Sasol Limited v. Shenyang sasuoer huagongchanpin Co., Ltd. c/o shuang xing
Claim Number: FA1104001382178
Complainant is Sasol Limited (“Complainant”), represented by Daniel Greenberg of Lexsynergy Limited, United Kingdom. Respondent is Shenyang sasuoer huagongchanpin Co., Ltd. c/o shuang xing (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <sasolcarbonblack.com>, <sasolcopperoxide.com>, <sasolgaa.com>, <sasolironoxide.com>, <sasolsoda.com>, <sasolstpp.com>, <sasoltio2.com>, <sasolzincoxid.com>, <sysasol.com>, <sasuolchem.com>, <sasuolcarbon.com>, <sasuolcuo.com>, <sasuolsoda.com>, <sasuolstpp.com>, and <sasuoltio2.com>, registered with HICHINA ZHICHENG TECHNOLOGY LTD.
The undersigned certifies that she has acted independently and impartially and that to the best of her knowledge she has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically April 7, 2011; the National Arbitration Forum received payment April 7, 2011. The Complaint was submitted in both Chinese and English.
On April 7, 2011, HICHINA ZHICHENG TECHNOLOGY LTD. confirmed by e-mail to the National Arbitration Forum that the <sasolcarbonblack.com>, <sasolcopperoxide.com>, <sasolgaa.com>, <sasolironoxide.com>, <sasolsoda.com>, <sasolstpp.com>, <sasoltio2.com>, <sasolzincoxid.com>, <sysasol.com>, <sasuolchem.com>, <sasuolcarbon.com>, <sasuolcuo.com>, <sasuolsoda.com>, <sasuolstpp.com>, and <sasuoltio2.com> domain names are registered with HICHINA ZHICHENG TECHNOLOGY LTD. and that Respondent is the current registrant of the names. HICHINA ZHICHENG TECHNOLOGY LTD. verified that Respondent is bound by the HICHINA ZHICHENG TECHNOLOGY LTD. registration agreement and thereby has agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On April 13, 2011, the Forum served the Chinese language Complaint and all Annexes, including a Chinese language Written Notice of the Complaint, setting a deadline of May 3, 2011 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@sasolcarbonblack.com, postmaster@sasolcopperoxide.com, postmaster@sasolgaa.com, postmaster@sasolironoxide.com, postmaster@sasolsoda.com, postmaster@sasolstpp.com, postmaster@sasoltio2.com, postmaster@sasolzincoxid.com, postmaster@sysasol.com, postmaster@sasuolchem.com, postmaster@sasuolcarbon.com, postmaster@sasuolcuo.com, postmaster@sasuolsoda.com, postmaster@sasuolstpp.com, and postmaster@sasuoltio2.com. Also on April 13, 2011, the Chinese language Written Notice of the Complaint, notifying Respondent of the email addresses served and the deadline for a Response was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On May 5, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Carolyn Marks Johnson to sit as Panelist.
On April 14 and April 28, 2011, Respondent directed emails to a Forum case manager but these emails did not constitute a Response and may not be consider as a Response. The Panel viewed these emails as Other Correspondence but found nothing there that would result in a different outcome even if considered as a Response.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any Response from Respondent.
Pursuant to Rule 11(a), the Panel determines that the language requirement has been satisfied through the Chinese language Complaint and Commencement Notification and, absent a Response, determines that the remainder of the proceedings may be conducted in English.
Complainant requests that the domain names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <sasolcarbonblack.com>, <sasolcopperoxide.com>, <sasolgaa.com>, <sasolironoxide.com>, <sasolsoda.com>, <sasolstpp.com>, <sasoltio2.com>, <sasolzincoxid.com>, <sysasol.com>, <sasuolchem.com>, <sasuolcarbon.com>, <sasuolcuo.com>, <sasuolsoda.com>, <sasuolstpp.com>, and <sasuoltio2.com> domain names are confusingly similar to Complainant’s SASOL mark.
2. Respondent has no rights to or legitimate interests in the <sasolcarbonblack.com>, <sasolcopperoxide.com>, <sasolgaa.com>, <sasolironoxide.com>, <sasolsoda.com>, <sasolstpp.com>, <sasoltio2.com>, <sasolzincoxid.com>, <sysasol.com>, <sasuolchem.com>, <sasuolcarbon.com>, <sasuolcuo.com>, <sasuolsoda.com>, <sasuolstpp.com>, and <sasuoltio2.com> domain names.
