Sasol Limited v tianjingsasuoerhuagongyouxiangongsi
Claim Number: FA1304001494898
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 <tjsasol.com>, registered with BEIJING INNOVATIVE LINKAGE TECHNOLOGY LTD. DBA DNS.COM.CN.
The undersigned certifies he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Houston Putnam Lowry, Chartered Arbitrator, as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on April 15, 2013; the National Arbitration Forum received payment on April 15, 2013. The Complaint was received in both Chinese and English.
On April 15, 2013, BEIJING INNOVATIVE LINKAGE TECHNOLOGY LTD. DBA DNS.COM.CN confirmed by e-mail to the National Arbitration Forum that the <tjsasol.com> domain name is registered with BEIJING INNOVATIVE LINKAGE TECHNOLOGY LTD. DBA DNS.COM.CN and that Respondent is the current registrant of the name. BEIJING INNOVATIVE LINKAGE TECHNOLOGY LTD. DBA DNS.COM.CN has verified that Respondent is bound by the BEIJING INNOVATIVE LINKAGE TECHNOLOGY LTD. DBA 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 April 16, 2013, the Forum served the Chinese language Complaint and all Annexes, including a Chinese language Written Notice of the Complaint, setting a deadline of May 6, 2013 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@tjsasol.com. Also on April 16, 2013, 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.
The Registration Agreement is written in Chinese, thereby making the language of the proceedings in Chinese. Pursuant to Rule 11(a), the Panel determines the language requirement has been satisfied through the Chinese language Complaint and Commencement Notification, and, absent a Response, determines the remainder of the proceedings may be conducted in English.
On May 17, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Houston Putnam Lowry, Chartered Arbitrator, 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 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
[i] UK trademark 746664 dated 5 October 1955 for the word mark SASOL in class 4 “All goods listed in class 4.” The Complainant also holds registrations for the SASOL trademark in numerous countries worldwide. The SASOL trademark portfolio includes trademark registrations in various countries around the world, including China.
[ii] Common law rights: see below.
The Complainant wishes to draw
attention to Paragraph 11(a) of the UDRP Rules, which states:
Language of Proceedings
(a) Unless otherwise agreed by the Parties, or specified otherwise in the
Registration Agreement, the language of the administrative proceeding shall be
the language of the Registration Agreement, subject to the authority of the
Panel to determine otherwise, having regard to the circumstances of the
administrative proceeding.
The Panel therefore has the discretion to allow the Complaint to be filed in
English even though the domain name registration agreement may have been
concluded in the Chinese language.
In light thereof, we request that the complaint be filed in English. This request is supported by the following facts:
See Groupe Industriel Marcel Dassault, Dassault Aviation v. Mr. Minwoo Park (WIPO D2003-0989)
“The spirit of Paragraph 11 is to ensure fairness in the selection of language by giving full consideration to the parties’ level of comfort with each language, the expenses to be incurred and the possibility of delay in the proceeding in the event translations are required and other relevant factors.
In the present case, even if the registration agreement for the Domain Name was made in the Korean language, it is apparent from the written communications exchanged among the parties that the Respondent seems to have little difficulty in communicating in the English language. The English used by the Respondent in his letters demonstrates his ability to understand and communicate in English without difficulty.
On the other hand, the Complainant is not able to communicate in Korean and therefore, if the Complainant were required to submit all documents in Korean, the arbitration proceeding will be unduly delayed and the Complainant would have to incur substantial expenses for translation. Therefore, in consideration of the above circumstances and in the interest of fairness to both parties, the Panel hereby decides, under Paragraph 11 of the Rules, that English shall be the language of administrative proceeding in this case.”
The following cases below also show English was accepted as the filing language even where the registration agreement was not concluded in the English Language.
FACTUAL AND LEGAL GROUNDS
This Complaint is based on the following factual and legal grounds: ICANN Rule 3(b)(ix).
