WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
WhatsApp LLC v. Bulk Whatsapp Software
Case No. D2021-0564
1. The Parties
The Complainant is WhatsApp LLC, United States of America (“United States”), represented by Hogan Lovells (Paris) LLP, France.
The Respondent is Bulk Whatsapp Software, India.
2. The Domain Name and Registrar
The disputed domain name <bulkwhatsappsoftwares.com> is registered with FastDomain, Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 24, 2021. On February 24, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 24, 2021, 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 March 5, 2021. In accordance with the Rules, paragraph 5, the due date for Response was March 25, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 26, 2021.
The Center appointed Reyes Campello Estebaranz as the sole panelist in this matter on April 1, 2021. 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 a United States company founded in 2009 and acquired by Facebook, Inc. in 2014 previously known as WhatsApp, Inc. It changed its corporate structure from a corporation to a limited liability company with effect since January 1, 2021. The Complainant operates globally under the trademark WHATSAPP, providing a mobile messaging application (or “app”) that allows users across the globe to exchange messages via smartphones. Prior decisions under the Policy have recognized the well-known character of the WHATSAPP mark1 .
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;
- International Trademark No. 1109890, figurative mark, registered on January 10, 2012, in classes 9 and 38; and
- Indian Trade Mark No. 2149059, WHATSAPP, registered on 24 May 2011, in classes 9 and 38.
The Complainant further owns numerous domain names comprising its trademark WHATSAPP, under various generic Top-Level Domains (“gTLDs”) and country code Top-Level Domains (“ccTLDs”), which are linked to its corporate websites in connection with its products and services, including <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 31, 2010), <whatsapp.biz> (registered on February 1, 2010), <whatsapp.us> (registered on February 1, 2010), and <whatsapp.in> (registered on February 1, 2010). The Complainant’s main website linked to <whatsapp.com> also allows Internet users to access its messaging platform online.
The disputed domain name was registered on May 22, 2020 and it is linked to a website, in English language, offering bulk-messaging software, to send large volumes of messages through the Complainant’s app, for download. This website uses a similar combination of colors as the one used by the Complainant’s corporate websites (green and white), and it prominently displays the WHATSAPP mark, the Complainant’s telephone logo as well as a modified version this telephone logo. This website purports to offer software for bulk-messaging services for the amount of INR 100 for a one day trial or an offer of INR 500 for “Life Time Validity” (previously amounting INR 3,999). This website includes no information about the owner of the site, but a contact form and a telephone number, and it does not include any reference indicating that this site is not operated by or affiliated with the Complainant.
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 2 billion monthly active users worldwide (as of March 2020). Accordingly, the trademark WHATSAPP has acquired reputation and goodwill worldwide, being ranked amongst Apple iTunes’ 25 most popular free mobile applications. In Annie’s Top Apps Worldwide Rankings July 2020, the Complainant’s app was ranked as the third most downloaded application worldwide. 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 32 million likes on Facebook, and 3.2 million followers on Twitter.
The disputed domain name incorporates the Complainant’s trademark WHATSAPP in its entirety adding the terms “bulk” and “softwares”, which do not prevent a finding of confusing similarity, being the mark WHATSAPP clearly 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 considered a standard registration requirement.
The Respondent has no rights or legitimate interests in the disputed domain name being 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. Although the Respondent is not a licensee and has no authorization to use the mark WHATSAPP, the Respondent is using this mark in an attempt to create a misleading impression of association with the Complainant and its reputed trademark for a commercial gain. The Respondent’s software further places the security of the Complainant’s app users at risk, as bulk-messaging software may be used to send unsolicited electronic communications (spam), for phishing, or for other unauthorized activities. Prior decisions under the Policy have held that using domain names comprising the WHASTAPP mark in connection with the offering of bulk-messaging services do not amount to a bona fide offering of goods or services2 .
(ii) The Respondent is not commonly known by the disputed domain name and has not secured or sought to secure any trademark rights in the terms “whatsapp” or “bulkwhatsappsoftwares”.
(iii) The Respondent is not making a legitimate noncommercial or fair use of the disputed domain name, as its website is intended for commercial nature, offering software for bulk-messaging services for the amount of INR 100 for a one day trial or INR 500 for “Life Time Validity”.
The disputed domain name was registered and is being used in bad faith. Due to the well-known character of the trademark WHATSAPP, the Respondent must have been aware of the existence of this mark at the time of the disputed domain name registration. The Respondent’s website content corroborates actual knowledge of the Complainant’s trademark as it makes multiple references to the Complainant and its app, prominently using the Complainant’s logo as well as a variation of such logo. Additional evidence of bad faith is the fact that the Respondent used an incomplete physical address in the registration of the disputed domain name, since the Respondent’s street name is listed as “Ahmedabad”, which is also the name of the city. The Respondent has intentionally attempted to create an unauthorized impression of affiliation with or endorsement by the Complianant to attract Internet users for commercial gain, in an attempt to benefit from the Complainant’s trademark reputation by offering software that expressly violates the Complainant’s Terms of Service. The Respondent’s failure to respond to the Complainant’s cease and desist letter is an additional strong indication of the Respondent’s bad faith.
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
The Complainant has made the relevant assertions as required by the Policy and the dispute is properly within the scope of the Policy. The Panel has authority to decide the dispute examining the three elements in paragraph 4(a) of the Policy, taking into consideration all of the relevant evidence, annexed material and allegations, and performing some limited independent research under the general powers of the Panel articulated, inter alia, in paragraph 10 of the Rules.
