national arbitration forum

 

DECISION

 

Sasol Limited v. barry franks

Claim Number: FA1310001522345

PARTIES

Complainant is Sasol Limited (“Complainant”), represented by Daniel Greenberg of Lexsynergy Limited, United Kingdom.  Respondent is barry franks (“Respondent”), New Hampshire, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <cleansasol.com>, registered with GoDaddy.com, LLC.

 

PANEL

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.

 

James A. Carmody, Esq., as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on October 2, 2013; the National Arbitration Forum received payment on October 2, 2013.

 

On October 2, 2013, GoDaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <cleansasol.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name.  GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC 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 3, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 23, 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@cleansasol.com.  Also on October 3, 2013, the 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, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed James A. Carmody, Esq., 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.

 

RELIEF SOUGHT

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

 

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

 

1.    Respondent’s <cleanasol.com> domain name, the domain name at issue, is confusingly similar to Complainant’s SASOL mark.

 

2.    Respondent does not have any rights or legitimate interests in the domain name at issue.

 

3.    Respondent registered and used the domain name at issue in bad faith.

 

B.  Respondent corresponded with the Forum.  However the Panel determined that such correspondence did not constitute a Response.  Accordingly, this case proceeded as if Respondent defaulted.

 

FINDINGS

Complainant, Sasol Limited, 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. Complainant has registered over 700 domain names that are identical or incorporate its SASOL trademark.  Complainant registered <sasol.com> on March 4, 1996.  Complainant’s marketing expenditure has included sponsoring the South African National Rugby Team, sponsoring the South African National Olympic Team during the 2004 Olympics, promotional calendars and sun peaks, etc.  Complainant is the owner of a trademark registration with the United States Patent and Trademark Office (“USPTO”) for the SASOL mark (Reg. No. 3,114,541, registered July 11, 2005). Complainant also is the owner of a trademark registration with the United Kingdom Intellectual Property Office (“UKIPO”) for the SASOL mark (Reg. No. 746,774, registered January 25, 2008). The domain name is confusingly similar to Complainant’s SASOL trademark. The word “clean” does not add distinctiveness to the domain name.

 

There is no evidence that Respondent has been commonly known by the name comprised in the domain.  Respondent was out for commercial gain by allowing the pay-per-click advertising to be displayed on the holding page and making no effort to remove such advertising. The use of the domain is intended by Respondent to create a likelihood of confusion in the minds of the public as to an association between Respondent and Complainant.  It is clear that Respondent had Complainant and its business in mind when registering and using the domain.  The domain was registered on December 29, 2012.

 

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 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.”).

 

Identical and/or Confusingly Similar

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. Complainant has registered over 700 domain names that are identical or incorporate its SASOL trademark, including its <sasol.com> domain name on March 4, 1996. Complainant's marketing expenditure has included sponsoring the South African National Rugby Team, sponsoring the South African National Olympic Team during the 2004 Olympics, promotional calendars and sun peaks, etc. Complainant has generated extensive press coverage and regularly issues press releases.  Further, Complainant is the owner of a trademark registration with the USPTO for the SASOL mark (Reg. No. 3,114,541, registered July 11, 2005) and is also the owner of a trademark registration with the UKIPO for the SASOL mark (Reg. No. 746,774, registered January 25, 2008). Id.  Because Respondent appears to reside within the United States, Complainant’s registration of the SASOL mark with the USPTO sufficiently establishes its rights in the mark pursuant to Policy ¶ 4(a)(i). See Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (finding that a USPTO trademark registration adequately demonstrates a complainant’s rights in a mark under Policy ¶ 4(a)(i)).

