WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
WhatsApp Inc. v. Cavin Dace
Case No. D2019-1469
1. The Parties
The Complainant is WhatsApp Inc., United States of America, represented by Hogan Lovells (Paris) LLP, France.
The Respondent is Cavin Dace, United Arab Emirates.
2. The Domain Name and Registrar
The disputed domain name <whatsappgift.club> (“Domain Name”) is registered with NameCheap, Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 25, 2019. On June 25, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the (“Domain Name”). On June 25, 2019, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the (“Domain Name”) which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on June 27, 2019 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on June 28, 2019.
The Center verified that the Complaint together with the amended 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 July 11, 2019. In accordance with the Rules, paragraph 5, the due date for Response was July 31, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 6, 2019.
The Center appointed Dilek Ustun Ekdial as the sole panelist in this matter on August 15, 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
Complainant is a United States technology company providing one of the world’s most popular mobile messaging applications. Founded in 2009 and acquired by Facebook, Inc. in 2014, Complainant allows Internet users to access its messaging platform via smartphones or through its main website at “www.whatsapp.com”. As of January 2019, Complainant’s app had over 1.5 billion monthly active users.
Complainant is the proprietor of numerous trademark registrations for the WHATSAPP mark (the “Mark”), including the following:
- United States trademark No. 3939463 for WHATSAPP, registered on April 5, 2011;
- European Union trademark No. 009986514 for WHATSAPP, registered on October 25, 2011;
- International trademark No. 1085539 for WHATSAPP, registered on May 24, 2011.
In addition to its main website, Complainant has registered numerous domain names containing the Mark, including <whatsapp.net>, <whatsapp.org>, <whatsapp.biz>, <whatsapp.info> as well as under numerous country code extensions such as <whatsapp.de> (Germany), <whatsapp.do> and <whatsapp.com.do> (Dominican Republic), <whatsapp.eu> (European Union), <whatsapp.be> (Belgium), <whatsapp.cl> (Chile), <whatsapp.hk> (Hong Kong), <whatsapp.in>, <whatsapp.co.in> (India), <whatsapp.ly> and <whatsapp.com.ly> (Libya), <whatsapp.mx> (Mexico), whatsapp.ru> (Russia), <whatsapp.rs> (Serbia), <whatsapp.me> (Montenegro), <whatsapp.es> (Spain), <whatsapp.us> (United States), <whatsapp.tw> (Taiwan), <whatsapp.uk>, and <whatsapp.co.uk> (United Kingdom).
The Domain Name <whatsappgift.club> was registered on October 10, 2018 and does not currently resolve a website.
5. Parties’ Contentions
The Complainant alleges the following:
The Complainant has registered trademark rights in WHATSAPP and the Domain Name incorporates the Complainant’s WHATSAPP trademark in its entirety.
The Complainant submits that the Domain Name is confusingly similar to the Complainant’s WHATSAPP trademark. The Complainant states that the addition of the term “gift” reinforces the confusing similarity with the Complainant’s WHATSAPP trademarks and it is generally accepted that the generic Top‑Level Domain (“gTLD”) “.club” is irrelevant when assessing the confusing similarity between the Domain Name and the Complainant’s trademark. Therefore, the Domain Name is confusingly similar to the trademark WHATSAPP.
The Complainant also alleges the following:
The Complainant submits that the Respondent has no rights or legitimate interests in respect of the Domain Name as it is unable to invoke any of the circumstances set out in paragraph 4(c) of the Policy.
The Respondent is not known by the Domain Name, nor has it been licensed or otherwise allowed to make any use of the Complainant’s trademark. Prior to notice of this dispute, the Respondent cannot assert it was using the Domain Name in connection with a bona fide offering of goods nor can the Respondent assert it has made or is currently making a legitimate noncommercial or fair use of the Domain Name without intent for commercial gain, giving it was previously associated with a phishing scam.
Moreover, given the renowned popularity of the Complainant’s trademark, it is impossible to conceive of any use by the Respondent that would be legitimate.
