WIPO Arbitration and Mediatin Center

ADMINISTRATIVE PANEL DECISION

WhatsApp Inc. v. Domain Registrar, Proxy Name Services LLC

Case No. D2019-2102

1. The Parties

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

The Respondent is Domain Registrar, Proxy Name Services LLC, United States, represented by McFarland Ritter PLLC, United States.

2. The Domain Names and Registrar

The disputed domain names <grubwhatsappfreefire.com>, <japanesegroup-whatsapp.com>, <japanse‑whatsapp.biz>, <japanse-whatsapp.com>, <joinwhatsapp.biz>, and <mywhatsapps.net> are registered with eNom, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 29, 2019. On August 29, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On August 29, 2019, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on August 30, 2019, 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 on August 30, 2019.

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 of the Complaint, and the proceedings commenced on September 3, 2019. In accordance with the Rules, paragraph 5, the due date for Response was September 23, 2019. The Response was filed with the Center on September 23, 2019. The Complainant submitted an unsolicited Supplemental Filing to the Center on September 26, 2019.
The Center appointed William R. Towns as the sole panelist in this matter on September 26, 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.

4. Factual Background

The Complainant, founded in 2009 and acquired by Facebook in October 2014, is a provider of one of the world’s most popular mobile messaging applications (“apps”). The Complainant’s “WhatsApp” messaging application enables users around the world to exchange messages via smartphones, and also provides Internet users access to a messaging platform on the Complainant’s website at “www.whatsapp.com”.

Since its introduction, the WhatsApp app has had over 1.5 billion monthly active users worldwide as of the fourth quarter of 2018. WhatsApp consistently has been ranked amongst Apple iTunes’ top 25 most popular free mobile applications, is recognized in Tech Radar’s Best Android Apps, and has been named the third most downloaded application in the world in App Annie’s 2019 Top Apps Worldwide Rankings.

The Complainant has secured numerous trademark registrations for its WHATSAPP mark, including the following:

- United States Trademark Registration No. 3939463, registered on April 5, 2011;
- European Union Trade Mark No. 009986514, registered on October 25, 2011; and
- International Registration No. 1085539, registered on May 24, 2011.

The Complainant also is the holder of numerous domain names reflecting the Complainant’s WHATSAPP mark, registered under various generic Top-Level Domains (“gTLDs”) and county code Top-Level Domains (“ccTLDs”).

The named Respondent is a “privacy” or “proxy” registration service. The disputed domain names were registered by the Respondent between June 15 and 18, 2019. The disputed domain names presently do not resolve to any active websites. However, the disputed domain names <japanesegroup-whatsapp.com>, <japanse-whatsapp.biz>, <japanse-whatsapp.com>, <joinwhatsapp.biz>, and <mywhatsapps.net> have been used with websites that impersonate the Complainant and invite Internet visitors to the websites to login with their email address and password to join in what appear to be links to WhatsApp chat groups.

5. Parties’ Contentions

A. Complainant

The Complainant submits that the disputed domain names are confusingly similar to the Complainant’s WHATSAPP mark. The Complainant notes that its WHATSAPP mark is clearly recognizable in each of the disputed domain names, and asserts that neither the addition of geographical and descriptive terms or the pluralization of the Complainant’s mark precludes a finding of confusingly similarity under the first element of the Policy. The Complainant further remarks that gTLDs are viewed as a standard registration requirement and may be disregarded when assessing confusing similarity under the first element.

The Complainant asserts that the Respondent has no rights or legitimate interests in the disputed domain names. The Complaint maintains that the Respondent is not using the disputed domain names in connection with a bona fide offering of goods or services within the meaning of paragraph 4(c)(i) of the Policy. The Complainant explains that the Respondent has used the disputed domain names with websites designed to create the impression of being official webpages of the Complainant, each displaying a link to join a WhatsApp group. According to the Complainant, Internet users clicking on the links are directed to login pages imitating genuine Facebook and WhatsApp login pages, and by logging in are unsuspectingly disclosing their email address and password to the Respondent.

