WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
WhatsApp Inc. v. Anna Yudenkova, Dmitriy Frolov, Maksim Enikeev, Dmitriy Frolov
Case No. D2018-2661
1. The Parties
The Complainant is WhatsApp Inc. of Menlo Park, California, United States of America (the “Complainant”), represented by Hogan Lovells (Paris) LLP, France.
The Respondent is Anna Yudenkova of Surskoe, Russian Federation, Dmitriy Frolov of Miass, Russian Federation, Maksim Enikeev of Miass, Russian Federation, Dmitriy Frolov of Chita, Russian Federation (the “Respondents”).
2. The Domain Names and Registrar
The disputed domain names <freewhatsappload.com>, <loadwhatsapp.com>, <loadwhatsapps.com>, <whatsappfreeload.com>, <whatsappfrees.com> (the “disputed domain names”) are registered with Registrar of Domain Names REG.RU LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 20, 2018. On November 21, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On November 23, 2018, the Registrar transmitted by email to the Center its verification response confirming that the Respondents are listed as the registrants and providing the contact details. On the same date, the Center sent an email to the Parties in Russian and English with regards to the language of the proceedings. On the same date, the Complainant requested English to be the language of the proceedings. The Respondents did not comment on the language of the proceedings.
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 December 5, 2018. In accordance with the Rules, paragraph 5, the due date for Response was December 25, 2018. The Center received informal email communications from the Respondent on November 27 and 29, 2018. The Respondent did not submit any formal response. Accordingly, the Center notified the Parties about the commencement of the panel appointment process on December 26, 2018.
The Center appointed Taras Kyslyy as the sole panelist in this matter on January 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.
4. Factual Background
The Complainant is in the business of mobile messaging applications. Founded in 2009 it was acquired by Facebook, Inc. in 2014. It is the owner, amongst several others, of the following trademark registrations:
- International Trademark Registration No. 1085539 for the word mark WHATSAPP registered on May 24, 2011;
- United States Trademark Registration No. 3939463 for the word mark WHATSAPP, registered on April 5, 2011;
- European Union Trademark Registration No. 009986514 for the word mark WHATSAPP, registered on May 23, 2011;
- European Union Trademark Registration No. 1095940 for the mark WHATSAPP, registered on October 6, 2011;
- European Union Trademark Registration No. 010496602 for the figurative trademark, registered on May 18, 2012.
The Respondents in this consolidated case (see Section 6.A below) registered each of the disputed domain names on the dates set forth as follows:
<loadwhatsapp.com> - June 28, 2014;
<loadwhatsapps.com> - March 24, 2018;
<whatsappfrees.com> - June 29, 2014;
<whatsappfreeload.com> - March 24, 2018;
<freewhatsappload.com> - July 12, 2014.
The disputed domain names resolve currently to an inactive webpages. At the time the Complainant was filed, the disputed domain names were resolving to websites featuring the Complainant’s trademarks and suggesting services related to mobile messaging.
5. Parties’ Contentions
The disputed domain names are confusingly similar to the Complainant’s trademark. The disputed domain names incorporate the Complainant’s trademark WHATSAPP, and addition of other terms, such as “load”, “free”, or “frees” does not prevent confusing similarity. The generic Top-Level Domain (“gTLD”) “.com” is irrelevant for assessing the similarity.
The Respondents have no rights or legitimate interests in the disputed domain names. The Respondents are not licensee of the Complainant, nor otherwise authorized to use its trademark in the disputed domain names. The Respondents did not use the disputed domain names prior to any notice of the present dispute in connection with bona fide offering of goods or services. The Respondents are not commonly known by the disputed domain names. The Respondents have not made and are not currently making a legitimate noncommercial or fair use of the disputed domain names. Since the Complainant’s trademark is well-known, any use of the disputed domain names is illegitimate.
