WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
WhatsApp LLC v. Yazilim Uzmani
Case No. D2021-3850
1. The Parties
The Complainant is WhatsApp LLC, United States of America (“United States”), represented by Hogan Lovells (Paris) LLP, France.
The Respondent is Yazilim Uzmani, Turkey.
2. The Domain Name and Registrar
The disputed domain name <whatsappgrupbul.com> is registered with Nics Telekomunikasyon A.S. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 17, 2021. On November 18, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 21, 2021, 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”).
The Center sent an email communication in English and Turkish to the parties on November 23, 2021, regarding the language of the proceeding, as the Complaint has been submitted in English and the language of the registration agreement for the disputed domain name is Turkish. The Complainant sent an email to the Center requesting English to be the language of the proceeding on November 23, 2021. The Respondent did not comment on the language of the proceeding.
In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on December 1, 2021. In accordance with the Rules, paragraph 5, the due date for Response was December 21, 2021. The Respondent did not submit any response. On November 23, 2021, a person claiming to be the registrant of the disputed domain name responded to the Center’s email communication regarding the language of the proceeding. On December 1, 2021, the Center received two more email communications from the same person. On December 22, 2021, the Center informed the Parties that it will proceed to panel appointment
The Center appointed Kaya Köklü as the sole panelist in this matter on January 4, 2022. 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 United States based company, which provides a service to exchange messages via smartphones. Based on uncontested information provided in the case record, the Complainant has 2 billion monthly users worldwide (Annex 6 to the Complaint).
The Complainant is the owner of the word and figurative mark WHATSAPP, which is registered in a large number of jurisdictions. For instance, the Complainant is the owner of the United States Trademark Registration No. 3939463, registered on April 5, 2011. The Complainant is further the owner of the International Trademark Registration No. 1085539, registered on May 24, 2011, designating Turkey, where it has been registered under the Turkish Trademark Registration No. 2011 70159 on December 28, 2012. The registered trademarks provide protection for various goods and services, in particular International Classes 9, 38, and 42 (Annex 9 to the Complaint).
The Complainant further holds and operates various domain names consisting of or including the WHATSAPP trademark, such as <whatsapp.com> (Annex 7 to the Complaint).
The disputed domain name was registered on July 7, 2018
The Respondent is reportedly located in Turkey. The Panel notes that the Respondent name means “software specialist”, which was confirmed by the emails sent to the Center on December 1, 2021, by a person claiming to be the registrant of the disputed domain name (“Volkan Celiloğlu”). According to these email communications, and the provided documents therein, Volkan Celiloğlu is the person whom registered and controls the disputed domain name and also operated the associated website.
According to the documents provided by the Complainant, the disputed domain name resolved to a website in Turkish and partially in English language that prominently used the WHATSAPP trademark as well as modified versions of the Complainant’s WHATSAPP trademark and telephone design mark. The associated website provided online invitations to open chat groups hosted by the Complainant as well as posts on how to use the Complainant’s services (Annex 10 to the Complaint).
At the time of the decision, the disputed domain name no longer resolves to an active website.
5. Parties’ Contentions
The Complainant requests the transfer of the disputed domain name.
The Complainant is of the opinion that the disputed domain name is confusing similar to its WHATSAPP trademark.
Furthermore, the Complainant argues that the Respondent has no rights or legitimate interests in respect of the disputed domain name.
Finally, the Complainant argues that the Respondent has registered and is using the disputed domain name in bad faith.
The Respondent did not respond to the Complainant’s contentions. In the email communications to the Center on December 1, 2021, Volkan Celiloğlu made clear that he will not challenge this case. He further confirmed in Turkish language that he will no longer actively use the disputed domain name and also not renew its registration after expiry. In particular, if requested, he is also willing to transfer the disputed domain name to the Complainant.
6. Discussion and Findings
6.1. Language of the Proceeding
The Panel determines in accordance with the Complainant’s request and the Rules, paragraph 11(a), that the language of the administrative proceeding shall be English.
Although the language of the registration agreement is Turkish, the Panel finds that it would be inappropriate, given the circumstances of this case, to conduct the proceeding in Turkish and request a Turkish translation of the Complaint, while the Respondent respectively the third party explicitly decided not to challenge the Complainant’s contentions and its request to transfer the disputed domain name.
Consequently, the Panel is convinced that the Respondent will not be prejudiced by a Decision being rendered in English.
6.2. Respondent Identity
The Registrar identified “Yazilim Uzmani” as the registrant of the disputed domain name. For purposes of the Policy, paragraph 1 of the Rules defines the “Respondent” as the holder of a domain-name registration against which a complaint is initiated. The Complaint was filed against the Registrar-confirmed registrant of the disputed domain name, “Yazilim Uzmani”.
As mentioned-above, the Center received two email communications from Volkan Celiloğlu alleging ownership of the disputed domain name and providing substantiating evidence. Bearing in mind that “Yazilim Uzmani” is Turkish for “software specialist”, the Panel notes that the signature line for Volkan Celiloğlu includes the acronym for “Chief Technical Officer” and that Volkan Celiloğlu has provided a screenshot demonstrating the disputed domain name was within his account, suggesting to the Panel that the Respondent name (“Yazilim Uzmani”) is merely descriptive of Volkan Celiloğlu’s services.
Accordingly, the Panel accepts Volkan Celiloğlu’s submissions to the Center as submissions by the person who actually has registered and controls the disputed domain name. Hence, the Panel accepts these submissions by Volkan Celiloğlu as submissions from the Respondent. Following, any reference to “the Respondent” will refer jointly to Volkan Celiloğlu and Yazilim Uzmani, unless otherwise indicated.
6.3. Substantive Issues
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.
In accordance with paragraph 4(a) of the Policy, the Complainant must prove that each of the three following elements is satisfied:
(i) the disputed domain name is identical or confusingly similar to a trademark 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.
For the evaluation of this case, the Panel has taken note of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0 and, where appropriate, will decide consistent with the consensus views stated therein.
A. Consent to Transfer
The Panel notes that even without a formal settlement between the parties, a consent for the transfer of a disputed domain name by the respondent can provide sufficient basis for an order for transfer without the need for substantial consideration of the UDRP grounds and the further merits of the case. In view of WIPO Overview 3.0, section 4.10, a panel may “order the requested remedy solely on the basis of such consent”.
In the present case, the Center received an email communication in Turkish language from the Respondent on December 1, 2021, which unequivocally and unambiguously expresses the Respondent’s will not to challenge the Complainant’s contentions. In his latest email communication of December 1, 2021, the Respondent particularly confirmed that he will no longer use the disputed domain name and that he will not renew its registration upon expiry. Furthermore, the Respondent expressly stated that he also willing to transfer the disputed domain name to the Complainant, if requested.
The Panel finds that the email communications by the Respondent to the Center undoubtedly demonstrate its consent to transfer the disputed domain name to the Complainant.
The fact that no settlement agreement has been concluded between the Parties does, in view of the Panel, not affect the effectiveness of the Respondent’s unilateral consent to the transfer.
Also in light of the further circumstances of the case, the Panel therefore exceptionally renders its Decision in summary form and orders the transfer of the disputed domain name to the Complainant.
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 <whatsappgrupbul.com> be transferred to the Complainant.
Date: January 18, 2022