WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
A, Inc. v. A.R. Information & Publication Co. Ltd
Case No. D 2001-1392
1. The Parties
The Complainant is A Inc, a Delaware corporation, 1200 12th Avenue South, Suite 1200, Seattle, Washington 98144-2734, USA.
The Respondent is A.R. Information & Publication Co., Ltd, 99/16-20 Ratchadapisek Road, Din Daeng, Bangkok, 10320, Thailand.
2. The Domain Name and Registrar
The domain in dispute is .
The registrar is DomainPeople, Inc.
3. Procedural History
The Complaint was received by WIPO by email on November 22, 2001, and in hard copy form on November 27, 2002. WIPO has verified that the Complaint satisfies the formal requirements of the ICANN�s Uniform Domain Name Dispute Resolution Policy ("Policy"), the ICANN�s Rules for Uniform Domain Name Dispute Resolution Policy ("Rules") and the WIPO�s Supplemental Rules for Uniform Domain Name Dispute Resolution Policy ("Supplemental Rules") and that payment was properly made. The Administrative Panel ("the Panel") is satisfied that this is the case. The Complaint was properly notified in accordance with the Rules, paragraph 2(a).
Domain People, Inc has confirmed that the domain name ("the Domain Name") was registered through DomainPeople, Inc and that A.R. Information & Publication Co., Ltd is the current registrant. Domain People, Inc has further confirmed that the Policy is applicable to the Domain Name.
On January 24, 2002 WIPO notified the Respondent of the Complaint in the usual manner and informed the Respondent inter alia that the last day for sending its Response to the Complainant and to WIPO was February 13, 2002.
On February 11, 2002 the Complainant sought to put in a correction to the Complaint relating to an error in an exhibit dealing with the Complainant�s Thai trade mark applications. The Panel has not seen the correction. Instead it has ignored the exhibit in reaching its decision.
WIPO issued a Notification of Respondent Default on February 15, 2002. On February 19, 2002 the Response was received by WIPO by email. As will be seen below the Panel has read and considered the Response notwithstanding that it was filed out of time.
The Panel was properly constituted. The undersigned Panelists submitted Statements of Acceptance and Declarations of Impartiality and Independence.
No further submissions were received by WIPO or the Panel, as a consequence of which the date scheduled for the issuance of the Panel�s Decision is April 17, 2002.
4. Factual Background
The Complainant is a world famous US-based online bookseller, which has traded under the name A and via its website at since 1995. It is the proprietor of a large number of trade mark and service mark registrations for Amazon.Com covering inter alia "computerised online ordering service featuring the wholesale and retail distribution of books".
The Respondent is a Thailand-based online bookseller and provider of other goods and services, whose registered name so far as the WHOIS search is concerned is A.R.Information & Publication Co., Ltd. It registered the Domain Name in January 1998 .
5. Parties� Contentions
A. Complainant
The Complainant contends that the Domain Name is confusingly similar to the Complainant�s name and trade mark, incorporating as it does the Complainant�s name and trade mark and the only addition being a geographical indicator. The Complainant observes that there is a strong overlap between the goods and services offered by the Complainant and the goods and services offered by the Respondent. It claims that the Respondent has copied the Complainant�s website layout and that a visitor to the Respondent�s website could easily believe that there is an association between the parties.
It contends that the Respondent has no rights or legitimate interests in respect of the Domain Name. It contends that none of the circumstances set out in paragraph 4(c) of the Policy are applicable. The use of the Domain Name has not been in connection with a bona fide offering of goods and services. From the outset the Respondent must have known of the existence of the Complainant and the design of its website. It copied the Complainant�s name and website design with a view to trading off the Complainant�s goodwill. It is not commonly known by the Domain Name and the Complainant has given the Respondent no authority to use its trade mark.
The Complainant contends that the Respondent registered the Domain Name in bad faith and is using it in bad faith in the sense described in paragraphs 4(b) (iii) and 4(b) (iv) of the Policy i.e. to disrupt the business of a competitor and to divert customers to the Respondent�s website by leading internet users to believe that the Respondent�s website connected to the Domain Name is in some way associated with the Complainant.
The Complainant seeks transfer of the Domain Name to the Complainant.
B. Respondent
The Respondent denies the fame of the Complainant�s trade mark, observing that it is a geographical name and that under the trade mark law of Thailand nobody can monopolise a geographical name. It claims that the Complainant has no exclusive rights to its name and trade mark in Thailand.
The Respondent asserts that the Domain Name is derived from its company name Thaiamazononline, which it registered in 1997. It registered the Domain Name in January 1998 and has traded via that name since then. It contends that most of the Complainant�s claims as to its mark (a) date from after 1998.
The Respondent contends that it is not using its website unfairly to compete with the Complainant. It points out that its website is almost exclusively in the Thai language and offering Thai manufactured and Thai language goods and services to a Thai-speaking clientele, which does not understand English. It has never directly or indirectly claimed any association with the Complainant and has never "indicated any relationship on the internet with a view to mislead customers".
It claims that the Complainant has never offered Thai language goods and services to its clientele and that there is no risk of any confusion. With very rare exceptions none of the Complainant�s customers will be able to understand the Respondent�s website.
