Complainant is WhatsApp Inc., United States of America (the “United States”), represented by Hogan Lovells (Paris) LLP, France.
Respondent is Sruthan Goud, India.
The disputed domain names <whatsappgroupjoinlinklist.com> and <whatsappgrouplinkslists.com> (the “Domain Names”) are registered with GoDaddy.com, LLC (the “Registrar”).
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 Domain Names. On July 12, 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 July 16, 2019. In accordance with the Rules, paragraph 5, the due date for Response was August 5, 2019. Respondent sent several email communications between July 16-17, 2019 expressing its wish to transfer the Domain Names to Complainant. On July 17, 2019, Complainant requested that the Center proceed to panel appointment so that a decision may be issued on the merits. The Center notified the Parties of the Commencement of Panel Appointment Process on August 6, 2019.
The Center appointed Marina Perraki as the sole panelist in this matter on August 14, 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.
According to the Complaint, Complainant is the provider of the mobile instant messaging application, WhatsApp, which allows users worldwide to exchange messages via smartphones for free. Complainant was founded in 2009 and was acquired by Facebook, Inc. in 2014.
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 is ranked amongst Apple iTunes’ 25 most popular free mobile applications and Tech Radar’s Best Android Apps and was the 4th most downloaded application worldwide as per App Annie’s Top Apps Worldwide Rankings in 2018.
Complainant is the owner of a number of trademark registrations which consist of the word WHATSAPP, including:
- Indian trademark registration No. 2149059 for WHATSAPP, filed on May 24, 2011 and registered for goods in International classes 9 and 38;
- United States trademark registration No. 3939463 for WHATSAPP, filed on April 1, 2009 and registered on April 5, 2011 (first use in commerce February 24, 2009) for services in International class 42;
- European Union Trade Mark registration No. 009986514 for WHATSAPP, filed on May 23, 2011 and registered on October 25, 2011 for goods and services in International classes 9, 38 and 42;
- International trademark registration No. 1085539 for WHATSAPP, registered on May 24, 2011 for goods and services in International classes 9 and 38.
Complainant owns also a number of WHATSAPP domain names, including <whatsapp.com>, <whatsapp.net>, <whatsapp.org>, <whatsapp.info>, <whatsapp.biz>, and <whatsapp.co.in>.
The first Domain Name <whatsappgroupjoinlinklist.com> was registered on September 6, 2018 and the second Domain Name <whatsappgrouplinkslists.com> was registered on September 16, 2018.
Both Domain Names resolve to websites that contain listings of various WhatsApp chat groups and online invitations to open chat groups hosted on Complainant’s WhatsApp application (the Websites). The Websites prominently display Complainant’s WHATSAPP trademark and logo. They also include pay-per-click (PPC) advertising links to third-party products.
Complainant asserts that it has established all three elements required under paragraph 4(a) of the Policy for a transfer of the Domain Names.
Respondent did not file a formal Response to Complainant’s contentions. However, Respondent sent several emails in which it expressed its wish to resolve this matter amicably.
Paragraph 4(a) of the Policy lists the three elements which Complainant must satisfy with respect to each Domain Name:
(i) the Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) the Domain Name has been registered and is being used in bad faith.
The Domain Names contain Complainant’s trademark WHATSAPP in its entirety. This is sufficient to establish confusing similarity (Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525).
The words “group join link list” and “group links lists”, added in the first and second Domain Names respectively, do not avoid a finding of confusing similarity (Philip Morris Products S.A. v. Yang Jiang Nan, WIPO Case No. D2018-1869; Accenture Global Services Limited v. Jean Jacque / Luck Loic, WIPO Case No. D2016-1315; Wragge Lawrence Graham & Co LLP v. Registration Private, Domains by Proxy LLC / Ian Piggin, WIPO Case No. D2015-0135; WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.8).
The generic Top-Level Domain (“gTLD”) “.com” is disregarded, as gTLDs typically do not form part of the comparison under the first element on the grounds that they are required for technical reasons only (Rexel Developpements SAS v. Zhan Yequn, WIPO Case No. D2017-0275).
The Panel finds that the Domain Names are confusingly similar to the WHATSAPP trademarks of Complainant.
Complainant has established Policy, paragraph 4(a)(i).
Pursuant to paragraph 4(c) of the Policy, Respondent may establish its rights or legitimate interests in the Domain Names, among other circumstances, by showing any of the following elements:
(i) before any notice to you [Respondent] of the dispute, your use of, or demonstrable preparations to use, the Domain Names or a name corresponding to the 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 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 Domain Names, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The Panel concludes that Respondent lacks rights or legitimate interests in respect of the Domain Names.
