Sasol Limited v. yingyan
Claim Number: FA1310001522333
Complainant is Sasol Limited (“Complainant”), represented by Daniel Greenberg of Lexsynergy Limited, United Kingdom. Respondent is yingyan (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <sasol-china.com>, registered with Beijing Innovative Linkage Technology Ltd. dba 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.
The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on October 2, 2013; the National Arbitration Forum received payment on October 2, 2013. The Complaint was received in both Chinese and English.
On October 7, 2013, Beijing Innovative Linkage Technology Ltd. dba dns.com.cn confirmed by e-mail to the National Arbitration Forum that the <sasol-china.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 October 8, 2013, the Forum served the Chinese language Complaint and all Annexes, including a Chinese language Written Notice of the Complaint, setting a deadline of October 28, 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@sasol-china.com. Also on October 8, 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.
On November 4, 2013, 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.
Language of the Proceedings
The Registration Agreement is written in Chinese, thereby making the language of the proceedings in Chinese. 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.
A. Complainant
1. Complainant is an international petroleum, chemical, mining and technology company that conducts business in over 149 countries. Complainant specializes in the manufacture and supply of chemicals, fuels and oils.
2. Complainant has rights in the SASOL trademark through its many registrations in countries worldwide.
a. Complainant has filed the SASOL mark in over 149 countries worldwide, including:
i. United Kingdom Intellectual Property Office (“UKIPO”) (e.g., Reg. No. 746,664 registered April 25, 1956)
ii. Canadian Intellectual Property Office (“CIPO”) (Reg. No. 108,560 registered November 15, 1957)
iii. Republic of South Africa (e.g., Reg. No. 81/2,659 registered April 27, 1981)
iv. United States Patent and Trademark Office (“USPTO”) (Reg. No. 3,114,541 registered July 11, 2006)
v. Office for Harmonization in the Internal Market (“OHIM”) (Reg. No. 3,505,476 registered March 17, 2006)
3. Complainant has registered over 700 domain names incorporating the SASOL trademark, some of which include:
a. <sasol.co.za> registered January 1995
b. <sasol.com> registered March 4, 1996
c. <sasol.info> registered October 11, 2001
d. <sasol.biz> registered November 12, 2001
e. <sasol.net> registered May 2, 2002
4. Complainant operates a Chinese language website at <sasolasia.com.cn> registered on February 21, 2008.
5. Respondent registered the <sasol-china.com> domain name on November 2, 2012.
6. Respondent’s <sasol-china.com> domain name is confusingly similar to Complainant’s SASOL trademark.
a. Respondent adds the geographic locator “China” to Complainant’s SASOL trademark.
b. Respondent adds a hyphen between Complainant’s SASOL mark and the geographic term “China.”
7. Respondent has no rights or legitimate interests in the <sasol-china.com> domain name.
a. Complainant has never authorized Respondent to use Complainant’s trademarks.
b. Respondent is not commonly known by the disputed domain name.
c. Respondent’s use of the disputed domain name to attract Internet users to Respondent’s website and profit is not a bona fide offering of goods or services or a legitimate noncommercial or fair use.
8. Respondent registered and is using the <sasol-china.com> domain name in bad faith.
a. Respondent’s use of the disputed domain name is intended to create a likelihood of confusion as to the association between Respondent and Complainant.
b. Respondent attempts to deliberately conceal its identity.
c. Respondent had knowledge of Complainant’s mark when it created the disputed domain name.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant, Sasol Limited, is an international petroleum, chemical, mining and technology company that conducts business in over 149 countries. Complainant specializes in the manufacture and supply of chemicals, fuels and oils. Complainant has rights in the SASOL trademark through its many registrations in countries worldwide, including:
i. United Kingdom Intellectual Property Office (“UKIPO”) (e.g., Reg. No. 746,664 registered April 25, 1956)
ii. Canadian Intellectual Property Office (“CIPO”) (Reg. No. 108,560 registered November 15, 1957)
iii. Republic of South Africa (e.g., Reg. No. 81/2,659 registered April 27, 1981)
iv. United States Patent and Trademark Office (“USPTO”) (Reg. No. 3,114,541 registered July 11, 2006)
v. Office for Harmonization in the Internal Market (“OHIM”) (Reg. No. 3,505,476 registered March 17, 2006).
Respondent, yingyan, registered the <sasol-china.com> domain name on November 2, 2012. The WHOIS information for the <sasol-china.com> domain name does not list a registrant, but lists the organization name as “yingyan.”
