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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Facebook, Inc. and WhatsApp Inc. v. Registration Private, Domains By Proxy, LLC / Nanci Nette

Case No. D2019-2223

1. The Parties

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

The Respondent is Registration Private, Domains By Proxy, LLC, United States / Nanci Nette, United States.

2. The Domain Names and Registrars

The disputed domain name (the “Disputed Domain Name”) <шһатѕарр.com> (<xn--80aa2cah8a7f73b.com>) is registered with GoDaddy.com, LLC. The Disputed Domain Name <pdf-to-facebook.net> is registered with !#No1Registrar, LLC. The Disputed Domain Name <reflexionesparawhatsapp.com> is registered with Magic Friday, LLC. The Disputed Domain Name <whatsapp-com.com> and the Disputed Domain Name <whạtsapp.com> (<xn--whtsapp-bn4c.com>) are registered with eNom, Inc. The Disputed Domain Name <whatsapp-spy.com> is registered with Noteworthydomains, LLC. The Disputed Domain Name <whatsappstatusvids.com> is registered with SNAPNAMES 74, LLC (the “Registrars”). Each Disputed Domain Name referenced herein is hereinafter collectively referred to as the “Disputed Domain Names”.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 13, 2019 regarding the Disputed Domain Names and six other domain names (the “Additional Domain Names”). On September 13, 2019, the Center transmitted by email to the Registrars a request for registrar verification in connection with the Disputed Domain Names and the Additional Domain Names. On September 13, 2019, the Registrar Dynadot, LLC transmitted by email to the Center its verification response in relation to three of the Additional Domain Names. On September 13, 2019, the Registrar GoDaddy.com, LLC transmitted by email to the Center its verification response disclosing registrant and contact information for <шһатѕарр.com> (<xn--80aa2cah8a7f73b.com>) which differed from the named Respondent and contact information in the Complaint. On the same date, the Registrar eNom, Inc. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant of <whatsapp-com.com> and providing the contact details. On September 15, 2019, the Registrar !#No1Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant of <pdf-to-facebook.net> and providing the contact details. On September 16, 2019, the Registrar Media Elite Holdings Limited transmitted by email to the Center its verification response in relation to three of the Additional Domain Names. On September 23, 2019, the Registrar Noteworthydomains, LLC transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant of <whatsapp-spy.com> and providing the contact details. On the same date, the Registrar SNAPNAMES 74, LLC transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant of <whatsappstatusvids.com> and providing the contact details. On September 24, 2019, the Registrar Magic Friday, LLC transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant of <reflexionesparawhatsapp.com> and providing the contact details. On September 25, 2019, the Registrar eNom, Inc. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant of <whạtsapp.com> (<xn--whtsapp-bn4c.com>) and providing the contact details. The Center sent an email communication to the Complainant on October 2, 2019 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant requested an extension to file the amended Complaint on October 7, 2019, which was granted by the Center. The Complainant filed an amended Complaint on October 12, 2019, removing the Additional Domain Names from the dispute.

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 of the Complaint, and the proceedings commenced on October 15, 2019. In accordance with the Rules, paragraph 5, the due date for Response was November 4, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 6, 2019.

The Center appointed Lynda M. Braun as the sole panelist in this matter on November 18, 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.

The Complainants requested that the proceeding be conducted in English and the Respondent did not provide a preference. As the Panel has the discretion to determine the correct language of the administrative proceeding, see Finter Bank Zurich v. Shumin Peng, WIPO Case No. D2006-0432, the Panel concludes that the reasonable and appropriate language for this proceeding is English.

4. Factual Background

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

The First Complainant 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 owns, among many others, trademark registrations in the United States, where the Respondent resides, namely the word mark FACEBOOK, United States Reg. No. 78574726, registered on January 10, 2006, and the word mark FACEBOOK, European Union Trade Mark Reg. No. 004535381, registered on June 22, 2011; (the “FACEBOOK Mark”).

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 thus is 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 owns, among many others, trademark registrations in the United States, where the Respondent resides, namely the word mark WHATSAPP, United States Reg. No. 4083272, registered on January 10, 2012, and the word mark WHATSAPP, European Union Trade Mark Reg. No. 009986514, registered on October 25, 2011 (the “WHATSAPP Mark”). The FACEBOOK Mark and the WHATSAPP Mark are hereinafter collectively referred to as the “FACEBOOK and WHATSAPP Marks”.

Both the First and Second Complainants own numerous domain names consisting of the terms “Facebook” and “Whatsapp” either under generic extensions, such as <facebook.com>, <facebook.org> and <whatsapp.com>, or under numerous country code extensions, such as <facebook.us>, <facebook.eu>, <whatsapp.us>, and <whatsapp.uk>. The First and Second Complainants are hereinafter referred to as the “Complainants”.