The Complainant maintains that the Respondent has not been licensed or otherwise authorized to use the Complainant’s WHATSAPP mark, and is not commonly known by the disputed domain names. The Complainant contends that the disputed domain names have been used in furtherance of a fraudulent phishing scheme, impersonating the Complainant in order to mislead Internet users into disclosing their email address and password, from which the Respondent may gain access to their online accounts. The Complainant argues that the use of a domain name for such fraudulent activity can never confer rights or legitimate interests in a domain name, and further observes that as such the Respondent cannot claim to be making a legitimate noncommercial or fair use of the disputed domain names.

The Complainant asserts that the disputed domain names have been registered and used in bad faith. The Complainant maintains that its WHATSAPP mark – a coined term – is inherently distinctive and has become well known around the world, and observes that UDRP panels repeatedly have recognized the strength and renown of the Complainant’s mark (citing WhatsApp, Inc. v. Domain Manager, SHOUT marketing SL, and Gonzalo Gomez Rufino, River Plate Argentina, and Gonzalo Gomez Rufino, SHOUT Marketing SL, WIPO Case No. D2018-1581). The Complainant submits that the Respondent cannot credibly argue to have been unaware of the Complainant’s rights in the WHATSAPP mark when registering the disputed domain names, but rather clearly had the Complainant’s mark in mind.

The Complainant contends that the Respondent, by registering six domain names targeting the Complainant’s WHATSAPP mark, has engaged in a bad-faith pattern of abusive domain name registration within the contemplation of paragraph 4(b)(ii) of the Policy. The Complainant asserts that the Respondent’s bad faith is made manifest by the Respondent’s use of the disputed domain names (with the exception of <grubwshatsappfreefire.com>) to impersonate the Complainant as part of a broader fraudulent scheme to induce WhatsApp users into compromising their accounts by unsuspectingly disclosing their confidential usernames and passwords. The Complainant further submits that the Respondent has used the disputed domain names in order to attract, for commercial gain, Internet users to the Respondent’s websites by creating a likelihood of confusion with the Complainant’s WHATSAPP mark as to source, sponsorship, affiliation or endorsement of the websites.

To the extent that the disputed domain name <grubwshatsappfreefire.com> has not been actively used, the Complainant observes that UDRP panels consistently found that the non-use of a domain name would does not preclude a finding of bad faith under the doctrine of passive holding. Citing Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003, the Complainant asserts that in the attendant circumstances no actual or contemplated good-faith use of the disputed domain name can be made.

B. Respondent

The Response identifies the Respondent as Proxy Name Services LLC.

The Respondent submits that the disputed domain names were not registered to prevent the Complainant from reflecting its mark in a corresponding domain name, and denies that the Respondent has engaged in a pattern of such conduct. The Respondent also denies that the disputed domain names were registered in an intentional attempt to attract, for commercial gain, Internet users to the Respondent’s websites or other online locations by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s websites or locations or of a product or service on the Respondent’s websites or locations.

The Respondent insists that it merely provides proxy name services to its clients and has no control or oversight as to the client’s use of their registered domain names. According to the Respondent, any behavior or actions alleged in the Complaint are based on the Respondent’s clients’ conduct, and not the Respondent. The Respondent then states as follows: “The Respondent consents to the remedy requested by the Complainant and agrees to transfer the disputed domain names to the Complainant.”

6. Preliminary Issues

A. Complainant’s Supplemental Filing

The Complainant has submitted an unsolicited Supplemental Filing. No provision in the Policy, the Rules or the Supplemental Rules authorizes supplemental filings by either a complainant or a respondent without leave from the panel. Paragraph 12 of the Rules provides that a panel may request, in its sole discretion, further statements or documents from either of the parties. However, the Rules and relevant UDRP panel decisions demonstrate a decided preference for single submissions by the parties absent exceptional circumstances. See, e.g., Metro Sportswear Limited (trading as Canada Goose) v. Vertical Axis Inc. and Canadagoose.com c/o Whois Identity Shield, WIPO Case No. D2008-0754. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), sections 4.6 and 4.7 (and relevant decisions cited therein).

