WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Thaigem Global Marketing Limited v. Sanchai Aree
Case No. D2002-0358
1. The Parties
The Complainant is Thaigem Global Marketing Limited, a company organized and existing under the laws of the Cayman Islands, British West Indies, and having its principal office located at Scotia Center, 4th Floor, P.O. Box 2804, George Town, Grand Cayman, Cayman Islands, British West Indies as well as a contact address at c/o 35/111-115 Moo 7 Trirat Road , T. Chanthanamit, A. Muang, Chanthaburi, 22000, Thailand.
The Respondent is Sanchai Aree, of 9/298 Suvinthawong Road, Kratumrai, Bangkok, 10530, Thailand.
2. The Domain Name and Registrar
The dispute concerns the domain name <thaigem.net> (the said Domain Name) registered with NamesDirect.com of P.O. Box 637, Los Gatos, CA 95031 United States of America.
3. Procedural History
On April 8, 2002, the Complainant submitted a copy of the complaint in hardcopy to the World Intellectual Property Organization Arbitration and Mediation Center (the Center) for a decision in accordance with the Uniform Domain Name Dispute Resolution Policy (the Policy), 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).
On April 18, 2002, the Center sent the Acknowledgment of Receipt of Complaint to the Complainant and copied it to the Complainant's authorized representative and the Respondent. On the same day, the Center requested for an electronic version of the complaint from the Complainant.
On April 19, 2002, the Complainant's authorized representative submitted the required copy of the complaint by e-mail to the Center. On the same day, the Center sent a Request for Registrar Verification to the Registrar.
On April 20, 2002, the Complainant's authorized representative submitted the required four (4) copies of the complaint to the Center by courier since the Complainant had only submitted one (1) hard copy of the complaint on April 8, 2002. The Center received the said four (4) copies on April 24, 2002.
On April 23, 26 and May 7, 2002, the Center sent reminders to the Registrar to reply its request for Registrar Verification.
On May 7, 2002, the Center received confirmation that the Registrar of the said Domain Name was NamesDirect.com and the registrant was the Respondent.
On May 8, 2002, having found that the Complainant had satisfied the formal requirements of the Policy, the Rules and the Supplemental Rules, the Center sent the Notification of Complaint and Commencement of Administrative Proceeding (the Notification) by post/courier (with enclosures) and by e-mail (with the complaint but without attachments) to the Respondent and transmitted by e-mail the complaint (without attachments) to the Complainant's authorized representative. It also extended a copy of the Notification to the Internet Corporation for Assigned Names and Numbers (ICANN) and the Registrar. The said Notification set the formal date of the commencement of this administrative proceeding as May 8, 2002, and required the Respondent to submit a response to the Center within 20 calendar days from the date of receipt of the said Notification, failing which the Respondent would be considered to be in default.
The Respondent failed to file the response with the Center by May 28, 2002. On June 6, 2002, the Center sent the Notification of Respondent Default to the Respondent by post/courier and by e-mail and copied it to the Complainant's authorized representative by e-mail.
As the Complainant had elected to have the dispute decided by a single-member panel (the Panel) in the complaint, on June 18, 2002, the Center appointed Mr. Hariram Jayaram to be the panelist after receiving a Statement of Acceptance and Declaration of Impartiality and Independence from him and sent a Notification of Appointment of Administrative Panel and Projected Decision Date to the Complainant's authorized representative, the Respondent and the Panel by e-mail. On the same day, the Center sent the Transmission of Case File to the Panel.
On June 27, 2002, the Panel, through the Center, made a request for the Complainant to supply documentary evidence to show that the Complainant and Nuntiya Care Stone Co. Ltd are one and the same entity since the trade mark "Thaigem.com" was registered in the name of Nuntiya Care Stone Co. Ltd. The request was conveyed to the Complainant by e-mail. The Complainant was asked to give its reply by June 29, 2002.
On June 28, 2002, the Panel, through the Center, made a further request for the Complainant to supply an English translation of the documents which it had submitted as exhibits earlier.
On the same day, the Center received a reply from the Complainant's authorized representative with documents to show the transfer of intellectual property rights in the "Thaigem.com" trade mark from Nuntiya Care Stone Co. Ltd to Thaigem Holdings Limited and subsequently to the Complainant but the Complainant did not provide the requested English translations.
On June 29, 2002, the Panel, through the Center, directed the Complainant to amend its complaint and file the amended complaint by July 8, 2002. The Respondent was given a week to file his response (if any) to the amended complaint. The deadline for the Panel's decision was extended to July 17, 2002.
