Sasol Limited v. Barend de Beer / BenBen
Claim Number: FA1506001622658
Complainant is Sasol Limited (“Complainant”), represented by Daniel Greenberg of Lexsynergy Limited, London, United Kingdom. Respondent is Barend de Beer / BenBen (“Respondent”), South Africa.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <sasoldocs.com> and <sasoldocs.mobi>, 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.
Ho Hyun Nahm, Esq. as Panelist.
Complainant submitted a Complaint to the Forum electronically on June 4, 2015; the Forum received payment on June 4, 2015.
On June 4, 2015, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <sasoldocs.com> and <sasoldocs.mobi> domain names are registered with GoDaddy.com, LLC and that Respondent is the current registrant of the names. 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 June 10, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 30, 2015 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@sasoldocs.com, postmaster@sasoldocs.mobi. Also on June 10, 2015, 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 Forum transmitted to the parties a Notification of Respondent Default.
On July 7, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Ho Hyun Nahm, Esq. as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the 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 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 names be transferred from Respondent to Complainant.
A. Complainant
(i) Complainant owns the SASOL mark through its registration with the United Kingdom Intellectual Property Office (“UKIPO”) (e.g., Reg. No. 746,664, registered April 25, 1956). Complainant uses the SASOL mark in connection with its petroleum, chemical, mining, and technology company. The <sasoldocs.com> and <sasoldocs.mobi> domain names are confusingly similar to the SASOL mark. The domain names include Complainant’s mark in full, insert the generic term “docs,” and insert the generic top-level domains (“gTLD”) “.com” and “.mobi.”
(ii) Respondent has no rights or legitimate interests in the disputed domain names. Respondent is not commonly known by the disputed domain names, as Complainant has never authorized or licensed Respondent to use the SASOL trademark. Respondent’s lack of rights or legitimate interests in the <sasoldocs.com> and <sasoldocs.mobi> domain names is made evident by Respondent’s failure to use the disputed domain names in connection with a bona fide offering of goods or services, or for a legitimate noncommercial or fair use. Respondent uses the <sasoldocs.com> and <sasoldocs.mobi> domain names to market its products and/or services to Complainant. The domain names are being used as a form of ransom to afford Respondent a forum to present its products during “settlement negotiations.” See Compl., at Attached Ex. 12.
(iii) Respondent has engaged in bad faith registration and use of the <sasoldocs.com> and <sasoldocs.mobi> domain name. Respondent registered the disputed domain names with intent to sell the domain names and/or sell its products to Complainant, and uses the domain names as a bargaining chip in its negotiations. Respondent has engaged in a pattern of bad faith registration and use of domain names under Policy ¶ 4(b)(ii). Finally, Respondent had knowledge of Complainant’s rights in the SASOL mark when it registered the disputed domain names, which is further evidence of bad faith registration pursuant to Policy ¶ 4(a)(iii).
B. Respondent
Respondent did not submit a response. The Panel notes that the <sasoldocs.com> and <sasoldocs.mobi> domain names were both registered on October 14, 2014.
Complainant established that it had rights in the mark contained in the disputed domain names. Each of the disputed domain names is confusingly similar to Complainant’s protected mark.
Respondent has no rights to or legitimate interests in the disputed domain names.
Respondent registered and used the disputed domain names 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 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 asserts that it owns the SASOL mark through its registration with the UKIPO (e.g., Reg. No. 746,664, registered April 25, 1956). Complainant contends that it uses the SASOL mark in connection with its petroleum, chemical, mining, and technology company. Prior panels have concluded that registration of a mark with a trademark authority is sufficient to establish rights in the mark pursuant to Policy ¶ 4(a)(i), even when Respondent does not reside in the country where the mark is registered. See Royal Bank of Scot. Group plc v. Soloviov, FA 787983 (Nat. Arb. Forum Nov. 3, 2006) (“Complainant’s trademark registrations for the NATWEST mark with the United Kingdom Patent Office . . . establish 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). Accordingly, even though Respondent reportedly resides in South Africa, the Panel finds that Complainant’s UKIPO registration is sufficient under Policy ¶ 4(a)(i).
Complainant asserts that the <sasoldocs.com> and <sasoldocs.mobi> domain names are confusingly similar to the SASOL mark. The domain names include Complainant’s mark in full, insert the generic term “docs,” and insert the gTLD “.com” and “.mobi.” Prior panels have found that the incorporation of a generic word or term in a disputed domain name does little to reduce confusing similarity. See Am. Express Co. v. MustNeed.com, FA 257901 (Nat. Arb. Forum June 7, 2004) (finding the respondent’s <amextravel.com> domain name confusingly similar to Complainant’s AMEX mark because the “mere addition of a generic or descriptive word to a registered mark does not negate” a finding of confusing similarity under Policy ¶ 4(a)(i)). Further, past panels have also found that the addition of a gTLD does nothing to negate confusing similarity. See Whitney Nat’l Bank v. Easynet Ltd, FA 944330 (Nat. Arb. Forum Apr. 30, 2007) (“The additions of generic words with an obvious relationship to Complainant’s business and a gTLD renders the disputed domain name confusingly similar to Complainant’s mark pursuant to Policy ¶ 4(a)(i).”); see also Vanderbilt Univ. v. U Inc., FA 893000 (Nat. Arb. Forum Feb. 19, 2007) (finding the <vanderbilt.mobi> domain name to be identical to the VANDERBILT mark because it did not add anything except the generic top-level domain “.mobi”). As such, the Panel determines that each of the disputed domain names is confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i).
