WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
WhatsApp Inc. v. Nely Proaã‘o, Warma Cafe
Case No. D2019-2095
1. The Parties
The Complainant is WhatsApp Inc., United States of America, represented by Hogan Lovells (Paris) LLP, France.
The Respondent is Nely Proaã‘o, Warma Cafe, United States of America.
2. The Domain Name and Registrar
The disputed domain name <whatsapp-marketing-empresarial.com> is registered with Name.com, Inc. (Name.com LLC) (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 28, 2019. On August 28, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 1, 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 September 4, 2019. In accordance with the Rules, paragraph 5, the due date for Response was September 24, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 25, 2019.
The Center appointed Nicolas Ulmer as the sole panelist in this matter on October 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 messaging applications, or “apps”, for mobile phones, operating under the name “WhatsApp”. The Complainant was founded in 2009 and acquired by Facebook Inc. in 2014. According to the Complaint the Complainant’s applications are among the most popular in the world, with 1.5 billion monthly active users as of October 2018.
The Complaint and its annexes document that the Complainant holds at least five trademarks for WHATSAPP, including, notably trademarks for the United States of America and for Peru, registered on April 5, 2011 and June 4, 2012, respectively.
The Complainant also has a significant presence online, holding many domain names consisting of the trademark WHATSAPP both directly and in combination with other social media platforms, such as “Facebook”.
The Complainant’s attorneys sent two detailed cease and desist letters concerning the disputed domain name to the Respondent, but received no reply.
Little is known about the Respondent, who appears to be a woman residing in the United States of America.
The disputed domain name was registered on September 30, 2018 and resolves to a Spanish-language site marketing software for bulk messaging on WhatsApp.
5. Parties’ Contentions
The heart of the Complainant’s contentions is that the disputed domain name improperly incorporates its trademark in a deliberately confusing way and with the Respondent having no right to use its trademark in the disputed domain name. Thereupon the Complainant submits that by registering and using the disputed domain name, the Respondent has in bad faith improperly sought to attract Internet users to its website for its commercial gain by suggesting that it is in some manner sponsored or affiliated with the Complainant and its network.
The Complainant asks that the disputed domain name be transferred to it.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
The disputed domain name begins with and incorporates the entirety of the Complainant’s trademark. The trademark is then followed by a hyphen and the words “marketing-empresarial”, which means business or enterprise marketing in Spanish. The addition of this suffix does not prevent a finding of confusing similarity with the Complainant’s trademarks. See section 1.7 and 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).
The first element of paragraph 4(a) of the Policy is accordingly proven.
B. Rights or Legitimate Interests
The Complaint clearly states that the Respondent is not a licensee of the Complainant and has not been authorized to use the Complainant’s trademarks in the disputed domain name or otherwise. It is equally clear that the Respondent is not known as “Whatsapp-marketing-empresarial”. There is, furthermore, no indication that the Respondent has used the disputed domain name in connection with a bona fide offering of goods and services or that there is any legitimate noncommercial or fair use of the Complainant’s trademark.
UDRP case law and jurisprudence make clear that a complainant needs to establish at least a prima facie case that the respondent has no rights or legitimate interests in respect of the disputed domain name. See Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455. Where such a prima facie case is made, the burden shifts to the respondent to demonstrate its rights or legitimate interests in the disputed domain name. If the respondent fails to do so, the complainant is generally deemed to have satisfied paragraph 4(a)(ii) of the Policy. See also, Meizu Technology Co., Ltd. v. “osama bin laden”, WIPO Case No. DCO2014-0002; H & M Hennes & Mauritz AB v. Simon Maufe, Akinsaya Odunayo Emmanuel and Nelson Rivaldo, WIPO Case No. D2014-0225.
The Respondent has not answered the Complaint; the Complainant has established at least such a prima facie case, and there is nothing in the case file that would rebut or contradict it. The Complainant has therfore met its burden of proof under paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
The disputed domain name was registered years after the Complainant’s trademarks and business were widely and internationally known; the trademark is quite distinctive and the disputed domain name can only have been registered in bad faith with the motive of profiting from the Complainant’s trademark in order to attract Internet users for commercial gain. Indeed, the suffix to the Complainant’s trademark in the disputed domain name can itself be seen to create a likelihood of confusion with such trademark by suggesting that the disputed domain name leads to a marketing or business portal of the Complainant.
This is confirmed by the bad faith commercial use to which the Respondent’s website put the disputed domain name, which use clearly seeks to profit from the Complainant’s marks in large part by wrongly suggesting to Internet users that it is affiliated with the Complainant.
The failure to answer the Complainant’s cease and desist letters is further indicia of bad faith on the part of the Respondent.
The Complainant has, accordingly met its burden under 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 <whatsapp-marketing-empresarial.com> be transferred to the Complainant.
Date: October 10, 2019