not reply to the Complainants’ contentions.
The Rules, paragraph 3(c), contemplate that a complaint may relate to more than one domain name, provided that the domain names are arguably registered by the same domain name holder, while paragraph 10(e) also gives panels the authority to consolidate multiple domain name disputes. In assessing whether a complaint may be filed by multiple complainants, as in this proceeding, panels consider whether (i) the complainants have a specific common grievance against the respondent, or the respondent has engaged in a common conduct that has affected the complainants in a similar fashion, and (ii) it would be equitable and procedurally efficient to permit the consolidation.
In this case, both of the Complainants are companies that are wholly-owned subsidiaries of Facebook, Inc. The Panel finds that the Complainants have a common grievance against the Respondents and that it is equitable and efficient to permit the consolidation in this case. Accordingly, hereafter the Complainants will be collectively referred to as “Complainant”. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 4.11.1 and section 4.11.2
Where a complaint is filed against multiple respondents, panels look at whether (i) the domain names or corresponding websites are subject to common control, and (ii) the consolidation would be fair and equitable to all parties. Procedural efficiency would also underpin panel consideration of such a consolidation scenario.
Panels have considered a range of factors, typically present in some combination, as useful to determining whether such consolidation is appropriate, such as similarities in or relevant aspects of (i) the registrants’ identity(ies) including pseudonyms; (ii) the registrants’ contact information including email address(es), postal address(es), or phone number(s), including any pattern of irregularities; (iii) relevant IP addresses, name servers, or webhost(s); (iv) the content or layout of websites corresponding to the disputed domain names; (v) the nature of the marks at issue (e.g., where a registrant targets a specific sector); (vi) any naming patterns in the disputed domain names (e.g., <mark-country> or <mark-goods>); (vii) the relevant language/scripts of the disputed domain names particularly where they are the same as the mark(s) at issue; (viii) any changes by the respondent relating to any of the above items following communications regarding the disputed domain name(s); (ix) any evidence of respondent affiliation with respect to the ability to control the disputed domain name(s); (x) any (prior) pattern of similar respondent behavior; or, (xi) other arguments made by the complainant and/or disclosures by the respondent(s).
In this case, the Complainants presented evidence that proves the connection among the individuals that appear to be the Respondents in the WhoIs information. Also, the fact that the contact information, such as email, was the same, is relevant in this case to determinate that the Respondents are the same and that, even if they were not the same person, one or two or more of the Respondents act as one and have control of both of the disputed domain names.
In this case it is fair to make a consolidation of the Respondents for the following reasons:
a. There is evidence that the two persons who appear as administrators and responsible of the disputed domain names, although they have different names, share the same email. It may be two persons or one, the Respondent or Respondents did not respond to clarify this point.
b. The Complainants believe (based on the research conducted and evidence gathered) that it is one person who has control of the two disputed domain names.
By virtue of the foregoing, the Complainants requested the consolidation of the Respondents and based on the procedural economy and as the consolidation is fair and equitable, the Panel believes that it is proper to implement the consolidation. Accordingly, hereafter the Respondents will be collectively referred to as “Respondent”.
In these proceedings, the Complainant provided evidence of its numerous trademark registrations in the terms WHATSAPP and INSTAGRAM around the world, including in India where the Respondent is based, in connection with instant messaging services and online photo-sharing software. Such trademarks registrations include but are not limited to the following:
− Indian Trademark No. 2149059, WHATSAPP, registered on May 24, 2011, in classes 9 and 38;
− United States Trademark No. 3939463, WHATSAPP, registered on April 5, 2011, first use in commerce February 24, 2009, class 42;
− International Trademark No. 1085539, WHATSAPP, registered on May 24, 2011, in classes 9 and 38;
− European Union Trademark No. 010496602, registered on May 18, 2012, in classes 9, 38 and 42;
− Indian Trademark No. 3042394, INSTAGRAM, registered on August 27, 2015, in class 9;
− International Trademark No. 1129314, for INSTAGRAM, registered on March 15, 2012;
− United States Trademark No. 4146057, for INSTAGRAM, registered on May 22, 2012, first use in commerce on October 6, 2010.