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 no rights or legitimate interests in the disputed domain names. Complainant alleges that Respondent is not commonly known by the disputed domain names, as Complainant has never authorized or licensed Respondent to use the SASOL trademark. Further, the Panel notes that the WHOIS information for the disputed domain names refers to “Barend de Beer / BenBen” as the registrant of record. See Compl., at Attached Ex. 10. Lacking any contrary evidence from Respondent, the Panel finds that Complainant’s contentions are sufficient to establish that Respondent lacks rights or legitimate interests in the disputed domain names. See Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding no rights or legitimate interests where (1) the respondent is not a licensee of the complainant; (2) the complainant’s prior rights in the domain name precede the respondent’s registration; (3) the respondent is not commonly known by the domain name in question).
Complainant argues that Respondent’s lack of rights or legitimate interests in the <sasoldocs.com> and <sasoldocs.mobi> domain names is made evident by Respondent’s failure to use the disputed domain names in connection with a bona fide offering of goods or services, or for a legitimate noncommercial or fair use. Complainant claims that Respondent uses the <sasoldocs.com> and <sasoldocs.mobi> domain names to market its products and/or services to Complainant. The Panel sees that the <sasoldocs.com> domain name resolves to a website that markets and promotes Respondent’s goods and services. See Compl., at Attached Ex. 11. Previous panels have found that use of a disputed domain name to redirect Internet users to a respondent’s own website does not confer rights or legitimate interests. See V Golden Bear Int’l, Inc. v. Kangdeock-ho, FA 190644 (Nat. Arb. Forum Oct. 17, 2003) (“Respondent's use of a domain name confusingly similar to Complainant’s mark to divert Internet users to websites unrelated to Complainant's business does not represent 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).”). The Panel finds that Respondent lacks a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).
Complainant alleges that the domain names are being used as a form of ransom to afford Respondent a forum to present its products during “settlement negotiations.” See Compl., at Attached Ex. 12. Prior panels have found that a respondent’s willingness to sell or transfer a disputed domain name to a complainant is additional evidence that a respondent lacks rights or legitimate interests in a disputed domain name. See Am. Int’l Group, Inc. v. Dobson, FA 146568 (Nat. Arb. Forum Apr. 8, 2003) (finding evidence that the respondent lacked rights or legitimate interests in the disputed domain name after it sent several correspondences offering to sell its rights in the domain name in exchange for 1,500 shares of the complainant’s stock to the complainant); see also Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (concluding that a respondent’s willingness to sell a domain name to the complainant suggests that a respondent has no rights or legitimate interests in that domain name under Policy ¶ 4(a)(ii)). The Panel finds that Respondent lacks rights or legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii).
Complainant argues that Respondent registered the disputed domain names with intent to sell the domain names and/or sell its products to Complainant, and uses the domain names as a bargaining chip in its negotiations. Previous panels have found that an offer to sell a disputed domain name to a complainant in exchange for non-monetary compensation is evidence of bad faith under Policy ¶ 4(b)(i). See Metallica v. Schnieder, FA 95636 (Nat. Arb. Forum Oct. 18, 2000) (finding bad faith pursuant to Policy ¶ 4(b)(i) where the respondent offered to transfer the disputed domain name registration in return for non-monetary consideration such as a face to face meeting with the complainant, phone calls from the complainant to two of the respondent’s friends, and an interview). The Panel finds that Respondent has engaged in bad faith registration and use under Policy ¶ 4(b)(i).
Complainant alleges that Respondent has engaged in a pattern of bad faith registration and use of domain names under Policy ¶ 4(b)(ii). Complainant claims that Respondent has registered numerous domain names that incorporate well-known South African and International trademarks. See Compl., at Attached Ex. 13. The Panel notes that past panelists have found that multiple domain names in the same proceeding is evidence that respondent has registered the disputed domain names in bad faith under Policy ¶ 4(b)(ii), but have refused to accept allegations of unrelated infringing domain names. See EPA European Pressphoto Agency B.V. v. Wilson, D2004-1012 (WIPO Feb. 9, 2005) (finding that the respondent’s registration of the <epa-photo.com>, <epaphoto.com> and <epaphotos.com> domain names was sufficient to constitute a pattern pursuant to Policy ¶ 4(b)(ii)). As Respondent has registered two confusingly similar domain names in the instant proceeding, the Panel finds that Respondent has engaged in a pattern of bad faith pursuant to Policy ¶ 4(b)(ii).
Finally, Complainant asserts Respondent had knowledge of Complainant’s rights in the SASOL mark when it registered the disputed domain name, which is further evidence of bad faith registration pursuant to Policy ¶ 4(a)(iii). Complainant alleges that Respondent had Complainant and its business in mind when registering and using the domain names. Complainant argues that Respondent attempted to solicit a meeting with Complainant to sell its products and/or services, Respondent is located in South Africa where Complainant has its offices, and Complainant is internationally well-known, which demonstrates that Respondent was aware of Complainant at the time of registration. Although panels have not generally regarded constructive notice to be sufficient for a finding of bad faith, the Panel infers due to Respondent’s use manner of the disputed domain names 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").
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <sasoldocs.com> and <sasoldocs.mobi> domain names be TRANSFERRED from Respondent to Complainant.
Ho Hyun Nahm, Esq., Panelist
Dated: July 14, 2015
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