The Disputed Domain Names were registered by the Respondent on the following dates:

<шһатѕарр.com> April 28, 2017
<pdf-to-facebook.net> November 29, 2014
<reflexionesparawhatsapp.com> July 11, 2019
<whatsapp-com.com> August 31, 2017
<whatsapp-spy.com> October 20, 2018
<whatsappstatusvids.com> November 30, 2018
<whạtsapp.com> July 24, 2018

As of the writing of this Decision, the Disputed Domain Names resolved to different pages than they did when the Complainants submitted the Complaint.1 For example, the Disputed Domain Names <whatsapp.com> and <whatsapp-spy.com> both resolve to parking pages containing pay-per-click (“PPC”) sponsored links; the Disputed Domain Name <whatsapp-com.com> resolves to a page that states: “Sorry. Whatsapp-com.com could not be found”; the Disputed Domain Name <шһатѕарр.com> resolves to a page that warns: “Dangerous page. Phishing”; the Disputed Domain Name <reflexionesparawhatsapp.com> resolves to a privacy button; and the Disputed Domain Names <pdf-to-facebook.net> and <whatsappstatusvids.com> resolve to a document issued in this proceeding.

5. Parties’ Contentions

A. Complainants

The following are the Complainants’ contentions:

- the Disputed Domain Names are confusingly similar to the Complainants’ trademark or trademarks.
- the Respondent has no rights or legitimate interests in respect of the Disputed Domain Names.
- the Disputed Domain Names were registered and are being used in bad faith.
- the Complainants seek the transfer of the Disputed Domain Names from the Respondent to the Complainants in accordance with paragraph 4(i) of the Policy.

B. Respondent

The Respondent did not reply to the Complainants’ 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 UDRP 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, UDRP 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. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 4.11.1.

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 permit the consolidation of the Complainants.

6.2. Substantive elements of the Policy

In order for the Complainants to prevail and have the Disputed Domain Names transferred to the Complainants, the Complainants must prove the following (Policy, paragraph 4(a)(i-iii)):

(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 were registered and are being used in bad faith.

A. Identical or Confusingly Similar

This element consists of two parts: first, do the Complainants have rights in a relevant trademark and, second, are the Disputed Domain Names identical or confusingly similar to that trademark.

It is uncontroverted that the Complainants have established rights in the FACEBOOK and WHATSAPP Marks based on their use in the United States and other jurisdictions worldwide. The Disputed Domain Names incorporate the Complainants’ FACEBOOK and WHATSAPP Marks in their entirety. Prior UDRP panels have held that “when a domain name wholly incorporates a complainant’s registered mark, that is sufficient to establish identity or confusing similarity for the purposes of the Policy.” See Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525. Furthermore, previous UDRP decisions have held that where the relevant trademark is recognizable within the disputed domain name, the addition of other terms, such as “reflexiones”, “pdf” and “spy”, would not prevent a finding of confusing similarity under the first element. See WIPO Overview 3.0, section 1.8. Two of the Disputed Domain Names have been registered using Punycode2 and can therefore be displayed with non-ASCII characters as <whạtsapp.com> and <шһатѕарр.com>, which visually look highly similar to the distinctive WHATSAPP trademark. With regard to the use of Punycode to create confusing similarity between a domain name and a well-known trademark, prior UDRP panels have held that “the use of Punycode to create a domain name indistinguishable from a well-known trademark manifestly does not prevent a finding of identity or confusing similarity between the two.” See Inter Ikea Systems B.V. v. Domain Admin, Whois Privacy Corp., WIPO Case No. D2017-2211.

Finally, the addition of a generic Top-Level Domain (“gTLD”) such as “.com” or “.net” in a domain name is technically required. Thus, it is well established that such element may typically be disregarded when assessing whether a domain name is identical or confusingly similar to a trademark. Proactiva Medio Ambiente, S.A. v. Proactiva, WIPO Case No. D2012-0182.

Accordingly, the first element of paragraph 4(a) of the Policy has been met by the Complainants.

B. Rights or Legitimate Interests

Under the Policy, a complainant has to make out a prima facie case that the respondent lacks rights or legitimate interests in the disputed domain name. Once such a prima facie case is made, the respondent carries the burden of production of evidence that demonstrates rights or legitimate interests in the disputed domain name. If the respondent fails to do so, the complainant may be deemed to have satisfied paragraph 4(a)(ii) of the Policy. See WIPO Overview 3.0, at section 2.1.

In this case, the Panel finds that the Complainant has made out a prima facie case. The Respondent has not submitted any arguments or evidence to rebut the Complainants’ prima facie case. Furthermore, the Complainants have not authorized, licensed or otherwise permitted the Respondent to use their FACEBOOK and WHATSAPP Marks. The name of the Respondent has no apparent connection to the Disputed Domain Names that would suggest that the Disputed Domain Names are related to a trademark or trade name in which the Respondent has rights. Nor do the Complainants have any type of business relationship with the Respondent.

Moreover, the name “Nanci Nette” bears no resemblance to the Disputed Domain Names whatsoever. Given the Complainants’ notoriety, the FACEBOOK and WHATSAPP Marks are inherently distinctive and are widely considered to be exclusively associated with the Complainants. For that reason, the Respondent has not made or is not currently making a legitimate noncommercial or fair use of the Disputed Domain Names pursuant to paragraph 4(c)(iii) of the Policy. The Disputed Domain Names have been used erratically, both in connection with parking pages displaying PPC links, and subject to dynamic redirection to websites that promoted phishing schemes, or distributed malware. Such use by the Respondent cannot be deemed legitimate noncommercial or fair use within the meaning of the Policy.