Respondent has not submitted a formal Response and has not claimed any such rights or legitimate interests with respect to the Domain Names. As per Complaint, Respondent was not authorized to register the Domain Names.
Respondent did not demonstrate prior to the notice of the dispute any use of the Domain Names or a name corresponding to the Domain Names in connection with a bona fide offering of goods or services.
Per Complaint, Respondent is not an affiliated entity or an authorised distributor or reseller of Complainant and no agreement, express or otherwise, exists allowing the use of Complainant’s trademarks on the Websites and the use of the Domain Names by Respondent.
On the contrary, as Complainant demonstrates, the Domain Names resolve to Websites containing text and content that suggest falsely that the Websites are of an associated to Complainant entity or that they are endorsed by Complainant.
The Domain Names incorporate the whole of Complainant’s well-known WHATSAPP mark, which signals an intention on the part of Respondent to confuse users seeking or expecting Complainant (see WIPO Overview 3.0 , section 2.5.1 ).
Furthermore, the Websites do not conform, per Complainant, to Complainant’s Brand Guidelines that can be found online at “www.whatsappbrand.com”. The said guidelines clearly prohibit third parties from using the WHATSAPP mark as part of their domain name:
“Frequently Asked Questions
Can I use WhatsApp in my domain name […]?
You may not use any WhatsApp trademarks, or anything similar, in your trademark, domain name […]. Prohibited Uses
Don’t use the WhatsApp trademark, or anything similar, as, or as part of, a second level domain name […]”.
The Panel notes Complainant’s contentions in relation to the applicability of Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903 (“Oki Data”). In the present case, it is uncertain whether the Oki Data test would be applicable because of the nature of Complainant’s product and the fact that it is difficult to consider Respondent as a reseller, distributor or service provider. In addition, the Websites contain PPC advertising, from which Respondent presumably derives commercial benefit.
Without prejudice to the above, if Oki Data was applicable, a distributor, reseller or service provider can be making a bona fide offering of goods or services and thus have a legitimate interest in a domain name only if the following cumulative requirements are met, WIPO Overview 3.0 , section 2.8.1 : (i) respondent must actually be offering the goods or services at issue; (ii) respondent must use the site to sell only the trademarked goods or services; (iii) the site must accurately and prominently disclose the registrant’s relationship with the trademark holder; and (iv) respondent must not try to “corner the market” in domain names that reflect the trademark.
These requirements are not cumulatively fulfilled in the present case. The Websites include PPC advertising to third-party goods and services from which Respondent (or other) presumably derives commercial benefit. The Websites furthermore extensively reproduce without authorization by Complainant Complainant’s trademarks and logos, without any visible statement accurately disclosing Respondent’s lack of relationship with Complainant or any disclaimer of association with Complainant.
On the contrary, while a disclaimer does exist in the Websites, it makes no mention as regards lack of any relationship of Respondent with Complainant.
Use which intentionally trades on the fame of another and suggests affiliation with the trademark owner cannot constitute a bona fide offering of goods or services (Madonna Ciccone, p/k/a Madonna v. Dan Parisi and “madonna.com”, WIPO Case No. D2000-0847; Philip Morris Incorporated v. Alex Tsypkin, WIPO Case No. D2002-0946; AB Electrolux v. Handi Sofian, Service Electrolux Lampung, WIPO Case No. D2016-2416; WIPO Overview 3.0 , section 2.8 ).
Furthermore, as Complainant demonstrated, the Websites actively promote the use of Complainant’s messaging services for the sharing of pornographic material, which has the effect of tarnishing Complainant’s trademark.
The Panel finds that these circumstances do not confer upon Respondent any rights or legitimate interests in respect of the Domain Names.
Complainant has established Policy, paragraph 4(a)(ii).
Paragraph 4(b) of the Policy provides that the following circumstances, “in particular but without limitation”, are evidence of the registration and use of the Domain Names in bad faith:
(i) circumstances indicating that Respondent has registered or has acquired the Domain Names primarily for the purpose of selling, renting, or otherwise transferring the Domain Names registration to Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of its documented out of pocket costs directly related to the Domain Names; or
(ii) that Respondent has registered the Domain Names in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding Domain Names, provided that Respondent has engaged in a pattern of such conduct; or
(iii) that Respondent has registered the Domain Names primarily for the purpose of disrupting the business of a competitor; or
(iv) that by using the Domain Names, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website or other online location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product or service on Respondent’s website or location.