The Panel finds that both disputed domain names are confusingly similar to the Complainant’s WHATSAPP and INSTAGRAM trademarks. With regards to the disputed domain name <whatappvideoonline.com>, the Panel finds that it consists of a common misspelling of the Complainant’s WHATSAPP trademark, with the omission of the letter “s”. This has also been recognized before by other Panel, who have already said that typo-squatting of a trademark will be found to be confusingly similar to that specific trademark, where the misspelled trademark remains the dominant or principal component of the domain name. For example, Facebook, Inc. and WhatsApp, Inc. v. Domain Manager, NA, WIPO Case No. D2016-0394, “[a]lthough the letter ‘a’ between the letters ‘h’ and ‘t’ have been omitted and it is the same with the letter ‘s’ after the letter ‘t’ as well as the second ‘p’ at the end of that word, the trademark WHATSAPP can still be easily recognized since the misspelled trademark remains the dominant or principal component of the domain name”. Moreover, the Panel finds that since the Complainant’s WHATSAPP trademark constitutes the dominant part of the disputed domain name <whatappvideoonline.com>, the addition of the non-distinctive terms, such as “video” and “online”, should not prevent a finding of confusing similarity under the first element. For example, in Wikimedia Foundation, Inc. v. Charan Naidu, micro seas, WIPO Case No. D2018-0707, the opinion of the Panel was the following: “The addition of the descriptive word ‘video’ does not eliminate the confusing similarity between the disputed domain name and the Complainant’s WIKIPEDIA mark”.
The Panel also finds that the disputed domain name <ɪnstagram.com> [xn--nstagram-9ud.com] contains part of the Complainant’s INSTAGRAM trademark. As other Panels have decided before under the Policy, internationalized domain names and their Punycode translations are equivalent, for example in Württembergische Versicherung AG v. Emir Ulu, WIPO Case No. D2006-0278, the opinion was: "finding that the <xn--wrttembergische-versicherung16c.com> should be considered as equivalent to the <württembergischeversicherung.com> domain name”.
It has been generally accepted by many other UDRP Panels that the generic Top-Level Domain (“gTLD”), such as “.com”, is irrelevant when considering whether a domain name is identical or confusingly similar to a trademark, as it is a functional element, this Panel opinion is the same.
For all the foregoing reasons, the Panel finds that the first element of paragraph 4(a) of the Policy has therefore been satisfied by the Complainant.
Under paragraph 4(c) of the Policy,
“How to Demonstrate Your Rights to and Legitimate Interests in the Domain Name in Responding to a Complaint. When you receive a complaint, you should refer to Paragraph 5 of the Rules of Procedure in determining how your response should be prepared. Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of Paragraph 4(a)(ii):
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue”.
Paragraph 4(a)(ii) of the Policy requires the complainant to establish that the respondent has no rights or legitimate interests in the domain name. The consensus view among UDRP panels is that where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. See section 2.1 of the WIPO Overview 3.0. In this case the Respondent did not answer, therefore did not rebut the Complainants’ prima facie case regarding the lack of rights or legitimate interests.
The Complainant declared that it is not affiliated or associated with the Respondent in any way. The Complainant argued that it has not authorized or given any license to the Respondent in order to register, use or include their own trademarks in a domain name. Also, the Complainant established that the Respondents are not commonly known by the disputed domain name or the trademarks: WHATSAPP nor INSTAGRAM.
The Complainant has argued that the Respondent is not a licensee of the Complainant, nor has it been otherwise allowed by the Complainant to make any use of the Complainant's trademarks. Previous panels deciding under the Policy have already held that the lack of such prior authorization would be sufficient to establish a prima facie case regarding the respondent's lack of rights or legitimate interests in the disputed domain names.
According to the Complainant and the evidence presented that there is a strong indication that the disputed domain name <ɪnstagram.com> [xn--nstagram9ud.com] was being used for phishing. The disputed domain name used to point to a website requiring users to provide personal information.
The Panel finds that the use to obtain personal information with doubtful or malicious intent, cannot possibly be considered a bona fide offering of goods or services. Other Panels have expressed their opinion of this subject before, for example: Apple Computer, Inc. v. PrivacyProtect.org / Private Registrations Aktien Gesellschaft, WIPO Case No. D2012-0879, where the panel said: “the Complainant provided evidence in an annex to the Complaint that by typing the disputed domain name <applestor.com>, the Internet traffic has been redirected to web pages that harvest valuable personal information about users including names and email addresses. The infringing website connected with <applestor.com> is an example of a phishing website and cannot constitute a bona fide use of the disputed domain name pursuant to paragraph 4(c)(i) of the Policy)”.
