WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

WhatsApp Inc. v. Yingjie Liu

Case No. D2019-3167

1. The Parties

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

The Respondent is Yingjie Liu, China.

2. The Domain Name and Registrar

The disputed domain name <whatsapp888.com> is registered with SNAPNAMES 20, LLC. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 23, 2019. On December 23, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 27, 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 January 15, 2020. In accordance with the Rules, paragraph 5, the due date for Response was February 4, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 5, 2020.

The Center appointed Tuukka Airaksinen as the sole panelist in this matter on February 17, 2020. 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, founded in 2009, is the provider of a popular mobile messaging application allowing users to exchange messages via smartphones. The Complainant is the owner of the trademark WHATSAPP, registered in various countries such as in China under No. 21470703A on December 21, 2017. The Complainant also owns several domain names including the trademark WHATSAPP, such as <whatsapp.com>, <whatsapp.net> and <whatsapp.org>.

The disputed domain name was registered on September 28, 2019. The disputed domain name redirects to a blog-style website which appears to promote private servers for an online game.

5. Parties’ Contentions

A. Complainant

The disputed domain name incorporates the Complainant’s trademark in its entirety, which is sufficient to establish identity or confusing similarity for the purpose of the Policy.

The Respondent has never been authorized by the Complainant to register or use the Complainant’s trademark or to apply for or use any domain name incorporating the Complainant’s trademarks. The Respondent is also not using the disputed domain name in connection with a bona fide offering of goods or services, or in a legitimate noncommercial manner and is not commonly known by the disputed domain name.

The Complainant’s trademark has been used since 2009 and is highly distinctive and well known throughout the world, which has been confirmed by previous panels. It is therefore inconceivable that the Respondent would not have been aware of the Complainant’s UDRP trademark when registering the disputed domain name. The Respondent has also provided false WhoIs information, evidenced by the delivery failure of the Complainant’s cease and desist letter of November 7, 2019.

The disputed domain name is used to intentionally attract, for commercial gain, Internet users to the Respondent’s website by creating a likelihood of confusion with the Complainant’s trademark. The website to which the disputed domain name resolves includes links such as “会员等级” (English translation “membership level”) and “积分制度” (English translation “bonus points system”), which likely means that the Respondent is somehow benefiting from the operation of the website, e.g., through membership fees.

B. Respondent

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

6. Discussion and Findings

In order to obtain the transfer of a domain name, a complainant must prove the three elements of paragraph 4(a) of the Policy, regardless of whether the respondent files a response to the complaint. The first element is that the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights. The second element a complainant must prove is that the respondent has no rights or legitimate interests in respect of the domain name. The third element a complainant must establish is that the domain name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

Paragraph 4(a)(i) of the Policy requires that the Complainant establish that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights. Consequently, the Complainant must prove that it has rights to a trademark, and that the disputed domain name is identical or confusingly similar to this trademark.

The disputed domain name includes the Complainant’s trademark WHATSAPP in its entirety, with the addition of the numbers “888”. “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 nature of such additional term(s) may however bear on assessment of the second and third elements”. See section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”). The Complainant’s trademark WHATSAPP is clearly recognizable in the disputed domain name.

The Panel considers that the addition of the numbers “888” to the Complainant’s trademark does not remove confusing similarity between the Complainant’s trademark and the disputed domain name. Accordingly, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s respective trademark and hence the first element of the Policy has been fulfilled.

B. Rights or Legitimate Interests

Paragraph 4(a)(ii) of the Policy requires that the Complainant establish that the Respondent has no rights or legitimate interests to the disputed domain name.

It is widely accepted among UDRP panels that once a complainant has made a prima facie showing indicating the absence of the respondent’s rights or legitimate interests in a disputed domain name the burden of production shifts to the respondent to come forward with evidence of such rights or legitimate interests. If the respondent fails to do so, the complainant is deemed to have satisfied the second element of the Policy. See, e.g., Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270, and section 2.1 of the WIPO Overview 3.0.

The Complainant has credibly submitted that the Respondent is neither affiliated with the Complainant in any way nor has it been authorized by the Complainant to use and register the disputed domain name, that the Respondent has no prior rights or legitimate interests in the disputed domain name, and that the Respondent has not made and is not making a legitimate noncommercial or fair use of the disputed domain name and is not commonly known by the disputed domain name in accordance with paragraph 4(c)(ii) of the Policy.

Accordingly, the Panel finds that the Complainant has made a prima facie case that has not been rebutted by the Respondent. Considering the Panel’s findings below, the Panel finds that there are no other circumstances that provide the Respondent with any rights or legitimate interests in the disputed domain names. Therefore, the Panel finds that the second element of the Policy is fulfilled.

C. Registered and Used in Bad Faith

Paragraph 4(a)(iii) of the Policy requires that the Complainant establish that the disputed domain name has been registered and is being used in bad faith. Paragraph 4(b) of the Policy provides that the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:

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

(ii) [the respondent has] 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 [the respondent has] engaged in a pattern of such conduct; or

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

(iv) by using the domain name, [the respondent has] intentionally attempted to attract, for commercial gain, Internet users to [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 [the respondent’s] website or location or of a product or service on [the respondent’s] website or location.”

The Panel agrees with the Complainant and previous UDRP panels that the Complainant’s trademark WHATSAPP is a well-known trademark throughout the world, including in China, where the Respondent is based. The fact that the Complainant’s service is not accessible in China does not change this finding, since there have been e.g., several Chinese press articles on the worldwide success and popularity of the Complainant’s service. It is therefore inconceivable that the Respondent would not have been aware of the Complainant’s trademark when registering the disputed domain name.

The disputed domain name redirects Internet users to a blog-style website which appears to promote private servers for an online game including links such as “会员等级” (English translation “membership level”) and “积分制度” (English translation “bonus points system”). The Panel considers that it is reasonable to believe that the Respondent benefits commercially from the operation of such a website and links. Moreover, there are links to third parties listed on the website. As held by the panel in State of Wisconsin v. Pro-Life Domains, Inc., WIPO Case No. D2003-0432, “using a party’s name to redirect Internet users to an unrelated commercial site for profit is recognized under the Policy as evidence of bad faith registration and use.”

The Respondent has also provided false WhoIs-information as evidenced by the failure to deliver by courier the Complainant’s cease and desist letter, as well as the Written Notice, to the Respondent. Despite the cease and desist letter and the Notification of Complaint were successfully sent by email, the Respondent has responded to neither of them.

When looking at the totality of the circumstances in this case, the Panel finds that the Complainant’s trademark is well known, the disputed domain name is confusingly similar to the Complainant’s trademark, and the Respondent has failed to respond to the Complaint or the Complainant’s cease and desist letter. The Respondent has also not put the disputed domain name into any legitimate use that could negate these findings.

Hence, looking at the overall circumstances of the case, the Panel finds that the disputed domain name was registered and is being used in bad faith. Therefore, the Panel finds that the third element of the Policy is fulfilled.

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 <whatsapp888.com> be transferred to the Complainant.

Tuukka Airaksinen
Sole Panelist
Date: February 28, 2020