Factual background:
(i) Complainant
1. The Complainant is an international petroleum, chemical, mining and technology company that conducts business in over 149 countries worldwide, specializing in the manufacture and supply of chemicals, fuels and oils. The Complainant’s head office is situated in Johannesburg, Rosebank, South Africa.
2. The Complainant was formed in South Africa on 26 September 1950 originally under the name South African Coal, Oil and Gas Corporation Limited, later adopting the invented acronym SASOL. The complainant was registered as a public company under the name SASOL LIMITED on 25 June 1979.
3. The Complainant is the holding company of the SASOL GROUP of Companies, which incorporates numerous companies, including SASOL GROUP SERVICES (PROPRIETARY) LIMITED, SASOL CHEMICAL HOLDINGS INTERNATIONAL (PTY) LIMITED, SASOL CHEMICALS JAPAN KK and SASOL CHEMICALS PACIFIC LIMITED.
4. The Complainant entered the global market in 1953, when it opened an office in Dusseldorf, Germany as a division of one of its companies Sasol Marketing Company Limited.
5. The Complainant was listed on the Johannesburg Securities Exchange (JSE) in 1979 and on the NASDAQ Stock Market Inc. in 1982, moving over to the New York Stock Exchange (NYSE) during April 2003. For further information, see the Complainant’s website at <www.sasol.com>.
6. The Complainant and its group of companies have made a concerted effort to register the SASOL trademark in all the countries in which it operates or conducts business with the result that it has filed the SASOL word mark and stylized mark in over 149 countries worldwide, including but not limited to Botswana, Canada, China, Egypt, France, Germany, Hong Kong, Japan, Lesotho, Malaysia, Namibia, Nigeria, South Africa, Swaziland, United States. Australia, New Zealand, United Kingdom and Zimbabwe.
7. The Complainant has established regional companies and supporting business units worldwide to facilitate and grow its business both locally and internationally. The Complainant has set-up offices in North America, Italy, Germany, Netherlands, China, Spain, United Kingdom, France, Japan, Poland, Qatar, Slovakia, Belgium, Malaysia, New Zealand, United Arab Emirates, South America and Australia.
8. The Complainant has also registered over 700 domain names that are identical or incorporate its SASOL trademark. The Complainant registered <sasol.com> on 4 March 1996 and <sasol.co.za> (South African ccTLD) on 1 January 1995. The Complainant has also registered the domain names <sasol.net> (2 May 2002), <sasol.org> (2 May 2002), <sasol.info> (11 October 2001) and <sasol.biz> (12 November 2001).
9. The Complainant launched its website <www.sasol.co.za> on 28 December 1996 and <www.sasol.com> on 7 January 1997.
10. The Complainant’s main website <www.sasol.com> generates a large number of visits per year from numerous countries. The number of visits only to its homepage (excluding other pages on its website) during the last five years has been as follows:
· 2003: 260,113
· 2004: 432,642
· 2005: 637,837
· 2006: 841,734
· 2007: 666,666
· 2008: 1,770,234
· 2009: 1,642,372
· 2010: 1,712,229
· 2011: 7,537,082
11. The total turnover for 2001-2011 amounts to approximately R 847 876 million (approximately $ 101 878 million).
12. The Complainant spent approximately R 40 728 (approximately $ 4 893 million) on marketing between 2001 to 2011 (see annexure 5, pages 7 – 8).
13. The Complainant’s marketing expenditure has included:
a. sponsoring the South African National Rugby Team (2004-2010) including the Springboks Seven’s dinner at the Hong Kong Jockey Club;
b. sponsoring the South African National Olympic Team during the 2004 Olympics;
c. promotional calendars and sun peaks;
d. sponsoring the South African U23 soccer team (1996 – 2009) including promotions at the 2000 Olympics in Sydney;
e. national and local radio advertising;
f. sponsoring and promoting the Sasol Birds & Birding Fair (2003 – current) including publications sold internationally;
g. sponsor Sasol-E Birds which is available as an application for Nokia, Blackberry and Apple online
h. tv advertisements for the Rugby World Cup 2007;
i. publishing its own newspaper and newsletter;
j. exhibiting its products and services at various exhibitions around South Africa;
k. sponsoring the South African National Woman’s Soccer Team (2009-2012) who participates internationally( London Olympics 2012), which includes promotions at their games;
l. exhibiting its products and services at various exhibitions internationally, including World’s Explosives Congress in Dallas, World PetroleumCongress (2005 Johannesburg, 2008 Madrid, 2011 Qatar).
