Complainant is Tencent Holdings Limited of George Town, Grand Cayman, Cayman Islands, Overseas Territory of the United Kingdom of Great Britain and Northern Ireland (“United Kingdom”), represented by Lane IP Limited, United Kingdom.
Respondent is Ning Yang of Point Cook, Victoria, Australia, self-represented. 2. The Domain Name and Registrar
The disputed domain name is registered with Mesh Digital Limited (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 27, 2012. On November 27, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 28, 2012, 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(a) and 4(a), the Center formally notified Respondent of the Complaint, and the proceedings commenced on December 4, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was December 24, 2012. The Response was filed with the Center on December 22, 2012.
The Center appointed Richard G. Lyon as the sole panelist in this matter on January 14, 2013. The Panel finds that it was properly constituted and has jurisdiction to decide this administrative proceeding. The Panel has submitted his 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
Complainant is a holding company with diverse operations, many of them in China. Among these is “Tencent Weibo”, a Chinese microblogging/social network service currently in beta testing though apparently available to consumers. Complainant holds a European Union trademark, issued in June 2012, for TENCENTWEIBO in various classifications. Complainant also holds a trademark for TENCENTWEIBO in Australia, registered in December 2012.
Respondent registered the disputed domain name in July 2012, based upon a Backorder request placed with DomainM on June 25, 2012. Both parties assert that the disputed domain name has never been used, but when the Panel entered it into his web browser he was directed to a pay-per-click website with hyperlinks to various dating services. 5. Parties’ Contentions A. Complainant
Complainant contends as follows:
1. The disputed domain name is identical to Complainant’s TENCENTWEIBO trademark, a mark in which Complainant has rights by reason of its registered trademarks in the European Union and Australia.
2. Respondent lacks a right or legitimate interest in the disputed domain name.
3. Respondent registered and has used the disputed domain name in bad faith. Respondent offered to sell the disputed domain name to a representative of Complainant for an amount in excess of USD 350,000. Other indicia of bad faith are “the fact that the [disputed] domain [name] is not in use,” and “the length of time the [disputed] domain [name] has been registered.” Because the disputed domain name incorporates Complainant’s mark verbatim, any actual use will generate a likelihood of confusion as to the source, sponsorship, affiliation, or endorsement of Respondent’s website. B. Respondent
Respondent contends as follows:
1. Respondent registered the disputed domain name prior to Complainant’s trademark registration in Australia. Respondent, an Australian, “[has] never seen the complaint’s [sic] products or service in the Australian marketplace.”
2. Respondent has planned to use the disputed domain name for a website scheduled to go online in late January 2013. Plans for the website are set out in a memorandum dated July 2012 that is annexed to the Response. As noted in paragraph 6.B below, a copy of this memorandum is extracted immediately below:
“Ten-Cent Weibo Community Forum T meeting on 18/07/2012
Website Overview
Our website is on our schedule. Please be careful to read this overview. This overview will be sent to the email address of all our teammates. For any question, please reply your emails or discuss when meeting.
1. Website name
Ten-Cent Weibo Community Forum
2. Website target
- To provide information for local residents in Point Cook, Vic
- Make local people create themselves communications by the website
3. Website building time
Our website’s deadline would be done better by Jan 27, 2013. Now we have a couple months to discuss and build it by our team. After completing the project making, we need to think of many things till Sep 15, 2012. And then we must commence on building it by the deadline.
4. Team mates
- David Yang (Team leader)
- Bernie An
- John Zhang
5. Domain name
- T
- DNS
- IP Address shared
6. Webhosting
Select one out of the following after team discussion
- Godaddy Webhosting
- CrazyDomains Webhosting
- HostMonster Webhosting
7. Brief content
a) Scripts
- Phpbb3
b) Menu
- Home
- About us
- Education
- Hospital
- Motel
- House cleaning
- Tourism
- Auto Service
- Shopping Info
- Real-estate Info
- Contact us
c) Topics
- Local information for residents
- Free discussion on local interesting
- Party information
- Activities for local communication
- Family support
- Other topics
d) Administrators
All of us are administrators of the website. And need one more from our friends in future.
8. Working schedule
- Team working at 2pm on every Sunday
- Daily collaboration by online, Skype
David Yang
16/07/2012”.
