WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Tencent Technology (Shenzhen) Co.Ltd v. Super Privacy Service c/o Dynadot
Case No. D2018-0391
1. The Parties
The Complainant is Tencent Technology (Shenzhen) Co.Ltd. of Shenzhen, China, represented by Rechtsanwälte Bettinger Scheffelt Kobiako von Gamm, Germany.
The Respondent is Super Privacy Service c/o Dynadot of China and Super Privacy Service c/o Dynadot of San Mateo, California, United States of America (“United States”).
2. The Domain Names and Registrar
The disputed domain names <qckoud.com>, <qcliud.com>, <qclloud.com>, <qclod.com>, <qcloid.com>, <qclooud.com>, <qclou.com>, <qclous.com>, <qclpud.com>, <qclud.com>, <qcolud.com>, <qcoud.com>, <qcould.com>, <qlcoud.com> and <wwwqcloud.com> are registered with Dynadot, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 21, 2018. On February 21, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On February 22, 2018, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing additional 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on March 6, 2018. In accordance with the Rules, paragraph 5, the due date for Response was March 26, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 27, 2018.
The Center appointed Warwick A. Rothnie as the sole panelist in this matter on April 24, 2018. 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
According to the Complaint, the Complainant is one of the largest Internet and technology companies in the world providing (either itself or through its subsidiaries) services including social networking, music, web portals, ecommerce, mobile games, payment systems, smartphones, and multiplayer online games. Services which it provides include the WeChat mobile chat service, the Tencent QQ instant messenger service and a web portal, “www.qq.com”.
Over the years, the Complainant1 has developed a strategy of providing a wide range of services under trademarks using “Q” plus some descriptive or other associative term.
For example, the Complainant has registered a stylized version of the letter Q as a trademark in China in International Classes 9, 35 and 38 (Trademark Nos 1915551, 1962829 and 1968962), all of which were applied for on August 31, 2001, and registered on December 7, 2002, February 28, 2003, and March 14, 2003.
In 2005 the Complainant launched a social networking site “Qzone” from <qzone.com> and <qzone.qq.com>. This service allowed users to write blogs, keep diaries, send photos, listen to music and watch videos. By November 2013, there were some 623 million users of the Complainant’s “Qzone”. The Complainant has six registered trademarks in China for QZONE. These trademarks are registered in International Classes 9, 35, 38, 40, 41 and 42 (Trademark Nos 6063264, 6063268 and 6062986). They were all applied for on May 21, 2007, and were registered on March 7, 2011, January 21, 2010, and May 28, 2010.
The Complaint also includes evidence that in May 2005 the Complainant registered trademarks in China for:
- Q SHOP in International Classes 35, 41 and 42;
- QPLAY in International Class 38.
In 2010, the Complainant launched “cloud” services which have been provided via <qcloud.com> which redirected to <qcloud.qq.com> and subsequently <cloud.tencent.com> since 2012.
On March 14, 2011, the Complainant registered QROBOT in China for goods in International Classes 9 and 28 (Trademark Nos 9207719 and 9207761). Since 2011, the Complainant has used QROBOT for a smart home hardware product and website which displays time, weather forecasts, news and can play music.
on August 28, 2012 and March 7, 2014, the Complainant obtained registrations for Q+ in International Class 9 (Trademark Nos 9553855 and 9680180) and, subsequently, in International Class 41 on April 28, 2014 (Trademark No. 11755638).
The Complaint includes evidence of the use and registration of other Q “plus” trademarks after 2011. Amongst others, these include Trademark Nos 17948077, 17948157 and 17948688; each for QCLOUD in, respectively, International Classes 9, 35 and 42. The application for each trademark was made in China on September 21, 2015, with the first one proceeding to registration on November 11, 2016.
The first five disputed domain names were registered on November 30, 2011.
The sixth and seventh disputed domain names were registered on, respectively, April 3 and December 21, 2013. All the other disputed domain names were registered on May 29, 2016.
When the Complaint was filed, all of the disputed domain names redirected to a webpage at “www.cn.aliyun.com/notfound”.
The Complainant says that “Aliyun” is a subsidiary of “Alibaba”. Pages on the website at <aliyun.com> identify the website as the website of “Alibaba Cloud”. Other pages on the website identify “Alibaba Cloud” as the cloud computing arm and business unit of Alibaba Group. Alibaba Group Holding Limited is the parent company of another Chinese multinational ecommerce, retail, Internet and technology conglomerate. It has been listed on the New York Stock Exchange since 2014.
