WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
WhatsApp LLC v. AXC BV, AXC BV
Case No. D2021-1454
1. The Parties
The Complainant is WhatsApp LLC, United States of America (“United States”), represented by Tucker Ellis, LLP, United States.
The Respondent is AXC BV, AXC BV, Netherlands.
2. The Domain Name and Registrar
The disputed domain name <whatsappwallet.com> is registered with Realtime Register B.V. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 11, 2021. On May 11, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 12, 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 May 19, 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 25, 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 25, 2021. In accordance with the Rules, paragraph 5, the due date for Response was June 14, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 1, 2021.
The Center appointed Jane Lambert as the sole panelist in this matter on July 13, 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 limited liability company incorporated in Delaware in the United States. It operates the WhatsApp messaging and voice over IP service and mobile application. WhatsApp is a global leader in messaging services for mobile devices with over 2 billion users in over 180 countries. WhatsApp enables its users to send text and voice messages, make voice and video calls and share images, documents, locations and other content.
Since 2018, the Complainant has been offering a payment service to users in India and Brazil. That service is operated by Facebook Pay which provides a convenient, secure, and consistent payment experience across the Facebook, Messenger, Instagram and WhatsApp. The Complainant’s payment service enables its users to add a supported debit or credit card to send and receive money. Users can confirm the status of transfers and view past transactions within WhatsApp’s payment settings. A number of articles about the service have appeared in the press.
The Complainant has registered the word WHATSAPP for many types of goods and services in trade mark registries around the world. One of those registrations is the United States trade mark number 3,939,463 registered on April 5, 2011, for goods and services in class 42. Another one is the European Union (“EU) trade mark number 014814347. That word mark is registered at the EU Intellectual Property Office for goods and services in classes 9, 35, 36, 38, 42 and 45 with effect from April 26, 2016.
Further, by reason of its use and advertising, consumers around the world associate the mark WHATSAPP in relation to messaging services, including those involving financial transactions, with the Complainant and none other.
The disputed domain name was registered on September 20, 2015, and was showed in the WhoIs in the name of “REDACTED FOR PRIVACY.” The Registrar identified the Respondent which appears to be a Dutch private limited liability company carrying on business from a business park at Leeuwarden. The Respondent has advertised the disputed domain name for sale for the price of USD 250,000 at the website to which the disputed domain name <whatsappwallet.com> resolves to. A screen print of the advertisement is annexed to the Complaint.
5. Parties’ Contentions
The Complainant requests the transfer of the disputed domain name on the grounds that:
(i) the disputed domain name is identical or confusingly similar to a trade mark 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.
As to the first ground, the Complainant submits that the disputed domain name plainly misappropriates sufficient textual components from its WHATSAPP mark that an ordinary Internet user who is familiar with that mark would, upon seeing the domain name, think an affiliation exists between the disputed domain name and the Complainant and/or its aforementioned trade mark. The Complainant refers to decisions in which panels have held that the addition of a descriptive term to a mark in a disputed domain name fails to distinguish such disputed domain name from a complainant’s mark. In some of those cases, the disputed domain name incorporated the whole of the complainant’s mark together with the word “wallet”. The disputed domain name in those cases was found to be confusingly similar because “wallet” is a mere dictionary word not capable of dispelling confusing similarity. Examples include Facebook Inc. v. Ma Xiao Ke, WIPO Case No. D2020-1346, where the disputed domain name was <facebookwallet.com> and Facebook Inc. v. 陶黎明 (Liming), WIPO Case No. D2020-1347, where the disputed domain name was <facebookwallet.net>.
The Complainant refers to section 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) in relation to the second ground which includes the following passage:
“While the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name 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. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, 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.”
Citing AB Electrolux v. Ahmed Aboeldahab, WIPO Case No. D2015-0650, the Complainant contends that a complainant establishes a prima facie case by showing that a respondent (1) is not authorized to use the marks, and (2) is not known by the complainant’s marks. The Complainant confirms that it has not licensed or authorized the Respondent to use the WHATSAPP mark and does not have any legal relationship with the Respondent that would entitle it to use that mark. Further, neither the WhoIs data for the disputed domain name nor the corresponding website available at the domain name indicates that the Respondent is known by the disputed domain name.
