WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

WhatsApp Inc. v. Domain Data Guard / Hendro Wardoyo, Whatsapp Extra

Case No. D2019-1710

1. The Parties

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

The Respondent is Domain Data Guard, Indonesia / Hendro Wardoyo, Whatsapp Extra, Indonesia.

2. The Domain Name and Registrar

The disputed domain name <whatsappextra.com> is registered with CV. Rumahweb Indonesia (the “Registrar”).

3. Procedural History

The Complaint was filed in English 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 name. On July 20, 2019, 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 25, 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 in English on July 26, 2019.

On July 25, 2019, the Center transmitted an email in English and Indonesian to the Parties regarding the language of the proceeding. The Complainant requested that English be the language of the proceeding on July 25, 2019. The Respondent did not comment on the language of the proceeding.

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 in English and Indonesian of the Complaint, and the proceedings commenced on August 5, 2019. In accordance with the Rules, paragraph 5, the due date for Response was August 25, 2019. The Respondent sent an email communication in English on August 20, 2019, indicating that he is willing to give the disputed domain name to the Complainant and requesting a fee of USD 3,000 from the Complainant. The Center sent an email regarding possible settlement to the Parties on August 20, 2019, however, the Complainant did not request for a suspension of the proceeding for settlement discussions. Accordingly, the Center notified the Parties of commencement of the panel appointment process on August 28, 2019.

The Center appointed Kimberley Chen Nobles as the sole panelist in this matter on September 9, 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, WhatsApp Inc., 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’s WhatsApp service allows users across the globe to exchange messages for free via smartphones, including iPhone, BlackBerry and Android. WhatsApp’s main website, available at “www.whatsapp.com”, also allows Internet users to access its messaging platform.

Since its launch in 2009, WhatsApp has become one of the fastest growing and most popular mobile applications in the world, with over 1.5 billion monthly active users worldwide (as of October 2018). WhatsApp has acquired considerable reputation and goodwill worldwide. Consistently being ranked amongst Apple iTunes’ 25 most popular free mobile applications and Tech Radar’s Best Android Apps, WhatsApp is the 3rd most downloaded application worldwide as per App Annie’s Top Apps Worldwide Rankings in 2019 and is the 37th most visited website in Indonesia according to information company Alexa.

Reflecting its global reach, the Complainant is the owner of numerous domain names, consisting of the WHATSAPP trademark, under various generic Top-Level Domains (gTLDs) as well as under many country code Top-Level Domains (ccTLDs).

The Complainant has also made substantial investments to develop a strong presence online by being active on various social media forums. For instance, WhatsApp’s official page on Facebook has over 29 million “likes”. In addition, WhatsApp has 2.64 million followers on Twitter.

In addition to its strong presence online, for use in connection with its messaging platform and related services, the Complainant has secured ownership of trademark registrations for WHATSAPP in many jurisdictions throughout the world, including the following:

The Complainant has a set of Brand Guidelines available at “www.whatsappbrand.com” detailing when and how an outside party may use the Complainant’s trademarks, including the WHATSAPP trademark and the trademark.

The disputed domain name <whatsappextra.com> was registered on January 18, 2019. As of the date of this decision, the disputed domain name resolves to a website (the Respondent’s website) in Indonesian and English purporting to offer for sale a variety of marketing software packages, including software for bulk messaging via WhatsApp. Prices for the software offered for sale via the Respondent’s website range from IDR 133,000 (approximately USD 10) to IDR 4,900,000 (approximately USD 350). The Respondent’s website makes extensive reference to the Complainant and makes prominent use of the Complainant’s registered trademark in order to market the Respondent’s software products, including a re-colored red variant of the Complainant’s device trademark on its home page.

5. Parties’ Contentions

A. Complainant

The Complainant submits that the disputed domain name is confusingly similar to the Complainant’s WHATSAPP trademark. The Complainant has rights in the WHATSAPP trademark by virtue of its trademark registrations. When comparing the disputed domain name to the Complainant’s trademark, the comparison should be made to the second-level portion of the disputed domain name only. The disputed domain name consists of the WHATSAPP trademark and the word “extra”. The Complainant submits that the Complainant’s WHATSAPP trademark is immediately recognizable as the leading element of the disputed domain name. The Complainant further asserts that the addition of the descriptive term “extra” does not prevent a finding of confusing similarity with the Complainant’s WHATSAPP trademark. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.8.

The Complainant also submits that the Respondent has no 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. Moreover, the Respondent makes use of the Complainant’s trademarks and logos on its website in order to offer for sale bulk-messaging software to be used in connection with the Complainant’s WhatsApp messaging services. Prior UDRP panels have found that the use of domain names comprising the Complainant’s trademark in connection with the offering of similar bulk-messaging services does not give rise to rights or legitimate interests on the part of such domain-name holders, see, e.g., WhatsApp Inc. v. Cabir Oz, WIPO Case No. D2019-1046; WhatsApp Inc. v. Emrecan Yildirimlar, WIPO Case No. D2019-0895; and WhatsApp Inc. v. Contact Privacy Inc. Customer 0153186272 / MOHD WILDAN AMIR MUSA, WIPO Case No. D2019-0456. There is no disclaimer on the Respondent’s website to clarify its lack of relationship with the Complainant. Rather, in addition to offering bulk-messaging software, the Respondent’s website makes reference to providing WhatsApp support services, which affirms the Respondent’s intent to imply an affiliation with the Complainant. The Respondent’s prominent use of the Complainant’s trademarks and logos on its website creates a misleading impression of association with the Complainant, to the Respondent’s own commercial gain. Such misleading use of the disputed domain name cannot confer rights or legitimate interests in the disputed domain name on the Respondent.