UDRP panels have accepted unsolicited supplemental filings in limited circumstances, when offered to present new, pertinent evidence not reasonably available until after the party’s initial submission (see Top Driver, Inc. v. Benefits Benefits, WIPO Case No. D2002-0972); to bring new and highly relevant legal authority not previously available to the attention of the panel (see Pet Warehouse v. Pets.Com, Inc., WIPO Case No. D2000-0105); or to rebut arguments of the opposing party that could not reasonably have been anticipated (see Randan Corp. v. Rapazzini Winery, WIPO Case No. D2003-0353). Conversely, a mere longing to reargue the same issues already submitted is not a valid reason for additional submissions. See World Wrestling Federation Entertainment, Inc. v. Ringside Collectibles, WIPO Case No. D2000-1306.

The Complainant seeks leave to reply to the Respondent’s assertion that it merely provides proxy name services to its clients, has no control or oversight as to the clients’ use of their registered domain names, and that the behavior and actions alleged in the Complaint are based solely on the Respondent’s clients’ conduct. The Complainant submits that these are new and pertinent facts not reasonably discoverable by the Complainant at the time the Complaint was submitted to the Center. Having considered the relevant factors, the Panel has determined to accept the Complainant’s Supplemental Filing.

The Complainant in its Supplemental Filing asserts that the Respondent has been correctly identified as the registrant of the disputed domain names and thus is properly named as the Respondent in this proceeding. The Complainant refers to paragraphs 1 and 4(b) of the Rules, the latter of which enables a privacy or proxy service to request disclosure of its customer’s underlying data (i.e., WhoIs data) but only in limited and specified periods of time. The Complainant observes that the concerned Registrar has not disclosed any underlying beneficial registrant(s) of the disputed domain names, and has in fact confirmed its prior identification of the Respondent as the WhoIs-listed registrant.

The Complainant also addresses paragraph 3.7.7.3 of the ICAAN Registrar Accreditation Agreement (“RAA”) in the context of privacy or proxy service providers, noting general agreement among UDRP panels that a privacy or proxy service provider that is a “Registered Name Holder” (i.e., a WhoIs-listed registrant) may be responsible for the submission of a UDRP response absent a timely disclosure of the underlying registrant information.

Finally, the Complainant requests that the Panel proceed to a decision on the merits notwithstanding the Respondent’s consent to the remedy requested by the Complainant, maintaining that it has already incurred significant time and expense in preparing and filing the Complaint.

B. Respondent Consent to Transfer

The Respondent has consented to the transfer of the disputed domain names in the Response. The Panel notes that cancellation or transfer of the disputed domain names is the sole remedy ultimately available to the Complainant under the Policy. Thus, even when the parties to a UDRP proceeding have not been able to settle their dispute, where the respondent has given its consent on the record to the transfer remedy sought by the complaint, a number of panels have ordered the requested remedy solely on the basis of such consent, giving effect to an understood party agreement as to the disposition of their case. WIPO Overview 3.0, section 4.10 and relevant decisions cited therein.

The Complainant in this instance, however, has requested that the Panel proceed to a substantive decision on the merits. In some cases, and notwithstanding the respondent’s consent to the transfer remedy sought by the complainant, a panel in its discretion may find it appropriate to proceed to a substantive decision on the merits. Scenarios in which panels have found it appropriate to do so include (i) where the panel finds a broader interest in recording a substantive decision on the merits – notably recalling UDRP paragraph 4(b)(ii) discussing a pattern of bad faith conduct, (ii) where while consenting to the requested remedy the respondent has expressly disclaimed any bad faith, (iii) where the complainant has not agreed to accept such consent and has expressed a preference for a recorded decision, (iv) where there is ambiguity as to the scope of the respondent’s consent, or (v) where the panel wishes to be certain that the complainant has shown that it possesses relevant trademark rights. Id.

After careful consideration of the facts and circumstances in the record, the Panel has determined to proceed to a substantive decision on the merits. The Complainant has not agreed to accept the Respondent’s consent to transfer, and the Panel notes that the Respondent, while consenting to the requested remedy, has expressly disclaimed any bad faith. There is also in the Panel’s view a potentially broader interest in recording a substantive decision on the merits: the Respondent, although the WhoIs‑listed registrant of the disputed domain names, insists that its status as a privacy/protection registration service precludes any responsibility for the abusive domain name practices of its clients.