3. Respondent has committed no act of bad faith in registration or use of the disputed domain name. What Complainant characterizes as Respondent’s offer to sell to the mark owner was in fact his response to an anonymous inquiry. Respondent attaches this inquiry as an annex to the Response and chides Complainant for failure to include it. 6. Discussion and Findings
In this Policy proceeding Complainant bears the burden of proof, by a preponderance of the evidence, to demonstrate each of the following Policy elements:
(i) the disputed domain name registered by Respondent 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 to the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
At the date the Complaint was filed Complainant held a valid and registered trademark in the European Union. The fact that Complainant obtained a mark in Respondent’s home country only later, after Respondent’s registration of the disputed domain name, may make Complainant’s burden of proof more difficult under paragraphs 4(a)(ii) and 4(a)(iii) of the Policy or in a trademark infringement action, but is irrelevant in ascertaining Complainant’s rights in a mark under paragraph 4(a)(i). As the disputed domain name is identical to Complainant’s mark except for the generic top-level domain “.com”, Complainant has established the first Policy element. B. Rights or Legitimate Interests
Though its proof is far from overwhelming, Complainant has made the necessary prima facie case that Respondent lacks rights or legitimate interests in the disputed domain name. Nothing in the record (including the Response) indicates that Respondent has ever been known, individually or in business, by the disputed domain name or that Complainant has authorized Respondent to use its TENCENTWEIBO mark. The burden of production thus shifts to Respondent to demonstrate the right or legitimate interest it holds. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 2.1.
Respondent offers two bases for holding a right or legitimate interest in the disputed domain name. First is his belief that his registration prior to Complainant’s obtaining a mark in Australia, by itself, confers such a right. That belief is mistaken. For one thing, its underlying factual premise is simply not true. The use to which Complainant has put its mark – the service it offers under that business identifier – is an Internet-based social network, something that is almost by definition not confined by national boundaries. For another, Respondent again confuses the Policy with a civil action for trademark infringement. Just because Complainant had no mark in Australia does not ipso facto entitle Respondent or any other Australian to incorporate that mark into a domain name. A Malawian, for example, could not register simply because the oil company had no trademark or sold no products in Malawi. That fact might make it more difficult to demonstrate the registrant’s actual knowledge of the mark, required under paragraph 4(a)(iii) of the Policy, but it does not automatically provide a right or legitimate interest in the domain name. The Policy’s intended scope was to transcend national borders when it came to ascertaining rights or legitimate interests.
Respondent makes a better case for refuge within the safe harbor of paragraph 4(c)(i) of the Policy, which provides in relevant part “Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii): (i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services.” To support this defense Respondent offers the memorandum referred to above, a copy of which is extracted in paragraph 5.B above.
The bar to proving “demonstrable preparations” is not high, see, e.g., Télévision Française 1 (TF1) v. Khaled Bitat, WIPO Case No. D2007-0137 (“Even perfunctory preparations have been held to suffice for this purpose.”) But in the Panel’s opinion that memorandum and the accompanying text in the Response do not clear that bar. In this Panel’s view, both evidence only intentions, not preparations. No “preparations” are “demonstrated,” as required by paragraph 4(c)(i) of the Policy; there is no evidence that Respondent spent one dollar or took any action whatever to implement the scheme there outlined. Many UDRP panels have adhered to the Policy’s requirements of “demonstrable preparations,” holding intentions or objectives inadequate to reach the safe harbor.1 While five months is, as Respondent argues, not a long time, it is sufficient to require Respondent to “demonstrate” some actual “preparations” beyond a perfunctory outline that could very well apply to any domain name and many websites.
Complainant succeeds on this second Policy element. C. Registered and Used in Bad Faith.
In order to establish this Policy element Complainant must ordinarily show that Respondent both had actual knowledge of Complainant’s mark and selected the disputed domain name to take advantage of that mark. As direct evidence of this is often not available to Complainant in a proceeding that allows no discovery, each of these matters may be proven inferentially. Complainant must separately prove both registration and use in bad faith.
The Panel begins with the more difficult of the two in this case, whether Respondent used the disputed domain name in bad faith. Respondent does not contest Complainant’s assertion that there has been no use of the disputed domain name. Can no use at all constitute use in bad faith?
This question as a general principle was decided early on in Policy precedent. In Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003, one of the most cited of all UDRP cases, the panel held that in appropriate circumstances non-use could be deemed use in bad faith. When certain circumstances obtain, said the panel in Telstra, “the relevant issue is not whether the Respondent is undertaking a positive action in bad faith in relation to the domain name, but instead whether, in all the circumstances of the case, it can be said that the Respondent is acting in bad faith. The distinction between undertaking a positive action in bad faith and acting in bad faith may seem a rather fine distinction, but it is an important one. The significance of the distinction is that the concept of a domain name ‘being used in bad faith’ is not limited to positive action; inaction is within the concept. That is to say, it is possible, in certain circumstances, for inactivity by the Respondent to amount to the domain name being used in bad faith.”
The circumstances in Telstra that persuaded the panel to find bad faith use were:
“(i) the Complainant’s trademark has a strong reputation and is widely known, as evidenced by its substantial use in Australia [the residence of both parties] and in other countries,
(ii) the Respondent has provided no evidence whatsoever of any actual or contemplated good faith use by it of the domain name,
(iii) the Respondent has taken active steps to conceal its true identity, by operating under a name that is not a registered business name,
(iv) the Respondent has actively provided, and failed to correct, false contact details, in breach of its registration agreement, and
(v) taking into account all of the above, it is not possible to conceive of any plausible actual or contemplated active use of the domain name by the Respondent that would not be illegitimate, such as by being a passing off, an infringement of consumer protection legislation, or an infringement of the Complainant’s rights under trademark law.”
