In the fast-paced world of online domains and trademarks, conflicts often arise when businesses believe their intellectual property rights are being infringed upon. In this intriguing case, we delve into the dispute over the domain name <hatarico.com>, involving a Thai manufacturer, Hatari Electric Co. Ltd, and a respondent claiming ownership of the HATARI trademark. This case brings to light the complexities of trademark protection and domain ownership.
Background:
The Thai Complainant, a prominent manufacturer of electronic fan products, has a rich history dating back to 1980. Operating under the name Hatari Electric Co. Ltd since 1990, they have achieved significant success, with profits exceeding USD $4.65 million from the export of HATARI products to Vietnam in 2021. The Complainant owns several trademark registrations worldwide for the HATARI brand, including Vietnam trademark number 24015-001, valid until May 8, 2026.
The disputed domain name, <hatarico.com>, was registered on September 4, 2020, and directs users to a website featuring the “Hatari logo” prominently in the header. The site offers a range of electronic products, including fans, water purifiers, and air purifiers, seemingly branded with the HATARI name. The contact information on the website identifies the entity as “CÔNG TY CỔ PHẦN HATARI” (translated as “Hatari Joint Stock Company”).
The Complainant alleges that the Respondent lacks authorization to use the HATARI trademark and registered the domain in bad faith, fully aware of the Complainant and its brand. Furthermore, they argue that most of the products displayed on the Respondent’s website are not authentic HATARI products. The Respondent, although not formally replying to the allegations, later communicated with the Center via email, citing language barriers and asserting HATARI as its trademark. They attached a Vietnam trademark certificate with registration number 394656, but the relevance of this mark remains unclear.
Key Facts:
- The Complainant, Hatari Electric Co. Ltd, is a leading Thai manufacturer of electronic fan products with a long history dating back to 1980.
- The Complainant claims substantial profits from the export of HATARI products to Vietnam, totaling over USD $4.65 million in 2021.
- The Complainant holds multiple trademark registrations worldwide for the HATARI brand, including one in Vietnam.
- The disputed domain name, <hatarico.com>, was registered on September 4, 2020, and features the HATARI logo on its website.
- The Respondent, despite language difficulties, claimed ownership of the HATARI trademark and presented a Vietnam trademark certificate with registration number 394656.
Panel’s Decision:
The Panel conducted a thorough search of the WIPO Global Brand database, revealing that Vietnam 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” (Global Technology Equipment Joint Stock Company). This discovery raises questions about the authenticity of the Complainant’s claim regarding the subsistence of their Vietnam trademark.
Additionally, the database records indicated that the HATARI logo trademark, registered on March 31, 1997, and supposedly transferred to the Complainant on June 12, 2006, had expired on May 8, 2016. This inconsistency between the database and the Complainant’s claims created doubt.
Considering the Complainant’s reliance on the WIPO database, the Panel found that the prima facie case against the Respondent was weakened. It concluded that the Complainant failed to prove that the Respondent lacked rights or legitimate interests in the disputed Domain Name. Consequently, the Panel did not delve into whether the Respondent registered and used the domain in bad faith.
Furthermore, the Panel believed that the complex trademark issues involved in this case were better suited for resolution through court proceedings, rather than the Policy. Given these circumstances, the Panel dismissed the Complaint without prejudice.
Conclusion:
The case of <hatarico.com> offers a fascinating glimpse into the intricate world of online domain disputes and trademark conflicts. It underscores the importance of thoroughly researching trademark ownership and domain rights before pursuing legal action. In this instance, the Panel’s decision highlights the necessity of addressing complex trademark matters in a court of law, where a more comprehensive examination can take place. This case serves as a reminder that the intricacies of intellectual property disputes often transcend the realm of domain arbitration and require in-depth legal examination.
Read the bare text of the case here: https://www.wipo.int/amc/en/domains/decisions/pdf/2023/d2023-3198.pdf
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