 

Respondent’s <cleansasol.com> domain name is confusingly similar to Complainant’s SASOL trademark. Complainant contends that the word “clean” is descriptive and does not add distinctiveness to the disputed domain name. Respondent’s addition of a generic term does not distinguish the domain name from the mark pursuant to Policy ¶ 4(a)(i). See Westfield Corp. v. Hobbs, D2000-0227 (WIPO May 18, 2000) (finding the <westfieldshopping.com> domain name confusingly similar because the WESTFIELD mark was the dominant element). Respondent includes the generic top-level domain (“gTLD”) “.com” to Complainant’s mark in the disputed domain name.  Further, Respondent’s addition of a gTLD to a mark in a domain name is irrelevant to a Policy ¶ 4(a)(i) determination. See Bank of Am. Corp. v. McCall, FA 135012 (Nat. Arb. Forum Dec. 31, 2002) (holding that attaching a gTLD  is “unable to create a distinction capable of overcoming a finding of confusing similarity”). Accordingly, the Panel concludes that Respondent’s <cleansasol.com> domain name is confusingly similar to Complainant’s SASOL mark under Policy ¶ 4(a)(i).

 

The Panel finds that Policy ¶ 4(a)(i) has been established. 

 

Rights 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 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.”).

 

There is no evidence that Respondent has been commonly known by the name comprised in the domain. Complainant has no association with Respondent and has never authorized or licensed Respondent to use its trademark. The registrant of the <cleansasol.com> domain name is identified as “barry franks” in the WHOIS information. In Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006), the panel concluded that respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that respondent was commonly known by the domain names, and complainant had not authorized respondent to register a domain name containing its registered mark. Therefore, Respondent is not commonly known by the <cleansasol.com> domain name under Policy ¶ 4(c)(ii).

 

Complainant argues that Respondent was out to make a commercial gain by allowing the pay-per-click advertising to be displayed on the holding page and Respondent made no effort to remove the advertising.  Respondent’s <cleansasol.com> domain name resolves to a commercial website featuring unrelated links titled “IWESCO & Adopt-a-Road,” “Do You Play Sports?,” “Gutter,” and others. Prior panels have held that a respondent’s use of a domain name to provide unrelated hyperlinks for commercial gain is not a bona fide offering of goods or services or a legitimate noncommercial or fair use. See Disney Enters., Inc. v. Dot Stop, FA 145227 (Nat. Arb. Forum Mar. 17, 2003) (finding that the respondent’s diversionary use of the complainant’s mark to attract Internet users to its own website, which contained a series of hyperlinks to unrelated websites, was neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the disputed domain names). Consequently, the Panel finds that Respondent’s use of the <cleansasol.com> domain name does not qualify as a Policy ¶ 4(c)(i) bona fide offering of goods or services or a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use.

 

The Panel finds that Policy ¶ 4(a)(ii) has been established. 

 

Registration and Use in Bad Faith

Respondent’s use of the <cleansasol.com> domain name is intended to create a likelihood of confusion in the minds of the public as to an association between Respondent and Complainant. The Panel observes that Respondent’s disputed domain name links to a webpage featuring links unrelated to Complainant’s business titled “IWESCO & Adopt-a-Road,” “Do You Play Sports?,” “Gutter,” and others.  The Panel infers that Respondent makes commercial gains by attracting users to its website. In Bank of Am. Fork v. Shen, FA 699645 (Nat. Arb. Forum June 11, 2006), the panel held that respondent’s previous use of the <bankofamericanfork.com> domain name to maintain a web directory was evidence of bad faith because respondent presumably commercially benefited by receiving click-through fees for diverting Internet users to unrelated third-party websites. Thus, the Panel finds that Respondent has registered and is using the <cleansasol.com> domain name in bad faith pursuant to Policy ¶ 4(b)(iv).

 

Complainant argues that it is clear that Respondent had Complainant and its business in mind when registering and using the domain. Respondent’s knowledge of Complainant is evidenced by the fact that Complainant is internationally well-known as a major participant in the petroleum, chemical, and technological industry and because it is highly probably that Respondent would have come across Complainant’s domain name registrations and trademark while conducting a domain name availability search. Although panels have not generally regarded constructive notice to be sufficient for a finding of bad faith, the Panel finds that Respondent had actual knowledge of Complainant's mark and rights and therefore determines 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").

 

The Panel finds that Policy ¶ 4(a)(iii) has been established. 

 

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 <cleansasol.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

James A. Carmody, Esq., Panelist

Dated:  November 5, 2013

 

 

 

 

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