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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

WhatsApp Inc., Facebook, Inc. v. Alex Xu, HKITN

Case No. D2019-1709

1. The Parties

The Complainants are WhatsApp Inc., United States of America (“United States”) and Facebook, Inc., United States, represented by Hogan Lovells (Paris) LLP, France.

The Respondent is Alex Xu, HKITN, China.

2. The Domain Name and Registrar

The Disputed Domain Names <facebook-marketinghk.com>, and <whatsapp-marketinghk.com> (the “Disputed Domain Names”) are 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 18, 2019. On July 19, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Names. On July 22, 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 July 24, 2019. In accordance with the Rules, paragraph 5, the due date for Response was August 13, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 15, 2019.

The Center appointed Flip Jan Claude Petillion as the sole panelist in this matter on August 23, 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 Complainants

The present Complaint was filed by two separate Complainants, namely Facebook, Inc. (First Complainant), and WhatsApp Inc. (Second Complainant).

1. The First Complainant, Facebook Inc., is a multinational information and technology company and provider of online social networking services. The First Complainant is considered one of the world’s largest technology companies. The First Complainant was founded in 2004 and currently employs almost 40,000 employees in almost 40 countries. The First Complainant’s social media network, Facebook, has over 2 billion monthly active users worldwide.

The First Complainant is the holder of trade and service mark registrations across various jurisdictions throughout the world for the mark FACEBOOK, which it uses in connection with its social networking services. The First Complainant’s trademark portfolio includes, inter alia, the following trade and service mark registrations:

- FACEBOOK, Hong Kong word mark, registered with the Intellectual Property Department of Hong Kong on November 19, 2007 under number 300995743 in classes 9, 38, and 42;

- FACEBOOK, US word mark registered with the United States Patent and Trademark Office (USPTO) on January 10, 2006 under number 78574726 in classes 35, and 38.

2. The Second Complainant, WhatsApp Inc., is a multinational provider of Over-The-Top (OTT) messaging and communications services. The Second Complainant was acquired by the First Complainant in October 2014 and consequently serves as a wholly owned subsidiary of the First Complainant. The Second Complainant currently is the operator of one of the most popular communication applications with over half a billion users worldwide.

The Second Complainant is the holder of trade and service mark registrations across various jurisdictions throughout the world for the trademark WHATSAPP, which it uses in connection with its OTT messaging and communications services. The Second Complainant’s trademark portfolio includes, inter alia, the following trade and service mark registrations:

- WHATSAPP, Hong Kong word mark, registered with the Intellectual Property Department of Hong Kong on May 25, 2011 under number 301926874 in classes 9 and 38;

- WHATSAPP, US word mark registered with the USPTO on April 5, 2011 under number 3939463 in class 42.

The First and Second Complainants are hereafter collectively referred to as the “Complainants”.

The Disputed Domain Names

The Complaint is directed against the following domain names:

1. <whatsapp-marketinghk.com>, registered on July 18, 2014; and
2. <facebook-marketinghk.com>, registered on July 24, 2014.

Both Disputed Domain Names are registered by Respondent and they are currently resolving to a webpage indicating “website coming soon”. The domain name <whatsapp-marketinghk.com> has been used previously to point to a website in Chinese, promoting a WhatsApp marketing solution based on a purported database of 3 million WhatsApp users in Hong Kong. The website also offered a one-stop-shop service intended to send marketing messages to WhatsApp users in other countries, including the United States, Australia and the European Union. The Disputed Domain Name <facebook-marketinghk.com> appears not to have been used actively by the Respondent.

On May 7, 2019, the Complainants’ lawyers sent a cease and desist letter to the Respondent, providing notice of the Respondent’s alleged infringing use of the Disputed Domain Names and demanding the transfer of the Disputed Domain Names to the Complainants. The Respondent did not reply to this cease and desist letter. WhoIs records of June 3, 2019 show the temporary use of a privacy service for the Disputed Domain Names. The Respondent’s email address has also been used for registering the domain names <facebookmarketing.ltd>, <facebook-marketing.ltd>, <whasapp-marketing.ltd>, and <whasappsolution.ltd>.

