WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

WhatsApp, Inc. v. Gonzalo Gomez Rufino, SHOUT Marketing SL

Case No. D2019-1098

1. The Parties

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

The Respondent is Gonzalo Gomez Rufino, SHOUT Marketing SL, Spain.

2. The Domain Names and Registrars

The disputed domain names <concursoswhatsapp.com> and <contestwapp.com> are registered with Hosting Concepts B.V. d/b/a Openprovider.

The disputed domain names <whatsappforbusiness.marketing> and <whatsappmarketing.africa> are registered with Marcaria.com International, Inc.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 10, 2019. On May 13, 2019, the Center transmitted by email to the Registrars a request for registrar verification in connection with the disputed domain names. On May 13, 2019, the Registrar Marcaria.com International, Inc. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant of the disputed domain names <whatsappforbusiness.marketing> and <whatsappmarketing.africa> and providing the contact details. On May 14, 2019, the Registrar Hosting Concepts B.V. d/b/a Openprovider transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant of the disputed domain names <concursoswhatsapp.com> and <contestwapp.com> and providing the contact details.

The Center sent an email communication to the parties on May 16, 2019 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 names is Spanish. The Complainant submitted a request for English to be the language of the proceeding on May 16, 2019. The Respondent did not submit any communication regarding 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, and the proceedings commenced on May 22, 2019. In accordance with the Rules, paragraph 5, the due date for Response was June 11, 2019. An informal email communication from the Respondent was received by the Center on May 16, 2019. No further Response was submitted. The Center notified the Parties that it would proceed to panel appointment on June 13, 2019.

The Center appointed Edoardo Fano as the sole panelist in this matter on June 19, 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.

The Panel has not received any requests from the Complainant or the Respondent regarding further submissions, waivers or extensions of deadlines, and the Panel has not found it necessary to request any further information from the Parties.

Having reviewed the communication records in the case file provided by the Center, the Panel finds that the Center has discharged its responsibility under the Rules, paragraph 2(a), “to employ reasonably available means calculated to achieve actual notice to Respondent”. Therefore, the Panel shall issue its Decision based upon the Complaint, the Policy, the Rules and the Supplemental Rules and without the benefit of a formal Response from the Respondent.

4. Factual Background

The Complainant is WhatsApp Inc., a U.S. technology company providing one of the world’s most popular mobile messaging applications, founded in 2009 and acquired by Facebook, Inc. in 2014, owning several trademark registrations for WHATSAPP, among which:

- European Union Trade Mark Registration No. 009986514 for WHATSAPP, registered on October 25, 2011;

- International Trademark Registration No. 1085539 for WHATSAPP, registered on May 24, 2011.

The Complainant operates on the Internet at several websites, among which “www.whatsapp.com”, “www.whatsapp.net”, “www.whatsapp.org”, “whatsapp.biz”, “whatsapp.info”, as well as many country code extensions.

The Complainant provided evidence in support of the above.

According to the WhoIs records, the disputed domain names were registered on the following dates: <whatsappforbusiness.marketing> on September 11, 2017, <concursoswhatsapp.com> and <contestwapp.com> on May 8, 2018, <whatsappmarketing.africa> on March 15, 2019. When the Complaint was filed, the disputed domain names <whatsappforbusiness.marketing> and <whatsappmarketing.africa> did not resolve to an active website, while the disputed domain names <concursoswhatsapp.com> and <contestwapp.com> were both resolving to the provider’s webpage stating that the website was inactive. The disputed domain names <whatsappforbusiness.marketing> and <contestwapp.com> previously resolved to websites offering tools and information about the Complainant’s service. Additionally, the URL of the website to which the disputed domain name <contestwapp.com> was resolving was “ http://whatsappalertas.contestwapp.com”.

5. Parties’ Contentions

A. Complainant

The Complainant states that the disputed domain names <whatsappforbusiness.marketing>, <whatsappmarketing.africa>, <concursoswhatsapp.com> and <contestwapp.com> are confusingly similar to its trademark WHATSAPP, since three of them fully incorporate the Complainant’s trademark and the fourth fully incorporate a common abbreviation of the Complainant’s trademark, namely “wapp”.

