WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

WhatsApp Inc. v. Luis Raffael Sanchez De La Cruz

Case No. D2019-2485

1. The Parties

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

The Respondent is Luis Raffael Sanchez De La Cruz, Peru.

2. The Domain Name and Registrar

The disputed domain name <softwarewhatsapp.com> is registered with Soluciones Corporativas IP, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 10, 2019. On October 10, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 11, 2019, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name, which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on the same day, 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 October 14, 2019.

The Center sent an email communication to the parties on October 11, 2019 regarding the language of the proceeding, as the Complaint has been submitted in English and the language of the registration agreement for the disputed domain name is Spanish. The Complainant submitted a request for English to be the language of the proceeding on October 14, 2019. The Respondent did not comment on the language of the proceeding.

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 October 17, 2019. In accordance with the Rules, paragraph 5, the due date for Response was November 25, 2019. On November 27, 2019, the Center informed the parties that it will proceed to panel appointment.

The Center appointed Reyes Campello Estebaranz as the sole panelist in this matter on December 3, 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.

In accordance with the Rules, paragraphs 10 and 11, regarding the language of the proceeding, the Panel determines it to be English in consideration to these case circumstances. Particularly the fact that the website temporally linked to the disputed domain name was partially in English, and the absence of the Respondent’s reply to the Complainant’s request for the language of the proceeding to be English, and to the Complaint. The Panel considers the need to ensure that this proceeding takes place with due expedition justifies avoiding unnecessary translations of the Complaint and its annexes, in a case in which the Respondent has not shown any interest in replying to the Complainant’s contentions.

4. Factual Background

The Complainant is a United States company, founded in 2009 and acquired by Facebook, Inc. in 2014. It operates globally providing a mobile messaging application (or “app”) that allows users across the globe to exchange messages via smartphones including iPhone, BlackBerry and Android. The Complainant’s main website linked to <whatsapp.com> also allows Internet users to access its messaging platform online.

The Complainant holds registered trademark rights in the mark WHATSAPP in many jurisdictions, as well as in the logo used to identify visually its app (consisting of a telephone within a green circle), being the owner of a substantial trademark portfolio, of which the following are sufficiently representative for the present proceeding:

United States Trademark No. 3,939,463, WHATSAPP, word mark, registered April 5, 2011, in class 42;

European Union Trade Mark No. 009986514 WHATSAPP, word mark, registered October 25, 2011, in classes 9, 38 and 42;

European Union Trade Mark No. 010496602, figurative mark, registered May 18, 2012, in classes 9, 38 and 42;

International Trademark No. 1085539, WHATSAPP, registered May 24, 2011, in classes 9 and 38;

Peruvian Trademark No. T00004569, WHATSAPP, registered June 4, 2012, in class 9.

The Complainant further owns numerous domain names comprising its trademark WHATSAPP, under various generic Top-Level Domains (“gTLD”) and country code Top-Level Domains (“ccTLD”), which are linked to its corporate websites in connection with its products and services. Among others, <whatsapp.com> registered on September 4, 2008, <whatsapp.net> registered on February 20, 2009, <whatsapp.org> registered on February 1, 2010, <whatsapp.info> registered on February 1, 2010, <whatsapp.biz> registered on February 1, 2010, <whatsapp.me> registered on February 1, 2010, <whatsapp.es> registered on February 1, 2010, <whatsapp.co.in> registered on February 1, 2010, and <whatsapp.rs> registered on February 6, 2016.

The disputed domain name was registered on October 21, 2018. At the date of this decision, the disputed domain name is inactive resolving to a page with an Internet browser error message. However, according to evidence filed by the Complainant, it was previously linked to a website, in Spanish and English languages, under the title “discover the easiest way to automate the mass sending of messages on whatsapp quickly” (all in capital letters). This website included repeatedly the Complainant’s logo (a telephone within a green circle), as well as other references to the trademark WHATSAPP, like “increase your sales with the whatsapp software autosen” (all in capital letters). The website predominant colors were white, green and blue, using a very similar or identical green to the Complainant’s logo in various figurative elements of the website as well as in the Complainant’s logos included in the site.

