WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
WhatsApp Inc. v. Milen Radumilo
Case No. D2019-1643
1. The Parties
The Complainant is WhatsApp Inc., United States of America (the “US”), represented by Hogan Lovells (Paris) LLP, France.
The Respondent is Milen Radumilo, Romania.
2. The Domain Name and Registrar
The disputed domain name <whatsappchatgroup.com> is registered with Network Solutions, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 12, 2019. On July 12, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On the same day, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name, which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on July 16, 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 July 22, 2019, including the registrant’s name disclosed by the Registrar, and adding four domain names that the Complainant alleged were also registered by the Respondent. The Center advised the Complainant that the four additional disputed domain names were the subject of an ongoing proceeding administered by the Center (Facebook Inc., Instagram, LLC, WhatsApp Inc., Facebook Technologies, LLC v. Perfect Privacy, LLC / Milen Radumilo, Hush Whois Protection Ltd., Contact Privacy Inc., Host Master, Transure Enterprise Ltd, WIPO Case No. D2019-0510), and therefore invited the Complainant to once again amend its Complaint. On August 7, 2019, the Complainant submitted its second amended Complaint, removing the four domain names introduced in the first amended Complaint.
The Center verified that the Complaint together with the two amended Complaints 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 August 9, 2019. In accordance with the Rules, paragraph 5, the due date for Response was August 29, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 30, 2019.
The Center appointed Reynaldo Urtiaga Escobar as the sole panelist in this matter on September 3, 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. As of February 1, 2019, the Complainant reportedly has 1.5 billion active users in over 180 countries1 .
The Complainant holds trademark registrations for WHATSAPP on a global scale, including:
- US trademark registration No. 3939463, registered on April 5, 2011, in connection with services encompassed in International class 42;
- European Union Trade Mark (“EUTM”) registration No. 009986514, registered on October 25, 2011, in connection with goods and services encompassed in International classes 9, 38, and 42;
- International trademark registration No. 1085539, registered on May 24, 2011, in connection with goods and services encompassed in international classes 9, and 38.
The disputed domain name was created on April 23, 2019. As of this date, the disputed domain name resolves to a homepage displaying links related to the Complainant’s WhatsApp mobile messaging application.
5. Parties’ Contentions
In summary, the Complainant contends as follows:
The disputed domain name incorporates the Complainant’s WHATSAPP mark in its entirety;
The Complainant’s WHATSAPP mark is clearly recognizable in the disputed domain name, despite the addition of the terms “chat” and “group”;
The addition of the “.com” generic Top-Level Domain (“gTLD”) should be disregarded for the purposes of assessing confusing similarity under paragraph 4(a)(i) of the Policy;
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 its WHATSAPP 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 registered the disputed domain name in full knowledge of the Complainant’s mark, which is highly distinctive and well-known around the world;
The Respondent is using the disputed domain name to intentionally attract Internet users by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the website, as prohibited by paragraph 4(b)(iv) of the Policy;
The disputed domain name’s use is clearly intended for commercial gain as the Respondent’s homepage redirects Internet users to dynamic advertising websites.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
According to paragraph 4(a) of the Policy, in order to succeed in this administrative proceeding, the Complainant must prove that:
(i) the disputed 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 disputed domain name; and
(iii) the disputed domain name was registered and is being used in bad faith.
These elements are discussed in turn below. In considering these elements, paragraph 15(a) of the Rules provides that the Panel shall decide the Complaint on the basis of statements and documents submitted and in accordance with the Policy, the Rules, and any other rules or principles of law that the Panel deems applicable.
A. Identical or Confusingly Similar
The first element has a low threshold, merely serving as a gateway requirement under the Policy. See section 1.7 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) (the standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between the Complainant’s trademark and the disputed domain name).
The Complainant owns numerous trademark registrations for WHATSAPP worldwide, including US trademark registration No. 3939463 (registered on April 5, 2011), EUTM registration No. 009986514 (registered on October 25, 2011), and International trademark registration No. 1085539 (registered on May 24, 2011), all of which predate registration of the disputed domain name by no less than seven years.
To the Panel’s eye, the WHATSAPP mark remains clearly recognizable within the disputed domain name, despite its coexistence with the terms “chat” and “group”, which are descriptive of the Complainant’s
well-known instant messaging app. According to section 1.8 of the WIPO Overview 3.0, 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.
Accordingly, the Panel finds that the disputed domain name is confusingly similar to the mark in which the Complainant has rights.
The Complainant has passed the first threshold of paragraph 4(a) of the Policy.