A. Identical or Confusingly Similar
The Complainant indisputably has rights in the registered trademark WHATSAPP, both by virtue of its numerous trademark registrations and as a result of its global goodwill and reputation. The disputed domain name incorporates the WHATSAPP mark in its entirety adding the terms “bulk” and “softwares”, which does not prevent a finding of confusing similarity. The Complainant’s trademark is recognizable in the disputed domain name and the gTLD “.com” is a technical requirement, generally disregarded for the purpose of the analysis of the confusing similarity. See sections 1.7, 1.8, and 1.11, WIPO Overview 3.0.
Accordingly, this Panel finds that the disputed domain name is confusingly similar to the Complainant’s trademark, 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’s above-noted assertions and evidence in this case effectively shift the burden to the Respondent of producing evidence of rights or legitimate interests in the disputed domain name, providing the circumstances of paragraph 4(c) of the Policy, without limitation, to rebut the Complainant’s prima facie case. However, the Respondent has not replied to the Complainant’s contentions.
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 terms related to bulk-messaging technology services that may point to the Complainant, its reputed trademark, and its app. Therefore, the Panel considers that there is a risk of implied affiliation.
The website liked to the disputed domain name further uses a similar combination of colors as the one used by the Complainant’s corporate websites and its app (green and white), includes various references to the WHATSAPP mark, the Complainant’s telephone logo within a green circle as well as a modified version of such logo. Additionally, this website does not include any information about the owner or the site and its lack of relationship with the Complainant. The Panel considers that this use of the disputed domain name contributes to a risk of affiliation and confusion.
The Panel further notes that the website linked to the disputed domain name offers software that may be used to send unsolicited electronic communications (spam), for phishing, or for other unauthorized activities, which is a content that does not amount to a bona fide offering of goods or services. See section 2.13, WIPO Overview 3.0.
Furthermore, the Panel considers remarkable the Respondent’s attitude choosing not to reply to the Complainant’s cease and desist letter or to the Complaint.
All these circumstances lead the Panel to conclude that the Complainant has established a prima facie case, not rebutted by the Respondent, and all cumulative facts and circumstances of this case 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 establishes that the disputed domain name has been registered and is being used in bad faith.
The applicable standard of proof in UDRP cases is the “balance of probabilities” or “preponderance of the evidence”, being the Panel prepared to draw certain inferences in light of the particular facts and circumstances of the case. See section 4.2, WIPO Overview 3.0.
The Panel notes that the trademark WHATSAPP has extensive presence over the Internet and is worldwide used and well known, being inconceivable that the Respondent did not have knowledge of this trademark at the time of registration of the disputed domain name. Furthermore, all cumulative circumstances of this case point to bad faith registration and use of the disputed domain name:
(i) the disputed domain name incorporates the WHATSAPP mark in its entirety, adding terms that may refer to the Complainant’s app, which enhances the intrinsic likelihood of confusion and affiliation;
(ii) the Complainant’s trademark is well known worldwide;
(iii) the Complainant operates globally including the country (India) where the Respondent is apparently located according to the WhoIs record of the disputed domain name;
(iv) the Respondent did not include a complete physical address in the registration of the disputed domain name or on the website linked to the disputed domain name;
(v) the website linked to the disputed domain name targets the Complainant and its app, offering the downloading of bulk-messaging software related to the WHASTAPP app;
(vi) the website linked to the disputed domain name further includes the Complainant’s trademark, its reputed telephone logo as well as a modified version of this logo, and its uses the same combination of colors used by the Complainant in its corporate websites and its app; and
(vii) the Respondent did not reply to the cease and desist letter or to the Complaint, not offering any explanation of any rights or legitimate interests in the disputed domain name and not coming forward to deny the Complainant’s assertions of bad faith.
In light of the above, taking into consideration all cumulative facts and circumstances of this case, on the balance of probabilities, the Panel considers that the disputed domain name was registered and is being used in bad faith, with the intention of obtaining a free ride on the established reputation of the Complainant. The disputed domain name was registered and used targeting the Complainant and its reputed trademark, intentionally creating a likelihood of confusion as to the affiliation or association to misleadingly attract Internet users to the Respondent’s website to promote its bulk-messaging software related to the Complainant’s app. It is further probable that the Respondent acted in bad faith with the intention to obtain sensitive private information from its websites’ visitors or through emails connected to the disputed domain name.
Accordingly, the Panel concludes that the Complainant has met its burden of establishing that the disputed domain name has been registered and is being used 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 name, <bulkwhatsappsoftwares.com> be transferred to the Complainant.
Reyes Campello Estebaranz
Sole Panelist
Date: April 7, 2021
1 See WhatsApp Inc. v. Francisco Costa, WIPO Case No. D2015-0909; WhatsApp, Inc. v. Abdallah Almqbali, WIPO Case No. D2016-1287; 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; WhatsApp Inc. v. Contact Privacy Inc. Customer 0153186272 / MOHD WILDAN AMIR MUSA, WIPO Case No. D2019-0456; and WhatsApp Inc. v. Luis Raffael Sanchez De La Cruz, WIPO Case No. D2019-2485.
2 See WhatsApp Inc. v. Cabir Oz, WIPO Case No. D2019-1046; WhatsApp Inc. v. Emrecan Yildirimlar, WIPO Case No. D2019-0895; WhatsApp Inc. v. Contact Privacy Inc. Customer 0153186272 / MOHD WILDAN AMIR MUSA, WIPO Case No. D2019-0456; and WhatsApp Inc. v. Edwin Lizcano, Inversiones Capira SAS, WIPO Case No. D2019-1700.