In this proceeding the third and fourth circumstances above do not obtain. The first does, based upon evidence provided by Complainant and Respondent’s failure to deny it. The second factor also applies here based upon the Panel’s view stated in the preceding section that Respondent has not shown “demonstrable preparations” for any good faith use.2 And the fifth does as well, though for reasons different than in Telstra. In Telstra the lack of any conceivable legitimate use was obvious because of the renown of the complainant’s mark in the home country of both parties. In this case that conclusion follows from the fact that Complainant’s mark is distinctive enough so that at the very least Respondent must at least provide evidence of a prospective use that is unrelated to the trademark value in Complainant’s mark.
Respondent does not claim, and the evidence does not show, that “tencent” or “weibo” or their combination is a common word or phrase, in English or Chinese.3 Respondent does not claim to be a domain name aggregator who might have registered the disputed domain name for any reason unrelated to Complainant’s mark, say as part of a portfolio of common Chinese phrases or of blog/social media addresses. Nothing in the Response or its annexes indicates any reason why or how the distinctive identifier TENCENT relates to the stated purpose of his contemplated website. Here it is that Respondent’s lack of an “innocent” (i.e., unrelated to the trademark value of Complainant’s mark) use of a domain name that includes a distinctive trademark, one which Respondent acknowledges he was aware of at registration, leads the Panel to conclude, as did the Telstra panel, that “it is not possible to conceive of any plausible actual or contemplated active use of the domain name by the Respondent that would not be illegitimate, such as by being a passing off, an infringement of consumer protection legislation, or an infringement of the Complainant’s rights under trademark law.” In the circumstances of this case, the Panel finds that non-use alone amounts to use in bad faith.
As to registration in bad faith the Panel returns to the standard criteria listed in the first paragraph of this Section 6-C. One thing the Response indicates, despite the lack of an outright admission on the point, is that Respondent was aware of Complainant and its distinctive mark in June or July 2012. From that fact and the lack of any evidence of bona fide use, the Panel may infer that registration of this particular domain name was undertaken to profit at some point from the value of Complainant’s trademark. Other evidence in the record reinforces this inference. The only use of the disputed domain name, at least as shown in the record and the Panel’s own accessing it, was registrar-generated pay-per-click hyperlinks. And Respondent’s extravagant asking price for the disputed domain name from anyone likewise suggests – very strongly in the Panel’s opinion – that Respondent at registration had in mind some exploitation of the value of Complainant’s mark.4
Complainant has proven bad faith in registration and use, and has therefore established the third Policy element. 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 be transferred to Complainant.
Richard G. Lyon
Sole Panelist
Date: January 17, 2013
1 See, e.g., International Organization for Standardization ISO v. Sunrise Holdings,WIPO Case No. D2008-1782 (demonstrable preparations required); Pepperdine University v. BDC Partners, Inc.,WIPO Case No. D2006-1003 (respondent must show actual preparations for use of the domain name at issue); Martha Stewart Living Omnimedia. Inc. v. Josh Gorton,WIPO Case No. D2005-1109 (demonstrable preparations required); Eurail Group GIE v. DOTrader,WIPO Case No. D2003-0422 (“While Respondent may be under no obligation to use a domain name within a particular period of time, the applicable Policy requires some evidence of efforts in preparation to use the domain name in connection with a ‘bona fide’ offering of goods or services.”)
2 The Panel acknowledges that Respondent has shown “contemplated” use of the disputed domain name. However this Panel views more than contemplation as required, for the reasons given in Section 6-B.
3 The Panel, who is not conversant in Chinese, but has consulted a native Chinese speaker, understands that “tencent” is “腾讯” in Chinese, (“teng xun” in Pinyin), and refers to Complainant’s trademark in China. The Panel also understands that “Tencent” and “腾讯” in Chinese do not have a common meaning in Chinese and they are not a relatively common Chinese colloquial expression. “weibo” is the Pinyin for “微博”, which is the name of Tencent’s online microblog, household in China, like Twitter. While “weibo” alone does not 100% equal to “微博”, because many Chinese characters with the same pronunciation, i.e. “weibo” could be “微波”, which means microwave, or “围脖” which means scarf. But when “weibo” is used with “tencent” together, the first impression is Complainant’s microblog to all native speakers.
4 In some UDRP cases panels (including this one) have held that a response to an inquiry from the mark owner, or that proposing a sale price in excess of out-of-pocket expenses incurred in connection with the domain name, does not necessarily establish bad faith. But each of those cases involved a domain name that the respondent at least arguably had demonstrated held some value independently of its association with the complainant’s trademark. See, e.g., Gigglesworld Corporation v. Mrs Jello,WIPO Case No. D2007-1189 (domain name consisting of an everyday word). When as here the mark at issue is distinctive and the Complainant was aware of it the rationale of those cases does not apply.
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