Sasol Limited v. tianjingsasuoerhuagongyouxiangongsi
Claim Number: FA1210001467629
Complainant is Sasol Limited (“Complainant”), represented by Daniel Greenberg of Lexsynergy Limited, United Kingdom. Respondent is tianjingsasuoerhuagongyouxiangongsi (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <sasolchem.net>, registered with Beijing Innovative Linkage Technology Ltd. d/b/a DNS.com.cn.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Hon. Karl V. Fink (Ret.), as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on October 17, 2012; the National Arbitration Forum received payment on October 17, 2012. The Complaint was submitted in both English and Chinese.
On October 25, 2012, Beijing Innovative Linkage Technology Ltd. d/b/a DNS.com.cn confirmed by e-mail to the National Arbitration Forum that the <sasolchem.net> domain name is registered with Beijing Innovative Linkage Technology Ltd. d/b/a DNS.com.cn and that Respondent is the current registrant of the name. Beijing Innovative Linkage Technology Ltd. d/b/a DNS.com.cn has verified that Respondent is bound by the Beijing Innovative Linkage Technology Ltd. d/b/a DNS.com.cn registration agreement and has 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 26, 2012, the Forum served the Chinese language Complaint and all Annexes, including a Chinese language Written Notice of the Complaint, setting a deadline of November 15, 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@sasolchem.net. Also on October 26, 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 28, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Karl V. Fink (Ret.), as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum has 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 issues 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 name be transferred from Respondent to Complainant.
A. Complainant
a) Policy ¶ 4(a)(i): Complainant’s rights and the confusing similarity of the <sasolchem.net> domain name.
a. Complainant is an international petroleum, chemical, mining, and technology company conducting business worldwide and specializing in the manufacture and supply of chemicals, fuels, and oils. Complainant uses the SASOL mark to market these products. Complainant is the owner of the registration for the SASOL mark (Reg. No. 3,114,541 registered July 11, 2006), registered with the United States Patent and Trademark Office (“USPTO”).
b. The <sasolchem.net> domain name is confusingly similar to the SASOL mark. Respondent merely adds the term “chem,” an abbreviation of the descriptive term “chemical,” and the generic top-level domain (“gTLD”) “.net” to the SASOL mark to create the <sasolchem.net> domain name.
b) Policy ¶ 4(a)(ii): Respondent’s lack of rights and legitimate interests in the <sasolchem.net> domain name.
a. Respondent is not commonly known by the disputed domain name. Complainant has never authorized or licensed Respondent to use the SASOL mark.
b. The <sasolchem.net> domain name resolves to a website where Respondent promotes the sale of a variety of chemical related products.
c) Policy ¶ 4(a)(iii): Respondent’s bad faith registration and use of the <sasolchem.net> domain name.
a. Respondent registered and is using the <sasolchem.net> domain name in order to prevent Complainant from reflecting the SASOL mark in a corresponding domain name, and Respondent has established a pattern of bad faith registration and use of domain names.
b. Respondent registered and uses the <sasolchem.net> domain name in order to disrupt the business of Complainant.
c. Respondent clearly intends to use the <sasolchem.net> domain name to attract and profit from Internet users seeking Complainant.
d. Respondent registered and began using the <sasolchem.net> domain name despite having knowledge of Complainant’s rights in the SASOL mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
For the reasons set forth below, the Panel finds that the Complainant is entitled to the relief requested.
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 that Complainant must 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.
In view of 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 draw such inferences it 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.”).
Complainant contends that it has rights in the SASOL mark. Complainant alleges that it is an international petroleum, chemical, mining, and technology company conducting business worldwide specializing in the manufacture and supply of chemicals, fuels, and oils, and Complainant uses the SASOL mark to market these products. Complainant provides the Panel with evidence that it is the owner of the USPTO trademark registration for the SASOL mark (Reg. No. 3,114,541 registered July 11, 2006). Panels have found that registration of a mark with a trademark authority, regardless of the location of the parties, demonstrates the complainant’s rights in that mark. See Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (finding that a trademark registration adequately demonstrates a complainant’s rights in a mark under 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). Therefore, the Panel finds that Complainant has rights in the SASOL mark under Policy ¶ 4(a)(i).
Complainant asserts that the <sasolchem.net> domain name is confusingly similar to the SASOL mark. According to Complainant, Respondent merely adds the term “chem,” an abbreviation of the descriptive term “chemical,” and the gTLD “.net” to the SASOL mark to create the <sasolchem.net> domain name. In Vanguard Group Inc. v. Proven Fin. Solutions, FA 572937 (Nat. Arb. Forum Nov. 18, 2005), the panel held that the addition of a descriptive term and a gTLD to a mark in a domain name fails to differentiate the domain name from the mark. Therefore, the Panel finds that Respondent’s <sasolchem.net> domain name is confusingly similar to the SASOL mark under Policy ¶ 4(a)(i).
Complainant has proven this element.
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 shifts to Respondent to show it does have 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 asserts that Respondent has neither rights nor legitimate interests in the <sasolchem.net> domain name. Complainant contends that Respondent is not commonly known by the disputed domain name. Complainant states that it has never authorized or licensed Respondent to use the SASOL mark. Further, the Panel notes that the WHOIS record for the <sasolchem.net> domain name lists “tianjingsasuoerhuagongyouxiangongsi” as the domain name registrant. In Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006), the panel found that information relating to whether respondent was authorized to use the mark and information from the WHOIS record is strong evidence as to whether the respondent was commonly known by the disputed domain name. Therefore, the Panel finds that Respondent is not commonly known by the <sasolchem.net> domain name pursuant to Policy ¶ 4(c)(ii).
