WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
The James H. W. Thompson Foundation and The Thai Silk Company Limited v. Panarach Puangpetch
Case No. D2000-0436
1. The Parties
The Complainants:
The James H.W. Thompson Foundation (the first Complainant)
The Thai Silk Company Limited (the second Complainant)
9 Surawong Road, G.P.O. Box 906, Bangkok 10500,
THAILAND
The Respondent:
Panarach Puangpetch
19 Phaholyothin 21 Rd.,Ladyao, Jatujak,Bangkok 10900,
THAILAND
2. The Domain Names and Registrars
This dispute concerns the Domain Names identified below:
1)
2)
The Registrars with which the Domain Names are registered:
1) Network Solutions, Inc. for
2) Internet Domain Registrars for
3. Procedural History
This Complaint was filed on May 16, 2000 by e-mail and on May 18, 2000 in hard copy against the Respondent with the WIPO Arbitration and Mediation Center (the Center) pursuant to the Uniform Domain Name Dispute Resolution Policy (the Policy) adopted by the Internet Corporation for Assigned Names and Numbers (ICANN) on August 26, 1999 (the Policy), the Rules for Uniform Domain Name Dispute Resolution Policy, approved by ICANN on October 24, 1999 (the Rules), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the Supplemental Rules) on October 24, 1999.
A copy of this Complaint has also been sent to the Registrars, Network Solutions, Inc. and Internet Domain Registrars, with which the Respondent has registered his Domain Names, and respectively, that are identified in the Complaint.
The Respondent sent his Response to WIPO by e-mail on June 17, 2000 and in hard copy on June 21, 2000. On June 27, 2000, the appointment of the sole administrative panel and the projected decision date of July 10, 2000 were notified to the parties.
The WIPO Center received payment from the Complainants and forwarded an official copy of the Complaint to the Respondent.
4. Factual Background
The first Complainant, The James H. W. Thompson Foundation, is a juristic entity established on July 15, 1975 under Thai law and owns "The Jim Thompson's Thai House" or "Jim Thompson House." The trade name "Jim Thompson Thai House" or "Jim Thompson House" belongs to the first Complainant. The House is one of Bangkok's most famous tourist attractions, as listed on the official website of the Tourism Authority of Thailand (TAT) .
The second Complainant, The Thai Silk Company Limited, is a juristic entity established under Thai law on February 1, 1951. Mr. James H. W. Thompson was one of the founders and also one of the directors of the second Complainant. The second Complainant is the owner of the registered trademark "JIM THOMPSON." The mark "JIM THOMPSON" was first registered with the Thai Trademark Office on August 23, 1978 for use with goods in Local Thai Class 31, namely silks. The mark "JIM THOMPSON" was subsequently registered with the Thai Trademark Office for use with goods in Local Thai Class 25 covering handkerchiefs, Local Thai Class 32 covering silk threads and yarn, and Local Thai Class 38 covering neckties.
When the first Complainant attempted to register the name "Jim Thompson House" as a domain name with Network Solutions, Inc., it discovered that the Respondent had already acquired registration of the domain name on August 30, 1999. Upon learning of the registration, the second Complainant immediately contacted the Respondent by telephone to explain the ownership of the trade name "Jim Thompson House" and requested the Respondent to cancel the registration of the domain name amicably. However, no affirmative response was received from the Respondent.
The second Complainant later found by checking with the Whois database that the Respondent not only did not cancel the registration of the domain name , but also registered on December 6, 1999 the domain name with the Internet Domain Registrar.
The Complainants then attempted to settle the dispute by direct communication with the Respondent and by sending a formal letter requesting the Respondent to cancel his domain names twice in March 2000. But they have not received any reply from the Respondent. Their numerous attempts have failed.
5. Parties� Contentions
The Complainants
The Respondent's unauthorized use of the Complainants� trade name and trademarks has infringed upon the Complainants� exclusive rights and caused injury to their trade name and trademarks under the Thai Trademark Act, Civil and Commercial Code, and Penal Code.
The Respondent's unauthorized use constitutes a breach of the Service Agreement of Network Solutions, Inc. and the Registration Agreement of the Internet Domain Registrars and, in accordance with the Policy Paragraph 4(a), the Respondent is required to submit to a mandatory administrative proceeding because the domain names and are identical or confusingly similar to a trademark or trade name in which the Complainants have exclusive rights; the Respondent has no right or legitimate interest in respect of the domain names and ; and the domain names and were registered and are being used in bad faith.
The Respondent
The Respondent denies the Complainants� contentions and asserts that the information given by the Complainants� attorney, Mr. Piyawat Kayasit, was not quite accurate and was deceiving. He states that his family has started and run an exclusive hospitality business for the past twelve years. The business was in recognition of Jim Thompson, his mother�s long time mentor and best friend, a fact known to his customers. The web site under the name "" and "" was planned also in such recognition to implement the Respondent�s interest in becoming a global information center on the art of finest living�bed and breakfast, restaurants, and entertainments. The Respondent also states that he plans for the opening of his web page by January 1, 2001.