5. Discussion and Findings
No response has been filed. The Complaint has been sent, however, to the Respondent at the physical and electronic coordinates specified in the WhoIs record (and confirmed as correct by the Registrar) in accordance with paragraph 2(a) of the Rules.
The Registrar has also confirmed that the language of the registration agreement of each disputed domain name is English. Under paragraph 11 of the Rules, therefore, the language of the proceeding is English.
Accordingly, the Panel finds that the Complaint has been properly served on the Respondent.
When a respondent has defaulted, paragraph 14(a) of the Rules requires the Panel to proceed to a decision on the Complaint in the absence of exceptional circumstances. Accordingly, paragraph 15(a) of the Rules requires the Panel to decide the dispute on the basis of the statements and documents that have been submitted and any rules and principles of law deemed applicable.
Accordingly, paragraph 4(a) of the Policy provides that, to divest the Respondent of the disputed domain names, the Complainant must demonstrate for each of the disputed domain names each of the following:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of that disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The first element that the Complainant must establish is that each disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.
There are two parts to this inquiry: the Complainant must demonstrate that it has rights in a trademark and, if so, the disputed domain names must be shown to be identical or confusingly similar to the trademark.
The Complainant has proven ownership of the registered trademarks referred to in section 4 above. These include the registrations for QCLOUD.
The second stage of this inquiry requires a visual and aural comparison of each disputed domain name to the proven trademarks. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.7. In making this comparison, it is permissible to disregard the generic Top-Level Domain (“gTLD”) included in the domain name as a functional requirement of the domain name system. Further, questions such as the scope of the trademark rights, the geographical location of the respective parties and other considerations that may be relevant to an assessment of infringement under trademark law are not relevant at this stage. Such matters, if relevant, may fall for consideration under the other elements of the Policy.
Disregarding the gTLD “.com”, all but one of the disputed domain names is obviously a misspelling of the Complainant’s trademark, QCLOUD. It has long been settled that these types of misspelling satisfy the requirement of confusing similarity as the Complainant’s trademark remains essentially recognizable within the disputed domain name. WIPO Overview 3.0, section 1.9.
The “exception” to this is the fourth disputed domain name, <wwwqcloud.com>. That, however, merely omits the “period” between the functional signifier for a World Wide Web address and the Complainant’s trademark. The Complainant’s trademark is clearly recognizable in the disputed domain name. Moreover, the functional “www” component should be disregarded for the same reasons as it is permissible to disregard the gTLD component.
Accordingly, the Panel finds that each disputed domain name is confusingly similar to the Complainant’s trademark.
B. Rights or Legitimate Interests
The second requirement the Complainant must prove is that the Respondent has no rights or legitimate interests in the disputed domain names.
Paragraph 4(c) of the Policy provides that the following circumstances may be situations in which 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 [disputed] domain name or a name corresponding to the [disputed] 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 [disputed] domain name, even if [the Respondent] has acquired no trademark or service mark rights; or
(iii) [the Respondent] 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.
These are illustrative only and are not an exhaustive listing of the situations in which a respondent can show rights or legitimate interests in a domain name.
The onus of proving this requirement, like each element, falls on the complainant. UDRP panels have recognized the difficulties inherent in proving a negative, however, especially in circumstances where much of the relevant information is in, or likely to be in, the possession of the respondent. Accordingly, it is usually sufficient for a complainant to raise a prima facie case against the respondent under this head, and an evidential burden will shift to the respondent to rebut that prima facie case. See, e.g., section 2.1 of the WIPO Overview 3.0.
The disputed domain names are not derived from either the Respondent’s name or the name of “Aliyun” or “Alibaba”. The Complainant also states that it has not licensed or authorized the Respondent, or either of “Aliyun” or “Alibaba”, to use its trademark in any domain name and, according to the Complainant, the Respondent is not associated with it or its business in any way. On the contrary, the Complainant states that “Alibaba” is one of the Complainant’s direct competitors in the cloud services market.
Subject to the question of timing, therefore, the Complainant has shown a clear prima facie case that the Respondent does not have rights or legitimate interests in the disputed domain names.
The first seven disputed domain name were registered before the Complainant registered its QCLOUD trademark.
