WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
WhatsApp LLC v. Mary Anne
Case No. D2021-1240
1. The Parties
The Complainant is WhatsApp LLC, United States of America, represented by Hogan Lovells (Paris) LLP, France.
The Respondent is Mary Anne, Russian Federation.
2. The Domain Name and Registrar
The disputed domain name <freewhatsappdownload.net> is registered with NameCheap, Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 22, 2021. On April 22, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On April 22, 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 April 28, 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 May 3, 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 proceedings commenced on May 7, 2021. In accordance with the Rules, paragraph 5, the due date for Response was May 27, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 28, 2021.
The Center appointed Knud Wallberg as the sole panelist in this matter on June 7, 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 the provider of the WhatsApp application, 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 2 billion active users worldwide.
The Complainant has registered numerous trademarks consisting of the term WHATSAPP in many jurisdictions throughout the world, including International Registration No. 1085539, WHATSAPP, registered on May 24, 2011, for goods and services in International classes 9 and 38.
The Complainant is also the owner of numerous domain names, consisting of the WHATSAPP trademark, under various generic Top-Level Domains (“gTLDs”) as well as under many country code Top-Level Domains (“ccTLDs”).
The disputed domain name <freewhatsappdownload.net> was registered on July 3, 2014. The disputed domain name is currently pointing to a website in English, which purports to provide information about the Complainant’s WhatsApp application, and which displays sponsored links and banner advertisements (see further below).
5. Parties’ Contentions
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 “free” and “download” as well as the “.net” gTLD 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 points to a website which purports to provide information about the WhatsApp application and which displays sponsored links and banner advertisements, but the links do in fact redirect users to websites that are related to the Complainant’s competitors.
The Complainant submits that given the Complainant’s renown and goodwill worldwide, including in Russia 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 Complainant had more than 500 million users at the time that the disputed domain name was registered, and the content of the website to which the disputed domain name points makes multiple references to the Complainant, which indicates a clear intent on the part of the Respondent to target the Complainant when registering the disputed domain name.
The Complainant further submits, that the disputed domain name is used in bad faith. The disputed domain name points to a website, which displays sponsored links and banner advertisements, which is a type of use that is clearly in bad faith given that the Respondent is deliberately seeking to profit from the Complainant's goodwill and renown for its own financial gain. Moreover, the disputed domain name targets the Complainant’s well-known WHATSAPP trademark and is being used to point to a website making multiple references to the Complainant, but in fact it is redirecting Internet users to websites offering downloads of an application belonging to one of the Complainant’s competitors. Furthermore, the Complainant asserts that it is more likely than not that the Respondent receives click-through revenue from advertising and links displayed on the Respondent’s website, and in any event, the owners of such third-party products ultimately derive commercial advantage from the Respondent's unauthorized use of the Complainant's trademark in the disputed domain name and on its website. Finally, the Complainant asserts that the Respondent's failure to reply to the Complainant’s cease-and-desist message may also be considered an additional indicator of the Respondent’s bad faith.
The Respondent did not reply to the Complainant’s contentions.
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 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 “free” and “download”. The gTLD “.net” 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. The Complainant has made a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name.
The disputed domain name directs to a website, which purports to provide information on the WhatsApp application, but which also displays banner advertisements with sponsored links, some of which redirect Internet users who click on the links to websites that are related to one of the Complainant’s competitors.
Furthermore, the nature of the disputed domain name, comprising the Complainant’s widely‑known trademark and related dictionary terms, carries a risk of implied affiliation and cannot constitute fair use as it effectively impersonates or suggests sponsorship or endorsement by the Complainant. See section 2.5.1 of the WIPO Overview 3.0.
Based on this, and since the Respondent has not filed a response in the matter and has therefore not provided the Panel with any arguments that could support that the types of circumstances set out in paragraph 4(c) of the Policy, 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 Russia, the distinctive nature of this mark, and the Respondent’s use of the disputed domain name, it is evident to the Panel that the Respondent registered the disputed domain name with 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 has been and is used actively for a website that purportedly provides information on the WhatsApp application, but which also displays banner advertisements with sponsored links, some of which redirect users who click on the links to websites that are related to one of the Complainant’s competitors. The Panel finds that this use is clearly bad faith use under the Policy.
Noting that the disputed domain name incorporates the Complainant’s distinctive trademark WHATSAPP, together with the addition of the common terms “free” and “download” and the gTLD “.net”, 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 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.
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 <freewhatsappdownload.net> be transferred to the Complainant.
Date: June 21, 2021