5. Parties’ Contentions

A. Complainants

The Complainants consider the Disputed Domain Names to be confusingly similar to trademarks in which they claim to have rights. The Complainants further claim that the Respondents have no rights or legitimate interests in respect of the Disputed Domain Names. According to the Complainants, the Respondents have not used the Disputed Domain Names in connection with a legitimate use, as the domain name <whatsapp‑marketinghk.com> was previously used by the Respondent to point to a website purporting to offer marketing services via WhatsApp messages. The Complainants maintain that the Respondent was thus trading on the Second Complainant’s reputation and goodwill by diverting traffic to a website associated with a domain name that is confusingly similar to the Second Complainant’s WHATSAPP trademark. With respect to the domain name <facebook-marketinghk.com>, the Complainants argue that the passive holding of the domain name does not confer any rights or legitimate interests. Also, according to the Complainants, the Respondents are not commonly known by the Disputed Domain Names and are in no way affiliated with or authorized by the Complainants. Finally, the Complainants claim that the Disputed Domain Names were registered and are being used in bad faith. The Complainants contend that the Respondents knew of the existence of the Complainants’ trademark rights. The Complainants also maintain that the Respondent engaged in a pattern of conduct, registering domain names in order to prevent the holder of a trademark or service mark from reflecting the mark in a corresponding domain name. The Complainants further maintain that the Respondent used the <whatsapp-marketinghk.com> domain name to redirect Internet users to the Respondent’s own website promoting its marketing services, for commercial gain. According to the Complainants, such use was made in an intentional attempt to attract to attract, for commercial gain, Internet users to the Respondent’s website, by creating a likelihood of confusion with the Second Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website and/or associated services. Finally, with respect to the Disputed Domain Name <facebook-marketinghk.com>, the Complainants maintain that the passive holding of this domain name does not prevent a finding of bad faith, considering the Complainants’ reputation and the Respondent’s use of a privacy service.

B. Respondent

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

6. Discussion and Findings

6.1. Preliminary Procedural Issue: Multiple Complainants

In the present case, the Complaint was filed by two separate Complainants. While the Policy and Rules do not directly contemplate the consolidation of multiple complainants in a single administrative complaint, numerous panels have found that in certain circumstances such a consolidation may be permitted.

In assessing whether a complaint filed by multiple complainants may be brought against a single respondent, panels look at whether (i) the complainants have a specific common grievance against the respondent, or the respondent has engaged in common conduct that has affected the complainants in a similar fashion, and (ii) it would be equitable and procedurally efficient to permit the consolidation (see section 4.11.1 of WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0")).

In the case at hand, it is clear from the evidence provided by the Complainants that the Second Complainant is a wholly owned subsidiary of the First Complainant and that the Complainants therefore belong to the same corporate group with some sort of common control and management.

The Panel therefore finds that it is sufficiently established that the Complainants have a specific common grievance against the Respondent and that it would be equitable and procedurally efficient to consolidate the Complainants.

6.2. Substantive elements of the Policy

Paragraph 15 of the Rules provides that the Panel is to decide the 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.

The onus is on the Complainants to make out their case and it is apparent, both from the terms of the Policy and the decisions of past UDRP panels, that the Complainants must show that all three elements set out in paragraph 4(a) of the Policy have been established before any order can be made to transfer the Disputed Domain Names. As the proceedings are administrative, the standard of proof is the balance of probabilities.

Thus, for the Complainants to succeed, they must prove, within the meaning of paragraph 4(a) of the Policy and on the balance of probabilities that:

i. the Disputed Domain Names are identical or confusingly similar to a trademark or service mark in which the Complainants have 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.

The Panel will deal with each of these requirements in turn.

A. Identical or Confusingly Similar

To prove this element, the Complainants must first establish that there is a trademark or service mark in which they have rights. The Complainants have clearly established that there are trademarks in which the Complainants have rights. The Complainants’ FACEBOOK and WHATSAPP trademarks have been registered and used in connection to their social networking and communication products and services.

The first of the Disputed Domain Names incorporates the First Complainant’s FACEBOOK trademark in its entirety, merely adding a hyphen and the suffix “marketinghk”. The second of the Disputed Domain Names incorporates the Second Complainant’s WHATSAPP trademark in its entirety, merely adding a hyphen and the suffix “marketinghk”. The Panel considers that Internet users would interpret this suffix to stand for “marketing” and an abbreviation of “Hong Kong”.

As stated at section 1.8 of the WIPO overview 3.0, where the relevant trademark is recognizable within the Disputed Domain Names, the additions of other generic terms would not prevent a finding of confusing similarity. The Panel is therefore of the opinion that the mere addition of a non-distinctive text to a complainant’s trademark constitutes confusing similarity, as set out in paragraph 4(a)(i) of the Policy (see Karen Millen Fashions Limited v. Akili Heidi, WIPO Case No. D2012-1395; Belstaff S.R.L. v. Jason Lau, Sharing, WIPO Case No. D2012-0783; Lime Wire LLC v. David Da Silva / Contactprivacy.com, WIPO Case No. D2007-1168).

Additionally, it is well established that hyphens and the top-level domains may be disregarded when considering whether the Disputed Domain Names are confusingly similar to the trademarks in which the Complainants have rights.

Accordingly, the Panel finds the Disputed Domain Names to be confusingly similar to the Complainants’ FACEBOOK or WHATSAPP trademarks and the Complainants have thus made out the first of the three elements of the Policy that they must establish.

B. Rights or Legitimate Interests

Under paragraph 4(a)(ii) of the Policy, the Complainants have the burden of establishing that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Names.

