WhatsApp LLC v Saifullah Alam, Selectfashion

WIPO Case No. D2024-5066

ARBITRATION

AND

MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

WhatsApp LLC v. Saifullah Alam, Selectfashion

Case No. D2024-5066

1. The Parties

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

Lovells (Paris) LLP, France.

The Respondent is Saifullah Alam, Selectfashion, Pakistan/United States.

2. The Domain Names and Registrars

The disputed domain name <whatsappchromeextension.com> is registered with PDR Ltd. d/b/a
PublicDomainRegistry.com. The disputed domain name <whatsappcontactdownload.com> is registered with
Hostinger Operations, UAB. The disputed domain name <whatsappwebdownload.com> is registered with

GMO Internet, Inc. d/b/a Discount-Domain.com and Onamae.com (the “Registrars”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 9, 2024. On December 10, 2024, the Center transmitted by email to the Registrars a request for registrar verification in connection with the disputed domain names. On December 11, 2024, the Registrars

transmitted by email to the Center their verification responses disclosing registrant and contact information
for the disputed domain names which differed from the one of the named Respondents (Domain Admin,
Privacy Protect, LLC) and contact information in the Complaint.

The Center sent an email communication to the Complainant on December 11, 2024, with the registrant and contact information of nominally multiple underlying registrants revealed by the Registrars, requesting the Complainant to either file separate complaint(s) for the disputed domain names associated with different underlying registrants or alternatively, demonstrate that the underlying registrants are in fact the same entity and/or that all domain names are under common control. The Complainant filed an amended Complaint on December 13, 2024.

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”).

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In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on December 18, 2024. In accordance with the Rules, paragraph 5, the due date for Response was January 7, 2025. The Respondent sent email communications

to the Center on December 14 and 31, 2024, and on January 10, 2025. The Center sent an email to the confirmed that it did not wish to explore settlement options.

The Center appointed Andrew F. Christie as the sole panelist in this matter on January 23, 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 is a provider of one of the world’s most popular mobile messaging applications (or “apps”). Founded in 2009 and acquired by Meta Platforms, Inc. in 2014, WhatsApp allows users across the globe to exchange messages for free via smartphones, including iPhone and Android. Its main website available at “ also allows Internet users to access its messaging platform. Since its launch in 2009, WhatsApp has become one of the fastest growing and most popular mobile applications in the world, with

over two billion monthly active users worldwide (as of 2023). Consistently being ranked amongst Google information company Data.ai.

Play’s and Apple App Store’s 25 most popular free mobile applications and Tech Radar’s Best Android Apps,

The Complainant has secured ownership of trademark registrations for the word trademark WHATSAPP in
various jurisdictions, including United States Registration No. 3,939,463 (registered April 5, 2011), European
Union Trade Mark No. 009986514 (registered October 25, 2011), International Registration No. 1085539
(registered May 24, 2011), and Pakistan Trademark Registration No. 302143 (registered May 27, 2011).
The Complainant also holds figurative trademark registrations for a logo of a white analog telephone handset
against a green speech-bubble background, including International Registration No. 1109890 (registered
January 10, 2012).

The Complainant is the owner of numerous domain names comprising its WHATSAPP trademark, under various generic Top-Level Domains (“gTLDs”) as well as under many country-code Top-Level Domains.

The disputed domain names were registered on the following dates: <whatsappchromeextension.com> on
May 18, 2023; <whatsappcontactdownload.com> on June 18, 2022; and <whatsappwebdownload.com> on

January 20, 2024.

The Complainant provided screenshots showing that, on December 12, 2024, the disputed domain name
<whatsappchromeextension.com> resolved to a web page titled “whatsapp chrome extension”, featuring a
logo similar to the Complainant’s registered figurative trademark, and displaying information about a
WhatsApp Chrome extension that purports to provide Internet users with additional functionality on
WhatsApp, including the ability to send “bulk messages”. The webpage contained links to the Chrome Web
Store to download a WhatsApp Chrome extension.

The Complainant provided screenshots showing that, on December 3, 2024, the disputed domain name <whatsappcontactdownload.com> redirected to a website at <wawcd.com>, titled “WAWCD #Best WhatsApp Chrome Extension”, displaying information about and featuring links to the Chrome Web Store to download a WhatsApp Chrome extension that purports to provide Internet users with additional functionality on WhatsApp, including the ability to send “bulk messages”. The website features a green and white color scheme that is similar to the green and white color scheme of the Complainant’s WhatsApp platform. The website lists the prices of paid monthly subscription packages for the WhatsApp Chrome extension, with varying additional features, including automatic replies, labelling and a “WhatsApp Notes” option.