3. Respondent registered and used the <sasolcarbonblack.com>, <sasolcopperoxide.com>, <sasolgaa.com>, <sasolironoxide.com>, <sasolsoda.com>, <sasolstpp.com>, <sasoltio2.com>, <sasolzincoxid.com>, <sysasol.com>, <sasuolchem.com>, <sasuolcarbon.com>, <sasuolcuo.com>, <sasuolsoda.com>, <sasuolstpp.com>, and <sasuoltio2.com> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Sasol Limited, is an international petroleum, chemical, mining and technology company that conducts business in some 149 countries worldwide, specializing in the manufacture and supply of chemicals, fuels, and oils. Complainant registered its SASOL mark with the United Kingdom Intellectual Property Office (“UKIPO”) (e.g., Reg. No. 746664 issued October 5, 1955).
Respondent, Shenyang sasuoer huagongchanpin Co., Ltd. c/o shuang xing, registered the <sasolcarbonblack.com>, <sasolcopperoxide.com>, <sasolgaa.com>, <sasolironoxide.com>, <sasolsoda.com>, <sasolstpp.com>, <sasoltio2.com>, <sasolzincoxid.com>, and <sysasol.com> domain names December 21, 2010. Respondent registered the <sasuolchem.com>, <sasuolsoda.com>, and <sasuoltio2.com> domain names December 28, 2010. Respondent registered the <sasuolcarbon.com>, <sasuolcuo.com>, and <sasuolstpp.com> domain names January 6, 2011. Respondent’s <sasolcarbonblack.com>, <sasolcopperoxide.com>, <sasolgaa.com>, <sasolironoxide.com>, <sasolsoda.com>, <sasolstpp.com>, <sasoltio2.com>, <sasolzincoxid.com> domain names formerly resolved to websites featuring images of power plants and chemical products and prominently displayed Complainant’s SASOL mark. These disputed domain names promoted the “Shengyang SASOL Chemicals Co Ltd,” which purportedly manufactured and sold chemicals. These domain names currently resolve to inactive websites. Respondent’s <sysasol.com> domain name has always resolved to an inactive website. Respondent’s <sasuolchem.com>, <sasuolsoda.com>, <sasuoltio2.com>, <sasuolcarbon.com>, <sasuolcuo.com>, and <sasuolstpp.com> domain names resolve to websites featuring images of power plants and chemical products and advertise “Shengyang SASOUL Chemical Products Co Ltd.”
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
Given Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and will draw such inferences as the Panel considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
Paragraph 4(a) of the Policy requires Complainant to prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
Complainant provides evidence of multiple trademark registrations around the world, including with the UKIPO (e.g., Reg. No. 746664 issued October 5, 1955). The Panel finds that, notwithstanding Respondent’s residence or operation in China, Complainant’s UKIPO registration for its SASOL mark is evidence of Complainant’s rights in the mark pursuant to Policy ¶ 4(a)(i). See Thermo Electron Corp. v. Xu, FA 713851 (Nat. Arb. Forum July 12, 2006) (finding that the complainants had established rights in marks where the marks were registered with a trademark authority); see also Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that the mark be registered in the country in which the respondent operates; therefore it is sufficient that the complainant can demonstrate a mark in some jurisdiction).
Complainant alleges that Respondent’s <sasolcarbonblack.com>, <sasolcopperoxide.com>, <sasolgaa.com>, <sasolironoxide.com>, <sasolsoda.com>, <sasolstpp.com>, <sasoltio2.com>, <sasolzincoxid.com>, and <sysasol.com> domain names all incorporate Complainant’s SASOL mark. These disputed domain names also add descriptive terms or abbreviations for terms relating to chemical products. The Panel finds that addition of a descriptive term or abbreviation does not sufficiently distinguish the disputed domain names from Complainant’s mark. See Gillette Co. v. RFK Assocs., FA 492867 (Nat. Arb. Forum July 28, 2005) (finding that the additions of the term “batteries,” which described the complainant’s products, and the generic top-level domain “.com” were insufficient to distinguish the respondent’s <duracellbatteries.com> from the complainant’s DURACELL mark); see also Disney Enters. Inc. v. McSherry, FA 154589 (Nat. Arb. Forum June 17, 2003) (finding the <disneyvacationvillas.com> domain name to be confusingly similar to Complainant’s DISNEY mark because it incorporated Complainant’s entire famous mark and merely added two terms to it). Respondent’s <sasuolchem.com>, <sasuolcarbon.com>, <sasuolcuo.com>, <sasuolsoda.com>, <sasuolstpp.com>, and <sasuoltio2.com> domain names all contain a misspelled version of Complainant’s SASOL mark, along with terms or abbreviations descriptive of Complainant’s business. The Panel finds that these additions are not distinct from Complainant’s mark. See Google, Inc. v. DktBot.org, FA 286993 (Nat. Arb. Forum Aug. 4, 2004) (“The mere addition of a single letter to the complainant’s mark does not remove the respondent’s domain names from the realm of confusing similarity in relation to the complainant’s mark pursuant to Policy ¶ 4(a)(i).”); see also Gillette Co., supra. Finally, all of Respondent’s disputed domain names add the generic top-level domain (“gTLD”) “.com.” The Panel finds that addition of a gTLD is irrelevant in making a Policy ¶ 4(a)(i) analysis. See Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis). Therefore, according to Policy ¶ 4(a)(i), the Panel finds that Respondent’s disputed domain names are confusingly similar to Complainant’s SASOL mark.
