WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

WhatsApp Inc. v. Gil David

Case No. D2019-1284

1. The Parties

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

The Respondent is Gil David, Israel.

2. The Domain Name and Registrar

The disputed domain name <whatsapgroups.com> (“Domain Name”) is registered with eNom, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 5, 2019. On June 6, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On June 6, 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 June 14, 2019. In accordance with the Rules, paragraph 5, the due date for Response was July 4, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 9, 2019.

The Center appointed Ellen Shankman as the sole panelist in this matter on July 16, 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

The date of the Domain Name registration was confirmed by the Registrar to be July 10, 2017.

The Complainant provided evidence of multiple trademark registrations for the mark WHATSAPP including, inter alia, Israel Registration No. 239990 (registered on December 4, 2012),United States Trademark Registration No. 3939463 (registered on April 5, 2011), European Union Trade Mark No. 009986514 (registered on October 25, 2011), and European Union Trade Mark No. 010496602 (registered on May 18, 2012) both for word marks logos that predate the date of the Domain Name registration for a variety of software and social media goods and services.

The Panel also conducted an independent search to determine that the Domain Name resolves to an active webpage that resolves to a website available in English and Hebrew and confirms in reviewing both the Hebrew and the English that the website purports to provide online invitations to open chat groups hosted on the Complainant’s WhatsApp application, as well as groups hosted on the third-party “Telegram” application, with links for pay-per-click (PPC) advertising.

5. Parties’ Contentions

A. Complainant

The 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, 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. The Complainant alleges that 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). WhatsApp has acquired considerable reputation and goodwill worldwide. 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.

The Complainant contends that it has also made substantial investments to develop a strong presence online by being active on various social media forums. For instance, WhatsApp’s official page on Facebook has over 30 million likes. In addition, WhatsApp has 2.71 million followers on Twitter.

The trademark WHATSAPP serves as a house-mark of the Complainant and is protected as a registered trademark in multiple jurisdictions worldwide. Further, reflecting its global reach, the Complainant is the owner of numerous domain names, consisting of the WHATSAPP trademark, under various generic

Top-Level Domains (gTLDs) as well as under many country code Top-Level Domains (ccTLDs). In addition to its strong presence online, the Complainant has secured ownership of trademark registrations for WHATSAPP in many jurisdictions throughout the world, as detailed above.

The Complainant alleges that it was recently alerted to the fact that a close variation of its trademark and company name had been reproduced together with the descriptive term “groups” under the gTLD “.com”. The Domain Name incorporates the Complainant’s WHATSAPP trademark, omitting only the second “P”, together with the descriptive term “groups” as a suffix. When compared with the Complainant’s trademark, the “whatsap” component of the Domain Name is visually highly similar and phonetically identical to the Complainant’s WHATSAPP trademark. The Complainant asserts that the addition of the term “groups” does not prevent a finding of confusing similarity with the Complainant’s WHATSAPP trademark, which remains clearly recognizable in the Domain Name.

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 trademark, in a domain name or otherwise.

The Respondent’s website prominently displays the Complainant’s WHATSAPP trademark, together with a variation of the Complainant’s figurative telephone trademark and logo. The Respondent’s website makes use of the same green-and-white colour scheme used by the Complainant. The Respondent’s website includes substantial amounts of PPC advertising to third-party products, from which the Respondent presumably derives commercial benefit. The Respondent’s website also features articles promoting the unsupported application “WhatsApp Plus”. WhatsApp Plus is an altered version of WhatsApp, developed by a third party. WhatsApp Plus is not authorized by the Complainant, and violates WhatsApp’s Terms of Service as well as its Brand Guidelines (citations omitted) – all of which constitute use and registration in bad faith.

To summarize the Complaint, the Complainant is the owner of multiple registrations for the trademark WHATSAPP and its house logo, in respect of a software and social media goods and services. The Domain Name is confusingly similar to the trademark owned by the Complainant. The deletion of one of two letters “p” and addition of the descriptive term “groups” does not prevent a finding of confusing similarity. Therefore, the Domain Name <whatsapgroups.com> could be considered virtually identical and/or confusingly similar to the Complainant’s trademark. The Complainant contends that the Respondent has no rights or legitimate interests in respect of the Domain Name. The Domain Name was registered and is being used in bad faith. That continued use of the Domain Name would lead to a likelihood of confusion as to the source, sponsorship, affiliation or endorsement of the Respondent by the Complainant, especially for competing goods and services, and reflects opportunistic bad faith taking advantage of the Complainant’s trademark. Thus, the Respondent’s registration and use of the Domain Name constitutes bad faith registration and use under the Policy, and the Complainant requests transfer of the Domain Name.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

The burden for the Complainant under paragraph 4(a) of the Policy is to prove:

(i) That the Domain Name registered by the Respondent is 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 Domain Name; and

(iii) That the Domain Name has been registered and used in bad faith.

