The Complainant is Tencent Holdings Limited, George Town, Grand Cayman, Overseas Territory of the, United Kingdom, represented by Lane IP Limited, United Kingdom.
The Respondent is DomainShark, Derryl Klatt of Seattle, Washington, United States of America / WhoisGuard Protected, Los Angeles, California, United States of America. 2. The Domain Name and Registrar
The disputed domain name is registered with eNom (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 9, 2013. On January 9, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 10, 2013, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on January 15, 2013 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 January 25, 2013. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amended Complaint on February 8, 2013.
The Center verified that 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on February 22, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was March 14, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 18, 2013.
The Center appointed Zoltán Takács as the sole panelist in this matter on March 28, 2013. 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.
The Panel finds that the language of this administrative proceeding is English, that being the language of the registration agreement. 4. Factual Background
The Complainant is a Chinese investment holding company whose subsidiaries provide mass media, entertainment, Internet and mobile phone value-added services and operate online advertising services in the People’s Republic of China. Its diverse services include social networks, web portals, e-commerce, and multiplayer online games. The Complainant operates the well-known instant messenger Tencent QQ and runs one of the largest web portals in China, QQ.com. As of November 2010 the company is the third largest Internet company in the world behind Google and Amazon with market capitalization of US $38 billion.
The Complainant owns trademark registrations for the mark TENCENT in Hong Kong and Taiwan, including:
- Hong Kong Trademark Registration No. 301038889 registered since January 24, 2008 for among others providing online game and online computer games and contests, and
- Taiwan Trademark Registration No. 00188316 registered since October 16, 2003 for communication services.
The Respondent registered the disputed domain name on June 9, 2009 and at the time of submission of the Complaint the website under the disputed domain name featured an online game site, including flash games and shockwave games, as well as advertisement options for those interested. 5. Parties’ Contentions A. Complainant
The Complainant contends that the disputed domain name contain the word “Tencent” and is therefore confusingly similar to its inherently distinctive TENCENT trademarks in which the Complainant has long established and reputed rights based on a number of trademark registrations.
The Complainant alleges that the Respondent has no rights or legitimate interests in respect of the disputed domain name.
The Complainant also contends that the disputed domain name was registered and is being used in bad faith. The disputed domain name contains the Complainant’s distinctive TENCENT trademark, and the Respondent, being an online gaming business has registered and is using the disputed domain name to attract consumers to its website by creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website or location. The Respondent owns two other domain names which incorporate the Complainant’s registered trademarks – QQ and 3366 Open Platform – and the Complainant contends that all this support its contention that the Respondent has registered and is using the disputed domain name to redirect Internet traffic intended for the Complainant for its own purposes. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
Paragraph 15(a) of the Rules requires that the Panel’s decision be made “on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”.
It has been a consensus view in UDRP panel decisions that a respondent’s default does not automatically result in a decision in favor of the complainant. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”).
A complainant must establish each of the three elements required by paragraph 4(a) of the Policy in order to succeed on the complaint, namely:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights;
(ii) the respondent has no rights or legitimate interests in respect of 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
Under paragraph 4(a)(i) of the Policy, there are two requirements which the Complainant must establish, first that is has rights in a trademark or service mark, and second that the disputed domain name is identical or confusingly similar to the trademark or service mark.
It has been a consensus view among the UDRP panels that if the complainant owns a trademark, then it generally satisfies the threshold requirement of having trademark rights.
The Complainant produced evidence that it holds registered trademark rights for the mark TENCENT. For the purpose of this proceeding, the Panel establishes that the Complainant’s valid Hong Kong Trademark Registration No. 301038889 registered since January 24, 2008 and Taiwan Trademark Registration No. 00188316 registered since October 16, 2003, both for the word mark TENCENT satisfy the requirement of having trademark rights for the purpose of the Policy.
Having determined that the Complainant has trademark rights in TENCENT, the Panel next assessed whether the disputed domain name is identical or confusingly similar to the trademark. According to paragraph 1.2 of the WIPO Overview 2.0, in order to satisfy the threshold requirement for confusing similarity under the Policy, the relevant trademark would generally need to recognizable as such within the disputed domain name, with the addition of common, descriptive terms typically being regarded as insufficient to prevent threshold Internet user confusion. The disputed domain name begins with fully incorporating the Complainant’s TENCENT trademark, with addition of the term “games” as suffix. The trademark TENCENT is not a common word; it identifies the business, the products and services of the Complainant. Mere use of the descriptive term “games” is not only descriptive but directly refer to gaming services of the Complainant, the disputed domain name is otherwise identical with the Complainant’s TENCENT trademark. The use of the word “games” is not capable of eliminating confusing similarity with the Complainant’s trademark.
