WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Tencent Holdings Limited v. Wechat Wechat/Anonymous
Case No. D2013-0026
1. The Parties
The Complainant is Tencent Holdings Limited of George Town, Grand Cayman, Overseas Territory of the United Kingdom of Great Britain and Northern Ireland, represented by Lane IP Limited, United Kingdom.
The Respondent is Wechat Wechat of the United States of America (“US”) / Anonymous of Algeria, self-represented.
2. The Domain Name and Registrar
The disputed domain name <wechatapp.org> is registered with eNom (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 7, 2013. On January 8, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 8, 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 11, 2013 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amended Complaint. The Complainant sent an email to the Center on January 14, 2013 submitting it was not necessary to file an amended Complaint with the amended contact information for the Respondent, since the contact information was “Anonymous”.
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 the Respondent of the Complaint, and the proceedings commenced on January 17, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was February 6, 2013. A series of informal e-mails from the Respondent was received on January 17, 18 and 22, 2013.The Response was filed with the Center on January 21, 2013.
The Center appointed Sebastian M. W. Hughes as the sole panelist in this matter on January 30, 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.
4. Factual Background
A. The Complainant
The Complainant is a company incorporated in the Cayman Islands and the owner of registrations in China and Hong Kong, China for the trade mark WECHAT (the “Trade Mark”) with filing dates from October 2011 and registration date from December 14, 2012.
The Trade Mark is a well-known trade mark in China in respect of mobile telephone text and voice messaging services.
B. The Respondent
The Respondent is an individual who is apparently based in China.
C. The Disputed Domain Name
The disputed domain name was registered on December 25, 2012.
5. Parties’ Contentions
A. The Complainant
The Complainant made the following submissions in the Complaint.
WECHAT is a popular mobile phone text and voice messaging communication service developed by the Complainant, with over 200 million users in China.
The disputed domain name is confusingly similar to the Trade Mark. It contains the Trade Mark in its entirety together with the non-distinctive commonly used word “app” meaning “application”.
The Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent is using the disputed domain name in respect of competing mobile telephone services.
The disputed domain name has been registered and used in bad faith. It has been resolved to a Chinese language website targeting consumers in China and offering mobile telephone services in competition with the Complainant (the “Website”).
B. The Respondent
The Respondent made the following submissions in the Response:
The Respondent claims to be a legitimate purchaser and user of the Complainant’s QQ instant messenger platform.
The Respondent asserts that, as the Complainant’s WECHAT service is a free service, the Respondent’s use of the disputed domain name is not deceptive. The Respondent further queries why the Complainant did not itself register the disputed domain name.
The Respondent submits that the services offered on the Website are legitimate, and the Respondent, as a paying customer of the Complainant’s QQ service, is entitled to use the Respondent’s QQ email address on the Website.
6. Discussion and Findings
The Complainant must prove each of the three elements in paragraph 4(a) of the Policy in order to prevail.
A. Identical or Confusingly Similar
The Panel finds that the Complainant has rights in the Trade Mark acquired through use and registration which predate the date of registration of the disputed domain name.
UDRP panels have consistently held that domain names are identical or confusingly similar to a trade mark for purposes of the Policy “when the domain name includes the trade mark, or a confusingly similar approximation, regardless of the other terms in the domain name” (Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a For Sale, WIPO Case No. D2000-0662).
It is also established that the addition of generic terms to a disputed domain name has little, if any, effect on a determination of confusing similarity between the domain name and the mark (Quixtar Investments, Inc. v. Dennis Hoffman, WIPO Case No. D2000-0253); furthermore, mere addition of a generic or descriptive term does generally not exclude the likelihood of confusion (PRL USA Holdings, Inc. v. Spiral Matrix, WIPO Case No. D2006-0189).
In the present case, the disputed domain name contains the Trade Mark in its entirety. The Panel concludes that the addition of the commonly used abbreviation “app”, meaning “application”, does not serve to distinguish the disputed domain name from the Trade Mark.
The Panel finds that the disputed domain name is confusingly similar to the Trade Mark.
The Panel therefore holds that the Complaint fulfills the first condition of paragraph 4(a) of the Policy.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides a list of non-exhaustive circumstances any of which is sufficient to demonstrate that the Respondent has rights or legitimate interests in a disputed domain name:
(i) before any notice to the Respondent of the dispute, the Respondent’s 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; or
(ii) the Respondent (as an individual, business, or other organization) has been commonly known by the domain name even if the Respondent has acquired no trade mark or service mark rights; or
(iii) the Respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.
There is no evidence that the Complainant has authorised, licensed, or permitted the Respondent to register or use the disputed domain name or to use the Trade Mark. The Complainant has prior rights in the Trade Mark which precede the Respondent’s registration of the disputed domain name. There is therefore a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name, and the burden is thus on the Respondent to produce evidence to rebut this presumption (Do The Hustle, LLC v. Tropic Web, WIPO Case No. D2000-0624; Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455).
The Respondent has failed to show that he/she has acquired any trade mark rights in respect of the disputed domain name or that the disputed domain name has been used in connection with a bona fide offering of goods or services.
The Panel has no hesitation in concluding that the unauthorised use of the disputed domain name, comprising the well-known Trade Mark of the Complainant, to attract Internet users to a Website offering mobile telephone services which are similar to the Complainant’s services, does not give rise to any rights or legitimate interests in the disputed domain name.
There has been no evidence adduced to show that the Respondent has been commonly known by the disputed domain name.
There has been no evidence adduced to show that the Respondent is making any legitimate noncommercial or fair use of the disputed domain name.
The Panel finds that the Respondent has failed to produce any evidence to establish rights or legitimate interests in the disputed domain name. The Panel therefore finds that the Complaint fulfils the second condition of paragraph 4(a) of the Policy.
C. Registered and Used in Bad Faith
Pursuant to paragraph 4(b)(iv) of the Policy, the following conduct amounts to registration and use in bad faith on the part of the Respondent:
By using the domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the Respondent’s 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 the Respondent’s website or location or of a product or service on the Respondent’s website or location.
The Panel concludes the Respondent has registered and is using the disputed domain name in order to attract Internet users to the Website, which offers mobile telephone services, for commercial gain, thereby creating a likelihood of confusion for the purposes of paragraph 4(b)(iv) of the Policy.
The Panel therefore finds the requisite element of bad faith has been satisfied, under paragraph 4(b)(iv) of the Policy.
At some stage following the filing of the Complaint, the Website has been taken down. The disputed domain name is currently resolved to an inactive website. In all the circumstances, the Panel finds this constitutes further evidence of bad faith.
For the foregoing reasons, the Panel concludes that the disputed domain name has been registered and is being used in bad faith. Accordingly the third condition of paragraph 4(a) of the Policy has been fulfilled.
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 <wechatapp.org> be transferred to the Complainant.
Sebastian M.W. Hughes
Dated: February 13, 2013