The Complainant adds that, the Domain Name was previously used to point to a website at “www.whatsappgift.club”, which impersonated WhatsApp by featuring its distinctive logo and green colour scheme. The website purported to offer gifts to WhatsApp users and invited Internet users to click on a link “Click Here to Claim Your Gift Now”.
Such use of the Domain Name cannot constitute a bona fide offering of goods or services under the Policy.
The Complainant refers to See Instagram, LLC v. Ellie Walker, WIPO Case No. D2018-0669 (<instagram‑helpsupport.com>) (“The Respondent’s uses of the Domain Name in the present case for a website purportedly allowing Instagram users to request ‘verified badges’ for their profiles by providing their confidential account information (apparently to harvest such confidential data for commercial gain”), having the same “look and feel” as the Complainant’s official Help Centre, falsely suggests affiliation with the Complainant and excludes any finding of a bona fide offering of goods or services, or a legitimate noncommercial or fair use.
The Complainant asserts that the Domain Name was registered and is being used in bad faith.
According to the Complainant, given the Complainant’s renowned and goodwill worldwide, it would be inconceivable for the Respondent to argue that it did not have knowledge of the Complainant’s WHATSAPP trademark at the time of registration of the Domain Name in 2018.
Finally, the Domain Name was registered through a privacy registration service.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 15(a) of the Rules requires the Panel to decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.
Under paragraph 4(a) of the Policy, the Complainant bears the burden of showing:
(i) that the Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) that the Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) that the Domain Name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Domain Name <whatsappgift.club> incorporates the Complainant’s well-known WHATSAPP trademark in its entirety.
The Panel further notes that the term “gift” does not prevent a finding of confusing similarity. See section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), noting the same.
The gTLD “.club” generally is not taken into consideration when examining the confusing similarity between the Complainant’s trademark and the Domain Name.
Therefore, the Panel finds that the Domain Name is confusingly similar to the trademark WHATSAPP in which the Complainant has rights, satisfying the condition of the Policy, paragraph 4(a)(i).
B. Rights or Legitimate Interests
The Respondent has not provided any evidence of the circumstances specified in paragraph 4(c) of the Policy, or any other circumstances giving rise to a right or legitimate interest in the Domain Name.
It is clear that the Respondent has not demonstrated any bona fide offering of goods and services by using the Domain Name. Nor has the Respondent shown that it has been commonly known by the Domain Name. Rather, the evidence of the Complaint suggests that the Respondent has used the Domain Name in an attempt to trade off the goodwill associated with the Complainant’s trademark.
The Complainant also showed, inter alia, that the Respondent has neither a license nor any other permission to use the Complainant’s trademark in the Domain Name.
The Panel finds that the Complainant has made a prima facie case that the Respondent lacks rights or legitimate interests, and the Respondent has failed to demonstrate such rights or legitimate interests.
Therefore, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name.
C. Registered and Used in Bad Faith
The Panel is of the opinion that when the Respondent registered the Domain Name it knew that WHATSAPP was the trademark of the Complainant and registered the Domain Name to take advantage of the trademark; accordingly, the Panel finds that the Respondent registered the Domain Name in bad faith.
The use of the Domain Name as part of a phishing scam, by copying the Complainant’s well-known WHATSAPP trademark, obviously constitutes use in bad faith and the fact that the Domain Name does not currently resolve to an active website does not alter this conclusion, since passive holding of a domain name containing a famous trademark can still constitute bad faith.
There is no suggestion that the Respondent had any intention of legitimate use, that it enjoys a legitimate connection to the Domain Name or that there is conceivable good faith use for the Domain Name. After examining all circumstances surrounding the registration and use of the Domain Name, the Panel finds that the Respondent registered and is using the Domain Name in bad faith.
Accordingly, the Panel finds that the Complainant has satisfied the third element 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 name, <whatsappgift.club> be transferred to the Complainant.
Dilek Ustun Ekdial
Date: September 2, 2019