m. South African National Youth Orchestra
n. Sasol New Signatures – Art Competition
14. The Complainant’s website is ranked as the top result on the search engines Google.com, Google.com.hk and Yahoo.com for the search term SASOL.
15. The Complainant operates a Chinese language website www.sasolasia.com.cn. The domain name sasolasia.com.cn was registered on 21 February 2008.
16. The Complainant has generated extensive press coverage.
17. The Complainant regularly issues press releases.
(ii) Respondent
18. The Domain was registered on 16 July 2012.
19. The Complainant first became aware of the Domain on 11 September 2012.
20. As of 7 February 2013 the Domain directed to a website, promoting the sale of a variety of chemical related products. The Website displays the company name “SASOL GROUP” at the foot of each webpage.
21. On 7 February 2013 the Complainant’s representative sent a take down email communication to the host of the Website. No response was received and the Website was not taken down. On the same day a cease and desist communication was sent to the Respondent to which no response was received.
[a.] The manner in which the domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights. ICANN Rule 3(b)(ix)(1); ICANN Policy ¶4(a)(i).
(i) Rights
22. The Complainant relies on its registered trademarks referred to in paragraph [4] [c] above.
23. The Complainant also relies on common law rights. By virtue of its extensive trading and marketing activities, the Complainant has acquired a substantial reputation and goodwill in the mark SASOL such that it is recognized by the public as distinctive of the Complainant’s petroleum and chemical goods and services. The Complainant refers in particular to paragraph [5] [i].
24. The Complainant also relies on the fact that, as explained below, the Respondent’s activities presupposes that the Complainant’s business was known and identified by the name and mark SASOL.
(ii) Identical or Confusing Similarity
25. The Domain is confusingly similar to the Complainant’s SASOL trademark.
26. The dominant and distinctive part of the Domain is SASOL. The descriptive letters “T” and “J” do not add to the any distinctiveness to the Domain but, in fact, adds to the confusion that the Respondent is the Complainant. See Dr. Ing. h.c. F. Porsche AG v. Vasiliy Terkin, D2003-0888 (WIPO January 6, 2004) finding that “In numerous cases, it has been held that a domain name that wholly incorporates a Complainant’s registered mark may be sufficient to establish confusing similarity for purposes of the UDRP. The Panel further agrees with Complainant’s contention that such descriptive component added to Complainant’s trademark even adds to the confusion by leading users to believe that Complainant operates the web site associated to the disputed domain name…”. See, eg, Sony Kabushiki Kaisha v. Inja, Kil, D2000-1409 (WIPO Dec. 9, 2000) (finding that “[n]either the addition of an ordinary descriptive word . . . nor the suffix ‘.com’ detract from the overall impression of the dominant part of the name in each case, namely the trademark SONY” and thus Policy paragraph 4(a)(i) was satisfied). SASOL is clearly the dominant part of the Domain.