C. Respondent Identity

Paragraph 1 of the Rules defines the respondent as “the holder of a domain name registration against which a complaint is initiated”. In many instances, however, the WhoIs-listed registrant is a “privacy” or “proxy” registration service. Paragraph 4(b) of the Rules provides that updates to the respondent’s data, including a request by a privacy or proxy provider to reveal the underlying customer data, must be made before the two business day period concludes or before the Registrar verifies the information requested and confirms the Lock to the UDRP Provider, whichever occurs first. See WIPO Overview 3.0, section 4.4.

It has become routine for privacy or proxy registration services to request disclosure of underlying customer data from the Registrar upon commencement of a UDRP proceeding. However, the Respondent, did not timely disclose to the Registrar any underlying customer data within the time periods provided in either paragraph 4(b) of the Rules or paragraph 3.7.7.3 of the RAA. In view of the foregoing, and taking into consideration the totality of the facts and circumstances in the record, the Panel finds that the Respondent is the Registered Name Holder and WhoIs-listed registrant of the disputed domain names against which the instant Complaint was initiated, and as such properly named as the WhoIs-listed registrant in the Complaint. See WIPO Overview 3.0, section 4.4.5; RAA paragraph 3.7.7.3.

The Panel further notes in terms of underlying respondent identity that UDRP panels have treated privacy and proxy services as practical equivalents for purposes of the Policy. Accordingly, the fact that such services may be used to prevent a complainant and panel from knowing the identity of the underlying registrant does not prevent panel assessment of the UDRP elements. See WIPO Overview 3.0, section 3.6 and cases cited therein. The Panel further notes, in reference to RAA paragraph 3.7.7.3, that as a WhoIs-listed registrant, the privacy or proxy service may be subject to liability for any use of the disputed domain name when electing not disclose the contact information of the underlying beneficial registrant.¹ See WIPO Overview 3.0, section 4.4.6 and cases cited therein. See also Monster Energy Company v. Registration Private, Domains By Proxy, LLC, WIPO Case No. D2018-2817; Facebook, Inc., Instagram, LLC, WhatsApp Inc. v. Osbil Technology, Osbil Technology Ltd, WIPO Case No. D2018-2906.

On September 21, 2019, 17 days after the commencement of proceedings under the Policy, the Respondent transmitted to the Center an email communication purporting to disclose contact information for the underlying registrants of the disputed domain names as shown below:

<grubwhatsappfreefire.com>
Name: alif18
Address: […], United States
Email: “[...]@gmail.com”

<japanesegroup-whatsapp.com>, <japanse-whatsapp.biz>, <japanse-whatsapp.com>,
<joinwhatsapp.biz>
Name: Delnu
Address: […], United States
Email: “[...]@gmail.com”

<mywhatsapps.net>
Name: Adhie
Address: […], United States
Email: “[…]@gmail.com”

The Center promptly contacted the Registrar to obtain confirmation of the registrant and contact information provided by the Respondent. The Registrar, however, informed the Center that the registrant and contact data previously disclosed by the Registrar on August 29, 2019, was correct. The Panel construes RAA paragraph 3.7.7.3 as requiring the Respondent to obtain complete and accurate contact information from its clients. After reviewing the contact information disclosed by the Respondent’s representative, however, the Panel considers that the contact information provided by the Respondent was neither complete nor accurate. Further, given that the disputed domain names by all indications were used in furtherance of a fraudulent phishing scheme, it is likely that the Respondent’s clients deliberately provided false or fictitious contact information when registering the disputed domain names. In any event, it is clear that the contact information disclosed by the Respondent’s representative on September 21, 2019, even if accurate, was not disclosed within the relevant seven day period proscribed in RAA paragraph 3.7.7.3.

7. Discussion and Findings

A. Scope of the Policy

The Policy is addressed to resolving disputes concerning allegations of abusive domain name registration and use. Milwaukee Electric Tool Corporation v. Bay Verte Machinery, Inc. d/b/a The Power Tool Store, WIPO Case No. D2002-0774. Accordingly, the jurisdiction of this Panel is limited to providing a remedy in cases of “the abusive registration of domain names”, also known as “cybersquatting”, see Weber-Stephen Products Co. v. Armitage Hardware, WIPO Case No. D2000-0187. See Final Report of the First WIPO Internet Domain Name Process (the “Final Report”), April 30, 1999, paragraphs 169-177, available at: “https://www.wipo.int/amc/en/processes/process1/report/finalreport.html”. The term “cybersquatting” is most frequently used to describe the deliberate, bad faith abusive registration of a domain name in violation of rights in trademarks or service marks. Id. at paragraph 170. Paragraph 15(a) of the Rules provides that the panel shall decide a complaint on the basis of statements and documents submitted and in accordance with the Policy, the Rules and any other rules or principles of law that the panel deems applicable.

