WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

WhatsApp Inc. v. Alan Frei

Case No. D2020-1488

1. The Parties

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

The Respondent is Alan Frei, Switzerland.

2. The Domain Name and Registrar

The disputed domain name <whatsappcommerce.com> (hereafter the “Disputed Domain Name”) is registered with PSI-USA, Inc. dba Domain Robot (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 9, 2020. On June 9, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On June 10, 2020, 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 June 16, 2020. In accordance with the Rules, paragraph 5, the due date for Response was July 6, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 7, 2020.

The Center appointed Flip Jan Claude Petillion as the sole panelist in this matter on July 15, 2020. 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 multinational provider of Over-The-Top (OTT) messaging and communications services. The Complainant currently is the operator of one of the most popular communication applications with over 2 billion users worldwide.

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

- WHATSAPP, United States (“US”) word mark registered with the United States Patent and Trademark Office on April 5, 2011, under number 3939463 in class 42;

- WHATSAPP, European Union (“EU”) word mark registered with the European Union Intellectual Property Office on October 25, 2011, under number 009986514 in classes 9, 38 and 42; and

- WHATSAPP, International word mark, registered on May 24, 2011, under number 1085539 in classes 9 and 38.

The Disputed Domain Name was registered by the Respondent on October 20, 2015, and does not resolve to any active website.

On April 2 and April 20, 2020, the Complainant sent a cease and desist letter to the Respondent through an online form, by email and by post, asserting the Complainant’s trademark rights and requesting the transfer of the Disputed Domain Name. On May 4, 2020, the Respondent replied confirming the receipt of the Complainant’s email and letters and stating that it would “not use the domain in anyway" (sic).

On May 18, 2020, after further correspondence between the parties, the Complainant offered USD 100 to reimburse the Respondent’s out-of-pocket costs associated with the registration and renewal of the Disputed Domain Name if it agreed to transfer it. The Respondent replied by proposing to settle the dispute and transfer the Disputed Domain Name in return for USD 1,000.

5. Parties’ Contentions

A. Complainant

The Complainant considers the Disputed Domain Name to be confusingly similar to a trademark in which it claims to have rights. The Complainant further claims that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name. According to the Complainant, the Respondent has not used the Disputed Domain Name in connection with a legitimate use. Also, according to the Complainant, the Respondent has not been commonly known by the Disputed Domain Name and is in no way affiliated with the Complainant. Finally, the Complainant claims that the Disputed Domain Name was registered and is being used in bad faith.

B. Respondent

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

6. Discussion and Findings

Paragraph 15 of the Rules provides that the Panel is to decide the Complaint on the basis of the statements and documents submitted in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.

The onus is on the Complainant to make out its case and it is apparent, both from the terms of the Policy and the decisions of past UDRP panels, that the Complainant 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 Name. As the UDRP proceedings are administrative, the standard of proof is the balance of probabilities.

Thus, for the Complainant to succeed it must prove, within the meaning of paragraph 4(a) of the Policy, that:

(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.

The Panel will therefore deal with each of these requirements.

A. Identical or Confusingly Similar

To prove this element, the Complainant must first establish that there is a trademark or service mark in which it has rights. The Complainant has clearly established that it has trademarks rights in the sign WHATSAPP. The Complainant’s WHATSAPP trademarks have been registered and extensively used in connection to its communication business.

The Disputed Domain Name incorporates the Complainant’s WHATSAPP trademark in its entirety, merely adding the word “commerce”. As stated at section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), where the relevant trademark is recognizable within the Disputed Domain Name, the addition of other (descriptive) terms would not prevent a finding of confusing similarity.

Additionally, it is well established that the generic Top-Level Domain (“gTLD”) “.com” may be disregarded when considering whether the Disputed Domain Name is confusingly similar to a trademark in which the Complainant has rights.

In light of the above, the Panel considers the Disputed Domain Name to be confusingly similar to the Complainant’s WHATSAPP trademark.

B. Rights or Legitimate Interests

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

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

The Panel notes that the Respondent has not apparently been commonly known by the Disputed Domain Name 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 Name, the Respondent is “Alan Frei”. The Respondent’s use and registration of the Disputed Domain Name was not authorized by the Complainant. There are no indications that a connection between the Complainant and the Respondent exists or existed.

Where a domain name consists of a trademark plus an additional term, UDRP panels have largely held that such composition cannot constitute fair use if it effectively impersonates or suggests sponsorship or endorsement by the trademark owner (see section 2.5.1 of the WIPO Overview 3.0). The Disputed Domain Name incorporates the Complainant’s well-known WHATSAPP trademark and adds the word “commerce”, which is descriptive and could be linked to the Complainant’s business. Therefore, the Panel finds that the Disputed Domain Name carries a high risk of implied affiliation with the Complainant and cannot constitute fair use.