27. The Complainant’s trademark rights to SASOL have previously been established in five UDRP decisions:
a. Sasol Limited v. Texas International Property Assoicates- NA NA FA0808001220064 (Nat. Arb. Forum, Oct. 3, 2008);
b. Sasol Limited v. MM Energy Consulting cc FA0901001241959 (Nat. Arb. Forum, Feb. 20, 2009);
c. Sasol Limited v. Addsoft Technologies (P) Ltd. c/o Debasish Mohapatra FA1004001316587 (Nat. Arb. Forum April 30, 2010);
d. Sasol Limited v. Shenyang sasuoer huagongchanpin Co., Ltd. c/o shuang xing FA1104001382178 (Nat. Arb. Forum May 19, 2011); and
e. Sasol Limited v Wangxiuhe FA1109001406183 (Nat. Arb. Forum October 17, 2011)
f. Sasol Limited v.HouRui / hou rui FA1209001464662 (Nat. Arb. Forum November 9 2012)
g. Sasol Limited v. tianjingsasuoerhuagongyouxiangongsi FA1210001467629 (Nat. Arb. Forum November 30 2012)
h. Sasol Limited v. wangxiuhe / xiuhe wang FA1210001466152 (Nat. Arb. Forum December 12 2012)
[b.] The Respondent has no rights or legitimate interests in respect of the domain name that is the subject of the complaint. ICANN Rule 3(b)(ix)(2); ICANN Policy ¶4(a)(ii).
28. The Complainant asserts that, for the reasons stated below, it has made a prima facie case that the Respondent should be considered as having no rights or legitimate interests in the Domain and that the burden now shifts to the Respondent. See G.D. Searle v. Martin Mktg., 118277 (Nat. Arb. Forum, Oct. 23, 2002) (where complainant has asserted that respondent has no rights or legitimate interests it was incumbent on respondent to come forward with concrete evidence rebutting this assertion because this information is “uniquely within the knowledge and control of the respondent”).
29. Dealing with each of the subparagraphs of paragraph 4 (c) of the ICANN policy in turn:
(i.) Whether, before any notice to the Respondent of the dispute, Respondent’s use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name is in connection with a bona fide offering of goods or services.
30. The Complainant has no association with the Respondent and has never authorized or licensed the Respondent to use its trademarks.
31. The Respondent has clearly used the Domain and the Complainant’s trademark to attract and profit from Internet users seeking the Complainant – see the submissions in relation to bad faith below. Such use of the Domain could not be said to be “bona fide”.
(ii.) Whether Respondent (as an individual, business, or other organization) has been commonly known by the domain names.
32. There is no evidence that the Respondent has been commonly known by the name comprised in the Domain.
(iii.) Whether Respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
33. It is clear that the Respondent was out for commercial gain. See the Complainants’ submissions below in relation to paragraph 4b (ii), (iii) and (iv) of the Policy.
[c.] The domain name should be considered as having been registered and being used in bad faith.] ICANN Rule 3(b)(ix)(3); ICANN Policy ¶4(a)(iii).
34. The Complainant relies on paragraph 4b (ii), (iii) and (iv) of the Policy.
4b(ii). The Respondent registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the Respondent has engaged in a pattern of such conduct
35. The Complainant recovered the domain name sasolchem.net from the Respondent (see Sasol Limited v. tianjingsasuoerhuagongyouxiangongsi FA1210001467629 (Nat. Arb. Forum November 30 2012)). The facts of the said case are identical to that of this case.
36. The Complainant recovered the domain name sasol-chem.com in Sasol Limited v Wangxiuhe FA1109001406183 (Nat. Arb. Forum October 17, 2011). The Respondent in the said case shares the same telephone dialing code (+86311), post code, province code and address as the Respondent in this instance. In addition sasolchem.net and sasol-chem.com share the same address and telephone number.
37. Based on the above evidence it is asserted that the Respondent in this Complaint and Wangxiuhe are, in fact, the same the party. The Respondent had also registered chinasasol.com and sasolmetal.com, which the Complainant recovered in the UDRP complaint Sasol Limited v. wangxiuhe / xiuhe wang FA1210001466152 (Nat. Arb. Forum December 12 2012) (FA1210001466152).
4b(iii) The Respondents registered the domain name primarily for the purpose of disrupting the business of a competitor.
38. The Respondent registered the Domain for the purpose of unfairly disrupting the Complainant’s business by diverting business intended for the Complainant. The Respondent is a competitor as it sells chemical products within the same industry and country as the Complainant.
39. As explained below, the Respondent was clearly aware of the Complainant and its business when it registered the Domain.
