WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
WhatsApp Inc. v. WhoisGuard Protected, WhoisGuard, Inc. / Fauzi Motty, SoftPedian
Case No. D2021-0093
1. The Parties
The Complainant is WhatsApp Inc., United States of America (“United States” or “US”), represented by Hogan Lovells (Paris) LLP, France.
The Respondent is WhoisGuard Protected, WhoisGuard, Inc., Panama / Fauzi Motty, SoftPedian, Indonesia.
2. The Domain Name and Registrar
The disputed domain name <whatsapp2021.com> is registered with NameCheap, Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 12, 2021. On January 13, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 13, 2021, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name, which differed from the named Respondent, and contact information in the Complaint. The Center sent an email communication to the Complainant on January 14, 2021, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on January 19, 2021.
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 proceeding commenced on January 20, 2021. In accordance with the Rules, paragraph 5, the due date for Response was February 9, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 10, 2021. On February 17, 2021, the Complainant forwarded to the Center a communication from the Respondent in which the Respondent offered transfer of the disputed domain name. The Complainant informed the Center that it did not wish to explore settlement and requested that the Panel proceed to issue a decision on the merits.
The Center appointed Sebastian M.W. Hughes as the sole panelist in this matter on February 17, 2021. 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 company founded in the US in 2009, and the operator of one of the world’s most popular communication applications under the trade mark WHATSAPP (the “Trade Mark”).
The Complainant’s WhatsApp app, with one billion users worldwide in February 2016, is ranked as the third most downloaded mobile application in the world.
The Complainant is the owner of numerous registrations in jurisdictions worldwide for the Trade Mark, including US registration No. 3939463, registered on April 5, 2011; and International registration No. 1085539, registered on May 24, 2011.
The Complainant is the owner of numerous domain names comprising the Trade Mark, under generic Top-Level Domain (“gTLD”) and country code Top-Level Domain (“ccTLD”) extensions, including <whatsapp.com>, <whatsapp.net>, <whatsapp.org>, <whatsapp.us>, <whatsapp.eu>, <whatsapp.hk>, <whatsapp.in>, and <whatsapp.uk>.
The Respondent is apparently an individual resident in Indonesia.
C. The Disputed Domain Name
The disputed domain name was registered on November 21, 2019.
D. The Website at the Disputed Domain Name
The disputed domain name has been resolved to an English language website, which provides information on the Complainant’s WhatsApp app and offers active and inactive links to various WhatsApp downloads for different devices, as well as sponsored links and banner advertisements, and which features prominently the Complainant’s green logo Trade Mark and corporate livery (the “Website”).
5. Parties’ Contentions
The Complainant contends that the disputed domain name is confusingly similar to the Trade Mark, the Respondent has no rights or legitimate interests in respect of the disputed domain name, and the disputed domain name was registered and is being used in bad faith.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
The Complainant must prove each of the three elements in paragraph 4(a) of the Policy in order to prevail.
A. Identical or Confusingly Similar
The Panel finds that the Complainant has rights in the Trade Mark acquired through use and registration.
The disputed domain name incorporates the entirety of the relevant Trade Mark (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) section 1.7) together with the year “2021”.
Where a relevant trade mark is recognisable within a disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) does not prevent a finding of confusing similarity under the first element (see WIPO Overview 3.0, section 1.8).
The Panel therefore finds that the disputed domain name is confusingly similar to the Trade Mark.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides a list of non-exhaustive circumstances any of which is sufficient to demonstrate that a respondent has rights or legitimate interests in the disputed domain name:
(i) Before any notice to the respondent of the dispute, the respondent’s use of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; or
(ii) The respondent (as an individual, business, or other organisation) has been commonly known by the disputed domain name even if the respondent has acquired no trade mark or service mark rights; or
(iii) The respondent is making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.
The Complainant has not authorised, licensed, or permitted the Respondent to register or use the disputed domain name or to use the Trade Mark. The Panel finds on the record that there is therefore a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name, and the burden is thus on the Respondent to produce evidence to rebut this presumption.
The Respondent has failed to show that he has acquired any trade mark rights in respect of the disputed domain name or that the disputed domain name has been used in connection with a bona fide offering of goods or services.
To the contrary, the disputed domain name has been used, for commercial gain and without authorisation, to generate commercial revenue via the pay-per-click links on the Website.
There has been no evidence adduced to show that the Respondent has been commonly known by the disputed domain name.
There has been no evidence adduced to show that the Respondent is making a legitimate noncommercial or fair use of the disputed domain name.
In all the circumstances, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name.
C. Registered and Used in Bad Faith
In light of the manner of use of the disputed domain name highlighted in Section B. above, the Panel finds that the requisite element of bad faith has been made out, under paragraph 4(b)(iv) of the Policy.
The Panel finds that, in light of the worldwide repute of the Trade Mark, it is inconceivable that the Respondent was not aware of the Complainant and of its rights in the Trade Mark at the time of registration of the disputed domain name.
The Panel also finds that, in light of the repute of the Trade Mark, and on the evidence herein, there cannot be any actual or contemplated good faith use of the disputed domain name by the Respondent.
For all the foregoing reasons, the Panel concludes that the disputed domain name has been registered and is being used in bad faith.
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 <whatsapp2021.com> be transferred to the Complainant.
Sebastian M.W. Hughes
Dated: March 1, 2021