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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Tencent Holdings Limited v. Thinh Phu

Case No. D2014-0217

1. The Parties

The Complainant is Tencent Holdings Limited of 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.

The Respondent is Thinh Phu of Ha Noi, Viet Nam.

2. The Domain Names and Registrar

The disputed domain names <tencentholding.com>, <tencentholding.net>, <tencentholdings.com> and <tencentholdings.net> are registered with GoDaddy.com, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 12, 2014. On February 12, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On February 12, 2014, the Registrar transmitted by email to the Center its verification response confirming that the 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 the Respondent of the Complaint, and the proceedings commenced on February 19, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was March 11, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent of its default on March 14, 2014.

The Center appointed Dennis A. Foster as the sole panelist in this matter on March 19, 2014. 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

Founded in China, the Complainant, Tencent Holdings Limited, is a well-established Internet-based company that does business throughout the world. Among the Complainant’s registrations for its TENCENT mark are Community Trade Mark registrations (e.g., Registration No. 006033773, registered November 18, 2008; and Registration No. 011002151, registered May 10, 2013).

The Respondent owns the disputed domain names, <tencentholding.com>, <tencentholding.net>, <tencentholdings.com> and <tencentholdings.net>, the former two of which were registered on January 5, 2014, and the latter two on May 23, 2013. Two of the disputed domain names resolve to websites that offer pornographic material, while the other two are not currently in use.

5. Parties’ Contentions

A. Complainant

- In 1998, the Complainant was founded in China. It has since grown to become the world’s third largest Internet service portal and Internet company, behind only Google and Amazon. By the end of 2012, the Complainant had nearly 800 million instant messenger user accounts.

- The Complainant, Tencent Holdings Limited, owns many registrations for its TENCENT mark around the world, including several Community Trade Mark registrations. In 2007 and 2013, the Complainant’s mark was declared to be famous in Guagdon Province, China.

- The disputed domain names, <tencentholding.com>, <tencentholding.net>, <tencentholdings.com> and <tencentholdings.net>, are all identical, or at least confusingly similar, to both the name of the Complainant, Tencent Holdings Limited, and its mark, TENCENT. All of the disputed domain names fully contain that mark.

- The Respondent has no rights or legitimate interests in the disputed domain names. Moreover, there is no association between the Complainant and the Respondent. Two of the names, <tencentholdings.com> and <tencentholdings.net>, are connected to pornographic websites through a linkage with “www.sex.com”, which is not owned by the Respondent, but by a third party.

- The disputed domain names were registered and are being used in bad faith. Respondent is using two of the disputed domain names to divert Internet users seeking the Complainant’s offerings to a pornographic website. Although the other two disputed domain names are not now in use, it is likely that they will be employed by the Respondent in a similar fashion. Such usage is particularly damaging to the Complainant, as it is illegal in China to disseminate pornographic material. Furthermore, the damage is compounded because a larger than average number of visitors to the disputed domain names come from schools.

- A further demonstration of Respondent’s bad faith is the Respondent’s listing of some of the disputed domain names for sale in the amount of either USD 1,500 or EUR 1,688.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

In accordance with Policy paragraphs 4(a)(i) – (iii), the Panel may find that the Complainant has prevailed in these proceedings and should be granted a transfer of the disputed domain names, <tencentholding.com>,<tencentholding.net>,<tencentholdings.com> and <tencentholdings.net>, provided the Complainant can demonstrate that:

- The disputed domain names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

- The Respondent has no rights or legitimate interests in respect of the disputed domain names; and

- The disputed domain names have been registered and are being used in bad faith.

A. Identical or Confusingly Similar

As the Complainant has provided the Panel with copies of the Complainant’s Community Trade Mark registrations for the TENCENT trademark, the Panel concludes that the Complainant has sufficient rights in that mark for the purposes of Policy paragraph 4(a)(i). See, FSI FontShop International GmbH v. Digital Starlight, Alan DeRossett, WIPO Case No. D2010-0070 (“The Complainant does rely on its Community Trade Mark registration for the word mark FONTFONT…in order to prove trade mark rights. The Panel agrees that this registration provides trade mark rights in the term ‘FontFont’.”).

All of the disputed domain names, <tencentholding.com>, <tencentholding.net>, <tencentholdings.com> and <tencentholdings.net>, are nearly identical to the Complainant’s company name, Tencent Holdings Limited. Given the volume of continuous business done by the Complainant under that name for more than a decade, the Panel believes that the Complainant has likely established common law trademark rights in said company name. However, the Panel will not proceed with analysis to determine the validity of such common law rights, because the Panel also believes that all of the disputed domain names are confusingly similar to the Complainant’s established TENCENT trademark. The names add merely the words “holding” or “holdings” to that mark which, as noted, bear direct relevance to the Complainant’s business and only increase the confusing similarity. Moreover, the addition of the generic Top-Level Domains (“gTLDs”) “.com” and “.net” create absolutely no distinction, since such suffixes are required of all domain names. See, Hacı Ömer Sabancı Holding A.Ş v. GZuelfikar, WIPO Case No. D2011-1891 (finding the disputed domain name, <sabanciholding.com>, to be confusingly similar to the SABANCI trademark).

As a result, the Panel finds that the Complainant has satisfied the requirements of Policy paragraph 4(a)(i).

