WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
WhatsApp Inc. v. Sudheer Kumar
Case No. D2019-1632
1. The Parties
Complainant is WhatsApp Inc., United States of America (“United States”), represented by Hogan Lovells (Paris) LLP, France.
Respondent is Sudheer Kumar, India.
2. The Domain Name and Registrar
The disputed domain name <whatsappgroupjoinlink.com> is registered with GoDaddy.com, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 11, 2019. On July 11, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 11, 2019, the Registrar transmitted by email to the Center its verification response confirming that 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 Respondent of the Complaint, and the proceedings commenced on July 12, 2019. In accordance with the Rules, paragraph 5, the due date for Response was August 1, 2019. On July 17, 2019, the Center received an email communication from Respondent in relation to settlement with Complainant. On July 17, 2019, the Center sent an email to the parties regarding possible settlement. On July 17, 2019, Complainant requested the Center to proceed to panel appointment, so that a decision may be issued on the merits.
The Center appointed Roberto Bianchi as the sole panelist in this matter on August 8, 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, founded in 2009, is the provider of one of the world’s most popular mobile messaging applications. In 2004, Complainant was acquired by Facebook, Inc.
Complainant’s trademark registrations include the following:
WHATSAPP, Indian Trademark Registration No. 2149059, applied for on May 24, 2011, and subsequently registered, covering instant messaging software, et cetera, in Class 9. User date: September 10, 2009;
WHATSAPP, United States Trademark Registration No. 3939463, registered on April 5, 2011, filed on April 1, 2009, covering application service provider, et cetera, in Class 42. First use in commerce: February 24, 2009;
WHATSAPP, European Union Trademark Registration No. 009986514, registered on October 25, 2011, filed on May 23, 2011, covering various apparatus and instruments, et cetera, in Class 9; telecommunications and various telecommunication services, et cetera, in Class 38; scientific and technological services, et cetera, in Class 42; and
WHATSAPP, International Trademark Registration No. 1085539, registered on May 24, 2011, covering instant messaging software and other software in Class 9; telecommunication services, et cetera, in Class 38.
The record for the disputed domain name on the corresponding WhoIs database was created on December 24, 2017. The disputed domain name resolves to a website offering Internet users to select and join WhatsApp groups from a list provided on the website, as well as other services related to users joining such groups.
5. Parties’ Contentions
Complainant contends as follows:
The disputed domain name incorporates Complainant's WHATSAPP trademark in its entirety as its leading element, together with the descriptive terms "group join link" as a suffix, which does not prevent a finding of confusing similarity with Complainant's WHATSAPP trademark. Therefore, the disputed domain name is confusingly similar to Complainant's trademarks.
Respondent has no rights or legitimate interests in respect of the disputed domain name. Respondent is unable to invoke any of the circumstances set out in paragraph 4(c) of the Policy. Respondent is not a licensee of Complainant, nor has Respondent been otherwise authorized by Complainant to make any use of its WHATSAPP trademark.
Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services. Complainant's Brand Guidelines prohibit the registration of domain names that could be confused with WHATSAPP. Respondent's website may have the appearance of merely being a platform for Internet users to join WhatsApp groups. Prior UDRP panels have recognized that third-party service providers using a domain name containing a complainant's trademark may be making a bona fide offering of goods and services and thus have a legitimate interest in such domain name applying the cumulative requirements set out in Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903 (“Oki Data”). In addition to the listing of various WhatsApp groups, Respondent's website includes substantial amounts of pay-per-click (“PPC”) advertising to various third-party goods and services, together with an offer for "paid advertising" services, from which Respondent presumably derives commercial benefit. As such, Respondent cannot be said to be using the website to offer only the trademarked goods, as required in Oki Data. In addition, there is no visible disclaimer accurately disclosing Respondent's lack of relationship with Complainant. In fact, Respondent's website does include the following:
“DESCLAIMER [sic] YOU WILL FIND ALL TYPES OF WHATSAPP GROUP LINKS HERE
These groups are public WhatsApp group links and none of the group belongs to us and we are not responsible for any damage or harm caused to you because of the group so join at your own will & risk.
– Make sure you strictly follow the group rules
– Not all group are for chatting
– Do not spam in the group.
SHARE YOUR WHATSAPP GROUP LINKS WITH US VIA CONTACT US PAGE
JOIN OUR FACEBOOK GROUP – WHATSAPP GROUP LINKS.”
In this text, Respondent does disclaim responsibility for the groups themselves, but it does not clarify its position in relation to Complainant, i.e., the owner of the WHATSAPP trademark. As such, Respondent's website may mislead Internet users into believing that it is authorized by Complainant, when in fact it is not.