The Panel finds that Respondent registered multiple domain names that are confusingly similar to Complainant’s protected mark; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(i).
Complainant alleges that Respondent has no rights or legitimate interests in the disputed domain names. Once Complainant makes a prima facie case to support its allegations, the burden shifts to Respondent to prove that it does have rights or legitimate interests in the disputed domain names pursuant to a Policy ¶ 4(a)(ii) analysis. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name). Based on the points and evidence in the Complaint, the Panel finds that Complainant established a prima facie case to support its contentions and Respondent failed to submit a Response or other evidence in these proceedings. See Am. Online, Inc. v. AOL Int'l, D2000-0654 (WIPO Aug. 21, 2000) (finding no rights or legitimate interests where the respondent fails to respond). Despite Respondent’s failure to respond, the Panel still elects to examine the record in its entirety before determining whether Respondent has rights to or legitimate interests in the disputed domain names.
Complainant states that no evidence suggests that Respondent has been commonly known by any of the disputed domain names. Indeed, the WHOIS information for the disputed domain names lists the registrant as “Shenyang sasuoer huagongchanpin Co., Ltd. c/o shuang xing.” No evidence in the record suggest that Respondent is commonly known by any of the disputed domain names and therefore the Panel finds that Respondent lacks rights and legitimate interests in the domain names under a Policy ¶ 4(c)(ii) analysis. See M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record); see also Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name).
Respondent’s <sasolcarbonblack.com>, <sasolcopperoxide.com>, <sasolgaa.com>, <sasolironoxide.com>, <sasolsoda.com>, <sasolstpp.com>, <sasoltio2.com>, and <sasolzincoxid.com> domain names formerly resolved to websites featuring images of power plants and chemical products and prominently displayed Complainant’s SASOL mark. These disputed domain names promoted the “Shengyang SASOL Chemicals Co Ltd,” which purportedly manufactured and sold chemicals. Additionally, Respondent’s <sasuolchem.com>, <sasuolsoda.com>, <sasuoltio2.com>, <sasuolcarbon.com>, <sasuolcuo.com>, and <sasuolstpp.com> domain names resolve to similar websites featuring similar images. Complainant alleges that Respondent has used, or is using, these domain names to sell chemical products within the same industry as Complainant. The Panel finds that Respondent’s use of confusingly similar domain names to market and sell products that compete with Complainant is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) (“Respondent’s demonstrated intent to divert Internet users seeking Complainant’s website to a website of Respondent and for Respondent’s benefit is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”); see also Summit Group, LLC v. LSO, Ltd., FA 758981 (Nat. Arb. Forum Sept. 14, 2006) (finding that the respondent’s use of the complainant’s LIFESTYLE LOUNGE mark to redirect Internet users to respondent’s own website for commercial gain does not constitute either a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)).
Respondent’s <sysasol.com> domain name has always resolved to an inactive website. Additionally, Respondent’s <sasolcarbonblack.com>, <sasolcopperoxide.com>, <sasolgaa.com>, <sasolironoxide.com>, <sasolsoda.com>, <sasolstpp.com>, <sasoltio2.com>, and <sasolzincoxid.com> domain names currently resolve to inactive websites. The Panel finds that Respondent’s failure to make an active use of the disputed domain names is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See George Weston Bakeries Inc. v. McBroom, FA 933276 (Nat. Arb. Forum Apr. 25, 2007) (finding that the respondent had no rights or legitimate interests in a domain name under either Policy ¶ 4(c)(i) or Policy ¶ 4(c)(iii) where it failed to make any active use of the domain name); see also Thermo Electron Corp. v. Xu, FA 713851 (Nat. Arb. Forum July 12, 2006) (finding that the respondent’s non-use of the disputed domain names demonstrates that the respondent is not using the disputed domain names for a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)).
The Panel finds that Respondent has no rights to or legitimate interests in the disputed domain names; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(ii).
