WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

WhatsApp, Inc. v. saravana kumar

Case No. D2019-1633

1. The Parties

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

The Respondent is saravana kumar, India.

2. The Domain Name and Registrar

The disputed domain name <whatsappgrouplinks.xyz> is registered with GoDaddy.com, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 11, 2019. On July 11, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 12, 2019, 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”).

In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on July 19, 2019. In accordance with the Rules, paragraph 5, the due date for Response was August 8, 2019. The Respondent sent an email on July 21, 2019, but did not submit any formal response. The Center notified the Parties of commencement of panel appointment process on August 9, 2019.

The Center appointed Reynaldo Urtiaga Escobar as the sole panelist in this matter on August 22, 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.

The proceeding is conducted in English, this being the language of the registration agreement for the disputed domain name, as confirmed by the Registrar.

4. Factual Background

The Complainant 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, the Complainant allows its users to exchange messages for free via smartphones. Since its launch in 2009, the Complainant’s application has become one of the fastest growing and most popular mobile applications in the world. As of October 2018, the Complainant has over 1.5 billion active users worldwide.

The Complainant holds trademark registrations for WHATSAPP on a global scale, including:

- US trademark registration No. 3939463, registered on April 5, 2011;

- Indian trademark application No. 2149059, filed on May 24, 2011, and registered¹ ;

- European Union trademark (EUTM) registration No. 009986514, registered on October 25, 2011;

- International trademark registration No. 1085539, registered on May 24, 2011.

The disputed domain name was created on January 24, 2019. It resolves to a website displaying the following text: “Hello, I am John Doe, Lorem Ipsum is simply dummy text of the printing and typesetting industry. Lorem Ipsum has been the industry’s.”

The Respondent’s homepage lists a large number of WhatsApp chat groups, some of which of a sexual nature, such as “18+ American Girls Whatsapp Group Links”.

5. Parties’ Contentions

A. Complainant

In summary, the Complainant contends as follows:

(i) The disputed domain name incorporates the Complainant’s WHATSAPP mark in its entirety plus the addition of the descriptive terms “group links” which do not prevent a finding of confusingly similarity;

(ii) The Complainant’s WHATSAPP mark is clearly recognizable in the disputed domain name;

(iii) The addition of the “.xyz” generic Top-Level Domain (“gTLD”) may be disregarded for the purposes of assessing confusing similarity under paragraph 4(a)(i) of the Policy;

(iv) The Respondent is unable to invoke any of the circumstances set out in paragraph 4(c) of the Policy, in order to demonstrate rights or legitimate interests in the disputed domain name;

(v) The Respondent is not a licensee of the Complainant, nor has the Respondent been otherwise authorized by the Complainant to make any use of its WHATSAPP mark in a domain name or otherwise;

(vi) The Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services, within the meaning of paragraph 4(c)(i) of the Policy;

(vii) The Respondent’s registration of the disputed domain name violates the Complainant’s Brand Guidelines (see “www.whatsappbrand.com”) which prohibit the registration of domain names that could be confused with “WhatsApp”;

(viii) The Respondent’s website includes a large number of WhatsApp groups that promote the sharing of sexually explicit or pornographic content;

(ix) The active association on the Respondent’s website between the exchange of such content and the Complainant’s services has the effect of tarnishing the Complainant’s mark;

(x) There is in fact an appreciable risk that the Respondent’s website is being used in connection with the exchange of child exploitation images, i.e. illegal child pornography;

(xi) The Respondent registered the disputed domain name in full knowledge of the Complainant’s rights, because of the strength and renown of the Complainant’s mark, which is a coined term exclusively associated with the Complainant;

(xii) The Respondent’s website sections redirect to an advertising portal, which seeks to obtain financial gain from the goodwill and reputation attached to the Complainant’s mark;

(xiii) By registering and using the disputed domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of its website or other online location, pursuant to paragraph 4(b)(iv) of the Policy; and

(xiv) The Respondent’s website at the disputed domain name promotes the use of the Complainant’s messaging services in connection with the sharing of pornographic materials, which clearly tarnishes the Complainant’s mark.

B. Respondent

The Respondent did not reply to the Complaint but merely sent an email to the Center on July 21, 2019, stating “why This is What can I do”.

6. Discussion and Findings

According to paragraph 4(a) of the Policy, in order to succeed in this administrative proceeding, the Complainant must prove that:

(i) the disputed domain name is identical or confusingly similar to a trademark 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 was registered and is being used in bad faith.

These elements are discussed in turn below. In considering these elements, paragraph 15(a) of the Rules provides that the Panel shall decide the Complaint on the basis of statements and documents submitted and in accordance with the Policy, the Rules, and any other rules or principles of law that the Panel deems applicable.

A. Identical or Confusingly Similar

The first element has a low threshold merely serving as a gateway requirement under the Policy. See section 1.7 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) (the standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between the Complainant’s trademark and the disputed domain name).

The Complainant owns numerous trademark registrations for WHATSAPP worldwide, including US trademark registration No. 3939463 (registered on April 5, 2011), European Union trademark (EUTM) registration No. 009986514 (registered on October 25, 2011), and international trademark registration No. 1085539 (registered on May 24, 2011), all of which predate registration of the disputed domain name by more than seven years.