Typically, a complainant will be unable to establish that a respondent has no rights or legitimate interests in a domain name where the complainant’s trademark rights have not accrued before the domain name was registered. WIPO Overview 3.0, section 3.8.1 (in the context of registration and use in bad faith). Panels have recognized an exception to that rule, however, where the evidence shows that the respondent has sought unfairly to capitalize on the complainant’s nascent or inchoate rights. WIPO Overview 3.0, section 3.8.2.
The sixth and seventh disputed domain names were registered after 2012 when the Complainant has been able to provide evidence that it had commenced using “Qcloud”. By themselves, the Panel would find they fall within the principle underlying the exception indicated in section 3.8.2 of WIPO Overview 3.0.
The first five disputed domain names were registered before the Complainant’s direct evidence of use of the “qcloud” sign in 2012. The Panel considers, however, that the principle underlying the exception identified in section 3.8.2 of WIPO Overview 3.0 also applies in the circumstances of this case.
In ExecuJet Holdings Ltd. v. Air Alpha America, Inc., WIPO Case No. D2002-0669, the Panel explained:
“This finding does not necessarily dispose of the matter. For the purposes of the Policy, a domain name registration can have been undertaken in bad faith even if the trade marks rights at which such bad faith was directed arose after the registration of the domain name. This might be the case where a registrant speculated on an impending merger between companies that would create a new name combining in whole or in part the names of the merger partners. Another example concerns the situation where a registrant based its registration of the domain name on its insider knowledge of the intentions of a (former) business partner or employer in relation to the latter’s development of a new trademark. From the intent of the Policy, it is clearly irrelevant whether a registrant intended to abuse an existing trademark right or one which that registrant specifically knew would arise”. (emphasis added)
Subsequently, a three-member Panel (of which the present Panel was a member) applied the exception in Pacific-10 Conference v. Kevin Lee, WIPO Case No. D2011-0200. There a 10 member “conference” of American College football teams, the PAC-10, was considering an expansion of the competition. It had not decided whether to expand or, if so, how many teams would be added. The respondent registered the domain name PAC-12 in the hope that the conference would decide to expand to 12 teams. Ultimately, that is what happened but, at the time, that was unclear. Similar situations have arisen where respondents have registered possible names for venues of future Olympics or football cups before the governing body has announced the decided venue.
Given the Complainant’s history of “Q” names and the pattern of registering “Q” with dictionary terms such as “zone”, “shop” and others, it was at least reasonably foreseeable that the Complainant would be likely to seek to adopt “qcloud” in connection with its “cloud” offering too. The purely speculative nature of the registration of the disputed domain names in anticipation of the Complainant’s move is heightened by the nature of the 15 disputed domain names as misspellings of the name the Complainant did in fact adopt. Those typosquatting names had, and have, no connection with the types of services being offered apart from their resemblance to the Complainant’s family of “Q” marks and its pattern of adopting “Q” plus a dictionary term such as “cloud” to describe its “cloud” service.
The Respondent has not come forward to attempt to explain its conduct or to rebut the inference that it was trying to take advantage of the Complainant’s naming policy and misleadingly divert potential customers from the Complainant’s service.
Accordingly, the Panel finds that the Complainant has established the Respondent does not have rights or legitimate interests in any of the disputed domain names.
C. Registered and Used in Bad Faith
Under the third requirement of the Policy, the Complainant must establish that each of the disputed domain names has been both registered and used in bad faith by the Respondent. These are conjunctive requirements; both must be satisfied for a successful complaint: see, e.g., Burn World-Wide, Ltd. d/b/a BGT Partners v. Banta Global Turnkey Ltd, WIPO Case No. D2010-0470.
Generally, a finding that a domain name has been registered and is being used in bad faith requires an inference to be drawn that the respondent in question has registered and is using the disputed domain name to take advantage of its significance as a trademark owned by (usually) the complainant.
Given the use of the disputed domain names to redirect to the website of one of the Complainant’s direct competitors and the discussion in section 5B above, the Panel finds that the disputed domain names were each registered and are being used in bad faith under the Policy.
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, <qckoud.com>, <qcliud.com>, <qclloud.com>, <qclod.com>, <qcloid.com>, <qclooud.com>, <qclou.com>, <qclous.com>, <qclpud.com>, <qclud.com>, <qcolud.com>, <qcoud.com>, <qcould.com>, <qlcoud.com> and <wwwqcloud.com> be transferred to the Complainant.
Warwick A. Rothnie
Date: May 8, 2018
1 Unless the context specifically requires to the contrary, the Panel will refer to the Complainant as referring to the Complainant itself and its associated subsidiaries and other affiliates.