5. Parties’ Contentions

A. Complainant

Key contentions of the Complaint may be summarized as follows:

The Complainant’s app is one of the fastest growing and most popular mobile apps, with over 1.5 billion monthly active users worldwide (as of October 2018). Accordingly, the trademark WHATSAPP has acquired considerable reputation and goodwill worldwide, being ranked amongst Apple iTunes’ 25 most popular free mobile applications and Tech Radar’s Best Android Apps. In Annie’s Top Apps Worldwide Rankings 2019, the Complainant’s app is ranked as the third most downloaded application worldwide, and Alexa ranks the Complainant’s website (under <whatsapp.com>) as number 74 among the world’s most-visited websites and number 40 in Peru. The Complainant has also made substantial investments to develop a strong presence online by being active on various social media forums, for instance its official page has over 29 million likes on Facebook, and 2.64 million followers on Twitter. The mark WHASTAPP has extensive presence over the Internet, a Wikipedia entry, and a high number of press articles referring to its popularity and reputation worldwide. The reputation of the Complainant’s trademark has also been recognized in various decisions in prior cases under the Policy.

The disputed domain name incorporates the Complainant’s trademark WHATSAPP in its entirety adding the term “software” as a prefix, which does not prevent a finding of confusing similarity, being the mark WHATSAPP recognizable within the disputed domain name. Further, the addition of the gTLD “.com” may be disregarded for the purposes of assessment under the first element, as it is viewed as a standard registration requirement.

The Respondent has no rights or legitimate interests in the disputed domain name. Subsequent to the Complainant’s cease-and-desist letter to the Respondent, the website previously linked to the disputed domain name was taken down, and the Respondent is unable to invoke any of the circumstances set out in paragraph 4(c) of the Policy:

(i) The Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services, and the registration and use of the disputed domain name do not conform to the Complainant’s Brand Guidelines and Business Terms of Service. The Respondent is not a licensee nor has he been authorized to use the mark WHATSAPP. However, the Respondent’s website made prominent use of the Complainant’s trademark and telephone logo, adopting a similar green and white color scheme as the one used in the Complainant’s official website (providing no statement, in the form of a disclaimer, indicating that this site was not related to the Complainant). Further, this website purported to offer subscriptions for the use of a software (Autosen) in connection with the Complainant’s app, which may be used to send unsolicited electronic communications (spam), for phishing, or other unauthorized activities.

(ii) The Respondent’s name bears no resemblance to the disputed domain name and to the best of the Complainant’s knowledge, the Respondent has no trademark rights in the terms “whatsapp” or “softwarewhastapp”, not being commonly known by the disputed domain name.

(iii) The Respondent is not making a legitimate noncommercial or fair use of the disputed domain name, as the Respondent’s website was commercial in nature, purporting to offer for sale licenses for the use of software products.

The disputed domain name was registered and is being used in bad faith pursuant to paragraph 4(b)(iv) of the Policy. As the Complainant’s trademark WHATSAPP has become well-known around the world, and this mark is composed of a coined term, the Respondent must have been aware of the existence of this trademark at the time of the disputed domain name registration.

The Respondent’s website content corroborates actual knowledge of the Complainant’s trademark, as it made prominent use of the Complainant’s trademark and its logo, being clear from the layout and content of said website that the Respondent intended to create an unauthorized impression of affiliation with or endorsement by the Compliant for commercial gain. This indicates an attempt to benefit from the Complainant’s trademark reputation and to attract Internet users for commercial gain, by creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website or of the services offered on the Respondent’s website. Further, the Respondent’s website offered software for sale that expressly violates the Complainant’s Terms of Service, and the fact that the disputed domain name no longer resolves to an active website would not prevent a finding of bad faith under the doctrine of passive holding.

The Complainant has cited previous decisions under the Policy as well as various sections of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, (“WIPO Overview 3.0”) that it considers supportive of its position.

