WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

WhatsApp Inc. v. Domain Admin, Whois Privacy Corp.

Case No. D2019-1038

1. The Parties

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

The Respondent is Domain Admin, Whois Privacy Corp., Bahamas.

2. The Domain Name and Registrar

The disputed domain name <bestwhatsappspy.com> (“the Disputed Domain Name”) is registered with TLD Registrar Solutions Ltd. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 6, 2019. On May 6, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On May 7, 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 May 14, 2019. In accordance with the Rules, paragraph 5, the due date for Response was June 3, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 4, 2019.

The Center appointed Jacques de Werra as the sole panelist in this matter on June 14, 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 provider of one of the world’s most popular mobile messaging applications (or “apps”). Founded in 2009 and acquired by Facebook, Inc. in 2014, the Complainant allows its users to exchange messages for free via smartphones. Since its launch in 2009, the Complainant’s application 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 October 2018).

The Complainant operates online, including via its main website “www.whatsapp.com”.

The Complainant owns word trademarks in multiple jurisdictions for the “WhatsApp” term (the Trademark), including:

- United States of America Trademark Registration No. 3939463 registered on April 5, 2011;
- European Union Trademark Registration No. 009986514 registered on October 25, 2011;
- International Trademark Registration No. 1085539 registered on May 24, 2011.

The Disputed Domain Name was registered on February 17, 2015. It resolves to a website that purports to offer information on software that can be used to track or spy on messages, call logs and files shared via the Complainant’s “WhatsApp” application. The Respondent’s website prominently displays the Complainant’s Trademark and logos, together with extensive mention of the Complainant. The Respondent’s website makes use of a similar color scheme as that used for the Complainant’s official website. The Respondent’s website makes several references to a spy software program called “mSpy”, together with several links that lead Internet users to the website “www.mspytracker.com”, where subscriptions for use of the “mSpy” software are offered for a fee.

5. Parties’ Contentions

A. Complainant

The Complainant submits that the Disputed Domain Name is confusingly similar to trademarks in which the Complainant has rights, particularly because the addition of the descriptive terms “best” and “spy” does not prevent a finding of confusing similarity with the Complainant’s Trademark, which remains clearly recognizable in the Disputed Domain Name.

The Complainant asserts that the Respondent is unable to invoke any of the circumstances set out in paragraph 4(c) of the Policy, in order to demonstrate rights or legitimate interests in 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 the Trademark, in a domain name or otherwise. The Respondent is not using the Disputed Domain Name in connection with a bona fide offering of goods or services, within the meaning of paragraph 4(c)(i) of the Policy. The Respondent’s registration of the Disputed Domain Name violates the Complainant’s Brand Guidelines (see “www.whatsappbrand.com”)which prohibit the registration of domain names that could be confused with “WhatsApp”. The Respondent further makes use of the Complainant’s distinctive color scheme, Trademark and logos on its website, without anything on the Respondent’s website in the form of a disclaimer indicating that it is not operated by, sponsored by or affiliated with the Complainant. Rather, the layout and contents of the Respondent’s website creates a misleading impression of association between the Respondent’s website and the Complainant, and in turn, the third-party website to which Internet traffic is driven from the Respondent’s website.

The Respondent cannot legitimately claim to be commonly known by the Disputed Domain Name within the meaning of paragraph 4(c)(ii) of the Policy because the Respondent has registered the Disputed Domain Name using a privacy service, and the identity of the underlying registrant is not known. At best, the Respondent may assert that it trades under the name “Best WhatsApp Spy”; however, that does not extend authority to the Respondent to register a domain name containing the Complainant’s Trademark, or to use such a domain name to drive Internet users to a website that promotes third-party software. Furthermore, to the best of the Complainant’s knowledge, the Respondent has not secured or sought to secure any trademark rights in the terms “whatsapp” or “best whatsapp spy”.

