WhatsApp LLC v Naeem Ahmad

WIPO Case No. D2025-1006

ARBITRATION

AND

MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

WhatsApp LLC v. Naeem Ahmad

Case No. D2025-1006

1. The Parties

The Complainant is WhatsApp LLC, United States of America (“United States”), represented by Hogan

Lovells (Paris) LLP, France.

The Respondent is Naeem Ahmad, India.

2. The Domain Names and Registrars

The disputed domain names <whatappmods.net> and <whatsappmods.net> are registered with BigRock

Solutions Ltd.

The disputed domain name <whatsappmods.me> is registered with PDR Ltd. d/b/a
PublicDomainRegistry.com.

The disputed domain names are hereinafter referred to individually as the “Disputed Domain Name” and collectively as the “Disputed Domain Names”.

BigRock Solutions Ltd and PDR Ltd. d/b/a PublicDomainRegistry.com are hereinafter collectively referred to as the “Registrar”.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 12, 2025 for the Disputed Domain Names <whatsappmods.net> and <whatsappmods.me>. On March 12, 2025, the Center transmitted by email to the Registrar a request for registrar verification in connection with the

Disputed Domain Names <whatsappmods.net> and <whatsappmods.me>. On March 13, 2025, the
Registrar transmitted by email to the Center its verification response disclosing registrant and contact
information for the Disputed Domain Names which differed from the named Respondent (Domain Admin,
Privacy Protect LLC (PrivacyProtect.org)) and contact information in the Complaint. The Center sent an
email communication to the Complainant on March 13, 2025, providing the registrant and contact information
disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The
Complainant filed an amended Complaint on March 18, 2025 and requested adding the Disputed Domain
Name <whatappmods.net> to the proceeding. Accordingly, on March 19, 2025, the Center transmitted by

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email to the Registrar a request for registrar verification in connection with the Disputed Domain Name
<whatappmods.net>. The verification response from the Registrar dated March 20, 2025 confirmed that the
newly added Disputed Domain Name is registered with the same Respondent with the existing Disputed

Domain Names.

The Respondent sent email communications to the Center on March 17, 2025, March 18, 2025, and March proceed further with the case on the same day.

19, 2025, and expressed its willingness to transfer the Disputed Domain Names. Upon receipt of the
The Center verified that the Complaint together with the amended 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 March 21, 2025. In accordance with the Rules, paragraph
5, the due date for Response was April 10, 2025. The Response was filed with the Center on March 24,
2025. The Respondent also sent email communications to the Center on March 21, 2025, and March 24,

2025.

The Center appointed Nicholas Weston as the sole panelist in this matter on April 17, 2025. 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 operates a messaging application business with over one billion monthly active users. The Complainant holds registrations for the trademark WHATSAPP in numerous countries, which it uses to designate computer applications, software programs, websites, databases, wireless communication, mobile information access and remote data management for wireless delivery of content to computers and smartphones. United States Registration No. 3,939,463, for the trademark WHATSAPP for example, cites a first-use date of February 24, 2009, and was registered on April 5, 2011. International Registration No. 1085539, for the mark WHATSAPP, was registered on May 24, 2011.

The Complainant owns numerous domain names that comprise of, or contain, the trademark WHATSAPP, including the domain name <whatsapp.com>, and has since 2009 operated an active website as an online resource that allows Internet users around the world to access its messaging platform and to support its

mobile communications app.

The Disputed Domain Name <whatappmods.net> was registered on January 30, 2025; the Disputed webpages titled “WhatsAppMods” or “WhatsAppMods” that purported to offer for downloading unauthorized modified APK versions of the Complainant’s WhatsApp application. The Disputed Domain Names were later inactive.

Domain Name <whatsappmods.net> was registered on November 30, 2016, and the Disputed Domain

5. Parties’ Contentions

A. Complainant

The Complainant contends that it has satisfied each of the elements required under the Policy for a transfer of the Disputed Domain Names.

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Notably, the Complainant cites its trademark registrations for the mark WHATSAPP and variations of it, in numerous countries, as prima facie evidence of ownership.

