WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
WhatsApp Inc. v. Private Person / Mario Rieger
Case No. DRO2017-0005
1. The Parties
The Complainant is WhatsApp Inc. of Menlo Park, California, United States of America ("United States"), represented by Hogan Lovells (Paris) LLP, France.
The Respondent is Private Person / Mario Rieger of Rostock, Germany.
2. The Domain Name and Registrar
The disputed domain name <whatsapp.ro> (the "Domain Name") is registered with ROTLD (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on July 25, 2017. On July 26, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On July 26, 2017, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on August 2, 2017 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 August 4, 2017.
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 August 8, 2017. In accordance with the Rules, paragraph 5, the due date for Response was August 28, 2017. The Respondent did not submit any formal response.
The Respondent sent email communications to the Center on August 8, 24 and 27, 2017. The Center informed the Parties about the possibility of suspending the proceedings to negotiate a settlement agreement. The Complainant sent an email communication to the Center on August 25, 2017 informing it did not wish to suspend the proceedings and wished to obtain a full decision.
The Center appointed Nicoletta Colombo as the sole panelist in this matter on September 8, 2017. 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, WhatsApp, Inc. is a provider of WhatsApp, one of the world's most popular mobile messaging applications which allows users across the globe to exchange messages via smartphones. Since its launch, WhatsApp has become one of the fastest growing and most popular mobile applications in the world, with over 1 million users by the end of 2009, 200 million users in April 2013, 500 million users in April 2014, 800 million users in April 2015 and 900 million users worldwide in September 2015. Today, WhatsApp has over 1 billion monthly active users worldwide (as of February 2016) in 180 countries.
The Complainant is the owner of several trademark registrations in the term WHATSAPP in many jurisdictions throughout the world like in the United States (Registration Number 3939463, registered on April 5, 2017), in Colombia (Registration Number 11063902, registered on December 21, 2011) and in the European Union (Registration Number 009986514, registered on October 25, 2011). It is also the owner of numerous domain names consisting of the WHATSAPP trademark, including, for instance, <whatsapp.com>, <whatsapp.net>, <whatsapp.info> as well as under numerous country code Top-Level Domains ("ccTLDs") such as <whatsapp.am> (Armenia), <whatsapp.be> (Belgium), <whatsapp.cl> (Chile), <whatsapp.co> (Colombia), <whatsapp.ec> (Ecuador), <whatsapp.de> (Germany), <whatsapp.hk> (Hong Kong, China), <whatsapp.kr> (Republic of Korea), <whatsapp.mx> (Mexico), <whatsapp.nz> (New Zealand), <whatsapp.es> (Spain), <whatsapp.tw> (Taiwan), <whatsapp.uk> and <whatsapp.co.uk> (United Kingdom), and <whatsapp.us> (United States).
The Respondent registered the Domain Name <whatsapp.ro> on December 23, 2013, and currently the Domain Name does not resolve to any active website.
5. Parties' Contentions
The Complainant contends the following:
a) the Domain Name is confusingly similar to the trademark of the Complainant because:
- it reproduces the Complainant's trademark in its entirety;
- the presence of the suffix ".ro" is irrelevant when assessing whether a domain name is identical or confusingly similar to a trademark as it is a functional element.
b) The Respondent has no rights or legitimate interests in respect of the Domain Name because:
- the Respondent is not a licensee of the Complainant, nor has he 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, prior to any notice of this dispute, he was using, or had made demonstrable preparations to use, the Domain Name in connection with a bona fide offering of goods or services in accordance with paragraph 4(c)(i) of the Policy;
- the Domain Name had pointed to a Sedo webpage where it was listed for sale for a fixed price of EUR 1200;
- the Respondent cannot conceivably claim that he is commonly known by the Complainant's trademark, in accordance with paragraph 4(c)(ii) of the Policy, given the notoriety surrounding the WHATSAPP trademark and the fact that it is exclusively associated with the Complainant.
c) The Domain Name was registered and is being used in bad faith because:
- the Respondent was aware of the Complainant's trademark when it registered the Domain Name;
- the Respondent registered the Domain Name in order to prevent the Complainant from reflecting its well-known trade mark in the corresponding domain name;
- the Domain Name pointed to a Sedo website where the Respondent offered it for sale for a sum much greater than any out-of-pocket costs related to the registration of the Domain Name, which constitutes bad faith use;
- the Respondent's personal data were particularly protected and thus not available to the public.
The Respondent did not reply to the Complainant's contentions. The Respondent sent email communications to the Center on August 8, 24 and 27, 2017. In such emails, the Respondent basically stated he did not understand English very well, that the Domain Name was free for registration and that he was willing to consent to the requested remedy.
6. Discussion and Findings
A. Identical or Confusingly Similar
The Complainant has trademark and domain names registrations for WHATSAPP in various jurisdictions. Moreover, WHATSAPP is also the company name of the Complainant. Therefore, it has been proven that the Complainant has rights in the WHATSAPP trademark.
The Domain Name <whatsapp.ro> incorporates the Complainant's trademark and company name in its entirety.
There are several UDRP decisions stating that confusing similarity, for the purposes of the Policy, is established when a domain name wholly incorporates a complainant's mark.
Additionally, UDRP panels do not typically consider, when analyzing the identity or confusing similarity, the ccTLD suffix – in this case ".ro" – because it is a necessary component of the disputed domain name and does not give any distinctiveness (see, Crédit Industriel et Commercial S.A v. Name Privacy, WIPO Case No. D2005-0457).
Therefore, the Panel finds that the Domain Name is confusingly similar to the Complainant's trademark.
B. Rights or Legitimate Interests
The Respondent has not filed any response in this case. The Panel finds that, based on the evidence provided, the Complainant has made a prima facie case that the Respondent lacks rights or legitimate interests in the Domain Name.
Specifically, on the basis of the evidence before the Panel, the Respondent has not received any license or authorization from the Complainant to use the well-known trademarks owned by the Complainant, nor have they been authorized to register and use the Domain Name.
Under these circumstances, the Panel finds that the Respondent has no rights or legitimate interests in the Domain Name.
C. Registered and Used in Bad Faith
At the moment of the registration of the Domain Name, the Respondent must have been aware of the existence of the WHATSAPP mark which is not a dictionary term. It is quite predictable that only someone who was familiar with the Complainant's mark would have registered a domain name inclusive of such mark.
Moreover, the Respondent's use of the Domain Name to resolve to an inactive website and attempted resale of the Domain Name for a sum much greater than any out-of-pocket costs related to the registration of the Domain Name constitute bad faith registration and use of the Domain Name.
The Panel is of the opinion that the Respondent has registered the Domain Name with the intent to profit from the reputation of the Complainant's trademark by choosing a domain name that is confusingly similar to the Complainant's mark. The confirmation that the Respondent did not have any good faith interest in the contested Domain Name is also confirmed by the circumstance that, after having received the notification of the Complaint, he offered to transfer the Domain Name to the Complainant.
Taken together with the fact that the Respondent has not filed any response in this proceeding in support of any good faith registration or use of the Domain Name, the Panel finds that the Complainant has demonstrated that the 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 <whatsapp.ro> be transferred to the Complainant.
Date: September 19, 2017