B. Rights or Legitimate Interests

In the Panel’s opinion, the Complainant has made a clear prima facie case that the Respondent has no rights or legitimate interests in the disputed domain names. The Complainant has demonstrated that the names are confusingly similar to its registered TENCENT mark. It has asserted, without contradiction, that it is in no way associated with the Respondent. Also, there is no reason for the Panel to believe that the Respondent, Thinh Phu, has ever been commonly known as any of the disputed domain names. Once the Complainant has sustained a prima facie case, it is incumbent upon the Respondent to come forward with evidence to establish its rights or legitimate interests in the disputed domain names. See, Accor v. Eren Atesmen, WIPO Case No. D2009-0701 (“A complainant must show a prima facie case that a respondent lacks rights or legitimate interests in a disputed domain name, after which the burden of rebuttal passes to the respondent.”); and Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455 (“The Panel notes that Complainant bears the ‘general burden of proof’ under paragraph 4(a)(ii) of the Policy, which burden shifts to the Respondent once Complainant makes a prima facie showing that the Respondent lacks rights or legitimate interests.”).

The Respondent has failed to file a Response, so the Panel will accept as true all of the Complainant’s reasonable contentions, as the Panel attempts to ascertain from the record if there is any possible support for a rebuttal to the aforesaid prima facie case. See The Vanguard Group, Inc. v. Lorna Kang, WIPO Case No. D2002-1064 (“…the Panel’s decision is based upon the Complainant’s assertions and evidence and inferences drawn from the Respondent’s failure to reply.”).

The Complainant asserts that two of the disputed domain names, <tencentholdings.com> and <tencentholdings.net>, are connected to websites that offer pornographic material while <tencentholding.com> and <tencentholding.net> are dormant. Numerous previous UDRP panels have found that a disputed domain name containing a well-established trademark which simply resolves to a pornographic website fails to constitute a bona fide offering of goods or services per paragraph 4(c)(i) of the Policy or a legitimate noncommercial or fair use of that name per paragraph 4(c)(iii) of the Policy. See, Jafra Cosmetics, S.A. de C.V. and Jafra Cosmetics International, S.A. de C.V. v. ActiveVector, WIPO Case No. D2005–0250 (“Respondent is profiting by redirecting Internet users seeking Complainant Jafra’s website to a pornographic site, which conduct is not to be regarded as a bona fide offering of goods and services or a legitimate commercial use of a domain name within the meaning of Policy, paragraphs 4(c)(i) and (iii) pursuant to prevailing interpretations on the subject.”). The Panel finds these precedents are applicable to the present case. Moreover, the Respondent’s non-use of the remaining two disputed domain names renders said Policy paragraphs inapplicable to those names as well. Also, as noted above, paragraph 4(c)(ii) is not applicable in support of the Respondent’s position because his name bears no resemblance to the disputed domain names. In sum, the Panel concludes that the Complainant’s prima facie case remains intact and in control.

As a result, the Panel finds that the Complainant has satisfied the requirements of Policy paragraph 4(a)(ii).

C. Registered and Used in Bad Faith

As noted previously, the Panel accepts the Complainant’s assertion that two of the disputed domain names resolve to a pornographic website. The Panel also agrees with the Complainant’s contention that the remaining disputed domain names are likely to be used by the Respondent for the same (commercial) purpose. Obviously, the Respondent intends to receive commercial gain from this use, as it expects Internet users, attracted by the Complainant’s trademark, to access the disputed domain names and thus the pornographic website owned by a third party, who most likely pays a fee to the Respondent for generating such traffic. The Panel finds that this action constitutes bad faith registration and use of the disputed domain names per the circumstance listed in Policy paragraph 4(b)(iv). See, Société AIR FRANCE v. Angelika Freitag, Angelika Freitag Company, WIPO Case No. D2008-1219 (“The Panel finds that the Respondent has registered and used each of the five Domain Names in bad faith under Paragraph 4(b)(iv) of the Policy, as the evidence shows that the Respondent registered the Domain Names and used them to attract Internet users to the Respondent's pornographic website for commercial gain, by creating a likelihood of confusion with the Complainant's trademark.”); and Six Continents Hotels, Inc. v. credoNIC.com / DOMAIN FOR SALE, WIPO Case No. D2004-0987 (“…this Panel believes that using the disputed domain names to direct traffic to pornographic websites constitutes bad faith (regarding registration and use) in and of itself in that Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s websites by creating a likelihood of confusion with Complainant’s marks as to the source, sponsorship, or endorsement of the website.”).

Also, the Panel believes that the Respondent’s actions evidence bad faith per Policy paragraph 4(b)(i) because, as reasonably contended by the Complainant, the Respondent put up three of the disputed domain names for sale at either USD 1,500 or EUR 1,688. Both amounts are clearly above the Respondent’s out-of-pocket costs associated with registration and maintenance of the disputed domain names. See, Six Continents Hotels, Inc. v. CredoNIC.com / Domain For Sale, WIPO Case No. D2005-0755 (“Further, that Respondent’s domain name is for sale for $500 as stated on the credoNIC.com website…is, in itself, sufficient grounds to find bad faith.”).

As a result, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(iii) 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, <tencentholding.com>, <tencentholding.net>, <tencentholdings.com> and <tencentholdings.net>, be transferred to the Complainant.

Dennis A. Foster
Sole Panelist
Date: April 2, 2014

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