The Complainant requests the transfer of the disputed domain name.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

Paragraph 4(a) of the Policy provides that, in order to divest a respondent of a domain name, a complainant must demonstrate each of the following:

(i) your domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and

(ii) you have no rights or legitimate interests in respect of the domain name; and

(iii) your domain name has been registered and is being used in bad faith.

The Complainant has made the relevant assertions as required by the Policy. The dispute is properly within the scope of the Policy and the Panel has authority to decide the dispute.

Paragraph 15(a) of the Rules provides that “a Panel shall decide a 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 Panel has taken into consideration all of the evidence, annexed material and submissions provided by the Parties, and has performed some limited independent research under the general powers of the Panel articulated inter alia in paragraphs 10 and 12 of the Rules. See section 4.8 of the WIPO Overview 3.0.

A. Identical or Confusingly Similar

In cases where a domain name incorporates the entirety of a trademark, or where at least a dominant feature of the relevant mark is recognizable in the domain name, the domain name will normally be considered identical or confusingly similar to that mark for purposes of the Policy. In such cases, the addition of terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element, although the nature of such additional term(s) may bear on assessment of the second and third elements. See sections 1.7 and 1.8 of the WIPO Overview 3.0.

Further, the applicable gTLD in a domain name is considered a standard technical registration requirement and, as such, is generally disregarded under the first element confusing similarity test, irrespective of its particular ordinary meaning, although said meaning may be relevant to the assessment of the second and third elements. See section 1.11, WIPO Overview 3.0.

The Complainant indisputably has rights in the registered trademark WHATSAPP. The disputed domain name incorporates this mark in its entirety adding the term “software” as a prefix, which relates to the Complainant’s same business as provider of special software for mobile communication apps. The Complainant’s trademark WHATSAPP is directly recognizable in the disputed domain name, and the gTLD “.com” adds no distinctive meaning, being a technical requirement, generally disregarded for the purpose of the analysis of the confusing similarity. Accordingly, this Panel finds that the disputed domain name is confusingly similar to the Complainant’s mark, and the first element of the Policy under paragraph 4(a)(i) has been satisfied.

B. Rights or Legitimate Interests

Although the Complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, prior 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 to the Respondent the burden of coming forward with evidence of rights or legitimate interests in the disputed domain name, once the Complainant has made a prima facie showing indicating the absence of such rights or legitimate interests.

The Complainant has asserted that the Respondent does not own any trademark for the words “whatsapp” or “softwarewhatsapp”, and he is not a licensee nor has he been otherwise authorized to use the mark WHATSAPP. Further, the Complainant has alleged that there is no evidence that the Respondent is commonly known by the disputed domain name, has any other rights, or made any demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods or services or for any legitimate noncommercial or fair purpose.

This effectively shifts the burden to the Respondent of producing evidence of rights or legitimate interests in the disputed domain name.

Paragraph 4(c) of the Policy provides for the Respondent to contest the Complainant’s prima facie case under paragraph 4(a)(ii) of the Policy and to establish rights or legitimate interests in the disputed domain name by demonstrating, without limitation:

“(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.”

The evidence provided by the Complainant shows that the disputed domain name was temporally linked to a website, which content included various references to the Complainant’s trademark WHATSAPP as well as its telephone logo within a green circle, using a similar combination of colors to the one used in the Complainant’s official website. Said website offered the selling of software related to the Complainant’s products of a different origin (Autosen), not including any reference to the lack of authorization or affiliation with the Complainant or its trademark or to the Respondent’s identification.

A core factor in assessing fair use of the disputed domain name is that it does not falsely suggest affiliation with the Complainant’s trademark. See section 2.5, WIPO Overview 3.0. The disputed domain name incorporates the Complainant’s trademark in its entirety adding a descriptive term for the mobile communication apps business (“software”), which also may point to the Complainant and its notorious trademark. Therefore, the Panel considers that there is a risk of implied affiliation. The Panel further notes the extensive presence of the trademark WHATSAPP over the Internet, as well as the extensive use of this mark worldwide, where the Respondent operates (globally) according to all evidence in the file. Furthermore, the Panel notes the use of the trademark WHATSAPP and the Complainant’s app in Peru, where the Respondent is apparently located according the information received from the Registrar, country where, according to the information and evidence provided in the Complaint, the Complainant’s official website (under <whatsapp.com>) has been ranked as number 40 of the most-visited websites.