There is no license or any other authorization for Respondent to use the disputed domain name as shown. Therefore, Respondent's use of the disputed domain name is not bona fide within the meaning of paragraph 4(c)(i) of the Policy.
Respondent cannot legitimately claim to be commonly known by the disputed domain name. Respondent's name is listed in the WhoIs record as "Sudheer Kumar". Furthermore, Respondent has not secured or sought to secure any trademark rights in the terms "whatsapp" or "whatsapp group join link".
Respondent is not making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain misleadingly to divert consumers or to tarnish the trademark or service mark at issue, within the meaning of paragraph 4(c)(iii) of the Policy. Since Respondent's website contains substantial amounts of PPC advertising, it is likely that Respondent (or another) receives click-through revenue from such advertising. Respondent also appears to be offering paid advertising services via its website, as at the “Contact Us” page, it states, “Contact us for paid advertising (We get 20k+ daily traffic)”.
Respondent lists a large number of WhatsApp groups that promote the sharing of “adult”, i.e., pornographic content. While the exchange of (legal) pornographic content between consenting adults via Complainant's WhatsApp service may not be prohibited per se, Complainant submits that the active association on Respondent’s website between the exchange of such content and Complainant's services has the effect of tarnishing Complainant's trademark. In fact, there is an appreciable risk that Respondent's website is being used in connection with the exchange of child exploitation images.
The disputed domain name was registered and is being used in bad faith. Complainant's WHATSAPP trademark is a coined term, exclusively associated with Complainant and its messaging services. This trademark is inherently distinctive and well known throughout the world in connection with its messaging application as recognized by prior UDRP panels. The content of Respondent's website clearly demonstrates actual knowledge of Complainant and its trademark, as it makes multiple references to Complainant. The content of Respondent's website clearly targets Complainant and its messaging services, while providing a substantial amount of sponsored advertising to unrelated third-party products. In addition, Respondent's website serves to associate Complainant's services with pornographic content, tarnishing Complainant's trademark, and has possibly been used in connection with the illegal dissemination of child pornography. Complainant therefore submits that Respondent registered the disputed domain name in full knowledge of Complainant's rights, without authorization to do so, in bad faith.
Respondent's website may mislead Internet users into believing that Complainant authorizes Respondent’s website, which is not the case. Respondent's website includes a substantial amount of PPC advertising. It is more likely than not that Respondent receives click-through revenue from such PPC advertising. In any event, the owners of such third-party products ultimately derive commercial advantage from Respondent's unauthorized use of Complainant's trademark in the disputed domain name and on his website. Furthermore, Respondent's website solicits Internet users to contact Respondent in order to make use of Respondent's “paid advertising”, which is mentioned on Respondent's “Contact us” page.
By registering and using the disputed domain name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to his website or other online location, by creating a likelihood of confusion with Complainant's WHATSAPP trademark as to the source, sponsorship, affiliation, or endorsement of his website or other online location, pursuant to paragraph 4(b)(iv) of the Policy. In addition, the website at the disputed domain name promotes the use of Complainant's messaging services in connection with the sharing of pornographic material, which gives a negative image of Complainant's services, tarnishing its trademark. Dissemination of child pornography via WhatsApp groups accessible via Respondent's website is clearly illegal.
Respondent did not submit a formal Response. However, on July 17, 2019, the Center received the following informal email communication from Respondent:
I am a blogger and I have no intention to create bad to WhatsApp.
I will cancel the domain immediately as mentioned in the settlement form.
I regret for using WhatsApp in my domain name. I don't know that I should not use trademark names in domains. I learned a lesson and I apologize WhatsApp for using their name.”
6. Discussion and Findings
A. Identical or Confusingly Similar
Complainant has satisfied the Panel with printouts from the corresponding official databases that it has rights in the WHATSAPP trademark for purposes of Policy paragraph 4(a)(i). See section 4 above.
The Panel notes that in the disputed domain name, Complainant’s trademark WHATSAPP is incorporated in its entirety, with the addition of the dictionary terms “group”, “join” and “link”. In the view of the Panel, these additions would not prevent a finding of confusing similarity with Complainant’s mark. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.8 (“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 Panel finds that the disputed domain name is confusingly similar to Complainant’s trademark WHATSAPP.
