Wanavit Manufacturing Co., Ltd v Phan Van Thong

WIPO Case No. D2023-3198

ARBITRATION
AND
MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Wanavit Manufacturing Co., Ltd v. Phan Van Thong

Case No. D2023-3198

1. The Parties

The Complainant is Wanavit Manufacturing Co., Ltd, Thailand, represented by BMVN International LLC,

Viet Nam.

The Respondent is Phan Van Thong, Viet Nam.

2. The Domain Name and Registrar

The disputed domain name <hatarico.com> (the “Domain Name”) is registered with Mat Bao Corporation

(the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 25, 2023.

On July 25, 2023, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On July 26, 2023, 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 the due date for Response was August 22, 2023. The Respondent did not submit any response.

Accordingly, the Center notified the Respondent’s default on August 23, 2023. On August 23, 2023, the

Center received an email from the Respondent.[1]

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The Center appointed Ian Lowe as the sole panelist in this matter on September 4, 2023. 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.

For the reasons set out below, the Panel is prepared to admit in evidence the email from the Respondent dated August 23, 2023 and the attached document.

[1] The Panel notes the email was sent from the email address on the website to which the Domain Name resolves. Thus, it is

4. Factual Background

The Complainant is a company based in Thailand, founded in 1980. It now employs more than 1,200 people and is a leading Thailand manufacturer of electronic fan products. The Complainant group owns the fan manufacturer Hatari Electric Co. Ltd founded in 1990 that claims profits of over USD 4.65 million from the export of HATARI products to Viet Nam in 2021.

The Complainant is the proprietor of a number of trademark registrations around the world in respect of

HATARI, including Malaysian trademark registration No. 96005443 for	, registered on May 23, 1996,
in international class 11.

The Domain Name was registered on September 4, 2020. It resolves to a website at the Domain Name

which prominently features in the header of the home page the following mark (the “Hatari logo”):

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the Complainant’s HATARI trademark, most of the products offered are not the Complainant’s genuine

products. It repeats that the Respondent is not authorized by the Complainant to use the word HATARI with

product names.

B. Respondent

The Respondent did not formally reply to the Complainant’s contentions. However, on the day on which the

Respondent was notified that it was in default by failing to comply with the deadline for filing a response to certificate with registration number 394656, although it is not apparent what mark it relates to.

the Complaint, the Respondent sent an email to the Center stating that the Respondent was not good at
English and had to rely on Google translate and did not understand why there was a domain name dispute.

In order to consider all the circumstances of the case, the Panel has decided to admit the Respondent’s

email and attachment in evidence.

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 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 has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

The Complainant has uncontested rights in the HATARI mark by virtue of the 11 trademark registrations cited in its evidence, and as a result of the goodwill and reputation acquired through its use of the mark for a

number of years. Ignoring the generic Top-Level Domain (“gTLD”) “.com”, the Domain Name comprises the entirety of the mark together with the letters “co”, a common abbreviation for “company”. In the Panel’s view,

the addition of these letters does not prevent a finding of confusing similarity between the Domain Name and
the mark. Accordingly, the Panel finds that the Domain Name is confusingly similar to a mark in which the

Complainant has rights.

B. Rights or Legitimate Interests

Section 4.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition

(WIPO Overview 3.0), notes that “it has been accepted that a Panel may undertake limited factual research

into matters of public record if it would consider such information useful to assessing the case merits and

reaching a decision”. The Panel has undertaken a search of the WIPO Global Brand database which

records that Viet Nam trademark number 4-0394656-000 HATARI in international classes 11 and 35, was

registered on August 3, 2021 in the name of “Công ty cổ phần thiết bị công nghệ Toàn Cầu”, which

according to Google Translate means “Global Technology Equipment Joint Stock Company”.

The WIPO Global Brand database also includes Viet Nam trademark number 4-0024015-000 in international classes 7,8, 9, and 11, in respect of the Hatari logo that was registered on March 31, 1997, and recorded as having a new owner, the Complainant, on June 12, 2006 (or possibly December 6, 2006), but expired on

May 8, 2016.

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Further, the WIPO Global Brand database also includes a pending application (serial number: 4-2021-

36235) by Công ty cổ phần thiết bị công nghệ Toàn Cầu (Global Technology Equipment Joint Stock

Company) to register the Hatari logo. These records on the WIPO Global Brand database in respect of Viet

Nam trademarks also appear on the Intellectual Property Office of Vietnam database at

“wipopublish.ipvietnam.gov.vn”.

The Panel notes that despite having relied on a report generated from the WIPO Global Brand database the

Complainant makes no mention in the Complaint either of the database’s recording the expiry of the Viet

Nam trademark the Complainant claims to be subsisting, or of the Viet Nam registration of the HATARI mark by a third party in 2021.

