WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Sang Som Company Limited v. Roongroj Tochanchai
Case No. D2017-1958
1. The Parties
The Complainant is Sang Som Company Limited of Bangkok, Thailand represented by Hiranrat Chakartnarodom, Thailand.
The Respondent is Roongroj Tochanchai of Bangkok, Thailand.
2. The Domain Name and Registrar
The disputed domain name <sangsom.com> (the "Domain Name") is registered with Domain.com, LLC (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on October 9, 2017. On October 9, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On October 9, 2017, 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on October 11, 2017. In accordance with the Rules, paragraph 5, the due date for Response was October 31, 2017. The informal Responses were filed with the Center on October 11 and November 1, 2017.
The Center transmitted an email in English to the Parties regarding the language of the proceeding on November 2, 2017. The Respondent submitted a response on November 3, 2017 to request 30 days of extension date of submission. No further submission was received from the Respondent.
The Center appointed Karen Fong as the sole panelist in this matter on November 14, 2017. 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
The Complainant is a leading alcoholic beverages company established in Thailand in 1975. It is the producer of a well-known Thai rum bearing the trade mark SANGSOM. The word SANGSOM is an invented word derived from a combination of two Thai words, "sang" which means "light" and "som" which is an old Thai word, not commonly used which means "moon". The combined words mean "moonlight". SANGSOM rum was introduced in Thailand in 1977. The company was awarded Gold Medal awards for taste in competitions held in Madrid and Dusseldorf. The SANGSOM rum is sold throughout Thailand and is very well known in the market. Although it is also sold in other countries round the world, that accounts for a very small portion of its annual sales.
The trade mark SANGSOM was first registered in Thailand in 1998. The trade mark is registered as part of a label as well as in stylized script in Thailand and many other territories (the "Trade Mark"). The Complainant operates its website at "www.thesangsom.com."
The Complainant became aware of the Domain Name when it wanted to register the same for itself. It was registered by the Respondent, an individual resident in Bangkok, Thailand on April 12, 2004. The Domain Name was inactive as at the time of the filing of the Complaint. It is now an active website in English and Thai featuring photographs of Thailand and appears to be promoting restaurants and other tourist locations.
When the Respondent was approached by the Complainant to transfer the Domain Name prior to the filing of the Complaint, the Respondent responded on March 27, 2017 offering to sell the Domain Name for THB 2 million approximately USD 58,000. The offer included a free advertising banner for 12 months on Thai football websites.
5. Parties' Contentions
The Complainant contends that the Domain Name is identical to the Trade Mark, the Respondent has no rights or legitimate interests with respect to the Domain Name, and that the Domain Name was registered and used in bad faith. The Complainant requests transfer of the Domain Name.
The Respondent did not formally reply to the Complainant's contentions. Two emails were sent to the Center on October 11, 2017 asking what was happening to the Domain Name and providing information about it. On November 1, 2017, an email was sent to the Center saying that he does not speak or write English and requesting that communication be in Thai. On November 3, 2017, an email was sent requesting a 30 day extension to file a Response. All these emails were in English.
6. Discussion and Findings
According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the Domain Name, the Complainant must prove each of the following, namely that:
(i) The 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 the Domain Name; and
(iii) The Domain Name was registered and is being used in bad faith.
6.2. Language of the Proceeding and Delay in Filing Response
The Rules, paragraph 11, provide that unless otherwise agreed by the parties or specified otherwise in the registration agreement between the respondent and the registrar in relation to the disputed domain name, the language of the proceeding shall be the language of the registration agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding. According to the information received from the Registrar, the language of the Registration Agreement for the Domain Name is English.
The Respondent claims not to be able to speak or write English. He did not say that he wanted to file a Response in Thai or for the language of the proceeding to be Thai. At no time did he contact the Complainant to agree for the proceeding to be conducted in Thai. He requested an extension of time of 30 days from November 3, 2017 when the deadline to file the Response was October 31, 2017. The Respondent did not say why he required 30 days to file the Response. If he had taken steps on the day he was notified of the proceeding on October 11, 2017, he would have been able to file a response before the appointment of the Panel. There has been no other response since his email to the Center of November 3, not even a response in Thai. The Respondent already had some knowledge of the Complaint prior to its filing as there was correspondence between him and the Complainant some time in March 2017 in Thai. The Complainant only submitted in evidence the Respondent's response but not its own letter setting out the matter. Nevertheless, the Respondent would have been aware that the owners of the Trade Mark which comprise the Domain Name want the return of the Domain Name.
In exercising its discretion to use a language other than that of the Registration Agreement or allowing an extension of time, the Panel has to exercise such discretion judicially in the spirit of fairness and justice to both parties, taking into account all relevant circumstances of the case, including matters such as the parties' ability to understand and use the proposed language, time and costs.