The Complainant further asserts that the Respondent is not currently making a legitimate noncommercial or fair use of the Disputed Domain Name within the meaning of paragraph 4(c)(iii) of the Policy. Although the Respondent’s website may give an initial impression of being a website providing information about software that may be used to monitor and protect children, closer examination of the Respondent’s website reveals that it is aimed to promote the “mSpy” spyware, with several links on the Respondent’s website leading to the third-party website “www.mspytracker.com”, where licenses for use of the “mSpy” spyware are offered for a fee. It is likely that the Respondent receives click-through revenue from such redirection, and in any event, the redirection of Internet users to a third-party commercial website cannot be considered a legitimate noncommercial or fair use of the Disputed Domain Name.

The Complainant submits that the Respondent registered the Disputed Domain Name in full knowledge of the Complainant’s rights, without authorization to do so, because of the strength and renown of the Complainant’s Trademark and also because the content of the Respondent’s website clearly demonstrates actual knowledge of the Complainant and its Trademark, as it makes multiple references to the Complainant, its messaging services, and makes prominent use of the Complainant’s distinctive colour scheme and logos on its website. In addition, the Disputed Domain Name is used in connection with a website that offers information about how third-parties may use spyware to monitor and spy on “WhatsApp” users’ vis-à-vis activities the Complainant’s “WhatsApp” application, and the Respondent’s website does not contain a disclaimer to clarify the absence of any relationship with the Complainant even if the Respondent’s website has a similar look and feel with the official website of the Complainant, and mentions the Complainant and its products so that it is more likely than not that Internet users would assume that the Respondent’s website is affiliated with or operated or approved by the Complainant. In addition, the primary use of the website appears to be to drive Internet traffic to the third-party website “www.mspytracker.com”, where subscriptions to third-party spyware software are offered for a fee. It is more likely than not that the Respondent receives click-through revenue from the redirection of Internet traffic, and in any event, the owner of the website at “www.mspytracker.com” ultimately derives commercial advantage from the Respondent’s unauthorized use of the Complainant’s Trademark in the Disputed Domain Name and on its website. The third-party “mSpy” software may in itself be legitimate but the registration and use of a domain name incorporating the Complainant’s Trademark to promote such software is not.

As a result, the Complainant submits that by registering and using the Disputed Domain Name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with the Complainant’s Trademark as to the source, sponsorship, affiliation, or endorsement of its website or other online location, pursuant to paragraph 4(b)(iv) of the Policy. The Respondent’s registration of the Disputed Domain Name using a privacy service to conceal its identity, whilst offering no specific contact information on the Respondent’s website, may, in the circumstances, be considered another indication of the Respondent’s bad faith registration and use of the Disputed Domain Name.

B. Respondent

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

6. Discussion and Findings

Paragraph 4(a) of the Policy provides that a complainant must prove each of the following three elements in order to succeed in a UDRP proceeding:

(i) the respondent’s domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and

(ii) the respondent has no rights or legitimate interests in respect of the domain name; and

(iii) the respondent’s domain name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

The Panel is satisfied that the Complainant has rights to a trademark or service mark as reflected in the Trademark.

A comparison between the Disputed Domain Name and the Trademark shows that the Disputed Domain Name can be considered as confusingly similar to the Trademark, because the addition of the descriptive terms “best” and “spy” to the Trademark in the Disputed Domain Name does not prevent a finding of confusing similarity with the Complainant’s Trademark, which remains clearly recognizable in the Disputed Domain Name and constitutes its distinctive element. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.8.

As a result, based on the rights of the Complainant in the Trademark and on the confusing similarity between the Trademark and the Disputed Domain Name, the Panel finds that the condition of paragraph 4(a)(i) of the Policy is met.