A. Identical or Confusingly Similar

The Panel finds that the Complainant has satisfactorily proven that it has registered trademark rights for WHATSAPP and the green phone logo.

The Panel finds that the Domain Name is confusingly similar to the Complainant’s trademark. Further, the Panel finds that the above identified deletion and addition to the Domain Name does not prevent a finding of confusing similarity between the Domain Name and the Complainant’s trademark. See Pfizer Inc. v. Asia Ventures, Inc., WIPO Case No. D2005-0256. See also Ansell Healthcare Products Inc. v. Australian Therapeutics Supplies Pty, Ltd., WIPO Case No. D2001-0110, stating “The incorporation of a Complainant’s well-known trademark in the registered Domain Name is considered sufficient to find the Domain Name confusingly similar to the Complainant’s trademark.” See also, WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.7:

“[…] in cases where a domain name incorporates the entirety of a trademark, or where at least a dominant feature of the relevant mark is recognizable in the domain name, the domain name will normally be considered confusingly similar to that mark for purposes of UDRP standing.”

As well as, WIPO Overview 3.0, section 1.8:

“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.”

Accordingly, the Panel finds that the Complainant has satisfied the first requirement that the Domain Name is identical or confusingly similar to the Complainant’s registered trademark, under paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy in turn identifies three means through which a respondent may establish rights or legitimate interests in a domain name. Although the complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, UDRP panels have recognized that this could result in the often-impossible task of proving a negative, requiring information that is primarily, if not exclusively, within the knowledge of the respondent. Thus, the consensus view is that paragraph 4(c) shifts the burden of production to the respondent to come forward with evidence of a right or legitimate interest in the disputed domain name, once the complainant has made a prima facie showing. See, e.g., Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270.

The Complainant asserts that the Respondent has no rights or legitimate interests in respect of the Domain Name <whatsapgroups.com> and that it is not related to or affiliated in any way with the Complainant, nor has the Complainant authorized the Respondent to use its trademarks.

Based on the available record, the Panel finds that the Complainant has established a prima facie case, which was not refuted, and that the Respondent lacks rights or legitimate interests in the Domain Name.

Therefore, the Complainant has satisfied the second requirement that the Respondent has no rights or legitimate interests in the Domain Name, under paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

Given the distinctiveness of the Complainant’s trademark and reputation, the Panel agrees with the Complainant’s claims that the Respondent has registered the Domain Name with full knowledge of the Complainant’s trademark WHATSAPP and uses it for the purpose of misleading and diverting Internet traffic.

The Panel finds that this is a classic example of the unfortunate fraudulent and opportunistic typosquatting registration that the UDRP is intended to address, and finds that the Respondent is using the Domain Name opportunistically to benefit financially from the Complainant’s trademark by way of PPC links.

Thus, the Panel finds that the Respondent’s use of the Domain Names creates confusion as to the source of the Domain Name in an attempt to trade on the goodwill associated with Complainant’s trademark. A respondent’s use of a complainant’s mark - for said respondent’s commercial benefit - to attract Internet users otherwise seeking said complainant evinces a finding of bad faith per Policy, paragraph 4(b)(iv) and is consistent in this case. See WIPO Overview 3.0 at section 3.1.4 which states:

“Panels have moreover found the following types of evidence to support a finding that a respondent has registered a domain name to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the complainant’s mark: (i) actual confusion, (ii) seeking to cause confusion (including by technical means beyond the domain name itself) for the respondent’s commercial benefit, even if unsuccessful, (iii) the lack of a respondent’s own rights to or legitimate interests in a domain name, (iv) redirecting the domain name to a different respondent-owned website, even where such website contains a disclaimer, (v) redirecting the domain name to the complainant’s (or a competitor’s) website, and (vi) absence of any conceivable good faith use.”

Given the evidence of the Complainant’s prior rights in the trademark, the registration of the Domain Name with apparent full knowledge of the Complainant, and the use of the Complainant’s marks on the website, the Panel finds that the Complainant has satisfied the third requirement that the Respondent has registered and is using the Domain Name in bad faith, under 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 Domain Name <whatsapgroups.com> be transferred to the Complainant.

Ellen Shankman
Sole Panelist
Date: July 23, 2019