Two separate WIPO panels upheld the objection of the Internet Giant Sina on two new gTLD applications both against the same applicant Tencent Holdings Limited of Shenzhen, China.
The WIPO panels upheld Sina objection to the new gTLD applications .Weibo & On .微博
“The Panel notes that both Parties accept and claim that “weibo” is the pinyin equivalent (the phonetic transliteration of Chinese characters into the Latin alphabets) of “微博”.
“The Panel finds that the Objector holds the trademark for 微博, which was registered in China on December 28, 2010 (Registration Number 7649615). Under the Chinese Trademark Law, a holder of the registered trademark enjoys the exclusive right to use the mark. Therefore, the Objector’s trademark right over 微博 is the legal basis for the Objector to file the Legal Right Objection.”
Although the Panel does not rule out the possibility that the mark 微博 could be invalidated by the Chinese trademark authorities for losing its distinctiveness, the proceeding of the Legal Right Objection only resolves the conflicts between existing legal rights and the applied-for gTLD strings.
Given this the Panel is of the view that this decision can and should, therefore, proceed on the basis of current legal status of the Objector’s mark.
The Applicant contends that its micro-blogging services are “marked by the brand 微博 or its pinyin equivalent WEIBO.” However, it is apparent from the Applicant’s submissions that the brand or trademark that the Applicant consistently uses for its services is TENCENT 微博 or TENCENT WEIBO, not “微博” or “weibo” per se. Further, the Applicant’s trademark registrations acquired in a number of countries or regions all consist of “Tencent” in combination with “微博” or “weibo”.
Indeed, it is inherent in the Applicant’s claims that the terms“微博” and “weibo” are descriptive of the phenomenon of micro-blogging in China and is shared by many micro-blog service providers, and that the Applicant maintains that the distinguishing feature of its marks is the term “Tencent”, not “微博” or “weibo” alone. Accordingly no trade mark rights subsist in “微博” or “weibo” alone for the Applicant.
“The Panel notes that the Application asserts that <.weibo> will be used as “a distinctive domain space” for the Applicant’s services, rather than a generic and open domain space for any users or any micro-blogging services. In other words, notwithstanding its claims about the descriptive nature of the term, the majority of the Panel concludes that the Applicant appears to plan to use the term in a non- descriptive sense for its own services.”
“Although a new gTLD applicant has the freedom to choose its business model, the Applicant’s plan to use the term “weibo” in the String to promote its own brand Tencent and its micro-blogging services will in the view of the majority of the Panel inevitably impair the distinctive character of the Objector’s mark 微博.”
“Even if the Objector cannot enforce its trademark rights against the descriptive use or other legitimate use of the term “weibo”, the Applicant planned use of the new gTLD, the majority of the Panel are of the view that <.weibo> directly conflicts with the Objector’s trademark registration 微博 (Registration No. 7649615). In particular, the Objector’s mark 微博 is registered on the services, inter alia, data retrieval (for others) in computer files, computer database information enrollment, computer database information classification and computer database information systemization. The Applicant’s planned running for the new <.weibo> name space involves the above-mentioned services.”
“In the circumstances and on balance, the majority of the Panel concludes that this Legal Rights Objection should be sustained.”