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The Complainant provided screenshots showing that, on September 1, 2024, the disputed domain name extension is said to provide Internet users with additional functionality on WhatsApp, including the ability to send “bulk messages”. The website featured a green color scheme that is similar to the green color scheme of the Complainant's WhatsApp platform.
<whatsappwebdownload.com> resolved to a webpage titled “CONTACT SAVER WHATSAPP WEB
DOWNLOAD Get Your WhatsApp Group Contacts in Your Computer/Laptop/Phone with our WhatsApp web

Chrome Extension”, displaying information about and featuring links to the Chrome Web Store to download a

As of the date of this decision, the disputed domain names <whatsappchromeextension.com> and
<whatsappwebdownload.com> do not resolve to an active location, while the disputed domain name

<whatsappcontactdownload.com> redirects to the Complainant’s website at “

5. Parties’ Contentions

A. Complainant

The Complainant contends that this Complaint may be validly filed against multiple respondents for the following reasons. The WhoIs record of each of the disputed domain names lists the registrant as “Saifullah Alam”. The WhoIs record of the disputed domain names <whatsappchromeextension.com> and <whatsappwebdownload.com> also lists the same organization, “Selectfashion”, the same street address and the same email address. Each of the disputed domain names points to, or previously pointed to, a website that in turn systematically drives Internet users to the same Chrome Web Store that purports to offer for download either the Chrome extension titled “WAWCD: WhatsApp CRM with Contact Saver, Broadcasting & More” or the Chrome extension titled “WhatPreneur: WhatsApp Web CRM with Contact Saver for Entrepreneurs”. Each of the disputed domain names comprises the Complainant’s WHATSAPP trademark.

The Complainant contends that it has satisfied each of the elements required under the Policy for a transfer of the disputed domain names.

The Complainant contends that the disputed domain names are confusingly similar to a trademark in which it “webdownload”, and the gTLD “.com”. The presence of the WHATSAPP trademark in the disputed domain names is sufficient to establish confusing similarity between them and the Complainant's trademark. The addition of the terms “chromeextension”, “contactdownload” or “webdownload” does not prevent a finding of confusing similarity with the Complainant's WHATSAPP trademark, which remains clearly recognizable in the disputed domain names. The gTLD “.com”, may be disregarded for the purposes of assessment under the first element as it is viewed as a standard registration requirement.
has rights on the following grounds, among others. The disputed domain names incorporate the

The Complainant contends that the Respondent has no rights or legitimate interests in the disputed domain names on the following grounds, among others. 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 dispute domain names. The Respondent is not a licensee of the Complainant. The Respondent is not affiliated with the Complainant in any way. The Complainant has not granted any authorization for the Respondent to make use of its WHATSAPP trademark, in a domain name or otherwise. The Respondent’s websites purported to offer for download WhatsApp Chrome extensions that offer additional functionality to the Complainant’s WhatsApp application, including the ability to send “bulk messages”. The website at the disputed domain name <whatsappcontactdownload.com> purports to offer “automation” paid subscription packages for the WhatsApp application. The Respondent is making unauthorized use of the Complainant’s trademarks in the disputed domain names and on the web pages to which they resolve or redirect in an attempt to drive Internet users to the Chrome Web Store, where they are prompted to download WhatsApp Chrome extensions, from which it may be inferred that Respondent derives monetary gain.

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The “bulk messaging” functionality of the WhatsApp Chrome extensions is not authorized by the
Complainant and violates the WhatsApp Terms of Service. The Respondent’s use of the disputed domain
names in such a manner does not constitute a bona fide offering of goods or services. There is no evidence
to suggest that the Respondent is commonly known by the disputed domain names, or that the Respondent
has obtained or applied for any trademark registrations for “whatsapp”, or for any variation thereof reflected
in the disputed domain names. The Respondent’s use of the disputed domain names to offer for download
unauthorized Chrome extensions that purport to offer additional functionality on the Complainant's WhatsApp
application does not amount to legitimate noncommercial or fair use.

The Complainant contends that the Respondent has registered and is using the disputed domain names in bad faith on the following grounds, among others. The Complainant’s WHATSAPP trademark is inherently distinctive and well known throughout the world in connection with its messaging application, having been continuously and extensively used since the respective launching of its services, and acquiring considerable

reputation and goodwill worldwide. Given the Complainant’s renown and goodwill worldwide and its packages offered at the website to which the disputed domain name <whatsappcontactdownload.com> redirects. It can be inferred that the Respondent also derives monetary gain from the WhatPreneur WhatsApp Chrome extension. The Respondent is using the disputed domain names to attract Internet users to its websites for commercial gain, by creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation or endorsement of the websites and the services offered thereon.
trademark rights established long before the registration of the disputed domain names, the Respondent
could not credibly argue that it did not have knowledge of the Complainant's WHATSAPP trademark when it
registered the disputed domain names between June 2022 and January 2024. The nature of the websites to
which the disputed domain names resolve or redirect clearly demonstrates actual knowledge of the
Complainant and its trademark, as the websites make prominent reference to the Complainant and its
WHATSAPP trademark and feature logos that are very similar to the Complainant’s WhatsApp logo and
figurative trademark as well as a similar green and white color scheme to the color scheme of the
Complainant. These websites drive Internet users to the Chrome Web Store and prompt Internet users to

download WhatsApp Chrome extensions that provide additional functionality on the Complainant’s

B. Respondent

The Respondent did not formally respond to the Complainant’s contentions. However, the Respondent sent a number of emails to the Complainant and the Center during the proceeding.