B. Rights or Legitimate Interests

Pursuant to paragraph 4(c) of the Policy, the Respondent may establish rights to or legitimate interests in the Disputed Domain Name by demonstrating any of the following:

(i) before any notice to it of the dispute, the Respondent’s use of, or demonstrable preparations to use, the Disputed Domain Name or a name corresponding to the Disputed Domain Name in connection with a bona fide offering of goods or services; or

(ii) the Respondent has been commonly known by the Disputed Domain Name, even if it has acquired no trademark or service mark rights; or

(iii) the Respondent is making a legitimate noncommercial or fair use of the Disputed Domain Name, without intent for commercial gain, to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

Although a complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, it is required to make out a prima facie case that the respondent lacks rights or legitimate interests, and once such prima facie case is made the burden of production shifts to the respondent to come forward with relevant evidence of rights or legitimate interests in the domain name. See WIPO Overview 3.0, section 2.1.

In the Panel’s opinion, the Complainant has made a prima facie case against the Respondent. The Respondent indeed registered the Disputed Domain Name which integrates the Trademark as its distinctive element without the authorization of the Complainant, in a way that can only reasonably be explained as a reference to the Complainant’s Trademark. This is confirmed by the content and features of the website operated by the Respondent in connection with the Disputed Domain Name which replicates the Complainant’s Trademark and the logo identifying the “WhatsApp” application of the Complainant and thus clearly refers to the Complainant and to the Trademark.

The Complainant has established prima facie that the Respondent has no rights or legitimate interests in the Disputed Domain Name, particularly because the Respondent has not been licensed to use the Trademark, because it is not commonly known by the Disputed Domain Name, and because the Respondent does not use the Disputed Domain Name in connection with a bona fide offering of goods or services.

As a matter of principle, a respondent’s use of a domain name will not be considered “fair” if it falsely suggests affiliation with the trademark owner. See WIPO Overview 3.0, section 2.5. In this case, this is precisely what the Respondent does by the use of the Disputed Domain Name in the website which replicates the Complainant’s Trademark and the logo identifying the “WhatsApp” application of the Complainant.

The Respondent’s website specifically does not contain any disclaimer by which it would indicate that the products to which it points (by redirecting its website users to the third-party website “www.mspytracker.com”, where subscriptions to third-party spyware software are offered for a fee) have no connection with the Complainant and the Complainant’s Trademark. On this basis, the Panel considers that the use of the Dispute Domain Name cannot be considered as giving rise to rights or legitimate interests of the Respondent in the Disputed Domain Name. The Panel finds support for this in previous UDRP decisions rendered in disputes where respondents’ activities related to software products that interoperated with or offered services for the ones of the complainants. See Bayerische Motoren Werke AG v. WhoisGuard Protected, WhoisGuard, Inc. / Ammar Issa, WIPO Case No. D2018-2265 (“Nowhere is it made clear, for example by prominent disclaimer, that the Respondent’s activities are independent of the Complainant and, indeed, the contrary is demonstrated by the appearance of the Respondent’s website”); see also Digium Inc. v. Asterisk Agent / Technical Support, Product Response, WIPO Case No. D2018-2435.

The Complainant claims that the Respondent’s registration and use of the Disputed Domain Name violates the Complainant’s Brand Guidelines (see “www.whatsappbrand.com“)which prohibit the registration of domain names that could be confused with the Trademark. To the extent that the Complainant’s guidelines do not correspond to the UDRP substantive factors (under paragraph 4(a) of the Policy) that the Panel must apply, the Panel does not consider that it needs to discuss whether the Respondent has breached the Complainant’s Brand Guidelines (which would presuppose that they would be binding upon the Respondent) and what would be the consequences of a potential breach of these guidelines.

In any event, the Panel holds that the Respondent who has not participated in the proceedings has not brought any evidence supporting its potential rights to or legitimate interests in the Disputed Domain Name.

On this basis, the Panel accepts the Complainant’s prima facie showing so that it was consequently up to the Respondent to come forward with evidence of rights or legitimate interests in the Disputed Domain Name, which has not been done given the Respondent’s default in this proceeding.

Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in the Disputed Domain Name and that that the condition of paragraph 4(a)(ii) of the Policy is met.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy states that any of the following circumstances, in particular but without limitation, shall be considered evidence of registration and use of a domain name in bad faith:

(i) circumstances indicating that the respondent registered or acquired the disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the disputed domain name registration to the complainant (the owner of the trademark or service mark) or to a competitor of the complainant, for valuable consideration in excess of documented out-of-pocket costs directly related to the disputed domain name;

(ii) circumstances indicating that the respondent registered the disputed 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 the respondent has engaged in a pattern of such conduct;

(iii) circumstances indicating that the respondent registered the disputed domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) circumstances indicating that the respondent intentionally is using the disputed domain name in an attempt to attract, for commercial gain, Internet users to its 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 the respondent’s website or location or of a product or service on its website or location.

The examples of bad faith registration and use set forth in paragraph 4(b) of the Policy are not meant to be exhaustive of all circumstances from which such bad faith may be found. See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003. The overriding objective of the Policy is to curb the abusive registration of domain names in circumstances where the registrant is seeking to profit from and exploit the trademark of another. See Match.com, LP v. Bill Zag and NWLAWS.ORG, WIPO Case No. D2004-0230.

In this case, the Panel holds that the Respondent registered the Disputed Domain Name in bad faith because the Trademark distinctively identifies the Complainant and the Complainant’s Trademark so that the choice of the Disputed Domain Name cannot reasonably be explained otherwise than as a reference to the Complainant and to the Trademark. There can be no doubt about this in view of the content of the website associated with the Disputed Domain Name. The Panel notes in this respect that the Trademark’s brand recognition on a global basis is duly established. See e.g. WhatsApp, Inc. v. Domain Manager, SHOUT marketing SL, and Gonzalo Gomez Rufino, River Plate Argentina, and Gonzalo Gomez Rufino, SHOUT Marketing SL, WIPO Case No. D2018-1581. The use of the Disputed Domain Name which makes several references to the spy software program “mSpy”, and contains links that lead Internet users to the website “www.mspytracker.com”, where subscriptions for use of the “mSpy” software are offered for a fee, without any disclaimer clarifying that it has no connection with the Complainant, constitutes a bad faith use of the Disputed Domain Name.

These elements typically constitute circumstances establishing that the Respondent intentionally is using the Disputed Domain Name in an attempt to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with the Complainant’s Trademark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website or location (or of a product or service on its website or location) under paragraph 4(b)(iv) of the Policy. It can be noted that another UDRP panel has similarly decided that the use of various dispute domain names containing the Trademark in connection with the sale of “WhatsApp” spy software constituted bad faith use under the UDRP. See WhatsApp Inc. v. Migue Guerrero, Marketing y Webs Guerrero L, WIPO Case No. D2018-1631 (relating to <espiarconversacionesdewhatsapp.com>, <espiar-whatsapp.com>, and <spy-whatsapp.com> – among other domain names -).

The Panel also notes that that Disputed Domain Name was registered on February 17, 2015 and that the website associated to the Disputed Domain Name seems to have been in use since then. Given that the UDRP proceedings have been initiated only in May 2019, more than four years have elapsed since the registration of the Disputed Domain Name. However, the passing of time since the registration and initial use of the Disputed Domain Name and the initiation of the UDRP proceedings does not negatively affect the position of the Complainant. It is indeed well established that the mere delay between the registration of a domain name and the filing of a complaint neither bars a complainant from filing such case, nor from prevailing on the merits. See WIPO Overview 3.0, section 4.17.

On this basis, the Panel finds that the Respondent registered and is using the Disputed Domain Name in bad faith pursuant to paragraph 4(b) of the Policy, so that the conditions of paragraph 4(a)(iii) of the Policy are met.

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 Name <bestwhatsappspy.com> be transferred to the Complainant.

Jacques de Werra
Sole Panelist
Date: June 28, 2019