Paragraph 4(a) of the Policy requires that the complainant prove each of the following three elements to obtain a decision that a domain name should be either cancelled or transferred:

(i) the 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 with respect to the domain name; and
(iii) the domain name has been registered and is being used in bad faith.

Cancellation or transfer of the domain name is the sole remedy provided to the complainant under the Policy, as set forth in paragraph 4(i).

Paragraph 4(b) of the Policy sets forth four situations under which the registration and use of a domain name are deemed to be in bad faith, but does not limit a finding of bad faith to only these situations.

Paragraph 4(c) of the Policy in turn identifies three means through which a respondent may establish rights or legitimate interests in a domain name. Although the complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, UDRP panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is primarily, if not exclusively, within the knowledge of the respondent. Thus, the consensus view is that paragraph 4(c) of the Policy shifts the burden of production to the respondent to come forward with evidence of rights or legitimate interests in the domain name, once the complainant has made a prima facie showing. See, e.g., Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270.

B. Identical or Confusingly Similar

The Panel finds that the disputed domain names are confusingly similar to the Complainant’s WHATSAPP mark, in which the Complainant has established rights through registration and use in commerce. In considering identity and confusing similarity, the first element of the Policy serves essentially as a standing requirement.² The threshold inquiry under the first element of the Policy involves a relatively straightforward comparison between the complainant’s trademark and the disputed domain name.

In this case, the Complainant’s WHATSAPP mark is clearly recognizable in the disputed domain names.³ When the relevant trademark is recognizable in the disputed domain names, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) does not preclude a finding of confusing similarity under paragraph 4(a)(i) of the Policy.⁴ The Panel further considers that the appropriation of the Complainant’s WHATSAPP mark in the Respondent’s multiple disputed domain name registrations is indicative of the targeting of the Complainant’s mark.⁵

gTLDs generally are disregarded in determining identity or confusing similarity under paragraph 4(a)(i) of the Policy, irrespective of any ordinary meaning that might be ascribed to the TLD.⁶

Accordingly, the Panel finds the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.

C. Rights or Legitimate Interests

As noted above, 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 of rights or legitimate interests in a domain name. The Panel is persuaded from the record of this case that a prima facie showing under paragraph 4(a)(ii) of the Policy has been made. It is undisputed that the Respondent has not been licensed or otherwise authorized to use the Complainant’s WHATSAPP mark. The Respondent notwithstanding has registered multiple disputed domain names appropriating the Complainant’s WHATSAPP mark, targeted the Complainant, and used the Complainant’s WHATSAPP mark without the consent of the Complainant in the perpetration of a fraudulent phishing scheme involving the disputed domain names registered.

Pursuant to paragraph 4(c) of the Policy, a respondent may establish rights or legitimate interests in a domain name by demonstrating any of the following:

(i) before any notice to it of the dispute, the respondent’s use of, or demonstrable preparations to use, the 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 domain name, even if it has acquired no trademark or service mark rights; or
(iii) the respondent is 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.

The Panel concludes that the Respondent in all likelihood was aware of the Complainant and the Complainant’s WHATSAPP mark when registering the disputed domain names. Internet users could expect that the disputed domain names would be linked to the Complainant’s website or other websites affiliated with, or having the endorsement or sponsorship of the Complainant. See Levantur, S.A. v. Media Insight, WIPO Case No. D2008-0774. The record reflects that at least five of the disputed domain names have been used in furtherance of a fraudulent phishing scheme targeting the Complainant, while another of the disputed domain names apparently has been passively held since its registration.

Having regard to the foregoing, the Panel finds the Respondent has not used or made demonstrable preparations to use the disputed domain names in connection with a bona fide offering of goods or services. Further, the Respondent is not making a legitimate noncommercial or other fair use of the disputed domain names, has not been commonly known by the disputed domain names, and as noted above has not been authorized to use the Complainant’s WHATSAPP mark. In short, nothing in the record before the Panel supports a claim by the Respondent of rights or legitimate interests in the disputed domain names.

