WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Facebook Inc. and WhatsApp, LLC v. Zhu Yanpeng

Case No. D2021-2145

1. The Parties

The Complainants are Facebook Inc. and WhatsApp, LLC, United States of America, represented by Hogan Lovells (Paris) LLP, France.

The Respondent is Zhu Yanpeng, China.

2. The Domain Names and Registrar

The disputed domain names <facebookidscraper.com>, <findmyfacebookid.com>, <whatsappstatusbest.com>, <whatsapp-status-videodownload.com>, <whatsappstatus4all.com>, <whatsapptamilstatus.com> are registered with DropCatch.com LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 3, 2021. On July 5, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On July 6, 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 July 13, 2021. In accordance with the Rules, paragraph 5, the due date for Response was August 2, 2021. On July 27, 2021, the Center received an email communication from the Respondent. The Respondent did not submit a formal response. Accordingly, on August 4, 2021, the Center informed the Parties it would proceed to appoint the Panel.

The Center appointed Kaya Köklü as the sole panelist in this matter on August 12, 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 Complainants are Facebook Inc. (“First Complainant”) and its wholly owned subsidiary, WhatsApp, LLC. (“Second Complainant”) (Annex 1 to the Complaint).

The First Complainant is a leading online social networking service, which was founded in 2004. It is the owner of the trademark FACEBOOK, which is used and well-known around the world. It holds many trademark registrations worldwide, e.g., United States Trademark Registration No. 3041791 (registered on January 10, 2006), and Chinese Trademark Registration No. 5251162 (registered on September 21, 2009), (Annex 7 to the Complaint). It further owns a large number of domain names like <facebook.com> and <facebook.cn> (Annex 8 to the Complaint).

The Second Complainant provides an also well-known service to exchange messages via smartphones. It is the owner of the word and figurative mark WHATSAPP, which is registered in a large number of jurisdictions. For instance, the Second Complainant is the owner of the United States Trademark Registration No. 4083272, registered on January 10, 2012 and the Chinese Trademark Registration No. 21470708A, registered on December 21, 2017. It further holds and operates various domain names like <whatsapp.com> and <whatsapp.us> (Annex 8 to the Complaint).

The Respondent is an individual from China.

The registration dates of the disputed domain names are as follows:

The disputed domain names currently resolve to parking pages. The Complainant submitted evidence that all of the disputed domain names are being used in connection with pay-per-click (“PPC”) links (Annex 10 to the Complaint).

5. Parties’ Contentions

A. Complainant

The Complainant requests the transfer of the disputed domain names.

The Complainant is of the opinion that the disputed domain names are confusingly similar to its FACEBOOK and WHATSAPP trademarks.

Furthermore, the Complainants argue that the Respondent has no rights or legitimate interests in respect of the disputed domain names and that that the Respondent has registered and is using the disputed domain names in bad faith.

B. Respondent

The Respondent did not reply to the Complainant’s contentions. In its short email communication of July 27, 2021, the Respondent merely indicated its general willingness to settle the dispute by way of selling the disputed domain names to the Complainants.

6. Discussion and Findings

6.1. Procedural Issues

The Complainants have requested consolidation of the Complainants on the basis that the Second Complainant is an wholly owned subsidiary of the First Complainant and they have a common grievance against the Respondent.

The Panel considers that it is fair and equitable in the circumstances of the case to order the consolidation as requested (see section 4.11.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”)).

Consequently, the Panel accepts both Complainants in this administrative proceeding and, for the ease of reference, will jointly refer to them as “the Complainant” in the following, whenever appropriate.

6.2. Substantive Issues

According to paragraph 15(a) of the Rules, the Panel shall decide the Complaint in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.

In accordance with paragraph 4(a) of the Policy, the Complainant must prove that each of the three following elements is satisfied:

(i) the disputed domain names are identical or confusingly similar to a trademark in which the Complainant has rights; and

(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain names; and

(iii) the disputed domain names have been registered and are being used in bad faith.

Paragraph 4(a) of the Policy states that the Complainant bears the burden of proving that all these requirements are fulfilled, even if the Respondent has not replied to the Complainant’s contentions. Stanworth Development Limited v. E Net Marketing Ltd., WIPO Case No. D2007-1228.

However, concerning the uncontested information provided by the Complainant, the Panel may, where relevant, accept the provided reasonable factual allegations in the Complaint as true. See section 4.3 of the WIPO Overview 3.0.

It is further noted that the Panel has taken note of the WIPO Overview 3.0 and, where appropriate, will decide consistent with the consensus views captured therein.