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 numerous trademark registrations around the world. See Google, Inc. v. DktBot.org, FA 286993 (Nat. Arb. Forum Aug. 4, 2004) (finding that the complainant had established rights in the GOOGLE mark through its holding of numerous trademark registrations around the world); see also Orange Glo Int’l, Inc. v. Roswell Int’l Ltd, FA 440119 (Nat. Arb. Forum Apr. 21, 2005) (finding the complainant had established rights in the OXICLEAN mark by virtue of trademark registrations with various authorities, including the Office for Harmonization in the Internal Market (“OHIM”)); see also KCTS Television Inc. v. Get-on-the-Web Ltd., D2001-0154 (WIPO Apr. 20, 2001) (holding that it does not matter for the purpose of Policy ¶ 4(a)(i) whether the complainant’s mark is registered in a country other than that of the respondent’s place of business).
Complainant argues that Respondent’s <sasol-china.com> domain name is confusingly similar to Complainant’s SASOL mark under Policy ¶ 4(a)(i). Complainant contends that Respondent features Complainant’s SASOL mark as the dominant portion of the <sasol-china.com> domain name. Respondent adds the geographic locator “China” to the domain name as well as a hyphen to separate Complainant’s mark from the word “China.” Complainant claims that the use of the geographic locator “China” refers to a country in which Complainant operates, thus making the disputed domain name more confusing. Respondent also adds the generic top-level domain (“gTLD”) “.com” to the disputed domain name. The mere addition of geographic terms, hyphens and gTLDs are insufficient to differentiate the disputed domain name from Complainant’s mark. See AXA China Region Ltd. v. KANNET Ltd., D2000-1377 (WIPO Nov. 29, 2000) (finding that the <axachinaregion.com> domain name “is confusingly similar to the Complainant's trade mark ‘AXA’” because “common geographic qualifiers or generic nouns can rarely be relied upon to differentiate the mark if the other elements of the domain name comprise a mark or marks in which another party has rights”); see also CBS Broad., Inc. v. LA-Twilight-Zone, D2000-0397 (WIPO June 19, 2000) (finding that putting a hyphen between words of the complainant’s mark results in a domain name that is identical to and confusingly similar to the complainant’s mark); see also Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (finding that the mere addition of the generic top-level domain “.com” is insufficient to differentiate a disputed domain name from a mark). The Panel finds that Respondent’s <sasol-china.com> domain name is confusingly similar to Complainant’s SASOL 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).
Complainant argues that Respondent has no rights or legitimate interests in the <sasol-china.com> domain name because Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). Complainant contends that it has no association with Respondent and that Complainant has never authorized or licensed Respondent to use its trademark. Complainant also states that there is no evidence on the record that Respondent has been commonly known by the disputed domain name. The WHOIS information for the disputed domain name lists the organization name as “yingyan.” Previous panels have found that a respondent was not commonly known by a domain name where there was no indication on the record, including the WHOIS information, suggesting that respondent was commonly known by the disputed domain name. See Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the 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 the respondent was commonly known by the domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark). The Panel finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii).
Respondent has no rights or legitimate interests in the disputed domain name. Respondent is not making a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or 4(c)(iii) because there is no website associated with the disputed domain name. The failure to make an active use of a disputed domain name that is confusingly similar to a complainant’s registered mark is not a bona fide offering of goods or services or a legitimate noncommercial or fair use of the domain name. See Thermo Electron Corp. v. Xu, FA 713851 (Nat. Arb. Forum July 12, 2006) (finding that the respondent’s non-use of the disputed domain names demonstrates that the respondent is not using the disputed domain names for a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)).
Respondent has registered and is using the disputed domain name in bad faith because the disputed domain name does not resolve to a website. Failure to make an active use of a confusingly similar domain name constitutes bad faith registration and use under Policy ¶ 4(a)(iii). See Caravan Club v. Mrgsale, FA 95314 (Nat. Arb. Forum Aug. 30, 2000) (finding that the respondent made no use of the domain name or website that connects with the domain name, and that [failure to make an active use] of a domain name permits an inference of registration and use in bad faith).
Respondent also had actual knowledge of Complainant's mark when it registered the disputed domain name. Thus, Respondent registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii). See Yahoo! Inc. v. Butler, FA 744444 (Nat. Arb. Forum Aug. 17, 2006) (finding bad faith where the respondent was "well-aware of the complainant's YAHOO! mark at the time of registration).
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 <sasol-china.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: November 18, 2013
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