Accordingly, the Panel finds the Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy.

D. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy states that any of the following circumstances, in particular but without limitation, shall be considered evidence of the registration and use of a domain name in bad faith:

(i) circumstances indicating that the respondent registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant (the owner of the trademark or service mark) or to a competitor of that complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the domain name; or

(ii) circumstances indicating that the respondent registered the domain name in order to prevent the owner of the trademark 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) circumstances indicating that the respondent registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) circumstances indicating that the respondent is using the domain name to intentionally attempt to attract, for commercial gain, Internet users to its 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 its website or location.

The examples of bad faith registration and use set forth in paragraph 4(b) of the Policy are not meant to be exhaustive of all circumstances from which such bad faith may be found. See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003. The overriding objective of the Policy is to curb the abusive registration of domain names in circumstances where the registrant seeks to profit from and exploit the trademark of another. Match.com, LP v. Bill Zag and NWLAWS.ORG, WIPO Case No. D2004‑0230.

For the reasons discussed under this and the preceding heading, the Panel considers that the Respondent’s conduct in this case constitutes bad-faith registration and use of the disputed domain names within the meaning of paragraph 4(a)(iii) of the Policy. Based on the record, the Panel finds that the Respondent more likely than not was aware the Complainant and the Complainant’s distinctive and well-known WHATSAPP mark when registering the disputed domain names. The Panel concludes that the disputed domain names were registered in order to exploit or otherwise capitalize on the Complainant’s rights in its WHATSAPP mark, based on the attractiveness of the Complainant’s mark to divert traffic to the Respondent’s websites, in furtherance of a fraudulent phishing scheme.

The Respondent’s apparent passive holding of the disputed domain name <grubwshatsappfreefire.com> does not preclude a finding of bad faith in the attendant circumstances of this case. As set forth in Telstra Corporation Limited v. Nuclear Marshmallows, supra, “the relevant issue is not whether the Respondent is taking a positive action in bad faith in relation to the domain name, but instead whether, in all the circumstances of the case, it can be said that the Respondent is acting in bad faith. […] [I]t is possible, in certain circumstances, for inactivity by the Respondent to amount to the domain name being used in bad faith”. See also Red Bull GmbH v. Kevin Franke, WIPO Case No. D2012-1531.

The Panel considers the following circumstances to be indicative of the Respondent’s bad faith under Telstra Corporation Limited v. Nuclear Marshmallows, supra. The Complainant’s WHATSAPP mark is distinctive and well known. The Respondent in all likelihood would have been aware of the WHATSAPP mark when registering the disputed domain names. In the attendant circumstances of this case, the Panel cannot conceive of any plausible good faith use of the disputed domain names that could be made by the Respondent.

Accordingly, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(iii) of the Policy.

8. 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 <grubwhatsappfreefire.com>, <japanesegroup-whatsapp.com>, <japanse-whatsapp.biz>, <japanse-whatsapp.com>, <joinwhatsapp.biz>, and <mywhatsapps.net> be transferred to the Complainant.

William R. Towns
Sole Panelist
Date: October 10, 2019

¹ Paragraph 3.7.7.3 of the RAA provides as follows:

3.7.7.3 Any Registered Name Holder that intends to license use of a domain name to a third party is nonetheless the Registered Name Holder of record and is responsible for providing its own full contact information and for providing and updating accurate technical and administrative contact information adequate to facilitate timely resolution of any problems that arise in connection with the Registered Name. A Registered Name Holder licensing use of a Registered Name according to this provision shall accept liability for harm caused by wrongful use of the Registered Name, unless it promptly discloses the identity of the licensee to a party providing the Registered Name Holder reasonable evidence of actionable harm.

² SeeWIPO Overview 3.0 , section 1.7 .

³ Id. When the relevant trademark is recognizable in the disputed domain name, the domain name normally will be considered confusingly similar to the mark for purposes of paragraph 4(a)(i) of the Policy.

⁴ See WIPO Overview 3.0, section 1.8 and cases cited therein.

⁵ See WIPO Overview 3.0, section 1.15.

⁶ WIPO Overview 3.0, section 1.11.2 and cases cited therein.