As established by previous UDRP panels, it is sufficient for the Complainants to make a prima facie showing that the Respondent has no rights or legitimate interests in the Disputed Domain Names in order to place the burden of production on the Respondent (seesection 2.1 of the WIPO Overview 3.0 ).

The Panel notes that the Respondent has not apparently been commonly known by the Disputed Domain Names and that the Respondent does not seem to have acquired trademark or service mark rights. According to the WhoIs records connected to the Disputed Domain Names, the Respondent is Alex Xu, HKITN. The Respondent’s use and registration of the Disputed Domain Names was not authorized by the Complainants. There are no indications that a connection between the Complainants and the Respondent existed.

Moreover, the Panel is of the opinion that the Respondent’s previous use of the domain name <whatsapp‑marketinghk.com> does not constitute a legitimate noncommercial or fair use. The Panel considers that the Respondent was trading on the Second Complainant’s reputation and goodwill by diverting traffic to a website associated with a domain name that is confusingly similar to the Second Complainant’s WHATSAPP trademark and on which the Respondent offered marketing messages via WhatsApp messages. Such use is likely to generate commercial gain through the offering of spam services and cannot be considered a bona fide offering of goods and services for purposes of paragraph 4(c)(i) of the Policy.

With respect to the domain name <facebook-marketinghk.com>, the Panel finds that the passive holding of the domain name does not confer any rights or legitimate interests.

The Respondent had the opportunity to assert and explain their purported rights or legitimate interests but did not do so.

Therefore, the Panel finds that the Complainants have established that the Respondent has no rights or legitimate interests in the Disputed Domain Names. In light of the above, the Complainants succeed on the second element of the Policy.

C. Registered and Used in Bad Faith

The Complainant must prove on the balance of probabilities both that the Disputed Domain Names were registered in bad faith and that they are being used in bad faith (see, e.g., Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003; Control Techniques Limited v. Lektronix Ltd, WIPO Case No. D2006-1052).

The Respondent has incorporated the Complainants’ FACEBOOK and WHATSAPP trademarks in their entirety in the Disputed Domain Names. Additionally, one of the Disputed Domain Names has been used to resolve to a website offering marketing services associated to the Complainants’ WHATSAPP offering. It is therefore inconceivable that the Respondent was unaware of the Complainants and their trademark rights when it registered the Disputed Domain Names. The Panel therefore finds that the Respondent’s awareness of the Complainants’ trademark rights at the time of registration suggests bad faith (see Red Bull GmbH v. Credit du Léman SA, Jean‑Denis Deletraz, WIPO Case No. D2011-2209; Nintendo of America Inc. v. Marco Beijen, Beijen Consulting, Pokemon Fan Clubs Org., and Pokemon Fans Unite, WIPO Case No. D2001-1070; BellSouth Intellectual Property Corporation v. Serena, Axel, WIPO Case No. D2006-0007).

In the present case, the Panel is of the opinion that the Complainants’ trademarks have a strong reputation and are widely known throughout the world, including in Hong Kong where the Respondent is residing. This makes it difficult to conceive any plausible legitimate future use of the Disputed Domain Names by the Respondent. It is clear that the Respondent registered at least one of the Disputed Domain Names with the intent to profit in some fashion from or otherwise exploit the Complainants’ trademarks through the offering of marketing services – likely spam – via WhatsApp messages.

Moreover, the Respondent engaged in a clear pattern of abusive registrations that also prevent the Complainants from reflecting their trademarks in the Disputed Domain Names (see section 3.1.1 and section 3.1.2 of the WIPO Overview 3.0). In addition to the Disputed Domain Names, the Respondent’s email address is associated with other domain names, incorporating the Complainants’ trademarks in their entirety. The Panel finds that this pattern of conduct evidences bad faith registration and use pursuant to paragraph 4(b)(ii) of the Policy.

Finally, by temporarily using a proxy registration service and providing incomplete contact information, the Respondent has taken active steps to conceal its identity (see Fifth Third Bancorp v. Secure Whois Information Service, WIPO Case No. D2006-0696, where it was held that the use of a proxy registration service to avoid disclosing the identity of the real party in interest is also consistent with an inference of bad faith when combined with other evidence of evasive and irresponsible conduct). The Panel also notes that Respondent did not respond to Complainant’s cease-and-desist letter. Therefore, the Panel considers that the inference of bad faith is strengthened, in light of the cumulative circumstances indicating bad faith (See Telstra Corporation Limited v. Nuclear Marshmallows, supra).

Therefore, the Panel finds that, on the balance of probabilities, it is shown that all of the Disputed Domain Names were registered and are being used in bad faith. In light of the above, the Complainants also succeed on the third and last element of the Policy.

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 <facebook-marketinghk.com>, and <whatsapp-marketinghk.com> be transferred to the Complainant.

Flip Jan Claude Petillion
Sole Panelist
Date: August 30, 2019

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