B. Rights or Legitimate Interests
The second element under the Policy is that the Respondent has no rights or legitimate interests in respect of the disputed domain name (Policy, paragraph 4(a)(ii)). Paragraph 4(c) of the Policy provides that “any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate [the Respondent’s] rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):
(i) before any notice to you [the respondent] of the dispute, your [the respondent’s] use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you [the respondent] (as an individual, business, or other organization) have been commonly known by the domain name, even if you [the respondent] have acquired no trademark or service mark rights; or
(iii) you [the respondent] are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.”
As noted in section 2.1 of the WIPO Overview 3.0, the onus is on the Complainant to establish the absence of the Respondent’s rights or legitimate interests in the disputed domain name. However, because of the inherent difficulties in proving a negative, the consensus view is that the Complainant need only put forward a prima facie case that the Respondent lacks rights or legitimate interests. The burden of production then shifts to the Respondent to rebut that prima facie case (see also, e.g., World Wrestling Federation Entertainment, Inc. v. Ringside Collectibles, WIPO Case No. D2000-1306).
The Complainant avers to not have authorized the incorporation of its WHATSAPP mark in the disputed domain name. The Complainant also submits that the Respondent is not commonly known by the disputed domain name.
The Panel regards the above factual submissions to be credible in light of the evidence on file, and particularly considering that the term “WhatsApp” is exclusively associated with the Complainant’s popular mobile app. At any rate, those submissions remain uncontested by the Respondent.
Furthermore, the display in the Respondent’s homepage of themed links associated with the Complainant’s instant messaging services cannot be regarded as a bona fide offering of goods or services, or a legitimate, noncommercial, or fair use of the disputed domain name because the Respondent is seeking to capitalize on the Complainant’s goodwill in its well-known mobile application, to obtain revenue from click-through advertising.
In sum, the record does not show that the Respondent has rights or legitimate interests in the disputed domain name within the meaning of the Policy.
The Complainant has fulfilled the second limb of Policy paragraph 4(a).
C. Registered and Used in Bad Faith
Pursuant to Policy, paragraph 4(a)(iii), in order to be granted relief, the Complainant must show that the disputed domain name was registered and is being used in bad faith.
Paragraph 4(b) of the Policy sets forth the following non-exhaustive grounds of bad faith registration and use:
“(i) circumstances indicating that you [the respondent] have registered or 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 that complainant, for valuable consideration in excess of your [the respondent’s] documented out-of-pocket costs directly related to the domain name; or
(ii) you [the respondent] have 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 you [the respondent] have engaged in a pattern of such conduct; or
(iii) you [the respondent] have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you [the respondent] have intentionally attempted to attract, for commercial gain, Internet users to your [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 your [the respondent’s] website or location or of a product or service on your [the respondent’s] website or location.”
The Panel acknowledges that WHATSAPP is a coined term exclusively associated with the Complainant.
The Panel also acknowledges that the Complainant’s WHATSAPP mark is well-known internationally. See WhatsApp Inc. v. Carlos Rogers, WIPO Case No. D2019-1135 ([the complainant’s WHATSAPP mark] has been continuously and extensively used since 2009 in connection with an instant messaging app for mobile devices and has rapidly acquired considerable goodwill and renown worldwide).
By the same token, the Panel notes that the Complainant holds a EUTM for WHATSAPP (Reg. No. 009986514), which takes effect in Romania, the country of record of the Respondent.
Against this backdrop, the registration of the disputed domain name denotes opportunistic bad faith because the Respondent took unfair advantage of the goodwill and reputation attaching to the WHATSAPP mark. See section 3.1 of the WIPO Overview 3.0 (bad faith under the UDRP is broadly understood to occur where a respondent takes unfair advantage of or otherwise abuses a complainant’s mark).
Coupled with that, the Respondent’s listings of themed links associated with the Complainant’s mobile app for obtaining pay-per-click revenue shows that the Respondent intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s WHATSAPP mark as to the source, sponsorship, affiliation, or endorsement of the links included in the Respondent’s homepage. This use of the disputed domain name squarely falls under the bad faith scenario described in paragraph 4(b)(iv) of the Policy.
Lastly, the Panel takes notice that the Respondent is an infamous cybersquatter, having been named as respondent in at least 56 other UDRP proceedings administered by the Center, all of which concluded with the panels ordering transfer of the disputed domain names.
For the reasons stated above, the Panel holds that the disputed domain name was registered and is being used in bad faith under the Policy.
The Complainant has discharged its burden in relation to paragraph 4(a)(iii) 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 <whatsappchatgroup.com> be transferred to the Complainant.
Reynaldo Urtiaga Escobar
Date: September 17, 2019
1 See “https://99firms.com/blog/whatsapp-statistics/”