The long-running dispute between Beijing Jiangzhi and LI in relation to the domain name, weixin.com continues. We provide an update on the latest chapter.
According to news released by the Beijing Haidian People's Court, Jiangzhi Network Technology Co. Limited (Beijing Jiangzhi) and Mr LI Ming (LI) have filed a civil action against the owners of WeChat, Tencent, in relation to the domain name, weixin.com.
Beijing Jiangzhi and LI are seeking declarations from Beijing Haidian People's Court that they are not infringing Tencent's rights by using weixin.com and that they may use it going forward. The case has been accepted and will be heard by the Beijing Haidian People's Court. This is the latest chapter in a long-running dispute between the parties.
Background
Tencent launched an instant messaging app called "Weixin" in 2011 and registered it as a trade mark in Chinese characters with its logo. It changed its English name from "Weixin" to "WeChat" in April 2012 and Tencent later launched the WeChat Chinese webpage, next.qq.com. In the same year the WeChat Chinese webpage was changed to wexin.qq.com (wechat.com for English web users). WeChat has enjoyed widespread recognition in China and abroad and in 2015 active monthly WeChat users numbered 697 million.
LI, a shareholder of Beijing Jiangzhi, established the website "9Miao Community" which provides a series of open source services such as web forums to WeChat developers. Tencent did not object to the existence of this website and in July 2015 Tencent and LI even jointly held a conference for online game developers. The "9Miao Community" website was later purchased by a company, one of whose shareholders is a Shenzhen investment company controlled by Tencent. The parties were therefore known to each other before the dispute arose.
weixin.com was registered by a third party on 21 November 2000, more than a decade before WeChat became well known to the public and in advance of the registration by Tencent (in both Chinese characters and English) of the trade marks "Weixin" and "Wechat". weixin.com has been subject to various assignments and was most recently purchased for an eight figure RMB sum by LI in April 2015.
weixin.com clearly stated that it was "non-official" and that "this website is not related to the Tencent WeChat and it is not the official website of Tencent WeChat." However, on 1 December 2015 Tencent filed a complaint regarding LI's use of weixin.com with the Asian Domain Name Dispute Resolution Centre ("ADNDRC").
The arbitration decision and reasons
Tencent was successful in its action and LI was ordered to transfer wexin.com to Tencent under the grounds contained in Article 4(a) of ICANN's Uniform Domain Name Dispute Resolution Policy, namely that:
- weixin.com is the same or extremely similar to the earlier WeChat trade marks owned by Tencent, being "Weixin" which is registered in both Chinese characters and Pinyin, which is likely to cause confusion;
- weixin.com is the same or extremely similar to the earlier WeChat trade marks owned by Tencent, being "Weixin" which is registered in both Chinese characters and Pinyin, which is likely to cause confusion;
- weixin.com has been registered and is being used in bad faith.
Article 1.4 of the World Intellectual Property Organisation (WIPO) Overview explains that "registration of a domain name before a complainant acquires trade mark rights in a name does not prevent a finding of identicalness or confusing similarity". The panel considered Article 1.4 when deciding that confusion did exist (see ground i above) despite the fact that weixin.com was registered before Tencent's trade marks for WeChat were registered.
The panel also pointed out that according to Article 3.7 of the WIPO Overview the transfer of a domain name to a third party "does amount to a new registration, requiring the issue of bad faith registration to be determined at the time the current registrant took possession of the domain name". Therefore, just because a domain name is originally registered in good faith, this does not prevent successors in title to the domain name from being scrutinised for potentially acting in bad faith.
weixin.com's assignment to Beijing Jiangzhi and LI was therefore deemed as a new registration at the date of the assignment, which was in April 2015. This assignment postdates Tencent's trade mark registrations, as well as WeChat's inception and rise in popularity. The panel concluded that at the time of the assignment, Beijing Jiangzhi and LI should have been aware that weixin.com would damage Tencent's rights associated with the WeChat trade marks and reputation and so concluded that weixin.com was registered (in the context that an assignment counts as a new registration) in bad faith and was subsequently being used in bad faith.
It is noteworthy that this was not, however, the unanimous view of the ADNDRC panel. One of the three panel members believed Tencent's claims should have been dismissed.
Case development
Beijing Jiangzhi and LI have now started a civil action against Tencent with the Beijing Haidian People's Court, seeking declarations that:
- Beijing Jiangzhi and LI did not register or use weixin.com in bad faith;
- they did not infringe Tencent's trade marks; and
- they can continue to use weixin.com.
What next?
It will be interesting to see what decision the Beijing Haidian People's Court reaches and any comments they have on whether the assignment of a domain name constitutes a new registration for determining bad faith and confusion with another's rights. Depending upon the decision, domain names originally registered in good faith could, in certain circumstances, find themselves vulnerable in the face of rights and reputations that have been registered or developed after their domain name was registered.