The Panel finds that the Center has discharged its obligations and responsibilities under the Rules. The Panel will give its decision based on the amended complaint, the Policy, the Rules and the Supplementary Rules, without the benefit of any response from the Respondent.
4. Factual Background
In its complaint, the Complainant states that it and/or its related companies have been actively involved in the creation and operation of the Thaigem.com trade mark ("the trade mark") for over three years, with the first commercial use of the trade mark taking place on August 18, 1998, and the Thaigem.com website being launched on September 15, 1998. The trade mark is well known both locally and internationally with prominent coverage in the local and international media. The Complainant is recognized as being one of the most successful e-businesses in Asia and the undisputed e-commerce leader in Thailand. Morgan Beard, editor-in-chief of US-based Colored Stone magazine, confirms that the Complainant handles "the lion's share of the online gem trade, in which few other companies have succeeded". It has made a substantial investment in sourcing products, developing the facilities and systems to market, sell and deliver such products and providing a high level of service to its customers. It has created goodwill in the trade mark. It owns the registered trade mark right in the United States and has protection under common law internationally. It also has a United States service-mark application for the registration of the trade mark for retailing of gemstones, jewelry, bead strands, gemstone carvings, arts, antiques, artifacts, handcrafts and statues and a European trade mark application in Class 14 for gemstones, jewelry and gemstone carvings and in Class 35 for retailing of gemstones, jewelry, bead strands, gemstone carvings, arts, antiques, artifacts, handcrafts and statues. The trade mark was originally registered by Nuntiya Care Stone Co. Ltd. The intellectual property rights owned by this company were initially assigned to a holding company in May 2001 during a corporate restructuring exercise needed in preparation for an initial public offering. This restructuring necessitated the forming of a third company to handle the marketing obligations of the holding company, and the intellectual property rights were assigned to the Complainant. Notification of the above has been made to the United States Patent and Trademark Office, and the Complainant is currently awaiting a new certificate to be issued.
As the Respondent has not filed his response, the available facts about him are that he has registered the said Domain Name with the Registrar and his address is 9/298 Suvinthawong Road, Kratumrai, Bangkok, 10530, Thailand.
5. Parties' Contention
The Complainant contends that the said Domain Name, which is confusingly similar to its United States trade mark registration, cannot be used without inferring an affiliation to it. It is concerned that any unauthorized use of the said Domain Name will cause substantial dilution, blurring and/or tarnishing of its goodwill in the trade mark. It feels that it is the only party authorized to use the said Domain Name. The Respondent is not commonly known as Thaigem or Thaigem.net. The said Domain Name registered by the Respondent points to a page maintained by the Registrar for domain parking purposes and is supposedly under construction. The Complainant is not aware of any legitimate fair or non-commercial use of the said Domain Name by another party. It has sent a notice to the Respondent informing him of the alleged trade mark infringement and asking him to transfer the said Domain Name to it. It has offered to pay USD500 to cover direct expenses and time involved in transferring the said Domain Name. The Respondent has chosen to ignore the electronic communication of the offer and the Complainant has received no reply from him. The Complainant has attempted to send the same communication in hardcopy to the Respondent. The courier company engaged by it for this task was unable to locate the Respondent at the address provided by him to the Registrar as contained in the Whois database maintained by the Registrar. The Complainant concludes that the Respondent has deliberately filed incorrect and misleading information with the Registrar for the purpose of confusing the ownership records of the said Domain Name. The failure of the Respondent to reply to the electronic communication has forced it to conclude that:
- the acts and conduct of the Respondent are calculated to or likely to deceive and mislead the trade and public into believing that the said Domain Name is that of the Complainant or is otherwise affiliated or connected with it; or
- the Respondent seeks to pass on the said Domain Name, based on the underlying value of the Complainant’s trade mark, for an amount far in excess of his out-of-pocket expenses.
The Complainant refers to Veuve Clicquot Ponsardin v. The Polygenix Group Co., WIPO Case No. D2000-0163, to support its contention of bad faith. In this case, it has been held that if a domain name is so obviously connected with a complainant and its product, use by anyone else would suggest "opportunistic bad faith."
The Respondent has not filed a Response to enable the Panel to ascertain his contentions.
6. Discussion and Findings
6.1 Effect of Respondents’ default
Paragraph 5 (a) of the Rules requires the Respondent to submit his response to the Center within twenty (20) days of the commencement of the administrative proceeding.