B. Rights or Legitimate Interests
The Panel notes that there is no evidence that Respondent has a license or an authorization from Complainant to use the WHATSAPP trademark in any way. The Panel also notes that as per the relevant WhoIs data, the name of the registrant of the disputed domain name, i.e., Respondent, is Sudheer Kumar. There is no evidence that Respondent is known, commonly or otherwise, by the disputed domain name.
The Panel also notes that Respondent is using the disputed domain name in a website offering Internet users to select and join WhatsApp groups from a list provided on the website, as well as other services related to users joining such groups. Complainant has shown with a screenshot taken from the website at the disputed domain name that the website describes itself as follows: “This blog is specially dedicated to whatsapp where most of the content will be about whatsapp group links and the rest will be related to whatsapp. I do share all kinds of WhatsApp group links and I will be updating the group links regularly,
so stay updated for the new links and join them. Feel free to share your experience about this WhatsApp group join links.”
Having visited the website at the disputed domain name, the Panel further notes that the website contains advertisements from “www.asiandate.com” (apparently a website offering chat services), as well as other advertisements such as web hosting and shared hosting, a list of items advertised on “www.amazon.in”, et cetera. This is clear evidence that the website at the disputed domain name, apart for providing services related to WhatsApp groups, is openly generating income from advertising intended for Internet users presumably looking for Complainant and its WhatsApp services.
Although the website at the disputed domain name does contain a disclaimer, there is no mention whatsoever as to the relationship of the website to Complainant’s WhatsApp services (or the lack of any such relationship). The Panel agrees with Complainant that Respondent’s silence about this essential information prevents the application of the doctrine of Oki Data, requiring inter alia that the nature of the relationship to the Complainant be clearly disclosed.
From these facts, the Panel concludes that Respondent, by creating confusion with Complainant, is generating traffic and income from Internet users presumably looking for Complainant’s WhatsApp services and groups. Clearly, this is neither a bona fide offering pursuant to Policy paragraph 4(c)(i), nor a fair or legitimate noncommercial use without intent to mislead consumers pursuant to Policy paragraph 4(c)(iii).
Complainant has thus succeeded in raising a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name. For its part, Respondent failed to present the Panel with any explanation or reasons for having registered the disputed domain name, or for using it as shown. In its informal email communication to the Center, Respondent states that it should not have used (third party) trademarks in a domain name, and apologizes for having used Complainants’ trademark in the disputed domain name. See section 5.B. above.
For these reasons, the Panel finds that Respondent does not have any rights or legitimate interests in the disputed domain name.
C. Registered and Used in Bad Faith
The Panel, sharing the views of prior UDRP panels, notes that Complainant’s WHATSAPP trademark and services are well known and famous worldwide. See e.g. WhatsApp, Inc. v. Whois Agent, Whois Privacy Protection Service, Inc. / Mohammed Alkalbani, Ops Alkalbani, M. Rashid Alkalbani, WIPO Case No. D2016-2299 (“The Respondent’s knowledge of the WHATSAPP mark is particularly obvious, given the worldwide renown it has acquired amongst mobile applications, the impressive number of users it has gathered since the launch of the WhatsApp services in 2009…”). See also WhatsApp Inc. v. Huseyin Ugurlukilic, Ahmet Cebi, Resul Deger, WIPO Case No. D2019-0311 (“…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 Respondents knew or should have known of the Complainant …”).
The Panel also notes that Complainant registered its WHATSAPP trademark in India, the country of residence of Respondent, several years before the disputed domain name was registered. More important, as shown above, the services offered on the website at the disputed domain name relate precisely to WhatsApp and WhatsApp groups. This means that Respondent perfectly knew of, and targeted Complainant at the time of registering the disputed domain name. In the circumstances of this case, this means that the registration of the disputed domain name was in bad faith.
As shown above, Respondent is using the disputed domain name in a website offering to provide links to join WhatsApp groups from a list of groups. The website also displays various advertisements of a commercial nature from third parties, such as offerings on “www.amazon.in”, web hosting with BlueHost, shared hosting from “www.india.reseller.com”, et cetera. In addition, the disclaimer on the website at the disputed domain name does not establish what kind of relationship, if any, exists between the website and Complainant.
The Panel concludes that Respondent, by using the disputed domain name as shown, has intentionally attempted to attract, for commercial gain, Internet users to its website or other online locations, by creating a likelihood of confusion with Complainant’s WHATSAPP mark as to the source, sponsorship, affiliation, or endorsement of its website or location or of a product or service on its website or location. This is a circumstance of registration and use in bad faith of the disputed domain name pursuant to Policy paragraph 4(b)(iv).
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 <whatsappgroupjoinlink.com> be transferred to Complainant.
Date: August 21, 2019