WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

WhatsApp Inc. v. Emrecan Yildirimlar

Case No. D2019-0895

1. The Parties

The Complainant is WhatsApp Inc., United States of America (“United States”), represented by Hogan Lovells (Paris) LLP, France.

The Respondent is Emrecan Yildirimlar, Turkey.

2. The Domain Names and Registrar

The disputed domain names <topluwhatsapp.com> and <whatsappdantoplusms.com> are registered with GoDaddy.com, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 19, 2019. On April 23, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On April 23, 2019, 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 April 26, 2019. In accordance with the Rules, paragraph 5, the due date for Response was May 16, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 17, 2019.

The Center appointed Kaya Köklü as the sole panelist in this matter on May 21, 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 a United States based company, which provides a service to exchange messages for free via smartphones. Based on uncontested information provided in the case record, the Complainant has 1.5 billion monthly users worldwide (cf. Annex 5 to the Complaint).

The Complainant is the owner of the word and figurative mark WHATSAPP, which is registered in a large number of jurisdictions. For instance, the Complainant is the owner of the United States Trademark Registration No. 3939463, registered on April 5, 2011. The Complainant is further the owner of the Turkish Trademark Registration No. 2011 70159, registered on December 28, 2012. The registered trademarks provide protection for various goods and services, in particular International Classes 9, 38 and 42 (cf. Annex 11 to the Complaint).

The Complainant holds and operates its main website at “www.whatsapp.com”. Furthermore, the Complainant is the registered owner of many additional domain names consisting of or including the WHATSAPP trademark (cf. Annex 6 to the Complaint).

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

<topluwhatsapp.com> July 26, 2017
<whatsappdantoplusms.com> July 11, 2018

The Respondent is an individual from Turkey.

At the time of the decision, the disputed domain names did not resolve to an active website. However, the Respondent made use of the Complainant’s word and figurative trademarks at previously associated websites and stated in its copyright notice “Copyright 2017 Toplu Whatsapp Mesaj Gönderim Sistemi”, which is Turkish and means in English language “Copyright 2017 Bulk Whatsapp Message Delivery System”, (cf. Annex 8 to the Complaint).

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 names at no costs. This approach remained unanswered by the Respondent.

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 WHATSAPP trademark.

Furthermore, the Complainant argues that the Respondent has no rights or legitimate interests in respect of the disputed domain names.

Finally, it is argued that the Respondent has registered and is using the disputed domain names in bad faith. The Complainant believes that the Respondent was fully aware of the Complainant’s trademarks, when registering the disputed domain names. The Complainant is further of the opinion that the Respondent apparently tries to gain illegitimate benefits by freeriding on the goodwill of its WHATSAPP trademark.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

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 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 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 WHATSAPP trademarks, which are registered in many jurisdictions since at least 2011, including in Turkey. Due to the wide recognition of the Complainant’s trademark also in Turkey, the Panel believes that WHATSAPP is a well-known trademark.

The Panel finds that the disputed domain names are confusingly similar to the Complainant’s WHATSAPP trademark. Both disputed domain names comprise the WHATSAPP trademark in its entirety, combined with descriptive Turkish terms like “toplu” or “toplu sms”, which means “bulk” or “bulk sms” in the English language.

As stated at section 1.7 and 1.8 of the WIPO Overview 3.0, where the relevant is recognizable within the disputed domain name, the addition of other terms would generally not prevent a finding of confusing similarity. Particularly, the mere addition of the above mentioned dictionary terms does, in view of the Panel, not serve to avoid a finding of confusing similarity between the disputed domain names and the Complainant’s WHATSAPP trademark.

In view of the above, 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.

The Panel finds that the Complainant has satisfied this requirement, while the Respondent has failed to file any evidence or make any convincing argument to demonstrate rights or legitimate interests in the disputed domain names according to the Policy, paragraphs 4(a)(ii) and 4(c).

In its Complaint, the Complainant has provided uncontested prima facie evidence that the Respondent has no rights or legitimate interests to use the Complainant’s trademark WHATSAPP in a confusingly similar way within the disputed domain names. In addition, the Panel notes, the nature of the disputed domain names carries a risk of implied affiliation or association, as stated in section 2.5.1 of the WIPO Overview 3.0.

There is also no indication in the current record that the Respondent is commonly known by the disputed domain names. In the absence of a response, the Respondent has particularly failed to demonstrate any of the other non-exclusive circumstances evidencing rights or legitimate interests under the Policy, paragraph 4(c) or other evidence of rights or legitimate interests in the disputed domain names.

The Panel particularly notes that the Respondent’s websites which were linked to the disputed domain names did not adequately disclose the relationship, or rather the lack thereof, between the Respondent and the Complainant, thus creating the false impression that the Respondent might be an official and authorized provider of the Complainant’ services in Turkey. In view of the Panel, this takes the Respondent out of any conceivable safe harbour for purposes of the second element.

As a conclusion, the Panel finds that the Complainant has also satisfied the requirements of paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

The Panel believes that the Respondent deliberately attempted to create a likelihood of confusion among Internet users in order to obtain private information and/or to freeride on the goodwill of the Complainant’s WHATSAPP trademark, for illegitimate purposes, particularly for the following reasons.

At the date of registration of the disputed domain names, the Respondent was obviously well aware of the Complainant’s well-known WHATSAPP trademark.

Furthermore, the way of previously using the Complainant’s trademark on websites linked to the disputed domain names (cf. Annex 8 to the Complaint), indicates that the Respondent has deliberately chosen the Complainant’s trademark as the distinctive part of the disputed domain names to mislead Internet users and to gain illegitimate benefit by freeriding on the notoriety and goodwill of the Complainant’s WHATSAPP trademark.

Additionally, the Panel finds that the Respondent’s failure to respond to the Complaint also supports the conclusion that it has registered and is using the disputed domain names in bad faith.

The fact that the disputed domain names are currently inactive does not change the Panel’s findings in this respect.

Taking all facts of the case into consideration, the Panel believes that this is a typical cybersquatting case, which the UDRP was designed to stop. In view of the Panel, 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 <topluwhatsapp.com> and <whatsappdantoplusms.com> be transferred to the Complainant.

Kaya Köklü
Sole Panelist
Date: June 3, 2019