For all these reasons, the Panel finds that the element of paragraph 4(a)(i) of the Policy is satisfied. B. Rights or Legitimate Interests
Under paragraph 4(c) of the Policy, a respondent may demonstrate their rights or legitimate interests in a domain name by showing any of the following circumstances, in particular but without limitation>
(i) before any notice to it of the dispute, its use of, or demonstrable preparations to use the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods and services; or
(ii) it has been commonly known by the disputed domain name;
(iiii) it is making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
In the present case, the Complainant submitted uncontested evidence that it holds well-established rights in the trademark TENCENT.
The Complainant never authorized the Respondent to use its TENCENT trademark in any way, and the Complainant’s prior rights in the TENCENT trademark preceded the date of registration of the disputed domain name.
It has been a consensus view among UDRP panels that, although the burden to prove the respondent’s lack of rights or legitimate interests in respect of the disputed domain name rests with the complainant, this could result in the often impossible task of proving a negative, requiring information that is often primarily within the knowledge of the respondent. If a complainant makes out prima facie case that the respondent lacks rights or legitimate interests, the burden of production shifts to the respondent.
The Respondent defaulted and failed to respond, and by doing so failed to offer to the Panel any of the types of evidence set forth in paragraph 4(c) of the Policy, or otherwise counter the Complainant’s prima facie case.
On the basis of all these facts and circumstances, the Panel concludes that the Respondent has no rights or legitimate interests in the disputed domain name in accordance with paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy lists a number of circumstances which, if found by the panel to be present, shall be evidence of registration and use of the domain name in bad faith. This non-exhaustive list includes:
(i) circumstances indicating that you [the respondent] have registered of you have 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 the complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name;
(ii) you have 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 you have engaged in a pattern of such conduct;
(iii) you have registered the domain name primarily for the purpose of disrupting the business of the competitor;
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your website or location of a product or service on your website or location”.
Paragraph 4(a)(iii) of the Policy states that the Complainant must prove that the disputed domain name “has been registered and is being used in bad faith”. The Policy states that in order to succeed with its Complaint, one of the elements that the Complainant must prove is that the domain name has been registered in bad faith.
In support of its allegation that the Respondent had knowledge of its mark at the time of registering the disputed domain name the Complainant submitted that the TENCENT mark is extremely well known in China and worldwide, as well as that it contains the dominant and distinctive element of the Complainant’s G TENCENT GAMES teng xun you xi mark. The Panel finds that this statement of the Complainant on its mark(s) worldwide well known status is not supported by evidence. Further, the G TENCENT GAMES teng xun you xi marks to which the Complainant referred were all applied for on August 4, 2010, while the Respondent registered the disputed domain name earlier, on June 9, 2009 respectively.
Further on bad faith registration of the disputed domain name the Complainant submitted that the Respondent owns the domain names and which incorporate the Complainant’s registered trademarks QQ and 3366 Open Platform.
Excerpts of Community Trademarks Nos 010877066 for the mark QQ and design and 010823102 for the mark 3366 Open Platform submitted by the Complainant show that the Complainant filed for these marks much later than the registration date of the disputed domain name, May 11 and April 20, 2012 respectively. The Respondent obtained the domain name on July 3, 2006, and domain name on December 20, 2007, again much earlier than the Complainant applied for trademark protection regarding these names.
The Complainant also alleges that the bad faith registration of the disputed domain name is supported by the fact that it owns the well know Tencent Boston games company in United States of America. The Panel found no evidence presented by the Complainant in support of the well-known status of Tencent Boston, Inc. at the time of registration of the disputed domain name, no evidence why the Respondent could have been aware of this subsidiary of the Complainant and its business.
Taking into account all these facts and circumstances this Panel found no evidence proving that at the time of registration the Respondent knew or should have known that the disputed domain name reflected the Complainant’s mark. The Complainant has not proved registration in bad faith, the third requirement of the UDRP has not been satisfied and the Complaint must therefore be rejected. 7. Decision
For the foregoing reasons, the Complaint is denied.
Zoltán Takács
Sole Panelist
Date: April 10, 2013
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