Moreover, the Complainant asserts that the Respondent has no rights or legitimate interests in respect of the disputed domain names since it has not been authorized by the Complainant to use them.

The Complainant submits that the Respondent has registered the disputed domain names 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 names and two of them, namely <whatsappforbusiness.marketing> and <contestwapp.com>, were previously used to offer tools and information about the Complainant’s service to intentionally attract, for commercial gain, Internet users to their website by creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation, or endorsement of the website. The fact that the other two disputed domain names, namely <whatsappmarketing.africa> and <concursoswhatsapp.com>, were not actively used does not prevent a finding of bad faith under the doctrine of passive holding.

B. Respondent

The Respondent has made no formal reply to the Complainant’s contentions. However, the Respondent submitted a one line email communication stating that “contestwapp.com is not whatsapp mention brand here. I dont understand what kind of complaint you are asking”. The Panel considers it as irrelevant, since it does not provide any substantive argument.

A respondent is not obliged to participate in a proceeding under the Policy, but if it fails to do so, reasonable facts asserted by a complainant may be taken as true, and appropriate inferences, in accordance with paragraph 14(b) of the Rules, may be drawn (see, e.g., Reuters Limited v. Global Net 2000, Inc., WIPO Case No. D2000-0441; Microsoft Corporation v. Freak Films Oy, WIPO Case No. D2003-0109; SSL International PLC v. Mark Freeman, WIPO Case No. D2000-1080; Altavista Company v. Grandtotal Finances Limited et. al., WIPO Case No. D2000-0848; Confédération Nationale du Crédit Mutuel, Caisse Fédérale du Crédit Mutuel Nord Europe v. Marketing Total S.A., WIPO Case No. D2007-0288).

6. Discussion and Findings

6.1 Language of Proceedings

According to paragraph 11(a) of the Rules, the Panel has decided that the language of the proceeding will be English. The language of the Registration Agreements is Spanish, however, the Complainant has been able to provide evidence that the Respondent can understand English and that it would be unfair to request the Complainant to translate the Complaint: this is confirmed by the fact that the Respondent replied with a one line email in English to an English/Spanish bilingual communication sent by the Center. Furthermore, the Respondent did not comment on the Complainant’s request to use English and did not submit a formal reply. (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 4.5.1).

6.2 Substantive Issues

Paragraph 4(a) of the Policy lists three elements, which the Complainant must satisfy in order to succeed:

(i) the disputed domain names are 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 disputed domain names; and

(iii) the disputed domain names have been registered and are being used in bad faith.

A. Identical or Confusingly Similar

The Panel finds that the Complainant is the owner of the trademark WHATSAPP both by registration and acquired reputation and that the disputed domain names <whatsappforbusiness.marketing>, <whatsappmarketing.africa>, <concursoswhatsapp.com> and <contestwapp.com> are confusingly similar to the trademark WHATSAPP, since they fully incorporate it. Regarding the <contestwapp.com> disputed domain name, although it does not include the Complainant’s trademark in its entirety, the content of the associated website confirms the Respondent’s intent to create a likelihood of confusion with the Complainant’s trademark and, thus, confirms the Panel’s finding of confusing similarity. Although the content of the website associated with a domain name is usually disregarded by UDRP panels when assessing confusing similarity, in some instances UDRP panels have taken note of the content of the website to confirm confusing similarity where it appears prima facie that the respondent seeks to target a trademark through the dispute domain name. See WIPO Overview 3.0, section 1.15. The fact that the URL of the website to which the disputed domain name was resolving included the trademark in its entirety is an additional factor, which confirms that Panel´s finding of confusing similarity. Moreover, the Panel notes that “wapp” is a common abbreviation of the Complainant’s trademark.