The Panel recognizes the evidence presented by the Complainant that proves that Respondent was not using, or had made demonstrable preparations to use, the disputed domain name <whatappvideoonline.com> in connection with a bona fide offering of goods or services, because this disputed domain name is currently redirecting to a website containing PPC links. Such use of the disputed domain name cannot possibly be considered a bona fide offering of goods or services, as the Respondent was and is unduly taking advantage of the goodwill and renown attached to the Complainant's WHATSAPP trademark to attract traffic to its website for its own financial gain. See, for example, Facebook, Inc. v. Seung Hee Lee, Sang Hoon Lee, Master, Inc., Jung Hyun Shin, WIPO Case No. D2013-2030, “[s]ome of the disputed domain names are currently used for advertisements or as links to offer products or services mostly unrelated to the Complainant i.e. <facebook-pages.com> and <facebooklogs.com>) which is not bona fide”. Also see, for example, Wikimedia Foundation, Inc. v. Walter Gerbert, WIPO Case No. D2016-1346, “[u]se of a well-known mark to deceive Internet users and maliciously infect their computer system is not a bona fide use of the mark”.
For all the above-mentioned reasons, the Panel finds that the Complainant has made a prima facie case that has not been rebutted by the Respondent and therefore the second element of the Policy is fulfilled.
The disputed domain names were registered and are being used in bad faith (Policy, paragraph 4(a)(iii), 4(b); Rules, paragraph 3(b)(ix)(3)).
The Panel finds that the Complainant’s WHATSAPP and INSTAGRAM trademarks are highly distinctive and well-known throughout the world. They have been continuously and extensively used since 2009 (for WHATSAPP) and 2010 (for INSTAGRAM), and have rapidly acquired considerable goodwill and renown worldwide, including in India where the Respondent is based. Other Panels have found that the WHATSAPP trademark has acquired “worldwide renown... amongst mobile applications” and an “impressive number of users... since the launch of the WhatsApp services in 2009” (see WhatsApp Inc. v. Francisco Costa, WIPO Case No. D2015-0909); and, in the case of the INSTAGRAM trademark, the Panel in Instagram, LLC v. Sedat Das, Arda Arda, Domain Admin, whoisprotection biz, Domain Admin Domain Admin, whoisprotection biz WIPO Case No. D2016-2382, had the following opinion: “[a]t the date of registration of the disputed domain names, the Respondent was obviously well aware of the Complainant’s well-known INSTAGRAM and INSTA trademarks”.
In this case and for this Panel, the trademarks are well known, and the Respondent must have known or was aware of the Complainant's INSTAGRAM and WHATSAPP trademarks at the time of registration of the disputed domain names in November 2016 and July 2018.
In the case of the disputed domain name <whatappvideoonline.com>, the website to which the disputed domain name resolves attracts Internet users to pay-per-click (“PPC”) links to websites unrelated to the Complaint. The Panel finds that such use of the disputed domain name, from which the Respondent is obtaining financial gain by virtue of some type of revenue generating scheme, is in bad faith given that the Respondent is deliberately seeking to profit from the Complainant's renowned trademark for its own financial gain. For example: Ustream.TV, Inc. v. Vertical Axis, Inc., WIPO Case No. D2008-0598, “The Respondent’s use of the disputed domain name for a PPC parking page constitutes bad faith use because the Respondent is attracting Internet users to its website by causing confusion as to whether its website is, or is associated with, the Complainant or its services”.
This Panel finds that passive holding of the disputed domain name <ɪnstagram.com> [xn--nstagram-9ud.com] does not prevent a finding of bad faith, given the strength and renown of the Complainant’s trademark. Such was the opinion of the Panel in Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003, which established the following: “finding that the passive holding of a domain name can constitute bad faith in certain circumstances, particularly where the trademark in question has a strong reputation and is widely known”.
This Panel finds that the evidence provided by the Complainant is enough to prove that the use of the disputed domain name <ɪnstagram.com> [xn--nstagram-9ud.com], that used to point to a website displaying terms in a similar font as the Complainant’s logo and inviting users to enter their personal information in order to obtain phishing scam information for commercial gain and also trying to obtain confidential account information from Instagram users as result of intentionally created confusion, constitutes use in bad faith. As other Panels have recognized before, for example Instagram, LLC v. Ellie Walker, WIPO Case No. D2018-0669, where the panel considered that a domain name which “resolved to a website with the same ‘look and feel’ as the Complainant’s official Help Centre, containing an ‘Approved Account Participation Form’ where Instagram users were asked to disclose their confidential account information”, as result of intentionally created confusion, constituted use in bad faith.
For all the foregoing reasons the Panel finds that the disputed domain names were registered and are being used in bad faith, in accordance with paragraph 4(a)(iii) 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 names <whatappvideoonline.com> and <ɪnstagram.com> [xn--nstagram-9ud.com] be transferred to the Complainant.
Ada L. Redondo Aguilera
Sole Panelist
Date: March 6, 2019