Accordingly, the second element of paragraph 4(a) of the Policy has been met by the Complainants.

C. Registered and Used in Bad Faith

The Panel finds that based on the record, the Complainants have demonstrated the existence of the Respondent’s bad faith registration and use of the Disputed Domain Names pursuant to paragraph 4(a)(iii) of the Policy for the reasons set forth below.

First, the Panel finds that the Respondent knew or should have known of the Complainants’ rights in its FACEBOOK and WHATSAPP Marks when registering the Disputed Domain Names. The Complainants’ FACEBOOK and WHATSAPP Marks are well known in the industry and the Respondent registered the Disputed Domain Names several years after the Complainants first used and obtained their trademark registrations for the FACEBOOK and WHATSAPP Marks. Given the Complainants’ renown and goodwill worldwide, it strains credulity to believe that the Respondent had not known of the Complainants or the FACEBOOK and WHATSAPP Marks when registering the Disputed Domain Names. See Myer Stores Limited v. Mr. David John Singh, WIPO Case No. D2001-0763.

Second, the Respondent has been engaged in an abusive pattern of domain name registration to prevent trademark owners, including the Complainants, from reflecting their trademarks in corresponding domain names. See WIPO Overview 3.0, section 3.1.2. The Respondent’s practice of cybersquatting is further evidenced in multiple UDRP decisions, where UDRP panels have found that the Respondent had engaged in such a pattern of conduct and ordered the transfer of the domain names in those cases to the complainant. See, e.g., Veolia Environnement SA v. Nanci Nette, Name Management Group, WIPO Case No. D2017-1511.

Third, the Panel concludes that the Respondent registered the Disputed Domain Names with the intent to profit in some manner from or otherwise exploit the Complainants’ trademarks either through (i) fraudulent activities, (ii) PPC revenue, or (iii) the sale of the Disputed Domain Names to the Complainants or their competitors. As such, the Respondent engaged in a clear pattern of abusive registrations that also prevented the Complainants from reflecting their trademarks in the Disputed Domain Names.

At the commencement of this UDRP proceeding, the Disputed Domain Names either resolved to parking pages displaying PPC links, or were subject to dynamic redirection to various websites understood to promote phishing schemes or to disseminate malware. Such use of the Disputed Domain Names, which are confusingly similar to the Complainants’ distinctive and well-known trademarks, to redirect Internet users to such websites was for the Respondent’s commercial gain. Such conduct has been considered by prior UDRP panels, including those having ordered the transfer of the domain names registered by the Respondent, to fall within the scope of paragraph 4(b)(iv) of the Policy. See, e.g., Wikimedia Foundation, Inc. v. Domains by Proxy, LLC / Management Group, Nanci Nette, WIPO Case No. D2018-1453.

Finally, the registration of a domain name that is confusingly similar to a trademark by an entity that has no relationship to that mark may be sufficient evidence of bad faith. See Ebay Inc. v. Wangming, WIPO Case No. D2006-1107; Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co., WIPO Case No. D2000-0163. The Respondent has used and is using the Disputed Domain Names to intentionally attract, for commercial gain, Internet users to the websites to which the Disputed Domain Names resolved, by creating a likelihood of confusion with the Complainants’ FACEBOOK and WHATSAPP Marks as to the source, sponsorship, affiliation, or endorsement of the websites in accordance with paragraph 4(b)(iv) of the Policy.

Accordingly, the third element of paragraph 4(a) of the Policy has been met by the Complainants.

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 <шһатѕарр.com> (<xn--80aa2cah8a7f73b.com>), <pdf-to-facebook.net>, <reflexionesparawhatsapp.com>, <whatsapp-com.com>, <whạtsapp.com> (<xn--whtsapp-bn4c.com>), <whatsapp-spy.com>, and <whatsappstatusvids.com> be transferred to the Complainants.

Lynda M. Braun
Sole Panelist
Date: November 21, 2019

1 The Complainants submitted screenshots of the websites to which the Disputed Domain Names initially resolved. For example, <pdf-to-facebook.net>, <whatsapp-spy.com> and <whatsappstatusvids.com> resolved to parking pages displaying PPC advertising. The remaining Disputed Domain Names were subject to or had previously been subject to dynamic redirection, resolving to a range of websites purporting to offer online surveys, downloads, or security notifications. The Disputed Domain Name <xn--whtsapp-bn4c.com> was previously offered for sale at “www.sedo.com” for a minimum purchase price of USD 500. The Disputed Domain Name <xn--80aa2cah8a7f73b.com> was also listed for sale at “www.afternic.com”.

2 Punycode is a representation of Unicode with the limited ASCII character subset used for Internet host names. Using Punycode, host names containing Unicode characters are transcoded to a subset of ASCII consisting of letters, digits, and hyphen, which is called the letter-digit-hyphen (“LDH”) subset.

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