Finally, the Complainant asserts that the disputed domain name was registered and is being used in bad faith pursuant to paragraph 4(b)(iv) of the Policy. The Complainant’s WHATSAPP trademark is inherently distinctive and well known throughout the world in connection with its messaging services. Furthermore, the Complainant’s trademarks have been continuously and extensively used since the respective launching of its services, and have rapidly acquired considerable reputation and goodwill worldwide. The Complainant submits that the Respondent registered the disputed domain name without authorization in full knowledge of the Complainant’s rights. The content of the Respondent’s website, which makes multiple references to the Complainant, its messaging services, and makes prominent use of the Complainant’s logo, indicates a clear intent on the part of the Respondent to target the Complainant when registering the disputed domain name. Further, as noted above, there is an appreciable risk that the software offered for sale via the Respondent’s website may be used to send unsolicited electronic communications (spam), for phishing, or for other unauthorized activities. Such use may place the security of WhatsApp users at risk, and violates WhatsApp’s Brand Guidelines and the WhatsApp Business Terms of Service. Prior UDRP panels have held that such activities amount to use of a domain name in bad faith. See WhatsApp, Inc. v. Nasser Bahaj, WIPO Case No. D2016-0581.

The Complainant requests that the disputed domain name be transferred to the Complainant.

B. Respondent

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

6. Discussion and Findings

A. Language of the Proceeding

The language of the registration agreement for the disputed domain name is Indonesian, but nonetheless Complainant argues that the language of the proceeding should be English. As asserted by Complainant, the content displayed at the website resolving from the disputed domain name was in English and Indonesian, and that the disputed domain name comprises the English term "extra". The Panel also note that the Respondent sent an email communication to the Center in English.

Accordingly, the Panel finds that English is an acceptable language for this proceeding and, therefore, decides to render its decision in English.

B. Substantive issues

The Policy provides for transfer or cancellation of the disputed domain name(s) if the complainant establishes each of the following elements set out in paragraph 4(a) of the Policy:

(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 has been registered and is being used in bad faith.

C. Identical or Confusingly Similar

The Complainant has rights in the WHATSAPP trademark. The Complainant has established that it is the registered owner of trademark registrations for the WHATSAPP trademark.

The disputed domain name <whatsappextra.com> consists of the WHATSAPP trademark, the descriptive term “extra”, and the gTLD “.com”. As a technical part of the disputed domain name, the “.com” gTLD may be disregarded in determining confusing similarity. See Alienware Corp. v. Truther, WIPO Case No. DCO2012-0027; Belo Corp. v. George Latimer, WIPO Case No. D2002-0329. The disputed domain name consists of the WHATSAPP trademark in its entirety, and the word “extra”, which serves as a descriptive suffix. The addition of the word “extra” does not avoid a finding of confusing similarity between the disputed domain name and the WHATSAPP trademark. See Compagnie Generale des Etablissements Michelin-Michelin & Cie. v. Tgifactory, WIPO Case No. D2000-1414; Millennium & Copthorne Hotels PLC, Millennium & Copthorne International Limited (MCIL) v. Sanjay Makkar and Millennium Hotel, WIPO Case No. D2015-0210. The WHATSAPP trademark remains recognized within the disputed domain name.

Accordingly, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s trademarks.

D. Rights or Legitimate Interests

As noted above, the Complainant has provided evidence of its prior rights in the Complainant’s trademarks. These rights precede the creation of the disputed domain name.

The disputed domain name <whatsappextra.com> incorporates the Complainant’s WHATSAPP trademark in its entirety. There is no evidence indicating that the Respondent is licensed to use the Complainant’s trademarks, that the Respondent is associated or affiliated with the Complainant, or that the Respondent has any other rights or legitimate interests in the string “whatsappextra” or variants thereupon. As such, the Complainant has made out its prima facie case, which the Respondent has not rebutted.

Accordingly, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy.

E. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy states that any of the following circumstances, in particular, but without limitation, shall be evidence of the registration and use of the disputed domain name(s) in bad faith:

(i) circumstances indicating that the respondent has registered or has acquired the disputed 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 the respondent’s documented out-of-pocket costs directly related to the disputed domain name; or

(ii) the respondent has registered the disputed 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) the respondent has registered the disputed domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the disputed 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 such website or location or of a product or service on such website or location.

The present case falls squarely within that contemplated by paragraph 4(b)(iv) of the Policy.

The Respondent must have been aware of the Complainant’s trademarks, its business, and its WhatsApp service when the Respondent registered the disputed domain name. The Complainant and its WHATSAPP trademark are widely known throughout the world. The Respondent must have had the Complainant’s famous trademark in mind when the Respondent registered the disputed domain name, as evidenced by the Respondent’s use of the disputed domain name to direct Internet users to a website offering services that exploit the Complainant’s WhatsApp service and use the mark to promote its services. See Balenciaga v. liu zhixian, zhixian liu, WIPO Case No. D2010-1831.

The Complainant has also submitted evidence that the Respondent’s website offers software for sale that expressly violates the Terms of Service for the Complainant’s WhatsApp service by allowing users to exploit the Complainant’s WhatsApp service in a manner that is noncompliant with the Complainant’s Terms of Service. Given that the Respondent is using the disputed domain name in a manner inconsistent with the Complainant’s Terms of Service, it is evident that the Respondent is using the disputed domain name in bad faith. See Supercell Oy v. Reza Zarif, WIPO Case No. D2018-0503. (“Complainant’s unrebutted allegation that Respondent’s use of the disputed domain name [is] to facilitate the violation of Complainant’s Terms of Service supports a finding of bad faith.”)

For these reasons, the Panel finds that the Respondent’s registration and use of the disputed domain name is in bad faith.

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 name <whatsappextra.com> be transferred to the Complainant.

Kimberley Chen Nobles
Sole Panelist
Date: September 17, 2019