40. It is inconceivable that the Respondent intended to operate a genuine business with (or had any other genuine reason to use) domain names which comprised a competitor’s trademark.
41. The Respondent appears to be part of a network of fraudsters that have setup fraudulent websites to sell inferior chemical products under the auspices of the SASOL trademark with the intention of defrauding the Complainant’s customers and/or potential customers. See the UDRP complaints mentioned in paragraphs 35, 36 and 37 above.
4b(iv.) Whether by using the domain name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s web site or other on-line location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s web site or location or of a product or service on Respondent’s web site or location.
42. The Website is intended to masquerade the Respondent as belonging to, associated with and/or being part of the Complainant’s business in order to defraud potential clients searching for the Complainant’s business.
43. It is clear from the following that the Respondent had the Complainant and its business in mind when registering and using the Domain:
a. the Domain is explicable only as a deliberate attempt to cause confusion by using the Complainant’s trademark or a term confusingly similar thereto allied to a descriptive letters;
b. the Complainant has previously recovered the domain names “sasol-chem.com”, “chinasasol.com and sasolmetal.com” and “sasolchem.net” in three separate UDRP complaints filed against the Respondent. See paragraphs 35, 36 and 37 above;
c. it is highly probable that the Respondent would have come across the Complainant’s domain name registrations mentioned in paragraph 8 above while conducting a domain name availability search;
d. the Complainant conducts business, has a local presence and registered trademarks for SASOL in China (including other Asian countries), which is the same country where the Respondent is purportedly located. In addition the Complainant operates a Chinese language website at <www.sasolasia.com.cn>, see paragraph 15, which specifically targets China and surrounding Asian countries; and
e. the Complainant is internationally well-known as a major participant in the petroleum, chemical and technology industry.
44. The use of the Domain is intended by the Respondent to create a likelihood of confusion in the mind of the public as to an association between the Respondent and the Complainant.
B. Respondent
Respondent failed to submit a Response in this proceeding.
(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.
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 the following three elements to obtain an order cancelling or transferring a domain name:
(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 claims it is a petroleum, chemical, mining, and technology company that conducts business in over 149 countries around the world. Complainant uses the SASOL mark in its business (sort of an acronym for the South African Coal, Oil and Gas Corporation Limited). Complainant has registered the SASOL mark with the United Kingdom Intellectual Property Office (“UKIPO”). See Reg. No. 746,664 published on April 25, 1956. Evidence of UKIPO trademark registration sufficiently proves Complainant’s rights under Policy ¶4(a)(i) rights, regardless of where Respondent is located. See Royal Bank of Scot. Grp. plc v. Demand Domains, FA 714952 (Nat. Arb. Forum August 2, 2006) (holding that registration of the PRIVILEGE mark with the United Kingdom trademark authority sufficiently established the complainant’s rights in the mark under the Policy); 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).
Complainant claims Respondent’s <tjsasol.com> domain name is confusingly similar to the SASOL mark. The addition of the generic top-level domain (“gTLD”) “.com” must be disregarded for the purposes of this analysis.
Complainant argues the domain name’s dominant feature is the SASOL mark, with neither the letter “t” nor “j” sufficiently differentiating the disputed domain name from Complainant’s mark. Frankly, this Panel would normally be loath to find confusing similarity between the mark and the disputed domain name. Given the use of the disputed domain name, Respondent certainly intended for there to be confusion. Complainant’ mark is apparently famous, even though the Panel did not know of its existence before this proceeding began. The additional letters come at the beginning of an admittedly short and famous fanciful mark. While this is a close case, the Panel finds the addition of the random letters “tj” to Complainant’s mark does not sufficiently differentiate it under the facts of this case, perhaps because Complainant has so many domain names incorporating the SASOL mark. See Am. Online, Inc. v. Amigos On Line RJ, FA 115041 (Nat. Arb. Forum Aug. 28, 2002) (finding that the <aolrj.com> domain name was confusingly similar to the complainant’s AOL mark because “…the addition of a string of indiscriminate letters to a famous mark in a second level domain does not differentiate the domain name from the mark.”).
