Sasol Limited v. ICS Inc
Claim Number: FA1409001578614
Complainant is Sasol Limited (“Complainant”), represented by Isabelle Korvin-Greenberg of Lexsynergy Limited, London, UK. Respondent is ICS Inc (“Respondent”), Cayman Islands.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <sasollearnership.com>, registered with GODADDY.COM, LLC.
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.
The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on September 8, 2014; the National Arbitration Forum received payment on September 8, 2014.
On September 9, 2014, GODADDY.COM, LLC confirmed by e-mail to the National Arbitration Forum that the <sasollearnership.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 September 11, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 1, 2014 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@sasollearnership.com. Also on September 11, 2014, 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 October 3, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed the Honorable Charles K. McCotter, Jr. (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 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
Policy ¶ 4(a)(i)
Complainant, Sasol Limited, has been using the SASOL mark in connection with the manufacture and supply of chemicals, fuels and oils. Complainant has a valid registration with the United Kingdom International Property Office (“UKIPO”) for the SASOL mark (Reg. No. 746,664, registered October 5, 1955). The <sasollearnership.com> domain name is confusingly similar to Complainant’s SASOL mark.
Policy ¶ 4(a)(ii)
Respondent is not commonly known by the disputed domain name. Respondent is using the disputed domain name to redirect Internet users to a website featuring links to job offers from third party websites, some of which compete directly with Complainant.
Policy ¶ 4(a)(iii)
Respondent has engaged in an ongoing pattern of cybersquatting behavior.
Respondent is using the disputed domain name for commercial gain by collecting advertisement and click-through revenue from the third party links displayed at the disputed domain name.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant, Sasol Limited, has been using the SASOL mark in connection with the manufacture and supply of chemicals, fuels and oils. Complainant has a valid registration with the United Kingdom International Property Office (“UKIPO”) for the SASOL mark (Reg. No. 746,664, registered October 5, 1955).
Respondent, ICS Inc, registered the disputed domain name <sasollearnership.com> on September 22, 2013. Respondent is using the disputed domain name to redirect Internet users to a website featuring links to job offers from third party websites, some of which compete directly with Complainant.
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 has rights in the SASOL mark under Policy ¶ 4(a)(i) through registration with the UKIPO. 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).”). Although Respondent resides in the Cayman Islands, it is irrelevant under Policy ¶ 4(a)(i) as Complainant need not register its mark in the country where Respondent operates. See W.W. Grainger, Inc. v. Above.com Domain Privacy, FA 1334458 (Nat. Arb. Forum Aug. 24, 2010) (USPTO registration is sufficient to establish these [Policy ¶ 4(a)(i)] rights even when Respondent lives or operates in a different country.”).
Respondent’s <sasollearnership.com> domain name is confusingly similar to Complainant’s SASOL mark. The disputed domain name encompasses the entirety of Complainant’s SASOL mark with the mere addition of the descriptive word “learnership” and the generic top-level domain (“gTLD”) “.com”. The descriptive word “learnership” is a word unique to South Africa to indicate an apprenticeship or employment. Complainant is based out of South Africa. The addition of a descriptive word and a gTLD does not adequately distinguish the disputed domain name from the SASOL 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).
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).
Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). The WHOIS information lists the registrant of the <sasollearnership.com> domain name as “ICS Inc”. See Instron Corp. v. Kaner, FA 768859 (Nat. Arb. Forum Sept. 21, 2006) (the respondent was not commonly known by the disputed domain names because the WHOIS information listed “Andrew Kaner c/o Electromatic a/k/a Electromatic Equip't” as the registrant and there was no other evidence in the record to suggest that the respondent was commonly known by the domain names).
Respondent is using the disputed domain name to redirect Internet users to a website featuring links to job offers from third-party websites, including postings related to Complainant, its competitors, and other business in the area. The links include “Vacancies in South Africa”, “Jobs Job Search”, and “Learnership Jobs”. 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) as the website redirects Internet users to third party websites that compete with Complainant. See Compania Mexicana de Aviacion, S.A. de C.V. v. Bigfoot Ventures LLC, FA 1195961 (Nat. Arb. Forum July 14, 2008) (holding that the respondent had not demonstrated a bona fide offering of goods or services or a legitimate noncommercial or fair use when “the website resolving from the disputed domain name displays links to travel products and services, which directly compete with Complainant’s business”).
Respondent has engaged in an ongoing pattern of cybersquatting behavior. Respondent has several prior UDRP cases against him. See e.g., ER Marks, Inc. and QVC, Inc. v. ICS Inc., FA 1428474 (Nat. Arb. Forum Mar. 20, 2012). Prior UDRP cases against a Respondent is evidence of bad faith under Policy ¶ 4(b)(ii). See Westcoast Contempo Fashions Ltd. v. Manila Indus., Inc., FA 814312 (Nat. Arb. Forum Nov. 29, 2006) (finding bad faith registration and use pursuant to Policy ¶ 4(b)(ii) where the respondent had been subject to numerous UDRP proceedings where panels ordered the transfer of disputed domain names containing the trademarks of the complainants). Therefore, Respondent registered and uses the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(ii).
Respondent is using the disputed domain name for commercial gain by collecting advertisement and click-through revenue from the third-party links displayed at the disputed domain name. The disputed domain name resolves to a webpage that features links advertising job vacancies related to Complainant, Complainant’s competitors, and other businesses in South Africa. Respondent likely profits from the links. Therefore, Respondent’s conduct is evidence of bad faith under Policy ¶ 4(b)(iv). See Associated Newspapers Ltd. v. Domain Manager, FA 201976 (Nat. Arb. Forum Nov. 19, 2003) (“Respondent's prior use of the <mailonsunday.com> domain name is evidence of bad faith pursuant to Policy ¶ 4(b)(iv) because the domain name provided links to Complainant's competitors and Respondent presumably commercially benefited from the misleading domain name by receiving ‘click-through-fees.’”).
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 <sasollearnership.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: October 16, 2014
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