Complainant contends that Respondent’s use of the <sasolchem.net> domain name is further evidence of Respondent’s lack of rights and legitimate interests. Complainant argues that the <sasolchem.net> domain name resolves to a website where Respondent promotes the sale of a variety of chemical-related products. Panels have found that the operation of a competing business is not a use of a disputed domain name that is protected under Policy ¶¶ 4(c)(i) and 4(c)(iii). See Florists’ Transworld Delivery v. Malek, FA 676433 (Nat. Arb. Forum June 6, 2006) (holding that the respondent’s use of the <ftdflowers4less.com> domain name to sell flowers in competition with the complainant did not give rise to any legitimate interest in the domain name). Therefore, the Panel finds that Respondent’s use of the <sasolchem.net> domain name is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).
Complainant has proven this element.
Complainant asserts that Respondent registered and is using the <sasolchem.net> domain name in bad faith. Complainant contends that Respondent registered and is using the <sasolchem.net> domain name in order to prevent Complainant from reflecting the SASOL mark in a corresponding domain name. The Panel notes that Complainant states that it owns over 700 domain names that are identical to or incorporate the SASOL mark. Complainant also asserts that Respondent has established a pattern of bad faith registration and use of domain names. Complainant turns the Panel’s attention to the decision in Sasol Ltd. v. Wangxiuhe, FA 1406183 (Nat. Arb. Forum Oct. 17, 2011). Complainant asserts that the respondent in that case is Respondent. In support of this claim, Complainant notes the following:
a) The WHOIS record for the domain in the Wangxiuhe dispute and for the <sasolchem.net> domain name had identical telephone number, post code, province code, and e-mail address listings; and
b) The logo used for the website in the Wangxiuhe dispute and that on the <sasolchem.net> domain name are identical, and both logos include the misspelling of the “chemicals” as “cheimicals.”
Complainant also notes that Respondent is engaged in UDRP disputes for the domain names <chinasasol.com> and <sasolmetal.com>. Therefore, the Panel finds that Respondent registered and uses the <sasolchem.net> domain name in a pattern of bad faith pursuant to Policy ¶ 4(b)(ii). See Arai Helmet Americas, Inc. v. Goldmark, D2004-1028 (WIPO Jan. 22, 2005 (finding that “Respondent has registered the disputed domain name, <aria.com>, to prevent Complainant from registering it” and taking notice of another Policy proceeding against the respondent to find that “this is part of a pattern of such registrations”).
Complainant contends that Respondent registered and uses the <sasolchem.net> domain name in order to disrupt the business of Complainant. The Panel is reminded that the <sasolchem.net> domain name resolves to a website where Respondent offers for sale a number of chemical-related products. Panels have held that the operation of a competing business via a disputed domain name diverts Internet users away from the complainant and is therefore disruptive. 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).”). Therefore, the Panel finds that Respondent’s registration and use of the <sasolchem.net> domain name is disruptive to Complainant’s business and thus evidence of bad faith pursuant to Policy ¶ 4(b)(iii).
Complainant also argues that Respondent’s bad faith is apparent under Policy ¶ 4(b)(iv). The disputed domain name resolves to a business where Respondent promotes its chemical-related products. Complainant contends that Respondent clearly intends the <sasolchem.net> domain name to attract and profit from Internet users seeking Complainant. According to Complainant, this is clear because Respondent registered a confusingly similar domain name, despite likely encountering issues finding an available domain name incorporating the SASOL mark given Complainant’s vigilance in registering them. Therefore, the Panel finds that Respondent registered and is using the <sasolchem.net> domain name in a bad faith attempt to attract Internet users for commercial gain by creating a likelihood of confusion pursuant to Policy ¶ 4(b)(iv). See MathForum.com, LLC v. Weiguang Huang, D2000-0743 (WIPO Aug. 17, 2000) (finding bad faith under Policy ¶ 4(b)(iv) where the respondent registered a domain name confusingly similar to the complainant’s mark and the domain name was used to host a commercial website that offered similar services offered by the complainant under its mark).
Complainant next alleges that Respondent registered and began using the <sasolchem.net> domain name despite having knowledge of Complainant’s rights in the SASOL mark. Complainant notes that Respondent should have known of Complainant given its worldwide reputation and trademark filings. Complainant claims that Respondent’s registration of a confusingly similar mark and use of the SASOL mark on the <sasolchem.net> domain name’s resolving website is evidence that Respondent did know of Complainant’s rights. The Panel disregards Complainant's arguments concerning constructive knowledge as panels have held that constructive knowledge is not enough evidence of bad faith. See Custom Modular Direct LLC v. Custom Modular Homes Inc., FA 1140580 (Nat. Arb. Forum Apr. 8, 2008) ("There is no place for constructive notice under the Policy."). The Panel agrees with Complainant regarding Respondent's actual knowledge, however, and conclude that Respondent registered the <sasolchem.net> domain name in bad faith according to Policy ¶ 4(a)(iii). See Immigration Equality v. Brent, FA 1103571 (Nat. Arb. Forum Jan. 11, 2008) ("That Respondent proceeded to register a domain name identical to, and with prior knowledge of Complainant's mark is sufficient to prove bad faith registration and use under Policy ¶ 4(a)(iii).").
Complainant has proven this element.
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is ORDERED that the <sasolchem.net> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Karl V. Fink (Ret.), Panelist
Dated: November 30, 2012
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