WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

WhatsApp Inc. v. Carlos Rogers

Case No. D2019-1135

1. The Parties

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

Respondent is Carlos Rogers, United States.

2. The Domain Names and Registrar

The Disputed Domain Names <whatsapppayments.org> and <whatsapppay.org> are registered with Web Commerce Communications Limited dba WebNic.cc (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 16, 2019. On May 17, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Names. On May 18, 2019, the Registrar transmitted by email to the Center its verification response confirming that 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”).

In accordance with the Rules, paragraphs 2 and 4, the Center formally notified Respondent of the Complaint, and the proceedings commenced on May 22, 2019. In accordance with the Rules, paragraph 5, the due date for Response was June 11, 2019. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on June 13, 2019.

The Center appointed Richard W. Page as the sole panelist in this matter on June 20, 2019. 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

Complainant, WhatsApp Inc., is a provider of one of the world’s most popular mobile messaging applications (or “apps”). Founded in 2009 and acquired by Facebook, Inc. in 2014, Complainant’s messaging application (“WhatsApp”) allows users across the globe to exchange messages for free via smartphones, including iPhone, BlackBerry and Android. Its main website available at “www.whatsapp.com” also allows Internet users to access its messaging platform. Since its launch in 2009, WhatsApp has become one of the fastest growing and most popular mobile applications in the world, with over 1.5 billion monthly active users worldwide (as of October 2018). Consistently being ranked amongst Apple iTunes’ 25 most popular free mobile applications and Tech Radar’s Best Android Apps, WhatsApp was the fourth most downloaded application worldwide as per App Annie’s Top Apps Worldwide Rankings in 2018.

Complainant has secured ownership of trademark registrations for the WHATSAPP mark (the “WHATSAPP Mark”) in many jurisdictions throughout the world, including U.S. Trademark Registration No. 3939463, WHATSAPP, registered April 5, 2011; European Union Trade Mark No. 009986514, WHATSAPP, registered October 25, 2011; and International Registration No. 1085539, WHATSAPP, registered May 24, 2011.

Reflecting its global reach, Complainant is the owner of numerous domain names, containing the WHATSAPP Mark, under various generic Top-Level Domains (“gTLDs”) as well as under many country code Top-Level Domains (“ccTLDs”).

Complainant has also made substantial investments to develop a strong presence online by being active on various social media fora. For instance, WhatsApp’s official page on Facebook has over 29 million “likes”. In addition, WhatsApp has 2.64 million followers on Twitter.

Complainant was recently alerted to the fact that its WHATSAPP Mark had been registered by Respondent as part of the Disputed Domain Names with the addition of the terms “pay” and “payments” under the gTLD “.org”. The Disputed Domain Names were registered on February 25, 2019. Based on the evidence collected by Complainant, the Disputed Domain Names were previously used to redirect to a website at “www.whatsapppay.org”, which impersonated Complainant by featuring its distinctive logo and green color scheme. In particular, the website invited WhatsApp users to sign up for the fictitious service offered by entering their personal information (e.g., name and email address).

5. Parties’ Contentions

A. Complainant

Complainant contends that it has numerous registrations of the WHATSAPP Mark throughout the world, including in the U.S. where Respondent is based.

Complainant submits that the Disputed Domain Names are confusingly similar to the WHATSAPP Mark. Complainant further submits that each of the two Disputed Domain Names incorporates the WHATSAPP Mark in its entirety, which is sufficient to establish confusing similarity. Complainant further submits that the addition of other terms, such as “pay” and “payment”, does not prevent a finding of confusing similarity under the first element. See section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”). It is generally accepted that the functional gTLD suffixes, such as “.org” are irrelevant when assessing whether the Disputed Domain Names are identical or confusingly similar to the WHATSAPP Mark.

Complainant contends that Respondent has no rights or legitimate interests in the Disputed Domain Names. Complainant further contends that once Complainant makes a prima facie showing, then Respondent has the burden of rebutting Complainant’s assertions. See section 2.1 of the WIPO Overview 3.0.

Complainant alleges that Respondent is not a licensee of Complainant nor has he been otherwise authorized or allowed by Complainant to make any use of its WHATSAPP Mark in the Disputed Domain Names or otherwise.

Complainant further alleges that Respondent cannot assert he has been using the Disputed Domain Names, prior to any notice of the recent dispute, in connection with a bona fide offering of goods or services in accordance with paragraph 4(c)(i) of the Policy. The Disputed Domain Names were previously used by Respondent to point to a website having the same “look and feel” as Complainant’s official website. Complainant further alleges that the fact that Internet users redirected to this website were asked to sign in by providing their personal information (e.g., name and email address) leaves no doubt that the Disputed Domain Names were being used in connection with a phishing scheme that sought to illegitimately collect the personal information from WhatsApp users for commercial gain.

