The Complainant is WhatsApp, LLC, United States of America, represented by Hogan Lovells (Paris) LLP, France.
The Respondent is Cetin Etem Sezgin, Turkey.
The disputed domain name <whatsappbusiness.com> is registered with Nics Telekomunikasyon A.S. (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 13, 2021. On July 14, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 17, 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 sent an email communication in English and Turkish to the parties on July 23, 2021 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 Turkish. The Complainant submitted a request for English to be the language of the proceeding on July 23, 2021. The Respondent did not comment on the language of the proceeding.
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 in English and Turkish, and the proceedings commenced on July 30, 2021. In accordance with the Rules, paragraph 5, the due date for Response was August 19, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 20, 2021.
The Center appointed Gökhan Gökçe as the sole panelist in this matter on August 24, 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.
The Complainant is the provider of the WhatsApp mobile messaging application. The Complainant was founded in 2009 and acquired by Facebook, Inc. in 2014. WhatsApp allows users to exchange messages for free via smartphones. The Complainant’s main website available at “www.whatsapp.com” also allows Internet users to access its messaging platform via WhatsApp Web. Pursuant to Annex 13 of the Complaint, the Complainant, WhatsApp, LLC, (previously known as “WhatsApp, Inc.”) has recently undergone a change in corporate structure from a corporation to a limited liability company. Therefore, the trademark registration and WhoIs records are in the process of being updated.
The Complainant holds multiple trademark registrations in multiple jurisdictions, including:
- Turkish Trademark Registration No. 2011/70159 for WHATSAPP, registered on December 28, 2012;
- European Union Trademark Registration No. 009986514 for WHATSAPP, registered on October 25, 2011;
- International Trademark Registration No. 1085539 for WHATSAPP, registered on May 24, 2011;
- United States of America Trademark Registration No. 3939463 for WHATSAPP, registered on April 5, 2011.
The Complainant is the registrant of numerous domain names consisting of the WHATSAPP trademark under various generic Top-Level Domains (“gTLDs”) (among others: <whatsapp.com> registered on September 4, 2008, <whatsapp.net> registered on February 20, 2009, <whatsapp.org>, and <whatsapp.biz> both registered on February 1, 2010), as well as under many country-code Top-Level Domains (“ccTLDs”) (Annex 7 to the Complaint).
The Respondent is an individual from Turkey. The disputed domain name was registered on July 23, 2017.
According to the screenshots attached to the Complaint (Annex 10), the disputed domain name resolves to a website containing pay-per-click (“PPC”) links, some of them targeting the Complainant’s WHATSAPP trademark.
Although the Complainant submitted evidence which shows that the disputed domain name is linked to a PPC website, the Panel visited the disputed domain name on August 27, 2021 and determined that the disputed domain name was inactive, thus there was no content provided. The website at the disputed domain name showed the following content: “Bu siteye ulaşılamıyor” which means “The website cannot be reached”.
Prior to initiation of the administrative proceedings, the Complainant tried to solve the dispute amicably by sending a cease-and-desist letter and asking for transfer of the disputed domain name at no costs. This approach remained unanswered by the Respondent.
The Complainant requests the transfer of the disputed domain name.
The Complainant is of the opinion that the disputed domain name is confusingly similar to the Complainant’s WHATSAPP trademark. The Complainant asserts that the addition of the term “business” does not prevent a finding of confusing similarity with the Complainant’s WHATSAPP trademark.
The Complainant argues that the Respondent has no rights or legitimate interests in the disputed domain name. The inclusion of the Complainant’s trademark in the disputed domain name implies affiliation between the Complainant and the disputed domain name. The Respondent is not a licensee of the Complainant, nor has the Respondent been otherwise authorized by the Complainant to make any use of its WHATSAPP trademark, in a domain name or otherwise. The WhatsApp Brand Guidelines prohibit the registration of domain names that could be confused with WHATSAPP. The Respondent’s use of the disputed domain name violates the Complainant’s Terms of Service.
