WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

WhatsApp Inc. v. Saeed Khoddami

Case No. DIR2020-0007

1. The Parties

The Complainant is WhatsApp Inc., United States of America (“United States”), represented Hogan Lovells (Paris) LLP, France.

The Respondent is Saeed Khoddami, Islamic Republic of Iran.

2. The Domain Name and Registrar

The disputed domain names <iwhatsapp.ir> and <whatsapps.ir> are registered with IRNIC.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 15, 2020. On May 15, 2020, the Center transmitted by email to IRNIC a request for registrar verification in connection with the disputed domain names. On May 16, 2020, IRNIC 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 .ir Domain Name Dispute Resolution Policy (the “Policy” or “irDRP”), the Rules for .ir Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for .ir Domain Name Dispute Resolution Policy (the “Supplemental Rules”).

In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on June 10, 2020. In accordance with the Rules, paragraph 5(a), the due date for Response was June 30, 2020. On July 1, 2020, the Center notified the Respondent’s default.

The Center appointed Steven A. Maier as the sole panelist in this matter on July 19, 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 corporation located in California, United States. It is a provider of a mobile messaging application.

The Complainant is the owner of numerous registrations for the trademark WHATSAPP in various jurisdictions, including for example the following:

- United States trademark number 3939463 for the standard character mark WHATSAPP, registered on April 5, 2011;

- International trademark number 1085539 for the mark WHATSAPP, registered on May 24, 2011; and

- European Union trademark number 009986514 for the word mark WHATSAPP, registered on October 25, 2011.

The Complainant claims also to be the owner of Iranian trademark number 250076 for the mark WHATSAPP, registered on June 19, 2017, and it produces an untranslated trademark certificate in Persian as evidence of such.

The Complainant provides evidence that it uses a distinctive circular logo, featuring a white telephone receiver against a green background.

The disputed domain name <whatsapps.ir> was registered on December 10, 2012. It does not appear to have resolved to any active website.

The disputed domain name <iwhatsapp.ir> was registered on May 18, 2014. It has resolved to a website at “www.iwhatsapp.ir” in the Persian language. The website displays the WHATSAPP mark and the Complainant’s logo referred to above and includes the items (in translation) “Download WhatsApp” and “WhatsApp training”.

5. Parties’ Contentions

A. Complainant

The Complainant states that it has operated under the name and mark WHATSAPP since 2009 and that its product is one of the world’s most popular messaging applications. It claims 1.5 billion active users as of January 2019 and states that it is among the 25 most popular free mobile telephone apps on iTunes.

The Complainant relies on its trademark registrations, including those referred to above, and also claims numerous domain name registrations including <whatsapp.com>, <whatsapp.net>, <whatsapp.us>, <whatsapp.de>, and the combination of its WHATSAPP mark with various other country code Top-Level Domains.

The Complainant states that its service was previously blocked in Iran, but is now extremely popular in that country, with its website at “www.whatsapp.com” being the 45th most visited website in Iran.

The Complainant claims, as a result of these matters, that the name and mark WHATSAPP is exclusively associated with the Complainant and that it has obtained valuable commercial goodwill, with global reach, in that name and mark.

The Complainant submits that the Respondent has used the disputed domain name <iwhatsapp.ir> for the purposes of a website which is misleading in numerous respects. First, it uses the Complainant’s WHATSAPP trademark and distinctive logo described above. Secondly, it purports to enable users to pay the Complainant’s subscription fee, which the Complainant in fact abolished in 2016, and requires them to provide personal and financial information for that purpose. Thirdly, it offers pay-per-click links to third party commercial websites as well as offering various paid-for tools for download.

The Complainant exhibits correspondence between itself and the Respondent commencing with a “cease‚ÄĎand-desist” letter from the Complainant’s legal representatives dated May 3, 2019. The Complainant quotes from the Respondent’s response to that letter dated May 19, 2019 (to which further reference is made below) and refers in particular to the Respondent’s statement that they are “enthusiasts of the WhatsApp application” and an offer by the Respondent to sell the disputed domain names to the Complainant for EUR 2,500.

The Complainant submits that the disputed domain names are identical or confusingly similar to a trademark in which it has rights. It states that each of the disputed domain names comprises the whole of its WHATSAPP trademark in its entirety, together with the addition of one other letter, “s” or “i”, either before or after the mark, and that the inclusion of these letters cannot prevent a finding of confusing similarity.

The Complainant submits that the Respondent has no rights or legitimate interests in respect of the disputed domain names. It states that it has never authorized the Respondent to use its WHATSAPP mark, that the Respondent has not commonly been known by the disputed domain names and that the Respondent is making neither bona fide commercial use nor legitimate noncommercial or fair use of the disputed domain names. With regard to the disputed domain name <whatsapps.ir>, the Complainant submits that a passive holding of the name cannot give rise to rights or legitimate interests. Concerning the disputed domain name <iwhatsapp.ir>, the Complainant submits that the Respondent’s use of the name in a misleading manner as described above is also incapable of giving rise to rights or legitimate interests.

The Complainant submits that the disputed domain names were registered or are being used in bad faith.

The Complainant contends that the Respondent was clearly aware of the Complainant’s WHATSAPP name and trademark when it registered the disputed domain names. It relies in this regard on the fact that its name and mark WHATSAPP had been in continuous and extensive use since 2009, several years before the Respondent’s registration of the disputed domain names. The Complainant further relies on the Respondent’s admission that they are “enthusiasts of the WhatsApp application” as establishing that the Respondent registered the disputed domain names with the Complainant’s trademark in mind.