Regarding the addition of the terms “for business”, “marketing”, “concursos” (meaning “competition” in Spanish) and “contest” to the disputed domain names, the Panel notes that it is now well established that the addition of terms or letters to a domain name does not necessarily distinguish the domain name from a trademark (see, e.g., Aventis Pharma SA., Aventis Pharma Deutschland GmbH v. Jonathan Valicenti, WIPO Case No. D2005-0037; Red Bull GmbH v. Chai Larbthanasub, WIPO Case No. D2003-0709; America Online, Inc. v. Dolphin@Heart, WIPO Case No. D2000-0713). The addition of the terms “for business”, “marketing”, “concursos” and “contest” does not therefore prevent the disputed domain names incorporating these terms from being confusingly similar to the Complainant’s trademark.

It is also well accepted that a generic Top-Level Domain (“gTLD”), in this case “.marketing”, “.africa” and “.com”, may be ignored when assessing the similarity between a trademark and a domain name (see, e.g., VAT Holding AG v. Vat.com, WIPO Case No. D2000-0607).

The Panel finds that the Complainant has therefore met its burden of proving that the disputed domain names are confusingly similar to the Complainant’s trademark, pursuant to the Policy, paragraph 4(a)(i).

B. Rights or Legitimate Interests

The Respondent has failed to file a formal Response in accordance with the Rules, paragraph 5.

The Complainant, in its Complaint and as set out above, has established a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain names. It asserts that the Respondent is not using the disputed domain names for a legitimate noncommercial or fair use or in connection with a bona fide offering of goods or services.

The prima facie case presented by the Complainant is enough to shift the burden of production to the Respondents to demonstrate that they have rights or legitimate interests in the disputed domain names. However, the Respondent has not presented any evidence of any rights or legitimate interests it may have in the disputed domain names, and the Panel is unable to establish any such rights or legitimate interests on the basis of the evidence in front of it.

The Panel therefore finds that paragraph 4(a)(ii) of the Policy has been satisfied.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy provides that “for the purposes of paragraph 4(a)(iii) 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:

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

(ii) that [the 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 [the respondent has] engaged in a pattern of such conduct; or

(iii) that [the 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, [the respondent has] intentionally attempted to attract, for commercial gain, Internet users to [the respondent’s] 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 [the respondent’s] website or location”.

Regarding the registration in bad faith of the disputed domain names, the reputation of the Complainant’s trademark WHATSAPP in the field of instant messaging apps for mobile devices is clearly established and the Panel finds that the Respondent knew or should have known of the Complainant and deliberately registered the disputed domain names, especially because the content of the websites where two the disputed domain names, namely <whatsappforbusiness.marketing> and <contestwapp.com>, were redirected consists of the offer of tools and information about the Complainant’s messaging service.

As far as the use in bad faith is concerned, the Panel notes that the disputed domain names <whatsappforbusiness.marketing> and <contestwapp.com> resolved to websites offering tools and information about the Complainant’s messaging service.

The above suggests to the Panel that the Respondent intentionally registered and has been using the disputed domain names <whatsappforbusiness.marketing> and <contestwapp.com> in order to create confusion with the Complainant’s trademark and attract, for commercial gain, Internet users to their website in accordance with paragraph 4(b)(iv) of the Policy.

Regarding the use in bad faith of the disputed domain names <whatsappmarketing.africa> and <concursoswhatsapp.com>, pointing to inactive websites, the Panel considers that bad faith may exist even in cases of so-called “passive holding”, as found in the landmark UDRP decision Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003. In the circumstances of this case, the Panel finds that such passive holding amounts to bad faith use.

The Panel finds that the Complainant has presented evidence to satisfy its burden of proof with respect to the issue of whether the Respondents have registered and are using the disputed domain names in bad faith. The Panel therefore finds that paragraph 4(a)(iii) of the Policy has been satisfied.

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 <whatsappforbusiness.marketing>, <whatsappmarketing.africa>, <concursoswhatsapp.com> and <contestwapp.com> be transferred to the Complainant.

Edoardo Fano
Sole Panelist
Date: July 1, 2019