The Complainant contends that its rights in the mark WHATSAPP which predates the Respondent’s registration of the Disputed Domain Names. It submits that the Disputed Domain Names are confusingly similar to its trademark, because each comprised of the WHATSAPP trademark, or a misspelling of the WHATSAPP trademark, followed by the term “mods”, under the country code Top-Level Domain (“ccTLD”) “.me” or the generic Top-Level Domain (“gTLD”) “.net”, and that these variables are not sufficient to avoid the confusing similarity.

The Complainant contends that the Respondent has no rights or legitimate interests in respect of the its WHATSAPP trademark” and that none of the circumstances set out in paragraph 4(c) of the Policy apply.

Finally, the Complainant alleges that the registration and use of the Disputed Domain Names were, and currently are, in bad faith, contrary to the Policy and the Rules having regard to the prior use and distinctive nature of the Complainant’s trademark, and advances the argument that the use of the Disputed Domain Names with “prominent references to the Complainant on the Respondent's websites, as well as favicons that are very similar to the Complainant's WhatsApp logo and figurative trademark, and the similar green themed colour scheme and modified versions of the Complainant's logo on certain of the web pages at the Respondent's websites” is use in bad faith.

B. Respondent

The Respondent filed a Response to the Complainant’s contentions on March 24, 2025, stating as follows:

“I am willing to accept a decision that the disputed domain names be transferred or cancelled from the
registrar.”

The Respondent also sent several email communications to the Center, expressing its willingness to settle the dispute.

6. Discussion and Findings

As no Standard Settlement Form was filed, the Panel will proceed with a decision on the merits. Under paragraph 4(a) of the Policy, the Complainant has the burden of proving the following:

(i) that the Disputed Domain Names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(ii)       that the 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

It is well accepted that the first element functions primarily as a standing requirement. The standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between the Complainant’s trademark and the Disputed Domain Names. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.7.

The Complainant has shown rights in respect of a trademark or service mark for the purposes of the Policy.
The requirements of the first element for purposes of the Policy may be satisfied by a trademark registered in

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any country. WIPO Overview 3.0, section 1.2.1. The Complainant has produced sufficient evidence to
demonstrate that it has registered trademark rights in the mark WHATSAPP in numerous countries.

Turning to whether the Disputed Domain Names are identical or confusingly similar to the WHATSAPP trademark, the Panel observes that

— the Disputed Domain Name <whatappmods.net> is comprised of: (a) the Complainant’s trademark
WHATSAPP with the letter “s” omitted; (b) followed by the word “mods”; (c) followed by the gTLD “.net”
— the Disputed Domain Name <whatsappmods.net> is comprised of: (a) an exact reproduction of the
Complainant’s trademark WHATSAPP; (b) followed by the word “mods”; (c) followed by the gTLD “.net”.
— the Disputed Domain Name <whatsappmods.me> is comprised of: (a) an exact reproduction of the
Complainant’s trademark WHATSAPP; (b) followed by the word “mods”; (c) followed by the ccTLD “.me”.

It is well established that the TLD used as part of a domain name is generally disregarded under the first element confusing similarity test. WIPO Overview 3.0, section 1.11. The relevant comparison to be made is with the second-level portion of each of the Disputed Domain Names, specifically: “whatappmods”, “whatsappmods” and “whatsappmods”, respectively.

The Panel finds, in the case of the Disputed Domain Names <whatsappmods.net> and
<whatsappmods.me>, that the entirety of the mark is reproduced within the Disputed Domain Names.
Accordingly, these Disputed Domain Names is identical to the mark for the purposes of the Policy.
WIPO Overview 3.0, section 1.7.

. also. WIPO Overview 3.0, section 1.9.

The Panel finds the mark is recognizable within the Disputed Domain Name <whatappmods.net>

Although, the addition of the term “mods” may bear on assessment of the second and third elements in relation to the Disputed Domain Names, the Panel finds the addition of that term does not prevent a finding of confusing similarity between that Disputed Domain Names and the mark for the purposes of the Policy. WIPO Overview 3.0, section 1.8.

The Panel finds the first element of the Policy has been established.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy provides a list of circumstances in which the Respondent may demonstrate rights or legitimate interests in a disputed domain name.

Although the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the difficult task of “proving a negative”, requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the Disputed Domain Names (although the burden of proof always remains on the complainant). If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element. WIPO Overview 3.0, section 2.1.