Beyond looking at the domain name and the nature of any additional terms appended to it, UDRP panels assess whether the overall facts and circumstances of the case, including the absence of a response, support a fair use or not (see sections 2.5.2 and 2.5.3 of the WIPO Overview 3.0).

The Panel is of the opinion that the Respondent is not making a legitimate noncommercial or fair use of the Disputed Domain Name. In fact, the Respondent is not making any use of the Disputed Domain Name in connection with an active website. Neither the Respondent nor the facts of the case indicate any demonstrable preparations to use the Disputed Domain Name. On the contrary, the Respondent confirmed it will never use the Disputed Domain Name in any way. The passive holding or non-use of domain names is, in appropriate circumstances, evidence of a lack of rights or legitimate interests in the domain names (see Red Bull GmbH v. Credit du Léman SA, Jean-Denis Deletraz, WIPO Case No. D2011-2209; Facebook, Inc. v. Mirza Azim, WIPO Case No. D2016-0950; American Home Products Corporation v. Ben Malgioglio, WIPO Case No. D2000-1602; Vestel Elektronik Sanayi ve Ticaret AS v. Mehmet Kahveci, WIPO Case No. D2000-1244).

The Respondent had the opportunity to demonstrate its rights or legitimate interests but did not do so. In the absence of a Response from the Respondent, the prima facie case established by the Complainant has not been rebutted.

Therefore, the Panel finds that the Complainant has established that the Respondent has no rights or legitimate interests in the Disputed Domain Name. In light of the above, the Complainant succeeds 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 Name was registered in bad faith and that it is being used in bad faith (see section 4.2 of the WIPO Overview 3.0 and, for example, Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003 and Control Techniques Limited v. Lektronix Ltd, WIPO Case No. D2006-1052).

In the present case, it is inconceivable that the Respondent was unaware of the Complainant and its trademark rights when it registered the Disputed Domain Name. The Disputed Domain Name includes the Complainant’s WHATSAPP trademark in its entirety with the mere addition of the descriptive term “commerce”. The Complainant provided extensive evidence of the established reputation of its trademark before and after Facebook’s acquisition of the Complainant in 2014. Therefore, the Panel finds that the Respondent must have had knowledge of the Complainant’s rights at the time of registering the Disputed Domain Name on October 20, 2015. According to the Panel, the Respondent’s awareness of the Complainant’s trademark rights at the time of registration indicates 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, where POKÉMON was held to be a well-known mark of which the use by someone without any connection or legal relationship with the complainant suggested opportunistic bad faith; BellSouth Intellectual Property Corporation v. Serena, Axel, WIPO Case No. D2006-0007).

The Respondent is not presently using the Disputed Domain Name. The passive holding of a domain name may amount to bad faith when it is difficult to imagine any plausible future active use of a domain name by the respondent that would be legitimate and would not interfere with the complainant’s well-known mark (see Inter-IKEA v. Polanski, WIPO Case No. D2000-1614; Inter-IKEA Systems B.V. v. Hoon Huh, WIPO Case No. D2000-0438; Telstra Corporation Limited v. Nuclear Marshmallows, supra). Additional factors to support a finding of bad faith in relation to the passive holding of a domain name include the degree of distinctiveness or reputation of the Complainant’s mark and the failure of the Respondent to submit a response or to provide any evidence of actual or contemplated good-faith use (see section 3.3 of WIPO Overview 3.0).

In the present case, the Panel is of the opinion that the Complainant’s WHATSAPP trademark is distinctive and widely used, which makes it difficult to conceive any plausible legitimate future use of the Disputed Domain Name by the Respondent.

Furthermore, the Panel observes that after the Complainant’s cease and desist letter and further correspondence, the Respondent ultimately offered to transfer the Disputed Domain Name in return for USD 1,000. In the Panel’s opinion, the Respondent’s offer to transfer the Disputed Domain Name only in return of such amount of money is a further indication of bad faith (see Swarovski Aktiengesellschaft v. PrivacyProtect.org / MURAT KİLKİS, WIPO Case No. D2013-1049).

By failing to respond to the Complaint, the Respondent did not take any initiative to contest the foregoing. Pursuant to paragraph 14 of the Rules, the Panel may draw the conclusions it considers appropriate.

Therefore, the Panel finds that, on the balance of probabilities, it is sufficiently shown that the Disputed Domain Name was registered and is being used in bad faith. In light of the above, the Complainant also succeeds 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 Name <whatsappcommerce.com> be transferred to the Complainant.

Flip Jan Claude Petillion
Sole Panelist
Date: July 29, 2020