Complainant asserts that Respondent is not commonly known by the Disputed Domain Names in accordance with paragraph 4(c)(ii) of the Policy, particularly given the notoriety surrounding the WHATSAPP Mark and its exclusive association with Complainant. Furthermore, according to Complainant’s research, Respondent has not secured or tried to secure any trademark registration in the terms WHATSAPP, WHATSATPPPAY or WHATSAPPPAYMENTS.

Complainant alleges that given the previous abusive use of the Disputed Domain Names as described above, neither can Respondent assert that he has made or is currently making a legitimate noncommercial or fair use of the Disputed Domain Names, without intent for commercial gain to misleadingly divert consumers or to tarnish the WHATSAPP Mark, pursuant to paragraph 4(c)(iii) of the Policy. Furthermore, the fact that the Disputed Domain Names falsely suggest affiliation with Complainant will generally exclude any possible fair use as per section 2.5 of the WIPO Overview 3.0.

Complainant further alleges that given the overwhelming renown and explosive popularity of Complainant’s WHATSAPP Mark worldwide, the nature of the Disputed Domain Names themselves, it is simply not possible to conceive of any plausible actual or contemplated active use of the Disputed Domain Names by Respondent that would not be illegitimate.

Complainant asserts that the Disputed Domain Names were registered and are being used in bad faith. Paragraph 4(b) of the Policy lists four factors demonstrating bad faith registration and use. Complainant submits that paragraphs 4(b)(ii) and 4(b)(iv) are applicable.

Complainant further asserts that the WHATSAPP Mark is highly distinctive and well known throughout the world. It has been continuously and extensively used since 2009 in connection with an instant messaging app for mobile devices and has rapidly acquired considerable goodwill and renown worldwide.

Complainant submits that it is inconceivable for Respondent to argue that he did not have knowledge of Complainant’s mark when he registered the Disputed Domain Names in 2019. Respondent’s subsequent use of the Disputed Domain Names to point to a website impersonating Complainant leaves no doubt as to Respondent’s awareness of Complainant at the time of registration.

Complainant further submits that Respondent has engaged in a pattern of conduct within the meaning of paragraph 4(b)(ii) of the Policy by registering two Disputed Domain Names infringing on the WHATSAPP Mark in corresponding domain names. See section 3.1.2 of the WIPO Overview 3.0.

Complainant argues that given the nature of the Disputed Domain Names, which are confusingly similar to the WHATSAPP Mark and their previous use to point to a website featuring the WHATSAPP Mark and their previous use to point to a website featuring Complainant’s distinctive logo and green color scheme, WhatsApp users will almost certainly be confused. Complainant concludes that such use of the Disputed Domain Names as part of a phishing scheme to harvest, apparently for commercial gain, personal data from WhatsApp users as a result of the intentionally created confusion as to the source of the associated website constitutes use in bad faith in accordance with paragraph 4(b)(iv).

B. Respondent

Respondent did not reply to Complainant’s contentions.

6. Discussion and Findings

Paragraph 15(a) of the Rules instructs the Panel as to the principles the Panel is to use in determining the dispute: “[a] Panel shall decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules, and any rules and principles of law that it deems applicable.”

Respondent is not obliged to participate in this domain name dispute proceeding, but when he fails to do so, asserted facts that are not unreasonable will be taken as true and Respondent will be subject to the inferences that flow naturally from the information provided by Complainant. See Reuters Limited v. Global Net 2000, Inc., WIPO Case No. D2000-0441.

Even though Respondent has failed to file a Response or to contest Complainant’s assertions, the Panel will review the evidence proffered by Complainant to verify that the essential elements of the claims are met. See section 4.3 of the WIPO Overview 3.0.

Paragraph 4(a) of the Policy directs that Complainant must prove each of the following:

i) that the Disputed Domain Names registered by Respondent are identical or confusingly similar to the WHATSAPP Mark in which Complainant has rights; and

ii) that Respondent has no rights or legitimate interests in respect of the Disputed Domain Names; and

iii) that the Disputed Domain Names have been registered and are being used in bad faith.

A. Identical or Confusingly Similar

Complainant contends that it has numerous registrations of the WHATSAPP Mark. Section 1.2.1 of the WIPO Overview 3.0 states that registration of a trademark is prima facie evidence of Complainant having enforceable rights in the WHATSAPP Mark.

Respondent has not contested Complainant’s trademark rights. Therefore, the Panel finds that Complainant has enforceable rights in the WHATSAPP Mark for purposes of this proceeding.

Complainant further contends that the Disputed Domain Names are confusingly similar to the WHATSAPP Mark pursuant to paragraph 4(a)(i) of the Policy.

Complainant submits that the Disputed Domain Names are confusingly similar to the WHATSAPP Mark. Complainant further submits that each of the two Disputed Domain Names incorporates the WHATSAPP Mark in its entirety which is sufficient to establish confusing similarity. Complainant further submits that the addition of other terms such as “pay” and “payment” does not prevent a finding of confusing similarity under the first element. It is generally accepted that the functional gTLD suffixes, such as “.org”, are irrelevant when assessing whether the Disputed Domain Names are identical or confusingly similar to the WHATSAPP Mark.

