national arbitration forum

 

DECISION

 

Sasol Limited v. HouRui / hou rui

Claim Number: FA1209001464662

 

PARTIES

Complainant is Sasol Limited (“Complainant”), represented by Lexsynergy Limited, United Kingdom.  Respondent is HouRui / hou rui (“Respondent”), China.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <sasolgroup.com>, registered with Jiangsu Bangning Science & Technology Co. Ltd.

 

PANEL

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.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically September 27, 2012; the National Arbitration Forum received payment September 27, 2012.  The Complaint was submitted in both English and Chinese.

 

On September 29, 2012, Jiangsu Bangning Science & Technology Co. Ltd confirmed by e-mail to the National Arbitration Forum that the <sasolgroup.com> domain name is registered with Jiangsu Bangning Science & Technology Co. Ltd and that Respondent is the current registrant of the name.  Jiangsu Bangning Science & Technology Co. Ltd verified that Respondent is bound by the Jiangsu Bangning Science & Technology Co. Ltd registration agreement and thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).

 

On October 3, 2012, the Forum served the Chinese language Complaint and all Annexes, including a Chinese language Written Notice of the Complaint, setting a deadline of October 23, 2012, 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@sasolgroup.com.  Also on October 3, 2012, the Chinese language Written Notice of the Complaint, notifying Respondent of the e-mail 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 November 1, 2012, 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.

 

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.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

 

Complainant alleges in this proceeding that:

 

1)    Complainant is an international petroleum, chemical, mining, and technology company that conducts business in more than 149 countries worldwide, specializing in the manufacture and supply of chemicals, fuels and oils. 

2)    Complainant owns several trademark registrations with the United Kingdom Intellectual Property Office (“UKIPO”) for the SASOL mark (e.g., Reg. No. 746,664 registered October 5, 1955).  See Complainant’s Annex 1.  Complainant also owns numerous trademark registrations with other trademark authorities around the world. 

3)    Respondent, HouRui / hou rui, registered the <sasolgroup.com> domain name April 24, 2012.  See Complainant’s Annex 9. 

4)    Respondent’s <sasolgroup.com> domain name is confusingly similar to Complainant’s SASOL mark, merely adding the suffix “group.”

5)    Respondent has no rights or legitimate interests in the disputed domain name.        

                                          i.    Respondent, HouRui / hou rui, has not been commonly known by the disputed domain name and has not been authorized to use Complainant’s mark in any way.

                                         ii.    Respondent’s disputed domain name resolves to Respondent’s directly competing website that offers inferior chemical products to those of Complainant.

6)    Respondent has registered and is using the disputed domain name in bad faith.

                                          i.    Respondent registered and is using the disputed domain name to disrupt Complainant’s competing chemical business.

                                         ii.    Respondent is using the disputed domain name to intentionally attract, for commercial gain, Internet users to Respondent’s website by creating a likelihood of confusion with Complainant’s mark.

                                        iii.    Respondent knew of Complainant’s rights in the SASOL mark prior to registering the disputed domain name.

 

Respondent failed to submit a Response in this proceeding.

 

Panel Note:  Language of the Proceedings

 

The Panel notes that the Registration Agreement is written in Chinese, thereby making the language of the proceedings Chinese. After review of the applicable rules on language of the proceedings under the UDRP, the Panel finds:

 

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.

 

FINDINGS

 

The disputed domain name is confusingly similar to a mark in which Complainant has protected rights.

 

Respondent has no rights to or legitimate interests in the disputed domain name.  Respondent is not commonly known by the disputed domain name and has no permission, right or license to use Complainant’s protected mark in any way.

 

Respondent registered and used the disputed domain name in bad faith.

 

DISCUSSION

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."

 

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.

 

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.”).

 

 

Identical to and/or Confusingly Similar

 

Complainant claims to be an international petroleum, chemical, mining, and technology company that conducts business in more than 149 countries worldwide, specializing in the manufacture and supply of chemicals, fuels and oils.  Further, Complainant claims that it owns several trademark registrations with UKIPO for the SASOL mark (e.g., Reg. No. 746,664 registered October 5, 1955).  See Complainant’s Annex 1.  Complainant also claims, and provides additional evidence, that it owns numerous trademark registrations with other trademark authorities around the world.  The Panel finds that Complainant has established its rights in the SASOL mark under Policy ¶ 4(a)(i) through its various trademark registrations, including those with the UKIPO, irrespective of Respondent’s location.  See Royal Bank of Scot. Group plc v. TRB, FA 622345 (Nat. Arb. Forum Feb. 22, 2006) (“The Panel accepts Complainant’s registration of the THE ROYAL BANK OF SCOTLAND mark with the United Kingdom Patent Office as evidence of Complainant’s rights in the mark pursuant to Policy ¶ 4(a)(i).”); see also Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (finding that it is irrelevant whether the complainant has registered its trademark in the country of the respondent’s residence).

