WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

WhatsApp Inc. v. Sucess World

Case No. D2019-2145

1. The Parties

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

The Respondent is Sucess World, India.

2. The Domain Name and Registrar

The disputed domain name <girlswhatsappnumberforchat.info> is registered with PDR Ltd. d/b/a PublicDomainRegistry.com (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 2, 2019. On September 3, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 4, 2019, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and provided 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 10, 2019. In accordance with the Rules, paragraph 5, the due date for Response was September 30, 2019. The Center received an email from the Complainant on September 15, 2019, forwarding an email sent by the Respondent to the Complainant only on September 14, 2019. The Respondent did not submit any formal response. The Center informed the Parties that it would proceed with panel appointment on October 1, 2019. Further, the Center received an email from the Respondent on October 3, 2019.

The Center appointed Knud Wallberg as the sole panelist in this matter on October 4, 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 the provider of WhatsApp, a popular mobile messaging application allowing users to exchange messages via smartphones without having to pay for short message service (SMS) messages. The Complainant was founded in 2009 and its WhatsApp application now has over 1,5 billion active users worldwide.

The Complainant has registered numerous trademarks consisting of the term WHATSAPP in many jurisdictions throughout the world, including Indian trademark registration No. 2149059, WHATSAPP, registered on May 24, 2011, for goods and services in international classes 9 and 38.

The disputed domain name <girlswhatsappnumberforchat.info> was registered on February 2, 2017. The disputed domain name previously pointed to a website that purportedly provided WhatsApp numbers of young women for chatting and containing pay-per-click links. The disputed domain name currently resolves to an inactive webpage.

5. Parties’ Contentions

A. Complainant

The Complainant submits that the disputed domain name is confusingly similar to the trademarks in which it has rights. The disputed domain name incorporates the Complainant’s WHATSAPP trademark in its entirety. The addition of the terms “girls” and “number for chat” as well as the “.info” designation does not prevent a finding of confusing similarity under the UDRP.

The Complainant 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 it been otherwise authorized or allowed by the Complainant to make any use of its WHATSAPP trademark, in a domain name or otherwise. The Respondent cannot assert that it has been using the disputed domain name prior to any notice of the present dispute, in connection with a bona fide offering of goods or services, since the disputed domain name was previously used to point to a website purportedly providing WhatsApp numbers of young women for chatting and containing pay-per-click links.

The Complainant submits that given the Complainant’s renown and goodwill worldwide including in India where the Respondent is based, the Respondent had actual and constructive knowledge of the Complainant and its rights at the time of registration of the disputed domain name. The disputed domain name was thus registered in bad faith. The Complainant further submits, that the disputed domain name is used in bad faith. The disputed domain name was previously used to point to a website purportedly providing WhatsApp numbers of young women for chatting and containing pay-per-click links. The Complainant claims that this makes it clear that the disputed domain name was being used for the sole purpose of misdirecting Internet users, based on the confusion with the Complainant’s trademark and name, to the Respondent’s website for commercial gain. The Complainant finally submits that the fact that the disputed domain name currently resolves to an inactive webpage does not cure the Respondent´s bad faith use.

B. Respondent

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

In its email of September 14, 2019, the Respondent stated that the disputed domain name was already taken down right after receiving the Complainant’s email. In its email of October 3, 2019, the Respondent reiterated that the website at the disputed domain name was taken down and claimed “that blog was just for learning purposes” and “I wasn’t using it”.

6. Discussion and Findings

According to paragraph 15(a) of the Rules the Panel shall decide the Complaint in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.

Paragraph 4(a) of the Policy directs that a complainant must prove each of the following:

(i) that the domain name registered by the respondent is identical or confusingly similar to a trademark or service mark in which the complainant has rights;

(ii) that the respondent has no rights or legitimate interests in respect of the domain name; and

(iii) that the domain name has been registered and is being used in bad faith.