The Complainant asserts that the Respondent has registered the disputed domain name in bad faith, since the Complainant’s trademark WHATSAPP is renowned throughout the world in connection with an instant messaging application for mobile devices. Therefore, the Respondent had knowledge of the Complainant’s trademark at the time of registration of the disputed domain name and is using the disputed domain name to intentionally attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation, or endorsement of the website.
The Respondent did not reply to the Complainant’s contentions.
Paragraph 11(a) of the Rules provides that: “Unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding.”
Although the language of the Registration Agreement for the disputed domain name is Turkish, the Complainant argues that the language of the administrative proceeding should be English for the following reasons:
The Complainant is a United States of America company, and neither it nor its representatives are capable of understanding or communicating in Turkish. To require the Complainant to submit a Turkish translation of the Complaint and Annexes would cause unwarranted delay, and would cause the Complainant to incur considerable additional expenses, running contrary to the aim of the Policy of providing time and cost effective means of resolving domain name disputes.
It is established practice to make a decision regarding the language of the proceeding to ensure fairness to the parties and the maintenance of an inexpensive and expeditious avenue for resolving domain name disputes. Language requirements should not lead to undue burdens being placed on the parties and undue delay to the proceeding (see, Solvay S.A. v. Hyun-Jun Shin, WIPO Case No. D2006-0593). In this case, the Complainant, which is not proficient in Turkish, will have to incur considerable expense if it is forced to translate the Complaint into Turkish. Additionally, since the Respondent did not submit any Response and did not send any objection to the Cease and Desist Letter of the Complainant, translating the Complaint into Turkish will lead to undue and unnecessary burden and delay resolution of the dispute. Under these circumstances, noting that the Respondent was notified of the present proceeding in both English and Turkish, and noting that the Respondent did not comment on the language of the proceeding, and the Respondent’s subsequent failure to file any substantive response to the Complaint, the Panel determines English to be the language of this proceeding.
Additionally, the Panel also notes that the Respondent chose the English word “business” for its disputed domain name, in view of the Panel, it seems that the Respondent probably has knowledge about the English language.
Therefore, the Panel finds that it would be inappropriate to conduct the proceeding in Turkish and request a Turkish translation of the Complaint, noting that the Respondent has failed to raise any objection about the language of the proceeding.
Paragraph 15(a) of the Rules requires the Panel to decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.
Under paragraph 4(a) of the Policy, the Complainant bears the burden of showing:
(i) that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) that the disputed domain name has been registered and is 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. (see, 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 of WIPO Panel Views on Selected UDRP Questions, Third Edition (“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 WIPO Overview 3.0.
Based on the evidence submitted, the Panel finds that the Complainant has rights in the WHATSAPP mark.
The disputed domain name wholly incorporates the WHATSAPP mark as its initial element. The disputed domain name adds the dictionary word “business”. Given that the trademark remains clearly recognizable within the disputed domain name, the Panel does not consider that the addition of this word prevents a finding of confusing similarity. See WIPO Overview 3.0, section 1.8. (See, Canyon Bicycles GmbH v. Domains By Proxy, LLC / Rob van Eck, WIPO Case No. D2014-0206).
The disputed domain name includes the gTLD “.com”, which is a technical requirement of domain name registration. A gTLD is normally disregarded in the comparison between a disputed domain name and a trademark for the purposes of the first element of the Policy. (See, VAT Holding AG v. Vat.com, WIPO Case No. D2000-0607).
Accordingly, the Panel finds that the Complainant has established element 4(a)(i) of the Policy.
The Respondent has not provided any evidence of the circumstances specified in paragraph 4(c) of the Policy, or any other circumstances giving rise to a right or legitimate interest in the disputed domain name.
It is clear that the Respondent has not demonstrated any bona fide offering of goods and services by using the disputed domain name. Nor has the Respondent shown that it has been commonly known by the disputed domain name.
