WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
WhatsApp Inc. v. Domain Admin, Whois Privacy Corp.
Case No. D2018-1654
1. The Parties
Complainant is WhatsApp Inc. of Menlo Park, California, United States of America (“United States”), represented by Hogan Lovells (Paris) LLP, France.
Respondent is Domain Admin, Whois Privacy Corp. of Nassau, New Providence, Bahamas.
2. The Domain Name and Registrar
The disputed domain names <ɯhatsapp.com> (xn--hatsapp-fid.com) and <whɑtsɑpp.com> (xn--whtspp-cxcc.com) (the “Domain Names”) are registered with Internet Domain Service BS Corp (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 23, 2018. On July 24, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On July 25, 2018, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details. The Complainant filed an amendment to the Complaint on July 31, 2018, to correct an administrative formality.
The Center verified that the Complaint together with the amendment to 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 Respondent of the Complaint, and the proceedings commenced on August 8, 2018. In accordance with the Rules, paragraph 5, the due date for Response was August 28, 2018. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on August 29, 2018.
The Center appointed Marina Perraki as the sole panelist in this matter on September 10, 2018. 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
According to the Complaint, Complainant is the provider of the mobile instant messaging application, “WhatsApp”, which allows users worldwide to exchange messages via smartphones for free. Complainant was founded in 2009 and was acquired by Facebook, Inc. in 2014.
Since its launch in 2009, WhatsApp has become one of the fastest growing and most popular mobile applications in the world, with over 1.5 billion monthly active users worldwide (as of February 2018). WhatsApp is ranked as the third most downloaded application in the world as per App Annie's Top Apps Worldwide Rankings in 2018.
Complainant operates also the website “www.whatsapp.com” through which Internet users access its messaging platform. This website ranks 58th amongst the Top 100 most visited websites in the world (as of July 2018), according to web information company Alexa.
Complainant is the owner of a number of trademark registrations which consist of the word WHATSAPP, including United States trademark registration no. 3939463 for WHATSAPP, filed on April 1, 2009 and registered on April 5, 2011 (first use in commerce February 24, 2009) for services in international class 42;, European Union trademark registration no. 009986514 for WHATSAPP, filed on May 23, 2011 and registered on October 25, 2011 for goods and services in international classes 9, 38 and 42; and International trademark registration no. 1085539 for WHATSAPP, registered on May 24, 2011 for goods and services in international classes 9 and 38. Complainant’s WHATSAPP mark enjoys goodwill and renown worldwide.
Complainant owns also a number of WHATSAPP domain names, including <whatsapp.com>, <whatsapp.biz>, <whatsapp.info>, <whatsapp.es>, <whatsapp.de> and <whatsapp.co.in>.
The Domain Name <whɑtsɑpp.com> (<xn--whtspp-cxcc.com>) was registered on August 16, 2017 and the Domain Name <ɯhatsapp.com> (<xn--hatsapp-fid.com>) was registered on August 11, 2017.
Both Domain Names resolve to GoDaddy parking pages.
On May 22, 2018, Complainant sent a cease-and-desist letter to Respondent to which Respondent did not reply.
5. Parties’ Contentions
Complainant asserts that it has established all three elements required under paragraph 4(a) of the Policy for a transfer of the Domain Names.
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy lists the three elements which Complainant must satisfy with respect to each Domain Name:
(i) the Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) the Domain Name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Domain Names practically contain the whole of Complainant’s trademark WHATSAPP. The Domain Names were registered using Punycode and are therefore not composed entirely of ASCII English script. Using Punycode, the browser application will “translate” the Punycode text into the non-ASCII characters(The Coca-Cola Company v. ICU Agency, WIPO Case No. D2008-1851). In the present case, <xn--whtspp-cxcc.com> will be displayed as <whɑtsɑpp.com> and <xn--hatsapp-fid.com> as <ɯhatsapp.com>. The Domain Name <whɑtsɑpp.com> (<xn--whtspp-cxcc.com>) contains the visually similar letter “α” (which is the Greek letter for “a”) instead of “a” and the Domain Name <ɯhatsapp.com> (<xn--hatsapp-fid.com>) contains the visually similar Armenian letter “ɯ” instead of “w”. These differences are almost imperceptible and the use of Punycode to create a domain name that is visually identical to a trademark does not prevent a finding of identity or confusing similarity (Yahoo! Inc. v. Mr. Omid Pournazar, WIPO Case No. D2012-1612; Inter Ikea Systems B. V. v. Domain Admin, Whois Privacy Corp., WIPO Case No. D2017-2211; AB Electrolux v. Mostafa Faheem, WIPO Case No. D2017-2233; Doğan Internet Yayinciliği Ve Yatirim Anonim Şirketi v. Moniker Privacy Services/H A Lempka-Alpha Domains, WIPO Case No. D2013-2244).
The generic Top-Level Domain (“gTLD”) “.com” is disregarded, as TLDs typically do not form part of the comparison on the grounds that they are required for technical reasons only (Rexel Developpements SAS v. Zhan Yequn, WIPO Case No. D2017-0275).
The Panel finds that the Domain Names are confusingly similar to the WHATSAPP trademarks of Complainant.
B. Rights or Legitimate Interests
Pursuant to paragraph 4(c) of the Policy, Respondent may establish its rights or legitimate interests in each Domain Name, among other circumstances, by showing any of the following elements:
(i) before any notice to you [Respondent] 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 [Respondent] (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 [Respondent] 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 Panel concludes that Respondent lacks rights or legitimate interests in respect of the Domain Names.
Respondent has not submitted any response and has not claimed any such rights or legitimate interests with respect to the Domain Names. As per Complainant, Respondent was not authorized to register the Domain Names.