The website at the Domain Name purports to be operated by CÔNG TY CỔ PHẦN HATARI (Hatari Joint

Stock Company). Although the Complainant makes the bare assertion that a large number of the products offered for sale under the HATARI mark on the website are not the genuine products of the Complainant, it does not provide any detail of this allegation or any support for it.

In the circumstances, the Panel is prepared to accept, on balance, that the Respondent is entitled to rely for the purposes of this Complaint on Viet Nam trademark registration number 394656. The Complainant ought clearly to have been aware of the inconsistency between the database records and the case it was

advancing with the support of a letter from the Viet Nam trademark office, given its reliance on the WIPO

database. This called at the very least for some explanation by the Complainant.

prima facie

The Panel finds that the case established by the Complainant is displaced and that the respect of the Domain Name.

C. Registered and Used in Bad Faith

In light of the Panel’s finding in relation to rights or legitimate interests, the Panel does not need to consider

whether the Respondent registered and is using the Domain Name in bad faith.

There is a glaring inconsistency between the case advanced by the Complainant as to its rights to a Viet
Nam trademark in respect of the mark, supported by a letter from the Intellectual Property Office of Viet Nam,
and the records on the WIPO Global Brand database (echoed in the database promulgated by the

Intellectual Property Office of Viet Nam).

As noted above, the letter from the Viet Nam trademark office indicates that the Complainant’s trademark

number 24015-001 for HATARI in international class 11 has been renewed to May 8, 2026, while the classes 11 and 35. Due to limited information on records, the relationships among the Respondent, the

trademark holder for the Viet Name trademark number 394656 Công ty cổ phần thiết bị công nghệ Toàn Cầu

(Global Technology Equipment Joint Stock Company), and the company displayed on the website CÔNG TY

CỔ PHẦN HATARI (Hatari Joint Stock Company), are not clear. Both Parties claim their rights in the mark

HATARI in international class 11 in Viet Nam, and it appears that wider trademark disputes have been placed before the Panel in the present case. Ultimately, the Panel considers that the issues arising in this proceeding are not well suited to a proceeding under the Policy and should more appropriately be dealt with in Court proceedings.

So far as the Complaint is concerned, the Panel is conscious that its findings rely on a late informal submission filed by the Respondent, albeit supported by a search of the WIPO Global Brand database.

In those circumstances, and in light of the broader trademark issues which cannot be decided under the
Policy, the Panel considers that the Complaint should be dismissed without prejudice.

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7. Decision

For the foregoing reasons, the Complaint is denied, but without prejudice to the matter being refiled should
the Complainant be able to present evidence resolving the inconsistency as to the trademark position in

Viet Nam.

/Ian Lowe/

Ian Lowe

Sole Panelist
Date: September 18, 2023

appropriate to consider that the email was sent by the Respondent.

The website, as auto translated by Google into the English language from Vietnamese, offers for sale a number of electronic products including fans, water purifiers, air purifiers, and a range of other household

electronic products all apparently carrying the HATARI brand. The Contact Info gives the name “CÔNG TY

CỔ PHẦN HATARI” (which may be translated as “Hatari Joint Stock Company”).

5. Parties’ Contentions

A. Complainant

The Complainant contends that the Domain Name is confusingly similar to its HATARI trademark , that the Respondent has no rights or legitimate interests in respect of the Domain Name, and that the Respondent registered and is using the Domain Name in bad faith.

So far as trademark rights are concerned, the Complainant exhibits a WIPO Global Brand Database report

listing 11 registrations of the HATARI trademark owned by the Complainant. These include Lao People’s

Democratic Republic trademark number 4441 for HATARI registered on June 6, 1996, and Malaysia
trademark number 96005443 in respect of the Hatari logo registered on May 24, 1996 in international
class 11. The report does not include a Viet Nam trademark registration. However, the Complainant
separately exhibits a copy of a certificate for Viet Nam trademark number 24015-001 and what purports to be
a letter from the Intellectual Property Office of Viet Nam certifying that trademark number 24015-001 was
amended to record the new owner as the Complainant on November 11, 2016 and that the trademark
registration was renewed on that date to May 8, 2026.

The Complainant states that the Respondent does not have any connection with the Complainant and has never been licensed or authorised by the Complainant to use the HATARI trademark. It asserts that the Respondent did not register the Domain Name for any legitimate purpose but rather to appropriate the fame and reputation of the HATARI trademark.

The Complainant argues that the Respondent registered and is using the Domain Name in bad faith because it was clearly aware of the Complainant and its HATARI mark when it registered the Domain Name. The

Complainant further asserts that although the Respondent’s website offers a wide range of products bearing