The Complainant also showed, inter alia, that the Respondent has neither a license nor any other permission to use the Complainant’s trademark in the disputed domain name.
The Panel finds that the Complainant has made a prima facie case that the Respondent lacks rights or legitimate interests, and the Respondent has failed to demonstrate such rights or legitimate interests. Accordingly, in line with the WIPO Overview 3.0, section 2.1, it is sufficient that the complainant show a prima facie case that the respondent lacks rights or legitimate interests in the disputed domain name in order to shift the burden of production on the respondent. If the respondent fails to demonstrate rights or legitimate interests in the disputed domain name in accordance with paragraph 4(c) of the Policy or on any other basis, the complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy (see, Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455).
Additionally, pursuant to Annex 10 of the Complaint, the disputed domain name resolves to a PPC website for the purpose of generating PPC revenues. Using a domain name to host a page comprising PPC links constitutes a very minimal use of the disputed domain name. Nevertheless, Panel have recognized that “the use of a domain name to host a page comprising PPC links would be permissible – and therefore consistent with respondent rights or legitimate interests under the UDRP – where the domain name consists of an actual dictionary word(s) or phrase and is used to host PPC links genuinely related to the dictionary meaning of the word(s) or phrase comprising the domain name, and not to trade off the complainant’s (or its competitor’s) trademark” (see section 2.9 of the WIPO Overview 3.0). However, in the case at hand, the disputed domain name resolving to parking page displaying PPC links (i) incorporate and refer to the distinctive trademark of the Complainant and (ii) risk misleading Internet users and compete with or capitalize on the reputation and goodwill of the Complainant’s trademark. This cannot be considered as fair use of the disputed domain name.
Accordingly, the Panel finds that the Complainant has established element 4(a)(ii) of the Policy.
The Panel finally holds that the disputed domain name was registered and is being used by Respondent in bad faith.
The Panel considers that the Respondent's use of the disputed domain name is clearly intended for commercial gain, in accordance with paragraph 4(b)(iv) of the Policy, as it is pointing to an advertising website displaying PPC links, some of which target the Complainant's trademark. Such use of the disputed domain name – from which the Respondent is seeking to obtain financial gain derived from the goodwill and reputation attached to the Complainant's trademark – constitutes strong evidence of bad faith. (See BASF SE v. Zhang Xiao, WIPO Case No. D2017-2200).
In addition, the Respondent did not respond to the cease-and-desist letter and did not explain nor justify use of the Complainant’s trademark in the disputed domain name. Past UDRP panels have held that failure to respond to a cease-and-desist letter may be considered a factor in finding bad faith registration and use of a domain name (see Encyclopedia Britannica, Inc. v. John Zuccarini and The Cupcake Patrol a/ka Country Walk a/k/a Cupcake Party, WIPO Case No. D2000-0330).
The Panel also notes that prior UDRP panels have found that the WHATSAPP trademark has acquired worldwide renown amongst mobile applications (see WhatsApp Inc. v. Francisco Costa, WIPO Case No. D2015-0909). Given the reputation of the Complainant’s WHATSAPP trademark - registration and use of which precede by far the registration of the disputed domain name - it is not conceivable that the Respondent did not have in mind the Complainant’s trademark when registering the disputed domain name. Such fact suggests that the disputed domain name was registered in bad faith (see WIPO Overview 3.0, section 3.2.2).
When the Panel visited the disputed domain name, it resolved to a parking/passive page and the Respondent has not submitted any evidence or suggestion that the Respondent has any intention of using the disputed domain name for any purpose or legitimate activity consistent with good faith use. Paragraph 3.3 of the WIPO Overview 3.0 states that the lack of active use of the domain name does not as such prevent a finding of bad faith.
For these reasons, the Panel finds that the Complainant has established that the disputed domain name was registered and used in bad faith for the purpose of 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 name <whatsappbusiness.com> be transferred to the Complainant.
Gökhan Gökçe
Sole Panelist
Date: September 3, 2021