Paragraph 4(a) of the Policy states that the burden of proving that all these elements are present lies with the complainant. At the same time, in accordance with paragraph 14(b) of the Rules, if a party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under, the Rules, or any request from the Panel, the Panel shall draw such inferences therefrom as it considers appropriate.

A. Identical or Confusingly Similar

The Panel finds that the disputed domain name <girlswhatsappnumberforchat.info> is confusingly similar (in the sense of the Policy) to the Complainant’s registered trademark WHATSAPP because it contains the mark in its entirety with the addition of the common terms “girls” and “number for chat”. The generic Top-Level Domain (“gTLD”) “.info” is a standard registration requirement and as such is disregarded under the first element confusing similarity test. See Section 1.11.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).

The Panel finds that the conditions in paragraph 4(a)(i) of the Policy are therefore fulfilled in relation to the disputed domain name.

B. Rights or Legitimate Interests

It is clear from the facts of the case that the Complainant has not licensed or otherwise permitted the Respondent to use its trademark.

Based on the case record the Panel finds that the Complaint has established a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name. The Respondent has not produced, and there is no evidence of the types of circumstances set out in paragraph 4(c) of the Policy that might give rise to rights or legitimate interests in the disputed domain name on the part of the Respondent in these proceedings. On the contrary, the way that the Respondent has used the disputed domain name, namely for a website that purportedly provided WhatsApp numbers of young women for chatting and which contained pay-per-click links, the Panel finds it inconceivable that such rights or legitimate interests exist.

Consequently, the Panel finds that the condition in paragraph 4(a)(ii) of the Policy is also fulfilled.

C. Registered and Used in Bad Faith

Paragraph 4(a)(iii) of the Policy requires the complainant to prove both registration and use of the disputed domain name in bad faith. Paragraph 4(b) of the Policy provides examples of circumstances which shall be evidence of registration and use in bad faith:

(i) circumstances indicating that the respondent has registered or has 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 the complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the domain name; or

(ii) the respondent has 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 the respondent has engaged in a pattern of such conduct; or

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

(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its 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 the respondent’s website or location or of a product or service on the respondent’s website or location.

Accordingly, for the Complainant to succeed, the Panel must be satisfied that the disputed domain name has been registered and is being used in bad faith.

Given the circumstances of the case, including the evidence on record of the use of the Complainant’s trademark WHATSAPP worldwide including in India, the distinctive nature of this mark, and the Respondent’s previous use of the disputed domain name, it is inconceivable to the Panel that the Respondent registered the disputed domain name without prior knowledge of the Complainant and the Complainant’s mark.

The Panel therefore finds that the disputed domain name was registered in bad faith.

As described above, the disputed domain name was previously used actively for a website that purportedly provided WhatsApp numbers of young women for chatting and which contained pay-per-click links. The Panel finds that this use was clearly bad faith use under the Policy use. This use of the disputed domain name ceased immediately after the Complainant’s lawyer sent a cease and desist letter to the Respondent. However, as first stated in Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003, and repeated in many subsequent decisions under the UDRP: “the concept of a domain name ‘being used in bad faith’ is not limited to positive action; inaction is within the concept. That is to say, it is possible, in certain circumstances, for inactivity by Respondent to amount to the domain name being used in bad faith.” See section 3.3 of the WIPO Overview 3.0.

Noting that the disputed domain name incorporates the Complainant’s distinctive trademark WHATSAPP, together with the addition of the common terms “girls” and “number for chat” and the gTLD “.info”, that the Respondent has no rights or legitimate interest in the disputed domain name, that the Respondent has registered and used the disputed domain name in bad faith and that there appears to be no conceivable good faith use that could be made by the Respondent of the disputed domain name, and considering all the facts and evidence, the Panel finds that the requirements of paragraph 4(a)(iii) of the Policy are also fulfilled in this case.

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 <girlswhatsappnumberforchat.info> be transferred to the Complainant.

Knud Wallberg
Sole Panelist
Date: October 17, 2019