The Panel finds Policy ¶4(a)(i) satisfied.
Complainant must first make a prima facie case Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶4(a)(ii). Then the burden shifts to Respondent to show it has 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 claims there is no evidence Respondent is commonly known by the disputed domain name. Respondent has not claimed otherwise. Complainant maintains Respondent has no association with Complainant authorizing or permitting Respondent to use the SASOL mark in domain names. The WHOIS information lists “tianjingsasuoerhuagongyouxiangongsi” as the registrant (slightly shorter than Llanfairpwllgwyngyllgogerychwyrndrobwllllantysiliogogogoch if the reader will forgive the Panel’s whimsy). Given the obvious difference between Respondent’s registered name and the disputed domain name, the Panel is comfortable concluding Respondent is not commonly known by the SASOL mark. See 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).
Complainant argues Respondent has used the SASOL mark in holding itself out to the public as being the “Sasol Company” selling the same types of goods Complainant legitimately sells under the SASOL mark. Respondent’s offer of goods is not bona fide when Respondent has simply copied the decades-old name of Complainant and used it to compete directly with Complainant. The disputed domain name resolves to a website that purports to be the “Sasol Company founded in 1978” with links to chemical products. Respondent’s use of the SASOL mark to compete directly with Complainant does not constitute a Policy ¶4(c)(i) bona fide offering of goods and services, and that such commercial offerings are not allowed by Policy ¶4(c)(iii). See Alcon, Inc. v. ARanked, FA 1306493 (Nat. Arb. Forum Mar. 18, 2010) (“The Panel finds that capitalizing on the well-known marks of Complainant by attracting internet users to its disputed domain names where Respondent sells competing products of Complainant is not a bona fide offering of goods or services pursuant to Policy ¶4(c)(i) or a noncommercial or fair use pursuant to Policy ¶4(c)(iii).”).
The Panel finds Policy ¶4(a)(ii) satisfied.
Complainant argues Respondent has engaged in a pattern of preventing Complainant from reflecting its mark in domain names. Complainant recovered the <sasolchem.net> domain from Respondent in Sasol Ltd. v. tianjingsasuoerhuagongyouxiangongsi, FA 1467629 (Nat. Arb. Forum Nov. 30, 2012). Complainant also recovered the <sasol-chem.com> domain name in a case where the respondent had the same telephone number, postal code, province code, and address as Respondent. See Sasol Ltd. v. Wangxiuhe, FA 1406183 (Nat. Arb. Forum Oct. 17, 2011). However, this allegation does not meet the requirements of the UDRP because it has not prevented Complainant from reflecting its mark in a domain name (which Complainant has done numerous times).
Complainant claims Respondent registered this domain name for purposes of disrupting Complainant’s business and diverting Complainant’s own customers to Respondent’s competing business. It is inconceivable Respondent was unaware of Complainant’s mark, having infringed on it many times and erected a web site that uses Complainant’s mark. It appears to the Panel that Respondent is trying to pass itself off as Complainant, clearly evidence of bad faith registration and use. Respondent’s use of Complainant’s mark in selling goods in competing with Complainant is evidence of under Policy ¶4(b)(iii) of bad faith use and registration. 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).”).
Complainant claims Respondent seeks to masquerade as Complainant to confuse Internet users into mistakenly believing they are doing business with Complainant. Complainant conducts business locally and has a local presence in China, so it is likely most of the domain name’s audience will believe they are ordering Complainant’s products. Respondent’s decision to present itself to consumers as the “Sasol Company” and selling goods competing with Complainant is evidence of Policy ¶4(b)(iv) bad faith intent to confuse Internet users. 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).
The Panel finds Policy ¶4(a)(iii) satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes relief shall be GRANTED.
Accordingly, it is Ordered the <tjsasol.com> domain name be TRANSFERRED from Respondent to Complainant.
Houston Putnam Lowry, Chartered Arbitrator, Panelist
Dated: Friday, May 31, 2013
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