Respondent did not demonstrate, prior to the notice of the dispute, use of the Domain Names or a trademark corresponding to the Domain Names in connection with a bona fide offering of goods or services.
On the contrary, as Complainant demonstrated, the Domain Names lead to parked pages and seem to have been passively held by Respondent since their creation. The absence of any active use of the Domain Names does not in this instance amount to a bona fide offering of goods and services ( Philip Morris USA Inc. v. Gabriel Hall, WIPO Case No. D2015-1779; Guinness World Records Limited v. Solution Studio , WIPO Case No. D2016-0186).
Furthermore, the Domain Names practically incorporate the whole of Complainant’s well-known WHATSAPP mark, which signals an intention on the part of Respondent to confuse users seeking or expecting Complainant (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 2.5.1).
The Panel finds that these circumstances do not confer upon Respondent any rights or legitimate interests in respect of the Domain Names.
Complainant has established Policy, paragraph 4(a)(ii).
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides that the following circumstances, “in particular but without limitation”, are evidence of the registration and use of the Domain Name in “bad faith”:
(i) circumstances indicating that Respondent has registered or has acquired the Domain Name primarily for the purpose of selling, renting, or otherwise transferring the Domain Name registration to Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of its documented out-of-pocket costs directly related to the Domain Name; or
(ii) that Respondent has 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 Respondent has engaged in a pattern of such conduct; or
(iii) that Respondent has registered the Domain Name primarily for the purpose of disrupting the business of a competitor; or
(iv) that by using the Domain Name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website or other online location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product or service on Respondent’s website or location.
The Panel concludes that Respondent has registered and used the Domain Names in bad faith. As per the Complaint, Complainant’s WHATSAPP mark has been continuously and extensively used since 2009 in connection with its instant messaging application and has acquired considerable goodwill and renown worldwide ( WhatsApp Inc. v. Francisco Costa , WIPO Case No. D2015-0909).
Because the WHATSAPP mark had been widely used and registered at the time of the Domain Names’ registration by Respondent, the Panel finds it more likely than not that Respondent had Complainant’s mark in mind when registering the Domain Names (Tudor Games, Inc. v. Domain Hostmaster, Customer ID No. 09382953107339 dba Whois Privacy Services Pty Ltd / Domain Administrator, Vertical Axis Inc., WIPO Case No. D2014-1754; Parfums Christian Dior v. Javier Garcia Quintas and Christiandior.net, WIPO Case No. D2000-0226).
Respondent should have known about Complainant’s rights, due to the fact that Complainant’s mark had significant goodwill and reputation globally when the Domain Names were registered. Furthermore, such knowledge is readily obtainable through a simple browser search due to Complainant’s wide use of its WHATSAPP mark on the Internet (Caesars World, Inc. v. Forum LLC, WIPO Case No. D2005-0517; Compart AG v. Compart.com / Vertical Axis, Inc., WIPO Case No. D2009-0462). This also in view of the nature of Complainant’s services, namely mobile instant messaging application provided online.
If Respondent had searched the United States or European Union or WIPO registries it would easily have found Complainant’s prior registrations with respect to WHATSAPP (Citrix Online LLC v. Ramalinga Reddy Sanikommu Venkata, WIPO Case No. D2012-1338).
Furthermore, the Domain Names incorporate in whole Complainant’s mark WHATSAPP. It is unlikely that Respondent could have registered the Domain Names for any legitimate purpose, given in particular the notoriety of Complainant’s WHATSAPP mark, the degree of similarity of the Domain Names to such mark and the fact that Respondent used Punycode to make the Domain Names visually similar to Complainant’s mark, all of which suggest a bad faith registration (Inter Ikea Systems B.V. v. Domain Admin, Whois Privacy Corp., supra; WIPO Overview 3.0, section 3.1.1). This also in view of the fact that WHATSAPP is a fictitious word.
As regards bad faith use, Complainant demonstrated that the disputed Domain Names lead to parked pages. The non-use of a domain name would not prevent a finding of bad faith (Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003;WIPO Overview 3.0, section 3.3).
Respondent's failure to respond to Complainant's cease-and-desist letter constitutes further indication of bad faith (Samsung Electronics Co., Ltd. v. EAO Digital Solutions, WIPO Case No. D2012-0693).
The Panel considers the following factors: (i) the reputation of Complainant’s mark, which has been repeatedly recognised (in, inter alia, WhatsApp Inc. v. Francisco Costa, supra); (ii) the failure of Respondent to submit a response; (iii) the concealment of the Domain Names holder’s identity through use of a privacy shield (Fifth Third Bancorp v. Secure Whois Information Service, WIPO Case No. D2006-0696); (iv) the failure of Respondent to reply to the cease-and-desist letter of Complainant; (v) the nature of the Domain Names practically incorporating Complainant’s mark using Punycode; and (vi) the implausibility of any good faith use to which the Domain Names may conceivably be put (WhatsApp Inc. v. Private Whois whatsappandroid.com, Private Whois whatsappipad.com and Private Whois whatsappiphone.com, WIPO Case No. D2012-0674; The Coca-Cola Company v. ICU Agency, supra; WIPO Overview 3.0, section 3.2.1).
Under these circumstances and on this record, the Panel finds no good-faith basis for Respondent’s conduct vis-à-vis the Domain Names.
Complainant has established Policy paragraph 4(a)(iii).
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Names <ɯhatsapp.com> (xn--hatsapp-fid.com) and <whɑtsɑpp.com> (xn--whtspp-cxcc.com) be transferred to Complainant.
Date: September 24, 2018