The Respondent has had more than enough time to file a response either in English or Thai prior to appointment of the Panel. The setting up of a website after the Complaint was filed may be to construct a case to defend the allegations made by the Complainant. Panel is also mindful of the need to ensure the proceeding is conducted in a timely and cost effective manner. The Panel determines that the request for an extension of time is unreasonable and therefore refuses to grant the extension. The Panel is also rather skeptical about the Respondent's inability to write and speak English since the written communications to the Center have been in English, parts of the website connected to the Domain Name is in English and the Domain Name itself is in Latin characters. The language of proceeding should remain English.
6.3 Substantive Analysis
A. Identical or Confusingly Similar
The Panel is satisfied that the Complainant has established that it has rights to the Trade Mark.
The threshold test for confusing similarity involves the comparison between the trade mark and the domain name itself to establish if the domain name is identical or confusingly similar to Complainant's trade mark. The trade mark would generally have to be recognizable within the domain name. In this case the Domain Name integrates the Trade Mark in its entirety. For the purposes of assessing identity and confusing similarity under paragraph 4(a)(i) of the Policy, it is permissible for the Panel to ignore the gTLD.
The Panel finds that the Domain Name is identical to a trade mark in which the Complainant has rights and that the requirements of paragraph 4(a)(i) of the Policy therefore are fulfilled.
B. Rights or Legitimate Interests
Pursuant to paragraph 4(c) of the Policy, a respondent may establish rights to or legitimate interests in the disputed domain name by demonstrating any of the following:
(i) before any notice to it of the dispute, the respondent's use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) the respondent has been commonly known by the domain name, even if it has acquired no trademark or service mark rights; or
(iii) the respondent is making a legitimate non-commercial or fair use of the domain name, without intent for commercial gain, to misleadingly divert consumers, or to tarnish the trademark or service mark at issue.
Although the Policy addresses ways in which a respondent may demonstrate rights or legitimate interests in a disputed domain name, it is well established that, as it is put in section 2.1 of WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0"), that a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, the burden of production shifts to the respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name. If the respondent does come forward with some allegations of evidence of relevant right or legitimate interest, the panel weighs all the evidence, with the burden of production always remaining on the complainant.
The Complainant alleges that the Respondent is not commonly known by the Domain Name. The Complainant has no commercial link with the Respondent. It has not granted the Respondent any authorization, licence or any right whatsoever to use the Trade Mark as part of the Domain Name. Nor is the Respondent an authorised dealer, licensee or distributor of the Complainant.
The Panel finds that the Complainant has made out a prima facie case, a case calling for an answer from the Respondent. The Respondent has not responded and the Panel is unable to conceive of any basis upon which the Respondent could sensibly be said to have any rights or legitimate interests in respect of the Domain Name.
The Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name.
C. Registered and Used in Bad Faith
To succeed under the Policy, a complainant must show that the domain name has been both registered and used in bad faith. It is a double requirement.
The Panel is satisfied that the Respondent must have been aware of the Complainant's trademark when it registered the Domain Name. It is implausible that he was unaware of the Complainant when he registered the Domain Name given the fame of the Complainant's Trade Mark and product in Thailand. The Trade Mark comprises an invented word with no other dictionary significance. A search for SANGSOM on Google reveals only references to the Complainant's rum. The WIPO Overview 3.0, section 3.2.2 states as follows:
"Noting the near instantaneous and global reach of the Internet and search engines, and particularly in circumstances where the complainant's mark is widely known (including in its sector) or highly specific and a respondent cannot credibly claim to have been unaware of the mark (particularly in the case of domainers), panels have been prepared to infer that the respondent knew, or have found that the respondent should have known, that its registration would be identical or confusingly similar to a complainant's mark. Further factors including the nature of the domain name, the chosen top-level domain, any use of the domain name, or any respondent pattern, may obviate a respondent's claim not to have been aware of the complainant's mark."
Given that the Respondent is an individual living in Thailand, it is clearly inconceivable that the Domain Name was selected by the Respondent without the Complainant in mind. As outlined under the second element above, the clear absence of rights or legitimate interests coupled with no credible explanation for the Respondent's choice of the Domain Name is also a significant factor to consider (as stated in section 3.1.1 of WIPO Overview 3.0). The Domain Name fall into the category stated above and the Panel finds that registration is in bad faith.
The Panel also concludes that the actual use of the Domain Name is also in bad faith.
The Domain Name is also used in bad faith. The Domain Name was inactive until after the commencement of the proceeding. When the Complainant approached the Respondent to transfer the Domain Name, the Respondent offered to sell the same for THB 2 million approximately USD 58,000. He also says in his response that he was also the domain name holder of "beng" and "aconotic" which have already been "sold". A search on Google reveals that BENQ appears to be a Thai computer manufacturer and ACONOTIC a Thai branded television set. The Respondent does not appear to be connected to any of these Thai companies and their products. In the Panel's view these are circumstances that indicate that the Respondent registered the Domain Name primarily for the purpose of selling, renting, or otherwise transferring the Domain Name to the Complainant for valuable consideration in excess of his out of pocket directly related to the Domain Name which amounts to bad faith under paragraph 4(b)(i) of the Policy.
The Panel determines that the Domain Name is also used in bad faith.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name, <sangsom.com> be transferred to the Complainant.
Date: November 21, 2017