On December 14, 2024, in response to the Complainant’s filing of the Amended Complaint, the Respondent sent an email stating, among other things: “I have no idea what’s going on. I already responded to a similar email a while ago. We clearly state on our website: WhatsApp is a trademark of WhatsApp Inc. This

website is an independent product developed by WAWCD LLC and has no affiliation with WhatsApp Inc.”

On December 31, 2024, in response to receipt of the Notification of Complaint and Commencement of Administrative Proceeding, the Respondent sent an email stating: “I understand your concern. I have removed all 3 domains and transferred them to whatsapp.com. They will not be renewed once they expire

later this year. Looking forward to settling this dispute.”

On January 10, 2025, in response to the Complainant’s email to the Center requesting continuation of the procedure as it did not wish to explore settlement, the Respondent sent an email stating, among other things: (i) that he is an individual who purchased the disputed domain names thinking they might be useful, but they didn’t serve any purpose, so he had no plans to renew them; (ii) that he didn’t remove the content that was published because it was hosted on a free web hosting platform, and it wasn’t costing him anything; (iii) that his intent was never to use the disputed domain names for any specific purpose; and (iv) that he wished to settle the matter.

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6. Discussion and Findings

Consolidation: Multiple Respondents

Paragraph 3(c) of the Rules states that a complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name holder. According to the information provided by the Registrars, the disputed domain names <whatsappwebdownload.com> and <whatsappchromeextension.com> provide a registrant organization of “Selectfashion” with a registrant country of Pakistan, whereas the disputed domain name <whatsappcontactdownload.com> does not provide a registrant organization and lists the United States as the registrant country. However, the registrant name of each the disputed domain names is “Saifullah Alam”.

It is apparent to the Panel that the holder of each of the disputed domain names is one person, Saifullah Alam. Moreover, the Respondent admitted in his email communications to the Center that he is the registrant of each of the disputed domain names. Accordingly, the Panel is satisfied that the holder of each of the disputed domain names is the same person, and hence that the Complaint is validly filed in respect of them.

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 name. 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.
WIPO Overview 3.0, section 1.2.1. It is the owner of a number of registrations for the word trademark
WHATSAPP.

The entirety of the Complainant’s trademark is reproduced within the disputed domain names, followed by the descriptive strings “chromeextension”, “contactdownload”, and “webdownload”, and the gTLD “.com”. Although the addition of other terms may bear on assessment of the second and third elements, the Panel finds the addition of such terms does not prevent a finding of confusing similarity between the 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 domain name (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.

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The evidence establishes that the Respondent has used each of the disputed domain names to resolve to a
web location that reproduces the Complainant’s trademark and which purports to offer a “bulk messaging”
functionality for the Complainant’s product. The Respondent’s use of the disputed domain names in this way
unfairly takes advantage of the Complainant’s trademark for the Respondent’s benefit and falsely suggests a
connection or affiliation with the Complainant to purportedly offer unauthorized services or functionality for
the WhatsApp application. Such use of the disputed domain names is not a bona fide offering of goods or
services, and is not a legitimate noncommercial or fair use. Accordingly, such use does not confer on the
Respondent rights or legitimate interests in the disputed domain names.

The Panel notes that the Respondent has referenced a disclaimer; however, no evidence of such disclaimer has been provided to the Panel or is evident from the evidenced disputed domain name use. In any case, the potential non-prominent display of such disclaimer would not alter the Panel’s finding in this case, noting the primary website content tends to falsely suggest a connection or affiliation with the Complainant. Moreover, the nature of the disputed domain names, incorporating the Complainant’s widely-known trademarks with additional terms related to use of its application online, carries a risk of implied affiliation and cannot constitute a fair use as it effectively impersonates or suggests sponsorship or endorsement by the Complainant. See WIPO Overview 3.0, section 2.5.1.

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.

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

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.

In the present case, the Panel notes that: (i) the Respondent registered the disputed domain names many years after the Complainant first registered its WHATSAPP trademark; (ii) the disputed domain names incorporate the Complainant’s trademark in its entirety, and merely add descriptive strings that allude to a product that is interoperable with the product sold by Complainant under its trademark; and (iii) the Respondent has used the disputed domain names to resolve to web locations at which the Complainant’s trademark is used. It is clear the Respondent registered the disputed domain names with knowledge of the Complainant’s trademark.

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. The evidence shows that the Respondent has used the disputed domain names in an intentional attempt to

attract, for commercial gain, Internet users to a website by creating a likelihood of confusion with the and use of the disputed domain name constitutes bad faith under the Policy.

The Panel finds that the Complainant has established the third element of the Policy.

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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 <whatsappchromeextension.com>,

<whatsappcontactdownload.com> and <whatsappwebdownload.com> be transferred to the Complainant.

/Andrew F. Christie/
Andrew F. Christie
Sole Panelist
Date: February 7, 2025