The disputed domain names were registered and are being used in bad faith. The Respondents were aware of the Complainant’s trademark when registering the disputed domain names. The Respondents registered the disputed domain names as well as a number of other domain names to prevent trademark owners reflecting their trademarks in corresponding domain names. The Respondents chose the disputed domain names to capitalize on the Complainant’s goodwill and reputation. The Respondents are using the disputed domain names to intentionally attract, for commercial gain, Internet users to their websites by creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation, or endorsement of the website. The Respondents display pay-per-click links while using the Complainant’s distinctive logo to mislead consumers and obtain financial gain. Sponsored links at the Respondents’ relevant web-sites redirect users to third parties websites, where they are invited to authorize the automatic installation of suspicious software. Disclaimer used by the Respondents at the relevant websites cannot cure its bad faith. Since the Complainant’s trademark is well-known, there could not be any good faith use of its trademarks within the disputed domain names.
The Respondents in its informal communications with the Center suggested the disputed domain names may be transferred to the Complainant without a decision being rendered, as well as a number of other domain names owned by the Respondents and featuring the Complainant’s trademarks.
There was no formal response presented by the Respondents in reply to the Complainant’s contentions.
6. Discussion and Findings
The Complainant requested the Panel to hear the present dispute brought against four respondents as a consolidated Complaint.
Paragraph 10(e) of the Rules states that a “[p]anel shall decide a request by a Party to consolidate multiple domain name disputes in accordance with the Policy and these Rules.” Paragraph 10(c) of the Rules provides, in relevant part, that “the [p]anel shall ensure that the administrative proceeding takes place with due expedition”.
Section 4.11.2 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) summarizes the consensus view of UDRP panels on the consolidation of multiple respondents, in part, as follows: “Where a complaint is filed against multiple respondents, panels look at whether (i) the domain names or corresponding websites are subject to common control, and (ii) the consolidation would be fair and equitable to all parties. Procedural efficiency would also underpin panel consideration of such a consolidation scenario”.
The Complainant asserts, among other things, that the Respondents should be treated as one respondent in this proceeding, as the Respondents appear to be the same person controlling connected websites with similar design. This was in fact confirmed by the Respondents in the informal communications with the Center. The Panel accepts these arguments in favor of consolidation and grants the request to consolidate the Respondents into one proceeding. Hereafter, the Panel will refer to the Respondents as “the “Respondent”.
B. Language of Proceedings
The language of the Registration Agreements for the disputed domain names is Russian. 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”. The Panel may also order that any documents submitted in a language other than that of the proceeding be translated.
However, as noted by previous UDRP panels, paragraph 11 of the Rules must be applied in accordance with the overriding requirements of paragraphs 10(b) and 10(c) of the Rules that the parties are treated equally, that each party is given a fair opportunity to present its case and that the proceeding takes place with due expedition (see, e.g., General Electric Company v. Edison Electric Corp. a/k/a Edison Electric Corp. General Energy, Edison GE, Edison-GE and EEEGE.COM, WIPO Case No. D2006-0334).
In deciding whether to allow the proceedings to be conducted in a language other than the language of the Registration Agreement, and to require the Complainant in an appropriate case to translate the Complaint into the language of that agreement, the Panel must have regard to all “the relevant circumstances”. The factors that the Panel should take into consideration include whether the Respondent is able to understand and effectively communicate in the language in which the Complaint has been made and would suffer no real prejudice, and whether the expenses of requiring translation and the delay in the proceedings can be avoided without at the same time causing injustice to the parties.
The Complainant requested that the language of the proceedings be English. The Complainant contends that the Respondent is familiar with the English language, since the Respondent commented in English to the Complainant’s infringement notice, and the disputed domain names contain English generic terms. The Panel is prepared to infer that the Respondent is able to understand and communicate in English based on the above arguments provided by the Complainant in its entirety.
The Panel further notes that no objection was made by the Respondent to the proceeding being in English nor any request made that the proceedings be conducted in Russian, the language of the Registration Agreement. This was despite the Center notifying the Respondent in Russian and English that the Respondent is invited to present its objection to the proceedings being held in English and if the Center did not hear from the Respondent by a certain date, the Center would proceed on the basis that the Respondent had no objection to the Complainant’s request that English be the language of the proceedings. The Respondent had the opportunity to raise objections or make known its preference but did not do so. Moreover, the Respondent used English for its informal communications with the Center in the current dispute.
The Panel also finds that substantial additional expense and delay would likely be incurred if the Complaint had to be translated into Russian.
Taking all these circumstances into account, this Panel finds that it is appropriate to exercise its discretion and allow the proceedings to be conducted in English.