The Respondent "has lawful right to use the word �amazon� in Thailand". The Respondent does not directly or indirectly compete with the business of the Complainant. The Complainant has no exclusive right to the name �amazon� under Thai law.
For all the above reasons the Complaint should fail
6. Discussion and Findings
General
According to paragraph 4(a) of the Policy, the Complainant must prove that:
(i) The Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
(ii) The Respondent has no rights or legitimate interest in respect of the Domain Name; and
(iii) The Domain Name has been registered in bad faith and is being used in bad faith.
Identical or confusingly similar
The Complainant has produced substantial evidence to demonstrate that it has registered trade mark rights in the mark Amazon.Com in many countries of the world, albeit not in Thailand. The Domain Name comprises the Complainant�s trade mark and the prefix �Thai�. The prefix is non-distinctive. It is an adjective indicating a geographical location, namely Thailand.
Given the fame of the Complainant and the fact that the parties trade in the same area of business (e.g. online bookselling), the Panel can readily see that the Domain Name might well be regarded by many internet users as a domain name associated with a part of the Complainant�s business devoted to Thai customers.
The Panel finds that the Domain Name is confusingly similar to a trade mark or service mark in which the Complainant has rights.
Respondent�s Rights or Legitimate Interests
Paragraph 4(c) of the Policy sets out a non-exhaustive list of circumstances, any one of which if found by the Panel to have been proved shall demonstrate the Respondent�s rights or legitimate interests in respect of the Domain Names.
However, the need for the Respondent to demonstrate anything only arises once the Complainant has shown a prima facie case, the burden of proof under paragraph 4(a) being on the Complainant.
The essence of the Complainant�s case is that the fame of its name at the date of registration of the Domain Name was such that the Respondent must have been aware of it. The structure of the Respondent�s website so closely resembles that of the Complainant that it cannot have been a coincidence. Accordingly, the Respondent had the Complainant in mind at all material times and has done what it has done with a view to trading on the back of the Complainant�s goodwill, leading consumers to believe that the website to which the Domain Name is connected is associated with the Complainant in some way.
The Panel finds the Complainant�s case persuasive. The Respondent has a case to answer.
How does the Respondent respond? Significantly, the Respondent makes no attempt to deal with the complainant�s allegation that the Respondent copied the design of the Complainant�s website. Moreover, while the Respondent explains that the Domain Name was selected because the Respondent�s company name is Thaiamazononline, it does not begin to explain why it selected Thaiamazononline for its company name. In the view of the Panel those omissions on their own are fatal to the Respondent�s case.
Additionally, the Respondent�s claim that its company name has been Thaiamazononline since 1997 has raised more questions than it has answered. The Response exhibited no documentary support for the claim. The name of the Respondent insofar as the Whois record is concerned is quite different. The Respondent�s website is headed with a stylised version of ��. The website copyright notice features the name �Advanced Research Group Co. Ltd.�. In consequence there is no evidence before the Panel (beyond a bare, unsupported assertion) to support the Respondent�s claim that its company name is �Thaiamazononline�.
Finally, on this topic, the Respondent asserts a right under Thai law to use the name �amazon� on the basis, it seems, that there is no restriction under Thai law on the use of geographical names. Given the Respondent�s claim that Thai people by and large cannot read English and given that the Thai language uses utterly different characters, the Panel is somewhat surprised that �amazon� will be seen as a geographical term in Thailand. In any event, the Panel suspects that that right is limited to a right to use the geographical indication as a geographical indication, not as a trade mark in relation to products and services wholly unconnected with the geographical location in question. More to the point perhaps, the Panel notes that the Respondent does not assert a right under Thai law to use the name �a�, which, while it contains within it a geographical indication, in that form and in the field of activity in question has no geographical significance whatever.
In consequence, the Panel is not persuaded that Thaiamazononline is a name of the Respondent and even if it is a name of the Respondent, the Panel is not satisfied that it was a name selected for any reason other than that it replicates in substance the name of the Complainant, which will have been well known to internet users everywhere including Thai internet users. In those circumstances no subsequent offering of goods and services under the Domain Name in the broad business area of the Complainant can be regarded as bona fide. The Panel can think of no reason why the Respondent could sensibly be said to have rights or legitimate interests in respect of the Domain Name.
Accordingly the Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name.
Registered and Used in Bad Faith
For the same reasons the Panel finds that the overwhelming probability is that the Respondent selected the Domain Name because it is and was at the material time in substance the name of the most famous online trader operating in the Respondent�s field of activity. The Respondent�s intention was to indicate to internet users that its site is the Thai part of the Complainant�s business and/or that the Respondent is the Complainant�s Thai licensee.
The Panel finds that the Respondent registered the Domain Name in bad faith and is using it in bad faith within the meaning of paragraphs 4(a)(iii) and 4(b)(iv) of the Policy.
7. Decision
In light of the foregoing findings namely that the Domain Name is confusingly similar to a trade mark or service mark in which the Complainant has rights and that the Respondent has no rights or legitimate interests in respect of the Domain Name and that the Domain Name was registered in bad faith and is being used in bad faith the Panel directs that the Domain Name be transferred to the Complainant.
Tony Willoughby
Presiding Panelist
M. Scott Donahey, Esq
Panelist
Susanna H.S. Leong
Panelist
Dated: April 10, 2002
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