Section 1.7 of the WIPO Overview 3.0 says that the inclusion of the entire trademark in a domain name will render it confusingly similar to the Disputed Domain Names. Section 1.8 of the WIPO Overview 3.0 instructs that the addition of other terms (whether descriptive, geographical, pejorative, meaningless or otherwise) does not prevent a finding of confusing similarity. Section 1.11.1 of the WIPO Overview 3.0 instructs that gTLDs such as “.org” may be disregarded for purposes of assessing confusing similarity.

Respondent has not contested Complainant’s submissions regarding confusing similarity.

The Panel finds that based upon this record the Disputed Domain Names are confusingly similar to the WHATSAPP Mark. Therefore, Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

Complainant contends that Respondent has no rights or legitimate interests in the Disputed Domain Names pursuant to paragraph 4(a)(ii) of the Policy.

Section 2.1 of the WIPO Overview 3.0 states that once Complainant makes a prima facie case in respect of the lack of rights or legitimate interests of Respondent, Respondent carries the burden of demonstrating he has rights or legitimate interests in the Disputed Domain Names. Where Respondent fails to do so, Complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy.

Paragraph 4(c) of the Policy allows three nonexclusive methods for the Panel to conclude that Respondent has rights or legitimate interests in the Disputed Domain Names:

(i) before any notice to you [Respondent] of the dispute, your use of, or demonstrable preparations to use, the Disputed Domain Names or a name corresponding to the Disputed Domain Names in connection with a bona fide offering of goods or services; or

(ii) you [Respondent] (as an individual, business, or other organization) have been commonly known by the Disputed Domain Names, even if you have acquired no trademark or service mark rights; or

(iii) you [Respondent] are making a legitimate noncommercial or fair use of the Disputed Domain Names, without intent for commercial gain to misleadingly divert consumers or to tarnish the WHATSAPP Mark.

Complainant contends that Respondent has no rights or legitimate interests in the Disputed Domain Names. Complainant alleges that Respondent is not a licensee of Complainant nor has he been otherwise authorized or allowed by Complainant to make any use of its WHATSAPP Mark in the Disputed Domain Names or otherwise.

Given the previous abusive use of the Disputed Domain Names as described above, neither can Respondent assert that he has made or is currently making a legitimate noncommercial or fair use of the Disputed Domain Names, without intent for commercial gain to misleadingly divert consumers or to tarnish the WHATSAPP Mark, pursuant to paragraph 4(c)(iii) of the Policy. Furthermore, the fact that the Disputed Domain Names falsely suggest affiliation with Complainant will generally exclude any possible fair use as per section 2.5 of the WIPO Overview 3.0.

Respondent has failed to contest the allegations that he lacks rights or legitimate interests in the Disputed Domain Names.

The Panel finds that Complainant has met the requisites of paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

Complainant contends that Respondent registered and is using the Disputed Domain Names in bad faith in violation of paragraph 4(a)(iii) of the Policy.

Paragraph 4(b) of the Policy sets forth four nonexclusive criteria for Complainant to show bad faith registration and use of the Disputed Domain Names:

(i) circumstances indicating that you [Respondent] have registered or you have acquired the Disputed Domain Names primarily for the purpose of selling, renting, or otherwise transferring the Disputed Domain Names registration to Complainant who is the owner of the trademark or service mark or to a competitor of Complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the Disputed Domain Names; or

(ii) you [Respondent] have registered the Disputed Domain Names in order to prevent the owner of the WHATSAPP Mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or

(iii) you [Respondent] have registered the Disputed Domain Name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the Disputed Domain Names, you [Respondent] have intentionally attempted to attract, for commercial gain, Internet users to your website or other online location, by creating a likelihood of confusion with the WHATSAPP Mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product.

Complainant’s WHATSAPP Mark is highly distinctive and well known throughout the world. It has been continuously and extensively used since 2009 in connection with an instant messaging app for mobile devices and has rapidly acquired considerable goodwill and renown worldwide.

Complainant alleges that, given the nature of the Disputed Domain Names, which are confusingly similar to the WHATSAPP Mark and their previous use to point to a website featuring the WHATSAPP Mark and Complainant’s distinctive logo and green color scheme. Complainant submits that WhatsApp users would almost certainly be confused. Such use of the Disputed Domain Names as part of a phishing scheme to harvest, apparently for commercial gain, personal data from WhatsApp users as a result of the intentionally created confusion as to the source of the associated website constitutes registration and use in bad faith in accordance with paragraph 4(b)(iv).

Respondent has failed to respond to the allegations that he is involved in a phishing scheme.

Based upon the record, the Panel finds that Complainant has demonstrated the elements of paragraph 4(b)(iv) of the Policy, thus satisfying the requirements of paragraph 4(a)(iii).

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, <whatsapppayments.org> and <whatsapppay.org>, be transferred to Complainant.

Richard W. Page
Sole Panelist
Date: June 30, 2019