As submitted by the Complainant, the WHATSAPP mark remains clearly recognizable within the disputed domain name despite its coexistence with the terms “group links”, which are purely descriptive. According to section 1.8 of the WIPO Overview 3.0, where 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.

The gTLD “.xyz” is a non-distinctive string that is to be set aside from the instant comparison.

Accordingly, the Panel holds that the disputed domain name is confusingly similar to the mark on which the Complaint is based.

The Complainant has passed the first threshold of paragraph 4(a) of the Policy.

B. Rights or Legitimate Interests

The second element under the Policy is that the Respondent has no rights or legitimate interests in respect of the disputed domain name (Policy, paragraph 4(a)(ii)). Paragraph 4(c) of the Policy provides that “any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate [the respondent’s] rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):

(i) before any notice to you [the respondent] of the dispute, your [the respondent’s] use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

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

(iii) you [the respondent] are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.”

As noted in section 2.1 of the WIPO Overview 3.0, the onus is on the Complainant to establish the absence of the Respondent’s rights or legitimate interests in the disputed domain name. However, because of the inherent difficulties in proving a negative, the consensus view is that the Complainant need only put forward a prima facie case that the Respondent lacks rights or legitimate interests. The burden of production then shifts to the Respondent to rebut that prima facie case (see also, e.g., World Wrestling Federation Entertainment, Inc. v. Ringside Collectibles, WIPO Case No. D2000-1306).

The Complainant avers to not have authorized the incorporation of its WHATSAPP mark in the disputed domain name. The Complainant also submits that the Respondent is not commonly known by the disputed domain name.

The Panel regards the above factual submissions to be credible in light of the evidence on file, and particularly considering that the term WHATSAPP is exclusively associated with the Complainant and its instant messaging services. At any rate, those submissions remain uncontested by the Respondent.

Moreover, to the extent that the Respondent’s website is devoid of any real content, it cannot be argued that the disputed domain name is used in connection with a bona fide offering of goods or services, or that it constitutes a legitimate noncommercial or fair use of the disputed domain name.

In sum, the record does not show that the Respondent has rights or legitimate interests in the disputed domain name within the meaning of the Policy.

The Complainant has fulfilled the second limb of Policy, paragraph 4(a).

C. Registered and Used in Bad Faith

Pursuant to Policy, paragraph 4(a)(iii), in order to be granted relief, the Complainant must show that the disputed domain name was registered and is being used in bad faith.

Paragraph 4(b) of the Policy sets forth the following non-exhaustive grounds of bad faith registration and use:

“(i) circumstances indicating that you [the respondent] have registered or 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 [the respondent’s] documented out-of-pocket costs directly related to the domain name; or

(ii) you [the respondent] have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you [the respondent] have engaged in a pattern of such conduct; or

(iii) you [the respondent] have registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, you [the respondent] have intentionally attempted to attract, for commercial gain, Internet users to your [the respondent’s] website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your [the respondent’s] website or location or of a product or service on your [the respondent’s] website or location.”

The Panel acknowledges that WHATSAPP is a coined term exclusively associated with the Complainant. See WhatsApp Inc. v. Envious Technology Pty Ltd, WIPO Case No. DAU2017-0021 (the panel notes that WHATSAPP is a coined term and therefore quite distinctive).

The Panel also acknowledges that the Complainant’s WHATSAPP mark is well known internationally. See WhatsApp Inc. v. Carlos Rogers, WIPO Case No. D2019-1135 (the Complainant’s WHATSAPP mark 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).

By the same token, the Panel notes that the Complainant’s WHATSAPP mark is registered in India, the country of residence of the Respondent, with a filing date of May 24, 2011, and a date of first use in commerce of September 10, 2009.

Against this backdrop, the registration of the disputed domain name exhibits opportunistic bad faith because the Respondent took unfair advantage of the goodwill and reputation attaching to the WHATSAPP mark. See section 3.1 of the WIPO Overview 3.0 (bad faith under the UDRP is broadly understood to occur where a respondent takes unfair advantage of or otherwise abuses a complainant’s mark).

Coupled with that, the Respondent’s listing of WhatsApp chat groups in the website at the disputed domain name is likely to mislead Internet users into believing that said chat groups are provided by or endorsed by the Complainant. See WhatsApp Inc. v. Sudheer Kumar, WIPO Case No. D2019-1632 (respondent is using in bad faith the disputed domain name by offering links to join WhatsApp groups from a list of groups).

For the reasons stated above, the Panel holds that the disputed domain name was registered and has been used in bad faith under the Policy.

The Complainant has discharged its burden in relation to paragraph 4(a)(iii) of the Policy.

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 name <whatsappgrouplinks.xyz> be transferred to the Complainant.

Reynaldo Urtiaga Escobar
Sole Panelist
Date: September 10, 2019

¹ The status of this trademark application is “registered” but the Indian Intellectual Property Office’s trademark database does not show the actual registration date.