WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
WhatsApp Inc. v. Dipendra, Dealsnsteals
Case No. D2020-2102
1. The Parties
The Complainant is WhatsApp Inc., United States of America (“United States”), represented by Hogan Lovells (Paris) LLP, France.
The Respondent is Dipendra, Dealsnsteals, India.
2. The Domain Name and Registrar
The disputed domain name <whatsappsell.com> (the “Domain Name”) is registered with BigRock Solutions Pvt Ltd. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 8, 2020. On August 10, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On August 11, 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 August 19, 2020. In accordance with the Rules, paragraph 5, the due date for Response was September 8, 2020. The Response was filed with the Center on September 8, 2020.
On September 9, 2020 the Center sent a Possible Settlement Communication making reference to points 5 and 6 of the Respondent’s file and gave the Complainant until September 15, 2020 to submit a request for suspension. No request for suspension was received.
The Center appointed Wolter Wefers Bettink as the sole panelist in this matter on October 9, 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 is a provider of the WhatsApp messaging application (“app”). Since its launch in 2009, WhatsApp has become one of the fastest growing and most popular mobile applications in the world, with over 2 billion monthly active users worldwide (as of February 2020).
The Complainant is the owner of registrations for the WHATSAPP trade mark in many jurisdictions throughout the world, including:
- Indian trade mark No. 2149059, registered on May 24, 2011;
- United States trade mark No. 3939463, registered on April 5, 2011 (first use in commerce February 24, 2009);
- European Union Trade Mark No. 009986514, registered on October 25, 2011; and
- International trade mark No.1085539, registered on May 24, 2011.
These are hereinafter together referred to as the “Trade Marks”.
The Domain Name was registered on December 19, 2014 and resolves to a website containing pay-per-click (“PPC”) links, some of which contain the trade mark WHATSAPP and others using trade marks of competitors of the Complainant.
5. Parties’ Contentions
The Complainant submits that the Domain Name is confusingly similar to the Trade Marks, since it incorporates the WHATSAPP trade mark in its entirety, while the addition of the descriptive term “sell” is not sufficient to refute the similarity between the Domain Name and the Trade Marks. According to the Complainant, the generic Top-Level Domain (“gTLD”) extension “.com” may be disregarded for the purposes of assessment under the first element, as it is viewed as a standard registration requirement.
The Complainant contends that the Respondent has no rights or legitimate interests in the Domain Name, as the Respondent is not a licensee of the Complainant, nor has the Respondent been otherwise authorized by the Complainant to make any use of the Trade Marks, in a domain name or otherwise. Furthermore, the Complainant submits that the Respondent cannot credibly claim to be commonly known by the Domain Name, or a name corresponding to the Domain Name, as the name of the Respondent shows no resemblance to the Domain Name, while the Complainant is not aware of any evidence that the Respondent has sought to secure any trade mark rights in the terms “whatsapp” or “whatsappsell”, as reflected in the Domain Name.
According to the Complainant, the Respondent is not using the Domain Name in connection with a bona fide offering of goods or services, as the Domain Name resolves to a website containing sponsored links, with the majority of them targeting the Trade Marks, showing that the Respondent is seeking to unduly profit from the Complainant's goodwill for his own financial gain. Neither, the Complainant submits, can the Respondent assert that it has made or is currently making a legitimate noncommercial or fair use of the Domain Name since the website to which the Domain Name is pointing is commercial in nature and from which the Respondent (or a third party) is undoubtedly obtaining financial gain.
The Complainant submits that the Domain Name was registered and is being used in bad faith. The Complainant contends that the Respondent registered the Domain Name without authorization in full knowledge of the Complainant's rights, in view of the fact that the Trade Marks are inherently distinctive and well known throughout the world in connection with its messaging services, and have rapidly acquired considerable reputation and goodwill worldwide due to the Trade Marks having been continuously and extensively used since the launching of its services.
The Complainant also submits that the Respondent has engaged in a pattern of abusive conduct in registering trade mark-abusive domain names, as a search conducted by the Complainant's lawyers revealed that the Respondent's details used to be associated with the domain names <whatsappbuy.in>, whatsappbuysell.com>, <whatsappbuysell.net>, <whatsappsell.in>, <googledial.in>, <youtubelearn.net> and <youtubeshop.in>.
With respect to bad faith use of the Domain Name, the Complainant submits that the Respondent's use of the Domain Name is clearly intended to obtain financial gain derived from the goodwill and reputation attached to the Trade Marks, as it is pointing to an advertising website displaying PPC links, some of which target the Trade Marks.
The Respondent submits that the Domain Name is not identical or confusingly similar to the Trade Marks, as the Domain Name is used for a website, while the Trade Marks are used for an app for a phone and not for a website, the website under <whatsapp.com> mainly serving an administrative purpose and contributing little functionality to the app.