By the Notification, the Center informed the Respondent that the last date for sending his response was May 28, 2002. The Respondent has failed to submit his response. In view of the default it is open to the Panel, under paragraph (14)(b) of the Rules to:
"draw such inferences…as it considers appropriate."
6.2 Elements to be proved
To succeed, the Complainant must establish under paragraph 4(a) of the Policy that
i) the said Domain Name is identical or confusingly similar to a trade mark or service mark in which it has rights;
ii) the Respondent has no rights or legitimate interests in the said Domain Name; and
iii) the said Domain Name has been registered and is being used in bad faith by the Respondent.
6.3 Identical or confusingly similar
The Complainant is a company organized and existing under the laws of the Cayman Islands and has its principal office there. It has also supplied a contact address in Thailand. The Respondent resides in Thailand.
To show that it is the owner of the trade mark "Thaigem.com", the Complainant has produced the Certificate of Registration No. 2,528,741 obtained from the United States Patent and Trade Mark Office on January 8, 2002, for jewelry, precious and semi-precious gemstones, precious and semi-gemstone carvings in Class 14. The registrant as shown in the Certificate is Nuntinya Care Stone Co. Ltd. However, pursuant to a restructuring exercise, the rights and interests in the trade mark are now with the Complainant and the recordal of the assignment is pending before the United States Patent and Trade Mark Office. Taking note of the decision in Hotel Corp. of America v Inn America Inc., 153 U.S.P.Q. 574 (TTAB 1967), the Panel is of the view that although the documents regarding the assignment have not been recorded in the said Office as yet, rights in the mark have been acquired by the Complainant by virtue of the assignment except against a subsequent bona fide purchaser. These rights acquired in the United States are relevant for this administrative proceeding although the Complainant is from the Cayman Islands and the Respondent from Thailand. As indicated by the panel in Bennett Coleman & Co Ltd v Steven S Lalwani, WIPO Case No. D2000-0014 and Bennett Coleman & Co Ltd v Long Distance Telephone Company, WIPO Case No. D2000-0015, "the essence of the Internet is its world wide access". The propriety of a domain name registration may be questioned by comparing it to a trade mark registered in any country.
The Complainant has also produced evidence to show extensive use of the trade mark in Thailand. It has submitted copies of press coverage in the Thai and English languages. The Panel is unable to pay heed to the documents in Thai since the Complainant has not made available the English translations although the language of the Registration Agreement pertaining to the said Domain Name is English. The Panel will ignore the documents in Thai and will merely rely on the documents in English. There are sufficient facts in the English documents to establish that the Complainant has rights in Thailand in the trade mark by virtue of its use there although it has not registered the trade mark in that country.
When a comparison is made between the said Domain Name and the trade mark, the Panel finds that the said Domain Name is confusingly similar to the trade mark "Thaigem.com".
6.4 Respondent's rights or legitimate interests in the said Domain Name
The Complainant asserts that the said Domain Name merely points to a page maintained by the Registrar for domain name parking purposes. The Respondent has not availed himself of his rights to respond to the complaint. The Panel concludes that the Respondent has no evidence to rebut the assertion of the Complainant. The Panel also finds that the Respondent is not commonly known as "Thaigem" or "Thaigem.net". He has no rights or legitimate interests in the said Domain Name.
6.5 Registration and Use in Bad Faith
To support its contention that the registration and use of the said Domain Name is in bad faith, the Complainant says that it tried to contact the Respondent by e-mail with the aim of asking for the said Domain Name to be transferred to it. It had also offered to pay USD500.00 to defray the expenses which might be incurred for the transfer. There was no reply to this e-mail. When the Complainant made an attempt to locate the Respondent at the address he had given to the Registrar, it was not successful. It is open to the Complainant in such circumstances to conclude that the Respondent has filed incorrect information with the Registrar to confuse the ownership records relating to the said Domain Name. The Respondent's failure to reply to its communication has forced the Complainant to conclude that his conduct is calculated to mislead the trade and public into believing that the said Domain Name is connected with the Complainant and that he is seeking to pass on the said Domain Name for an amount far in excess of his out-of-pocket expenses.
Although the documents relating to this administrative proceeding were sent to the e-mail and physical addresses of the Respondent, he has neither acknowledged receipt of them nor filed a response to the complaint to refute the Complainant's statements. The allegations of the Complainant remain unchallenged.
It is not possible for the Panel in the circumstances to make a finding that the Respondent's registration of the said Domain Name or his passive use is bona fide.
The Panel requires that the said Domain Name be transferred to the Complainant.
Dated: July 16, 2002