A. Identical or Confusingly Similar

To begin with, the Panel confirms that the Complainant has satisfied the threshold requirement of having relevant trademark rights. As evidenced in the Complaint, the Complainant is the owner of various FACEBOOK and WHATSAPP trademarks, which are registered and well known in many jurisdictions.

The Panel finds that the disputed domain names are confusingly similar to the Complainant’s trademarks. All disputed domain names comprise either the FACEBOOK or the WHATSAPP trademark in its entirety, combined with descriptive terms in the English language, such as “id scraper”, “find my […] id”, “tamil status”, “status best”, “status video download”, or “status 4 all”.

As stated at section 1.8 of the WIPO Overview 3.0, where the relevant trademark is recognizable within the disputed domain name, the addition of other terms would generally not prevent a finding of confusing similarity.

In view of the Panel, the mere addition of the above identified terms does not prevent a finding of confusing similarity between the disputed domain names and the Complainant’s trademarks.

Hence, the Panel is satisfied that the Complainant has met the requirements under paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

While the burden of proof remains with the Complainant, the Panel recognizes that this would often result in the impossible task of proving a negative, in particular as the evidence needed to show the Respondent’s rights or legitimate interests is primarily within the knowledge of the Respondent. Therefore, the Panel agrees with prior UDRP panels that the Complainant is required to make out a prima facie case before the burden of production shifts to the Respondent to show that it has rights or legitimate interests in the disputed domain names to meet the requirements of paragraph 4(a)(ii) of the Policy. Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455.

With its Complaint, the Complainant has provided prima facie evidence that the Respondent has no rights or legitimate interests, particularly no license to use the Complainant’s trademarks within the disputed domain names.

Further, the Panel finds that the disputed domain names, which are all confusingly similar to the Complainant’s trademarks, carry a risk of implied affiliation or association, as stated in section 2.5.1 of the WIPO Overview 3.0.

In the absence of a Response to the Complainant’s contentions, the Respondent has failed to demonstrate any of the nonexclusive circumstances evidencing rights or legitimate interests under the Policy, paragraph 4(c) or provide any other evidence of a right or legitimate interest in the disputed domain names. Particularly, the Panel does not see sufficient basis for assessing any kind of bona fide offering of goods or services by the Respondent, particularly as the Respondent is using the disputed domain names in connection with PPC links only, at least some of which offer goods or services in competition with the Complainant (Annex 10 to the Complaint).

Hence, the Panel concludes that the Respondent does not have a right or legitimate interest in the disputed domain names according to the Policy, paragraph 4(a)(ii) and 4(c).

C. Registered and Used in Bad Faith

The Panel has no doubt that the Respondent had the Complainant’s well-known trademarks in mind when registering the disputed domain names.

As to bad faith use by the Respondent, the Panel notes that the disputed domain names are currently used for PPC links only, at least some of which offer goods or services in competition with the Complainant (Annex 10 to the Complaint). In line with the opinion of numerous UDRP panels before and section 3.5 of the WIPO Overview 3.0, the Panel believes that the current use of disputed domain names for PPC links only does not prevent a finding of bad faith use. In view of the Panel, the submissions and evidence provided by the Complainant rather supports an inference of bad faith registration with the purpose of attempting to trade off the Complainant’s goodwill in the trademark, and the Respondent has failed to rebut this presumption.

In this regard, the Panel also notes that it cannot conceive of any plausible and legitimate use of the disputed domain names that would be in good faith, except with an authorization of the Complainant. Particularly, as the disputed domain names comprise the Complainant’s trademarks in their entirety (with the addition of some terms and/or elements), the Panel is of the opinion that any website linked to the disputed domain names would likely cause the false impression that it is operated or at least endorsed or authorized by the Complainant.

In addition, the Panel accepts the failure of the Respondent to submit a substantive response to the Complainant’s contentions as an additional indication for bad faith use. In its informal email communication of July 27, 2021 to the Center, the Respondent merely indicated his willingness to sell the disputed domain names to the Complainant. The Panel is convinced that, if the Respondent had legitimate purposes in registering and using the disputed domain names, it would have substantially responded.

Taking all facts of the case into consideration, the Panel rather believes that this is a typical cybersquatting case, which the UDRP was designed to stop.

Consequently, the Panel is convinced that the disputed domain names were registered and are being used in bad faith and that the Complainant consequently has satisfied the third element of the Policy, namely, paragraph 4(a)(iii) 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 names <facebookidscraper.com>, <findmyfacebookid.com>, <whatsappstatusbest.com>, <whatsapp-status-videodownload.com>, <whatsappstatus4all.com>, <whatsapptamilstatus.com> be transferred to the Complainant.

Kaya Köklü
Sole Panelist
Date: August 26, 2021