Having reviewed the available record, the Panel finds the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the Disputed Domain Names. The Respondent has not rebutted the Complainant’s prima facie showing and has not come forward with any relevant

evidence demonstrating rights or legitimate interests in the Disputed Domain Names such as those
enumerated in the Policy or otherwise.

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The Panel notes the evidence that the Disputed Domain Names resolved, for a period of time, to websites that “make or made prominent reference to the Complainant, its WHATSAPP trademark and official application, and feature(d) favicons that are very similar to the Complainant’s WhatsApp logo and figurative trademark. Furthermore, web pages at the Respondent’s websites also feature(d) logos that are identical or very similar to the Complainant’s WhatsApp logo and figurative trademark, as well as a green-themed colour scheme that is very similar to that of the Complainant’s WhatsApp platform” and finds that this does not represent a bona fide offering of goods or services, or a legitimate noncommercial or fair use, given the evidenced reputation and goodwill of the Complainant’s mark or capacity to otherwise mislead Internet users.

Panels have held that the use of a domain name for illegitimate activity such as impersonation, passing off, or other types of fraud, can never confer rights or legitimate interests on a respondent. WIPO Overview 3.0, section 2.13.1.

The Panel finds the second element of the Policy has been established for the Disputed Domain Names.

C. Registered and Used in Bad Faith

The Panel notes that, for the purposes of paragraph 4(a)(iii) of the Policy, paragraph 4(b) of the Policy establishes circumstances, in particular, but without limitation, that, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith.

Paragraph 4(b) of the Policy sets out a list of non-exhaustive circumstances that may indicate that a domain name was registered and used in bad faith, but other circumstances may be relevant in assessing whether a respondent’s registration and use of a domain name is in bad faith. WIPO Overview 3.0, section 3.2.1.

In the present case, the Panel finds that the evidence in the case shows the Respondent registered and has used the Disputed Domain Names in bad faith.

On the issue of registration, taking into account the composition of the Disputed Domain Names and the distinctive nature of the Complainant’s trademark, the Panel is satisfied that the Respondent knew of and targeted the Complainant’s trademark WHATSAPP when it registered the Disputed Domain Names.

This Panel finds that there is no reason for the Respondent to have registered the Disputed Domain Names
other than to trade off the reputation and goodwill of the Complainant’s well-known trademark.
WIPO Overview 3.0, section 3.1.4.

On the issue of use, the Complainant’s evidence is that each of the Disputed Domain Names resolved to a website that, it submits, displayed “prominent references to the Complainant on the Respondent’s websites, as well as favicons that are very similar to the Complainant’s WhatsApp logo and figurative trademark, and the similar green themed colour scheme and modified versions of the Complainant’s logo on certain of the web pages at the Respondent’s websites”.

Panels have held that the use of a domain name for illegitimate activity here, alleged passing off, constitutes
bad faith. WIPO Overview 3.0, section 3.4. The Complainant has supplied evidence of the miseading
websites that purported to offer for downloading unauthorized modified APK versions of the Complainant’s
WhatsApp application. In the circumstances, the Panel finds the Respondent’s registration and use of the

Disputed Domain Names constitutes bad faith under paragraph 4(b)(iv) the Policy.

There is also evidence that the Disputed Domain Names were later inactive.

Panels have found that the non-use of a domain name would not prevent a finding of bad faith under the doctrine of passive holding. Although panelists will look at the totality of the circumstances in each case, factors that have been considered relevant in applying the passive holding doctrine include: (i) the degree of

distinctiveness or reputation of the complainant’s mark, (ii) the failure of the respondent to submit a response

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or to provide any evidence of actual or contemplated good-faith use, and (iii) the implausibility of any good
faith use to which the domain name may be put. WIPO Overview 3.0, section 3.3.

Having reviewed the available record, the Panel notes the Complainant’s well-known WHATSAPP trademark, the composition of the Disputed Domain Names, and the Respondent’s failure to provide any evidence of actual or contemplated good-faith use and finds that in the circumstances of this case the passive holding of the Disputed Domain Names does not prevent a finding of bad faith under the Policy. In the circumstances, the Panel so finds.

The Panel finds that the Complainant has established the third element 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 Names <whatappmods.net>, <whatsappmods.me>, and

<whatsappmods.net> be transferred to the Complainant.

/Nicholas Weston/
Nicholas Weston
Sole Panelist
Date: May 1, 2025.