With regard to the third ground, the Complainant refers to paragraph 4(b) of the Policy and argues that the offer to sell the disputed domain name on the website at <whatsappwallet.com> falls within subparagraph (IV). In support of that argument, the Complainant cites Brookfield Office Properties Inc. v. Super Privacy Service Ltd c/o Dynadot /Cyan Yo, WIPO Case No. D2020-2861, and Automobili Lamborghini S.p.A. v. CoCo (黄登通), WIPO Case No. D2020-1371. It adds that the registration of the name of a well-known company or service as a domain name without lawful excuse is itself an act of bad faith.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
The agreement for the registration of the disputed domain name incorporated by reference paragraph 4(a) of the Policy:
“Applicable Disputes. You are required to submit to a mandatory administrative proceeding in the event that a third party (a "complainant") asserts to the applicable Provider, in compliance with the Rules of Procedure, that
(i) your domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) you have no rights or legitimate interests in respect of the domain name; and
(iii) your domain name has been registered and is being used in bad faith.
In the administrative proceeding, the complainant must prove that each of these three elements are present.”
A. Identical or Confusingly Similar
The Panel finds the first element to be present.
The Complainant has registered WHATSAPP in the United States, the European Union, and multiple other jurisdictions across the world as a trade mark. These trade marks are therefore ones in which the Complainant has rights for the purposes of paragraph 4(a)(i) of the Policy. The disputed domain name incorporates that trade mark and combines it with the term “wallet”. WIPO Overview 3.0, section 1.8, states that “[w]here the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element. It follows that the disputed domain name is confusingly similar to a trade mark in which the Complainant has rights.
Accordingly, the Complainant has established the first element of the Policy.
B. Rights or Legitimate Interests
The Panel finds the second element to be present.
The Panel finds that the Complainant has made out a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name.
Pursuant to section 2.1 of the WIPO Overview 3.0, once a prima facie case has been established, the burden of production on this element has now shifted to the Respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the disputed domain name. It has been afforded a reasonable opportunity to adduce such evidence but has failed to do so.
The disputed domain name incorporates the Complainant’s trademark in its entirety and combines with with the term “wallet”. The added term is likely to lead Internet users to believe that it is to be used as a URL for a payment service to be supplied by the Complainant. As such, the nature of the disputed domain name is such to carry a risk of implied affiliation, which cannot constitute faire use. See section 2.5.1 of the WIPO Overview 3.0.
Accordingly, the Complainant is deemed to have satisfied the second element.
C. Registered and Used in Bad Faith
The Panel finds that the third element is present.
The Panel agrees with the Complainant that paragraph 4(b) of the Policy sets out a number of circumstances which, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith. These include:
“(i) circumstances indicating that you have registered or you have 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 complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name;”
and circumstances where
“(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.”
The advertisement of the disputed domain name for USD 250,000 falls within subparagraph (i). The price at which the disputed domain name is offered for sale greatly exceeds the likely costs of registering the disputed domain name and hosting the advertisement at <whatsappwallet.com>.
Advertising the disputed domain name for sale would also be an attempt “to attract for commercial gain” within the meaning of subparagraph (iv). The Panel has already found that the disputed domain name is confusingly similar to the Complainant’s trade mark and that internet users are likely to be led to believe that the disputed domain name is to be used as a URL for a payment service supplied by the Complainant. Whenever they enter the disputed domain name into their browsers, they will be led to the advertisement for the transfer of the disputed domain name. It follows that all the circumstances of subparagraph (iv) are present.
No countervailing evidence has been adduced or explanation offered by the Respondent. It follows that the Respondent has registered and used the disputed domain name 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 <whatsappwallet.com> be transferred to the Complainant.
Date: July 27, 2021