Complainant contends that Respondent registered its <sasolcarbonblack.com>, <sasolcopperoxide.com>, <sasolgaa.com>, <sasolironoxide.com>, <sasolsoda.com>, <sasolstpp.com>, <sasoltio2.com>, <sasolzincoxid.com>, <sasuolchem.com>, <sasuolcarbon.com>, <sasuolcuo.com>, <sasuolsoda.com>, <sasuolstpp.com>, and <sasuoltio2.com> domain names for the purpose of unfairly disrupting Complainant’s business by diverting business intended for Complainant. Complainant states that Respondent is a competitor of Complainant and sells chemical products within the same industry. The Panel agrees with Complainant and finds that Respondent’s registration and use, either previous or current, of the disputed domain names is evidence of bad faith under Policy ¶ 4(b)(iii). See DatingDirect.com Ltd. v. Aston, FA 593977 (Nat. Arb. Forum Dec. 28, 2005) (“Respondent is appropriating Complainant’s mark to divert Complainant’s customers to Respondent’s competing business. The Panel finds this diversion is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”); see also Spark Networks PLC v. Houlihan, FA 653476 (Nat. Arb. Forum Apr. 18, 2006) (holding that the respondent’s registration of a domain name substantially similar to the complainant’s AMERICAN SINGLES mark in order to operate a competing online dating website supported a finding that respondent registered and used the domain name to disrupt the complainant’s business under Policy ¶ 4(b)(iii)).
Additionally, Complainant argues that Respondent registered and either previously used or is currently using the <sasolcarbonblack.com>, <sasolcopperoxide.com>, <sasolgaa.com>, <sasolironoxide.com>, <sasolsoda.com>, <sasolstpp.com>, <sasoltio2.com>, <sasolzincoxid.com>, <sasuolchem.com>, <sasuolcarbon.com>, <sasuolcuo.com>, <sasuolsoda.com>, <sasuolstpp.com>, and <sasuoltio2.com> domain names to intentionally attempt to attract Internet users to its resolving websites by creating a likelihood of confusion with Complainant’s SASOL mark as to the source, sponsorship, affiliation or endorsement of Respondent’s domain names and websites. The Panel agrees and finds that Respondent likely profits from the sale of products displayed on its websites and as such Respondent has demonstrated bad faith pursuant to Policy ¶ 4b)(iv). See Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (finding that the respondent’s use of the <saflock.com> domain name to offer goods competing with the complainant’s illustrates the respondent’s bad faith registration and use of the domain name, evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv)); see also AltaVista Co. v. Krotov, D2000-1091 (WIPO Oct. 25, 2000) (finding bad faith under Policy ¶ 4(b)(iv) where the respondent’s domain name resolved to a website that offered links to third-party websites that offered services similar to the complainant’s services and merely took advantage of Internet user mistakes).
Complainant indicates that Respondent’s <sasolcarbonblack.com>, <sasolcopperoxide.com>, <sasolgaa.com>, <sasolironoxide.com>, <sasolsoda.com>, <sasolstpp.com>, <sasoltio2.com>, <sasolzincoxid.com> domain names currently resolve to inactive websites. The Panel finds that failure to make an active use of the disputed domain names is evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii). See DCI S.A. v. Link Commercial Corp., D2000-1232 (WIPO Dec. 7, 2000) (concluding that the respondent’s [failure to make an active use] of the domain name satisfies the requirement of ¶ 4(a)(iii) of the Policy); see also Caravan Club v. Mrgsale, FA 95314 (Nat. Arb. Forum Aug. 30, 2000) (finding that the respondent made no use of the domain name or website that connects with the domain name, and that [failure to make an active use] of a domain name permits an inference of registration and use in bad faith).
With regard to Respondent’s <sysasol.com> domain name, the Panel finds that it may consider the totality of the circumstances when conducting a Policy ¶ 4(a)(iii) analysis, and that it is not limited to the enumerated factors in Policy ¶ 4(b). See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (“[T]he examples [of bad faith] in Paragraph 4(b) are intended to be illustrative, rather than exclusive.”). According to Complainant, Respondent has never made an active use of the <sysasol.com> domain name. The Panel finds this to be sufficient evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii). See DCI S.A., supra; see also Caravan Club, supra.
The Panel finds that Respondent registered and used the disputed domain names in bad faith; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <sasolcarbonblack.com>, <sasolcopperoxide.com>, <sasolgaa.com>, <sasolironoxide.com>, <sasolsoda.com>, <sasolstpp.com>, <sasoltio2.com>, <sasolzincoxid.com>, <sysasol.com>, <sasuolchem.com>, <sasuolcarbon.com>, <sasuolcuo.com>, <sasuolsoda.com>, <sasuolstpp.com>, and <sasuoltio2.com> domain names be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: May 19, 2011.
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