6. Discussion and Findings
Jurisdiction
This dispute is properly within the scope of the Uniform Domain Name Dispute Resolution Policy, and this panel has jurisdiction to decide the dispute.
The Policy Requirements
The Policy Paragraph 4(a) provides that the Complainant must prove each of the following:
(i) The domain names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) The Respondent has no right or legitimate interest in respect of the domain names; and
(iii) The domain names have been registered and are being used in bad faith.
The Policy Paragraph 4(b) stipulates four illustrative circumstances which, if proved, constitute evidence of bad faith as required by the Policy Paragraph 4(a)(iii) referred to above.
The Policy Paragraph 4(c) sets out three illustrative circumstances which, if proved, constitute evidence of a right or legitimate interest as described in the Policy Paragraph 4(a)(ii) referred to above.
Identical or Confusingly Similar
The Complainants assert that the domain names and are identical or confusingly similar to their trademark and trade name.
The Respondent denies that the name "jimthompsonhouse" is identical or confusingly similar to the trade name "Jim Thompson House" which the first Complainant failed to register as a domain name with the Network Solutions, Inc.
It is true that the trade name "Jim Thompson House" and the Respondent�s domain name or are not literally the same. But the name "Jim Thompson House" is so well known and popular that it constitutes an essential and equivalent element of the Complainants� trade name or trademark. In light of the limited domain name area, this element makes the name "jimthompsonhouse" and the Complainants� trade name and trademark identical.
This remains unchanged, even if the Complainants once thought that their trade name or trademark was much too long for use on the Internet and hoped to choose a shorter version of the names. This is because even the current long names are considered to be identical to the Respondent�s domain names.
The Respondent also denies that the domain names and are confusingly similar to the trademark "Jim Thompson" or the trade name "Jim Thompson Thai Silk" and "Jim Thompson Museum Foundation" owned by the Complainants. He states that the Respondent�s business is totally different from that of the Complainants� and does not and will not involve production of Thai silk or an operation of a museum. Moreover, all of its marketing plan and trade identities � logo designs, marketing literature, marketing and advertising strategies-- planned and prepared for the web pages indicate no similarity to that of the Complainants.
But it is uncontestable that the domain names and were registered by the Respondent in an attempt to attract Internet users to his web sites or other on-line location, thereby creating a likelihood of confusion as to the source, sponsorship, affiliation, or endorsement of his web sites/location or of a product or service on his web sites/online locations. In this sense, the requisite "confusingly similar" is met. The difference in the Respondent�s business from that of the Complainants, by using domain names identical or similar to that of the trade name or trademark of the Complainants, leads to undeniable confusion to the public.
Right or Legitimate Interest
The Complainants contend that the Respondent has no right or legitimate interest in his registered domain names. They state that that the Respondent is an individual, not an "organization" to qualify for registration and use of ".org" in his domain name, that he has neither developed his web sites under the disputed domain names nor made any good-faith use of the domain names. The domain names at issue are not identified with or related to a legitimate interest of the Respondent.
The Respondent states that his family business is to recognize Jim Thompson, his mother�s long time mentor and best friend and that his domain names "" and "" were registered "in such recognition to accommodate our interest in becoming a global information center the art of finest living�bed and breakfast, restaurants, and entertainments."
Such fact may, however, exist everywhere and anytime, creating and justifying no right or no interest in registering and using domain names identical or confusingly similar to the trade name or trademark of the Complainants.
Bad Faith
The Complainants contend that the Respondent has registered and acquired the domain names and in bad faith. They state that the Respondent was, at the time of registration, aware of the fact that the name Jim Thompson is the trade name of the first Complainant, that he primarily did so for the purpose of selling, renting, or transferring the two domain names to the first Complainant for valuable consideration in excess of the documented out-of-pocket costs directly related to the two domain names, and that by doing so, he intended to prevent the Complainants from reflecting their trade name and trademark in a corresponding domain name.
The Respondent contends that the domain names in dispute were never registered in bad faith. He states that he intends to use them for his commercial purpose and that he has never indicated any intention to sell them. He states also that in June 1999, prior to the registration of the domain names in dispute, he has started preparations for the use of both domain names.
The Respondent�s intention to sell the domain names in dispute is not proved. But at the time of registration, the Respondent knew that the name "Jim Thompson House" is the trade name owned by the first Complainant, but he registered his domain names, as discussed above, identical or confusingly similar to the trade name and the trademark of the Complainants.
These circumstances show the Respondent�s registration and intended use of the domain names was in bad faith.
7. Decision
For all the foregoing reasons, the Policy Paragraph 4(a) requirements are met, namely:
(i) The Respondent�s domain name is identical or confusingly similar to the second Complainant�s trademark and the Respondent�s domain name is identical or confusingly similar to the first Complainant�s trade name;
(ii) The Respondent has no right or legitimate interest in the domain names; and
(iii) The domain names were registered and are being used in bad faith.
In accordance with the Policy Paragraph 4(i), the Panel orders as follows:
The domain name , registered with Network Solutions, Inc. and the domain name , registered with Internet Domain Registrars be transferred to the first Complainant.
Zentaro Kitagawa
Sole Panelist
Dated: July 10, 2000
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