According to the Respondent, at the time it registered the Domain Name, the Complainant had advertised the WHATSAPP application only as a communication tool, it was not intended for a commercial purpose. In contrast, the Respondent submits, the Domain Name was intended as a tool for an online marketing business. The Respondent states that at present the Complainant allows business accounts (the Panel understands: in relation to the WHATSAPP messaging app) and the website under the Domain Name would be designed around this tool, so that the public would know that (the Panel understands: the future website under) the Domain Name uses the WHATSAPP messaging app.
The Respondent submits that the question of bad faith does not arise since it has not created a website under the Domain Name and that any domain parking website was not initiated by the Respondent, but by the registrar and without its consent. Furthermore, the Respondent contends, the Complainant has not shown it has suffered any damage as a consequence of the Domain Name. The Respondent states that it has no intention of selling the Domain Name.
6. Discussion and Findings
A. Identical or Confusingly Similar
The standing test for confusing similarity involves a reasoned but relatively straightforward comparison between the Trade Marks and the Domain Name, typically involving a side-by-side comparison of the Domain Name and the textual components of the Trade Marks to assess whether the latter are recognizable within the Domain Name (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.7).
The Complainant has shown that it has registered rights in the Trade Marks. The Domain Name is confusingly similar to the Trade Marks as it incorporates the element WHATSAPP, of which the Trade Marks consist, in its entirety. The addition of the descriptive term “sell” does not prevent a finding of confusing similarity under the first element (see WIPO Overview 3.0, section 1.8). The gTLD “.com” is typically disregarded under the confusing similarity test, since it is a technical registration requirement (see section 1.11 of the WIPO Overview 3.0).
Therefore, the Panel finds that the Domain Name is confusingly similar to the Trade Marks in which the Complainant has rights.
B. Rights or Legitimate Interests
Under paragraph 4(c) of the Policy, the second element a complainant has to prove is that a respondent lacks rights or legitimate interests in a domain name. This may result in the often impossible task of proving a negative, requiring information that is often primarily within the knowledge or control of the respondent. In order to satisfy the second element, the Complainant has to make out a prima facie case that the Respondent does not have rights or legitimate interests in the Domain Name. If the Complainant succeeds in doing so, the burden of production on this element shifts to the Respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the Domain Name. If the Respondent fails to come forward with such relevant evidence, the Complainant is deemed to have satisfied the second element (see WIPO Overview 3.0, section 2.1).
Based on the evidence and the undisputed submissions of the Complainant, the Panel concludes that the Respondent has not received the Complainant’s consent to use the Trade Marks as part of the Domain Name, is not commonly known by the Domain Name and has not acquired trade mark rights in the Domain Name. As the Domain Name resolves to a PPC website where links are offered to other websites, some using the Trade Marks, others indicating services which compete with those offered by the Complainant under the Trade Marks, the Respondent is not making a legitimate noncommercial or fair use of the Domain Name (paragraph 4(c)(iii) of the Policy), nor can such use be considered to be in connection with a bona fide offering of goods or services, in accordance with paragraph 4(c)(i) of the Policy. The Respondent submits that the Domain Name was intended as a tool for an online marketing business. In the circumstances of this case, and noting that the Domain Name was registered in 2014, the Panel does not find the Respondent’s bare assertions convincing.
In view of the above, the Panel concludes that the Complainant has established that the Respondent has no rights or legitimate interests in the Domain Name.
C. Registered and Used in Bad Faith
Based on the information and the evidence provided by the Complainant, the Panel finds that the Respondent registered the Domain Name in bad faith, since at the time of registration it was aware of and indeed specifically targeted, the Complainant and the Trade Marks, as the Respondent has admitted that it intended the Domain Name to resolve to a website designed around the Complainant’s WHATSAPP messaging app and that the public would know that this website uses the WHATSAPP messaging app.
The Panel also finds that the Respondent is using the Domain Name in bad faith, in particular since the Domain Name resolves to a parking website offering links using the Trade Marks and others using trade marks of competitors of the Complainant, apparently linking to services competing with those offered by the Complainant. The Respondent cannot disclaim responsibility for content appearing on the website associated with the Domain Name. Neither the fact that such links are generated by a third party such as a registrar, nor the fact that the Respondent itself may not have directly profited, would by itself prevent a finding of bad faith (see WIPO Overview 3.0, section 3.5; see also Shangri-La International Hotel Management Limited v. NetIncome Ventures Inc., WIPO Case No. D2006-1315). For completeness’ sake the Panel remarks that it is not necessary for a bad faith finding that the Complainant shows that it has sustained damage as a consequence of the registration or use of a Domain Name.
Based on these circumstances the Panel concludes that the Respondent is using the Domain Name to intentionally attempt to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Trade Marks as to the source, sponsorship, affiliation or endorsement of the website to which the Domain Name resolves, in accordance with paragraph 4(b)(iv) 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 Domain Name <whatsappsell.com> be transferred to the Complainant.
Wolter Wefers Bettink
Date: October 21, 2020