 

Further, Complainant argues that Respondent’s <sasolgroup.com> domain name is confusingly similar to Complainant’s SASOL mark where it merely adds the suffix “group.”  The Panel notes that the disputed domain name also adds the generic top-level domain (“gTLD”) “.com.”  Therefore, the Panel finds that Respondent’s disputed domain name is confusingly similar to Complainant’s SASOL mark under Policy ¶ 4(a)(i).  See Am. Online, Inc. v. Shanghaihangwei Packing Material Co. Ltd., D2001-0443 (WIPO May 22, 2001) (finding the <ouricq.com> domain name to be confusingly similar to the complainant’s ICQ mark); see also Isleworth Land Co. v. Lost in Space, SA, FA 117330 (Nat. Arb. Forum Sept. 27, 2002) (“[I]t is a well established principle that generic top-level domains are irrelevant when conducting a Policy ¶ 4(a)(i) analysis.”).

 

Respondent makes no contentions relative to Policy ¶ 4(a)(i). 

 

The Panel finds that the disputed domain name is confusingly similar to Complainant’s protected mark; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(i). 

 

Rights to or Legitimate Interests

 

Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden of proof shifts to Respondent to show it does have such rights or legitimate interests.  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 UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light.  If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).

 

Complainant argues that Respondent, HouRui / hou rui per the WHOIS information, has not been commonly known by the disputed domain name and has not been authorized to use Complainant’s mark in any way.  The Panel notes that Respondent has also not come forward with any evidence indicating that it is commonly known by the disputed domain name.  Therefore, the Panel finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii).  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).

 

Complainant also argues that Respondent’s disputed domain name resolves to Respondent’s directly competing website that offers inferior chemical products to those of Complainant.  See Complainant’s Annex 9.  The Panel agrees with Complainant’s assertions based on the evidence submitted and finds that Respondent is not using the disputed domain name for a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).  See Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (“Respondent’s appropriation of [Complainant’s] SAFLOK mark to market products that compete with Complainant’s goods does not constitute a bona fide offering of goods and services.”).

 

Respondent makes no contentions relative to Policy ¶ 4(a)(ii). 

 

The Panel finds that Respondent has no rights to or legitimate interests in the disputed domain name containing Complainant’s protected mark; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(ii). 

 

Registration and Use in Bad Faith

 

Complainant argues that Respondent registered and is using the disputed domain name to disrupt Complainant’s competing chemical business.  Complainant asserts that Respondent is a competitor as it sells chemical products within the same industry and market as Complainant.  Complainant further contends that Respondent’s use of the SASOL mark in the disputed domain name diverts business to Respondent that was intended for Complainant.  The Panel agrees and finds that Respondent registered and is using the disputed domain name in bad faith under Policy ¶ 4(b)(iii).  See Classic Metal Roofs, LLC v. Interlock Indus., Ltd., FA 724554 (Nat. Arb. Forum Aug. 1, 2006) (finding that the respondent registered and used the <classicmetalroofing.com> domain name in bad faith pursuant to Policy ¶ 4(b)(iii) by redirecting Internet users to the respondent’s competing website).

 

Complainant also claims that Respondent is using the disputed domain name to intentionally attract, for commercial gain, Internet users to Respondent’s website by creating a likelihood of confusion with Complainant’s mark.  As noted above, Complainant asserts that Respondent sells chemical products through the disputed domain name in direct competition with Complainant and that Respondent’s use of the SASOL mark to do so is evidence of bad faith.  The Panel agrees and finds that Respondent’s use of the disputed domain name is evidence that it registered and is using the disputed domain name in bad faith under Policy ¶ 4(b)(iv).  See Scholastic Inc. v. Applied Software Solutions, Inc., D2000-1629 (WIPO Mar. 15, 2001) (finding bad faith under Policy ¶ 4(b)(iv) because the respondent initially used the disputed domain name to sell educational services that targeted the complainant’s market).

 

Lastly, Complainant asserts that Respondent knew of Complainant’s rights in the SASOL mark prior to registering the disputed domain name.  Complainant points to its trademark registrations, as well as Respondent’s directly competing sales of chemical products, as evidence that Respondent had knowledge of Complainant’s rights in the SASOL mark.  Although panels have not generally regarded constructive notice to be sufficient for a finding of bad faith, the Panel here finds that Respondent had actual knowledge of Complainant's mark and rights and therefore determine that Respondent registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii). See Nat'l Patent Servs. Inc. v. Bean, FA 1071869 (Nat. Arb. Forum Nov. 1, 2007) ("[C]onstructive notice does not support a finding of bad faith registration."); see also Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Nat. Arb. Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent "actual knowledge of Complainant's mark when registering the disputed domain name").

 

Respondent makes no contentions relative to Policy ¶ 4(a)(iii). 

 

The Panel finds that Respondent registered and used the disputed domain name in bad faith; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(iii). 

 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <sasolgroup.com> domain name be TRANSFERRED  from Respondent to Complainant.  

 

 

Hon. Carolyn Marks Johnson, Panelist

Dated: November 9, 2012.  

 

 

 

 

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