Concerning the Respondent’s use of the disputed domain name <iwhatsapp.ir>, the Complainant submits that the disputed domain name itself targets the Complainant’s trademark. The Complainant further submits that the Respondent’s website takes unfair advantage of the Complainant’s goodwill by displaying the Complainant’s trademark and logo on the website, by offering to collect the Complainant’s subscription fees, which had in fact been abolished, and by offering third-party links. The Complainant denies that the Respondent’s website includes any effective disclaimer, but submits that this would not in any event cure the Respondent’s bad faith. The Complainant submits, accordingly, that the Respondent has used the disputed domain name <iwhatsapp.ir> intentionally to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion between the disputed domain name and the Complainant’s trademark (paragraph 4(b)(iv) of the Policy).

The Complainant requests the transfer of the disputed domain names.

B. Respondent

The Respondent did not file a Response in this case. However, since the Complainant has exhibited the Respondent’s email dated May 19, 2019, the Panel considers it appropriate to take the contents of that communication into account.

In summary, the Respondent states that they are enthusiasts of the WHATSAPP application and have spent large amounts of time and money in creating a website that would bring that application within the reach of the Persian speaking community. The Respondent states that it has provided free tutorials in the use of the WHATSAPP application and has fought legal and media battles against the blocking of the app in Iran. It denies that it has claimed to operate an official WHATSAPP website in Iran and states that it has included an appropriate disclaimer on its website. It also submits that it has not traded on the popularity of the Complainant’s trademark, as the Complainant’s app was not popular in Iran at the relevant time and it is the Respondent that has popularized it. The Respondent states that it would be unfair for it to have to hand over its website and hard work for no fee and requests a payment of EUR 2,500 for the transfer of the disputed domain names and the associated website.

6. Discussion and Findings

In order to succeed in the Complaint, the Complainant is required to show that all three of the elements set out under paragraph 4(a) of the Policy are present. Those elements are:

(i) that the disputed domain names are 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 disputed domain names; and

(iii) that the disputed domain names have been registered or are being used in bad faith.

A. Identical or Confusingly Similar

The Complainant has established that it has registered trademark rights in the mark WHATASAPP. The disputed domain name <whatsapps.ir> is identical to the Complainant’s trademark but for the addition of the letter “s” after the trademark. The disputed domain name <iwhatsapp.ir> is identical to the Complainant’s trademark but for the addition of the letter “i” before the trademark. In neither case is the addition of the relevant letter effective to distinguish the disputed domain name from the Complainant’s trademark and the Panel finds therefore that each of the disputed domain names is confusingly similar to a trademark in which the Complainant has rights.

B. Rights or Legitimate Interests

In the view of the Panel, the Complainant’s submissions referred to above are sufficient to establish a prima facie case that the Respondent has no rights or legitimate interests in respect of the disputed domain names.

The Respondent does not expressly challenge the Complainant’s case in respect of the disputed domain name <whatsapps.ir> and the Panel accepts the Complainant’s submission that the Respondent’s passive holding of this disputed domain name does not give rise to rights or legitimate interests.

In the case of both of the disputed domain names, the Respondent’s submissions concerning its intentions and its actions must be viewed in the context of the nature of the disputed domain names themselves. In this regard, the Panel finds each of the disputed domain names to be inherently misleading, in that they comprise in each case the whole of the Complainant’s WHATSAPP trademark together with one additional letter (for which no explanation is offered). The Panel considers in these circumstances that each of the disputed domain names amounts to an impersonation of the Complainant and that the Respondent’s explanations, even if true, cannot in those circumstances give rise to rights or legitimate interests on its part.

The Panel therefore finds that the Respondent has no rights or legitimate interests in respect of either of the disputed domain names.

C. Registered or Used in Bad Faith

The Respondent does not deny that it registered the disputed domain names for the purpose of referring to the Complainant’s WHATSAPP trademark and product. While the Respondent has submitted that it intended to offer information about the Complainant’s app, the Panel has found each of the disputed domain names to be inherently misleading and to amount to an impersonation of the Complainant. In these circumstances, the Respondent could not make legitimate use of either of the disputed domain names (at least without the Complainant’s permission) and the Panel finds that each of the disputed domain names was registered in bad faith.

The Panel finds that the Respondent’s passive holding of the disputed domain name <whatsapps.ir> is not a bar to a finding of bad faith when that is the proper inference from all the surrounding circumstances of the case (see, e.g., Telstra Corp, Inc. v. Nuclear Marshmallows, WIPO Case No. D2000-0003). In this case, the Panel finds from the surrounding circumstances, including the inherently misleading nature of the name, that the disputed domain name <whatsapps.ir> has been used in bad faith.

Similar considerations apply to the equally misleading disputed domain name <iwhatsapp.ir>. Additionally in this case, the Panel accepts the Complainant’s evidence that the Respondent has used the disputed domain name for the purpose of a website which makes misleading use of the Complainant’s trademark and logo, seeks to obtain financial information and a subscription fee (which the Complainant no longer requires) from visitors and also offers links to third-party providers. The Panel finds in the circumstances that, by using the disputed domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of its website or of products or service on that website (paragraph 4(b)(iv) of the Policy).

The Panel therefore finds that both of the disputed domain names were registered or have been used in bad faith.

7. Decision

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 names <whatsapps.ir> and <iwhatsapp.ir> be transferred to the Complainant.

Steven A. Maier
Sole Panelist
Date: August 2, 2020