The Panel concludes that Respondent has registered and used the Domain Names in bad faith. As per the Complaint, Complainant’s WHATSAPP mark has been continuously and extensively used since 2009 in connection with its instant messaging application and has acquired considerable goodwill and renown worldwide (WhatsApp Inc. v. Francisco Costa, WIPO Case No. D2015-0909).
Because the WHATSAPP mark had been widely used and registered at the time of the Domain Names’ registration by Respondent, the Panel finds it more likely that Respondent had Complainant’s mark in mind when registering the Domain Names (Tudor Games, Inc. v. Domain Hostmaster, Customer ID No. 09382953107339 dba Whois Privacy Services Pty Ltd / Domain Administrator, Vertical Axis Inc., WIPO Case No. D2014-1754; Parfums Christian Diorv.Javier Garcia Quintas and Christiandior.net, WIPO Case No. D2000-0226). This also in view of the fact that the content of the Websites clearly targets Complainant and its messaging services.
Respondent should have known about Complainant’s rights, due to the fact that Complainant’s mark had significant goodwill and reputation globally when the Domain Names were registered. Furthermore, such knowledge is readily obtainable through a simple browser search due to Complainant’s wide use of its WHATSAPP mark on the Internet (Caesars World, Inc. v. Forum LLC, WIPO Case No. D2005-0517; Compart AG v. Compart.com / Vertical Axis, Inc., WIPO Case No. D2009-0462). This also in view of the nature of Complainant’s services, namely mobile instant messaging application provided online.
Furthermore, the Domain Names incorporate in whole Complainant’s mark WHATSAPP. It is unlikely that Respondent could have registered the Domain Names for any legitimate purpose, given in particular the notoriety of Complainant’s WHATSAPP mark and the degree of similarity of the Domain Names to such mark, which suggest a bad faith registration (Inter Ikea Systems B.V. v. Domain Admin, Whois Privacy Corp., supra; WIPO Overview 3.0 , section 3.1.1 ). This also in view of the fact that WHATSAPP is a fictitious word.
As regards bad faith use of the Domain Names, Complainant has demonstrated that the Domain Names were used to create websites, which incorporate the trademarks and logos of Complainant, thereby giving the false impression that they are operated by a company affiliated to or endorsed by Complainant. The Domain Names thus operate by intentionally creating a likelihood of confusion with Complainant’s trademark and business as to the source, sponsorship, affiliation or endorsement of the websites they resolve to. This can be used in support of bad faith registration and use (Booking.com BV v. Chen Guo Long, WIPO Case No. D2017-0311; Ebel International Limited v. Alan Brashear, WIPO Case No. D2017-0001; Walgreen Co. v. Muhammad Azeem / Wang Zheng, Nicenic International Group Co., Limited, WIPO Case No. D2016-1607; Oculus VR, LLC v. Sean Lin, WIPO Case No. DCO2016-0034; and WIPO Overview 3.0 , sections 3.3 and 3.4 ).
Complainant has further demonstrated that the Domain Names were employed to earn PPC revenues for directing Internet users to third parties’ websites. It has been recognized that such use of another’s trademark to generate revenue from Internet advertising can constitute registration and use in bad faith (McDonald’s Corporation v. ZusCom, WIPO Case No. D2007-1353; Volkswagen Aktiengesellschaft v. Robert Brodi, WIPO Case No. D2015-0299; SAP SE v. Domains by Proxy, LLC / Kamal Karmakar, WIPO Case No. D2016-2497; WIPO Overview 3.0 , section 3.5 ).
Lastly, the Websites serve to associate Complainant’s services with pornographic content, tarnishing Complainant’s trademark, and, as Complainant demonstrated, as regards the Website under the second Domain Name <whatsappgrouplinkslists.com>, it may have possibly been used in connection with the illegal dissemination of child pornography, containing links with names such as “child love ©[p]”, “child sex”, “child sex porn videos”, “only kids”, “only kid boy videos”.
Under these circumstances and on this record, the Panel finds that Respondent has registered and is using the Domain Names in bad faith.
Complainant has established Policy paragraph 4(a)(iii).
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Names <whatsappgroupjoinlinklist.com> and <whatsappgrouplinkslists.com> be transferred to Complainant.
Date: August 30, 2019
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