C. Consent to Transfer
Section 4.10 of the WIPO Overview 3.0 provides that where parties to a UDRP proceeding have not been able to settle their dispute prior to the issuance of a panel decision, but where the respondent has nevertheless given its consent on the record to the transfer remedy sought by the complainant, many panels will order the requested remedy solely on the basis of such consent. In some cases, despite such respondent consent, a panel may in its discretion still find it appropriate to proceed to a substantive decision on the merits, including where the complainant has not agreed to accept such consent and has expressed a preference for a recorded decision.
The Panel is minded to treat the Respondent’s communication of November 27, 2019 directing “to take domains without trial” as a consent to transfer the disputed domain names, however, the Panel will nonetheless proceed to a full substantive decision noting the Complainant’s communication of the same date requesting a full decision on the merits.
D. Identical or Confusingly Similar
According to section 1.7 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (the “WIPO Overview 3.0”) in cases where a domain name incorporates the entirety of a trademark the domain name will normally be considered confusingly similar to that mark for purposes of UDRP standing.
According to 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 (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element.
The disputed domain names include the Complainant’s trademark WHATSAPP, adding descriptive “free”, “frees”, “load” and/or plural suffix “s”, which do not preclude a finding of confusing similarity between the disputed domain names and the Complainant’s trademark.
The gTLD “.com” in the disputed domain names is viewed as a standard registration requirement and is disregarded for the purposes of the confusing similarity test (see, e.g., Rexel Developpements SAS v. Zhan Yequn, WIPO Case No. D2017-0275).
Considering the above the Panel finds that the disputed domain names are confusingly similar to the Complainant’s trademark, therefore, the Complainant has established its case under paragraph 4(a)(i) of the Policy.
E. Rights or Legitimate Interests
The Complainant has established prima facie that the Respondent has no rights or legitimate interests in the disputed domain names.
Furthermore, the Respondent provided no evidence that it holds a right or legitimate interest in the disputed domain names.
The Respondent is not commonly known by the disputed domain names, which could demonstrate its right or legitimate interest (see, e.g., World Natural Bodybuilding Federation, Inc. v. Daniel Jones TheDotCafe, WIPO Case No. D2008-0642).
The Complainant did not license or otherwise agree for use of its priory registered trademarks by the Respondent, thus no actual or contemplated bona fide or legitimate use of the disputed domain name could be reasonably claimed (see, e.g., Sportswear Company S.P.A. v. Tang Hong, WIPO Case No. D2014-1875).
The disputed domain names redirected Internet users to websites with a logo similar to the Complainant’s trademark and with a design similar to the Complainant’s website to make the Internet users believe that they actually accessed the Complainant’s website, or a website authorized by the Complainant. Past UDRP panels confirmed that such actions prove that a registrant has no rights or legitimate interests in a disputed domain name (see Daniel C. Marino, Jr. v. Video Images Productions, et al., WIPO Case No. D2000-0598; Houghton Mifflin Co. v. The Weathermen, Inc., WIPO Case No. D2001-0211).
Considering the above the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name, therefore, the Complainant has established its case under paragraph 4(a)(ii) of the Policy.
F. Registered and Used in Bad Faith
At the time of the registration of the disputed domain names the Respondent knew, or at least should have known about the existence of the Complainant’s prior registered and known trademark, which confirms the bad faith (see, e.g., The Gap, Inc. v. Deng Youqian, WIPO Case No. D2009-0113).
According to paragraph 4(b)(iv) of the Policy the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith: by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website 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 website or location or of a product or service on your website or location. In this case, the disputed domain names were resolving to websites using the Complainant’s trademarks and designed to intentionally attract, for commercial gain, Internet users by creating likelihood of confusion with the Complainant’s trademark as to the source of the websites and its service and capitalize on the Complainant’s goodwill and reputation. The Panel finds the above confirms the disputed domain names were registered and used in bad faith.
Considering the above, the Panel finds the disputed domain names were registered and are being used in bad faith. Therefore, the Complainant has established its case under 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 names, <freewhatsappload.com>, <loadwhatsapp.com>, <loadwhatsapps.com>, <whatsappfreeload.com>, <whatsappfrees.com> be transferred to the Complainant.
Date: January 10, 2019