The Panel further considers that the use of the disputed domain name linked to a website, which incorporates the Complainant’s telephone logo as well as various references to the trademark WHATSAPP, and uses similar colors to the ones in the Complainant’s official website, contributes to a high risk of affiliation and confusion. The website linked to the disputed domain name did not include any clear reference to the ownership of the disputed domain name nor did it include any reference to the lack of relationship with the Complainant’s trademark and business.

Further, the Respondent’s attitude is remarkable, taking down the website linked to the disputed domain name (after the Complainant’s cease-and-desist letter), and deliberately choosing not to reply to the Complaint, not providing any explanation connected to the above-mentioned circumstances (included in paragraph 4(c) of the Policy) or any other that may be considered as a fair use or legitimate interests in the disputed domain name.

All the above-mentioned circumstances lead the Panel to conclude that the Respondent has not produced evidence to rebut the Complainant’s prima facie case, and all these cumulative facts and circumstances point to consider that the Respondent lacks any rights or legitimate interests in the disputed domain name. Therefore, the second element of the Policy under paragraph 4(a)(ii) has been established.

C. Registered and Used in Bad Faith

The Policy, paragraph 4(a)(iii), requires that the Complainant establish that the disputed domain name “has been registered and is being used in bad faith.”

At the time of the disputed domain name’s registration, this Panel considers unlikely that the Respondent did not know about the WHATSAPP mark, and did not have it in mind. Several factors in this case lead to this conclusion.

The Panel notes the extensive presence of the trademark WHATSAPP over the Internet, as well as its extensive use and promotion worldwide, including Peru, where the Respondent is located (according to the information provided in the disputed domain name’s registration). The Complainant’s trademark is used and registered in many jurisdictions worldwide, being considered notorious in the mobile apps sector and well-known by the public in general. Under these circumstances, the disputed domain name incorporates the Complainant’s trademark in its entirety, which intrinsically creates a likelihood of confusion or a risk of implied affiliation, adding the descriptive term “software”, which may also point to the Complainant and its mark referring to the same business (mobile apps software). Further, the disputed domain name was temporally used in connection to a website that directly refers to the Complainant’s trademark WHATSAPP and its telephone logo, being related to the same business (software for communication mobile apps), which increases the intrinsic risk of confusion and association. Furthermore, said website did not include any clear reference to its ownership or that of the disputed domain name, not indicating any information related to the Respondent or the owner of the website (fiscal number, legal registration, or any reference to its legal form and/or country of incorporation).

The Panel further notes that the reaction of the Respondent to the Complainant’s communication and to the notification of the Complaint, taking down the website linked to the disputed domain name and not providing any explanation or evidence supporting any legitimate rights or interests in the disputed domain name.

The Policy’s non-exhaustive list of bad faith circumstances in paragraph 4(b) includes the following:

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

(ii) you have 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 you have engaged in a pattern of such conduct; or

(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.”

Taking into account all cumulative circumstances of this case, the Panel considers that the disputed domain name was very likely registered and used, targeting the mark WHATSAPP, with the intention of creating a likelihood of confusion as to the affiliation or association with the Complainant and its reputed trademark, trying to misleadingly attract Internet users to the Respondent’s website, and disrupting the Complainant’s business. It is further highly probable that the Respondent acted in bad faith with the intention to obtain private information and data from its website visitors or through emails connected to the disputed domain name, based on their association with the Complainant and the reputed trademark WHATSAPP.

All the above-mentioned leads the Panel to conclude that the disputed domain name was registered and is being used in bad faith. Accordingly, the Panel concludes that the Complainant has met its burden of establishing that the Respondent registered and is using the disputed domain name in bad faith under the third element of the Policy.

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 name <softwarewhatsapp.com> be transferred to the Complainant.

Reyes Campello Estebaranz
Sole Panelist
Date: December 17, 2019