Sasol Limited v. Zhang Peng / ZhangPeng
Claim Number: FA1605001677212
Complainant is Sasol Limited (“Complainant”), represented by Daniel Greenberg of Lexsynergy Limited, United Kingdom. Respondent is Zhang Peng / ZhangPeng (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <sasol.top>, registered with Jiangsu Bangning Science & technology Co. Ltd.
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 May 31, 2016; the Forum received payment on May 31, 2016. The Registration Agreement was submitted in both Chinese and English.
On June 1, 2016, Jiangsu Bangning Science & technology Co. Ltd. confirmed by e-mail to the Forum that the <sasol.top> domain name is registered with Jiangsu Bangning Science & technology Co. Ltd. and that Respondent is the current registrant of the name. Jiangsu Bangning Science & technology Co. Ltd. has verified that Respondent is bound by the Jiangsu Bangning Science & technology Co. Ltd. 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 1, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 21, 2016 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.top. Also on June 1, 2016, 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 June 24, 2016, 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 name be transferred from Respondent to Complainant.
A. Complainant
i) 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 the SASOL mark with the United Kingdom Intellectual Property Office (“UKIPO”) (Reg. No. 749,056, filed Dec. 15, 1955, publication date of May 1, 1957), which demonstrates Complainant’s rights in the mark. The <sasol.top> domain is identical to Complainant’s mark as it wholly incorporates the SASOL mark and merely affixes the generic top-level domain (“gTLD”) “.top” to the domain.
ii) Respondent has no rights or legitimate interests in the disputed domain name. First, Respondent is not commonly known by the disputed domain name. Second, Respondent is not licensed or authorized to use Complainant’s mark. Finally, Respondent does not make a bona fide offering of goods or services through the disputed domain name or a legitimate noncommercial or fair use. Rather, Respondent uses its disputed domain name to potentially tarnish Complainant’s trademark.
iii) Respondent has registered and is using the disputed domain name in bad faith. First, Respondent has engaged in a pattern of bad faith pursuant to Policy ¶ 4(b)(ii), demonstrated by Respondent having seven UDRP cases decided against it in the last two years. Second, Respondent has failed to make any active use of the domain. Third, Respondent registered the domain with at least constructive knowledge of the SASOL mark and Complainant’s rights therein. Finally, Respondent’s domain is so obviously connected with Complainant’s business that use of the domain by anyone other than Complainant is suggestive of opportunistic bad faith, in violation of Policy ¶ 4(a)(iii).
B. Respondent
Respondent did not submit a response in this proceeding. The Panel notes that the disputed domain name was registered on November 20, 2014.
Complainant established that it had rights in the mark contained in the disputed domain name. Disputed domain name is confusingly similar to Complainant’s protected mark.
Respondent has no rights to or legitimate interests in the disputed domain name.
Respondent registered and used the disputed domain name in bad faith.
Preliminary Issue: Language of the Proceedings
The Panel notes that 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.
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(f), 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 (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 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 the SASOL mark with the UKIPO (Reg. No. 749,056, filed Dec. 15, 1955, publication date of May 1, 1957), which Complainant argues demonstrates its rights in the mark. The Panel finds that trademark registrations with the UKIPO suffice to demonstrate a complainant’s rights in its mark for the purposes of Policy ¶ 4(a)(i), with respect to the geographic disparity of the parties. See Royal Bank of Scot. Group plc v. TRB, FA 622345 (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).”); see also Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that the mark be registered in the country in which the respondent operates and it is sufficient that the complainant can demonstrate a mark in some jurisdiction). Accordingly, the Panel finds that Complainant has demonstrated its rights in its mark pursuant to Policy ¶ 4(a)(i).
Complainant argues that the <sasol.top> domain is identical to Complainant’s mark as it wholly incorporates the SASOL mark and merely affixes the gTLD “.top” to the domain. Panels have found that the affixation of a gTLD is irrelevant to a Policy ¶ 4(a)(i) analysis. See Daedong-USA, Inc. v. O’Bryan Implement Sales, FA 210302 (Forum Dec. 29, 2003) (“Respondent's domain name, <kioti.com>, is identical to Complainant's KIOTI mark because adding a top-level domain name is irrelevant for purposes of Policy ¶ 4(a)(i).”). As such, the Panel finds that Respondent’s disputed domain name is identical 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 (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 (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 argues that Respondent has no rights or legitimate interests in the disputed domain name. Complainant contends that Respondent is not commonly known by the disputed domain. Further, Complainant argues that Respondent has no license or authorization to use Complainant’s mark. The Panel notes that the WHOIS information merely lists “Zhang Peng / ZhangPeng” as registrant and that Respondent has failed to provide any evidence for the Panel’s consideration. As such, the Panel finds no basis in the available record to find Respondent commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii). See Tercent Inc. v. Lee Yi, FA 139720 (Forum Feb. 10, 2003) (stating “nothing in [the respondent’s] WHOIS information implies that [the respondent] is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply).
Complainant contends that Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. Specifically, Complainant argues that Respondent uses its disputed domain name to potentially tarnish Complainant’s trademark. The Panel notes that Complainant argues under Policy ¶ 4(a)(iii) that Respondent has failed to make any active use of the disputed domain. Panels have held that a respondent’s failure to make any active use of a domain does not constitute 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). See Hewlett-Packard Co. v. Shemesh, FA 434145 (Forum Apr. 20, 2005) (“The Panel finds that the [failure to make an active use] of a domain name that is identical to Complainant’s mark is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use of the domain name pursuant to Policy ¶ 4(c)(iii).”). Therefore, the Panel finds that Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶ 4(c)(i) and Policy ¶ 4(c)(iii).
Complainant contends that Respondent has engaged in a pattern of bad faith pursuant to Policy ¶ 4(b)(ii), demonstrated by Respondent having seven UDRP cases decided against it in the last two years. Panels have found that a respondent demonstrates a pattern of bad faith registration and use under Policy ¶ 4(b)(ii) where it has prior adverse UDRP rulings against it. See TRAVELOCITY.COM LP v. Aziz, FA 1260783 (Forum June 16, 2009) (“These previous [UDRP] decisions demonstrate a pattern of bad faith registration and use of domain names under Policy ¶ 4(b)(ii).”). Accordingly, the Panel finds that Respondent has engaged in a pattern of bad faith per Policy ¶ 4(b)(ii).
Complainant asserts that Respondent has failed to make any active use of the domain. The Panels have held that a respondent’s failure to make any active use of a domain constitutes bad faith registration and use per Policy ¶ 4(a)(iii). See DCI S.A. v. Link Commercial Corp., D2000-1232 (WIPO Dec. 7, 2000) (concluding that the respondent’s [failure to make an active use] of the domain name satisfies the requirement of ¶ 4(a)(iii) of the Policy). The Panel finds from the fact of worldwide use of Complainant's mark that Respondent was aware of Complainant's mark at the time of the registration of the disputed domain name. Therefore, Panel finds that inactive use of the disputed domain name constitutes Respondent's bad faith registration and use under Policy ¶ 4(a)(iii).
Complainant alleges that Respondent registered the domain with at least constructive knowledge of the SASOL mark and Complainant’s rights therein. Specifically, Complainant argues that the international fame of the SASOL mark makes it difficult to imagine that Respondent would not have been aware of the mark at the time the domain was registered. While panels have concluded that constructive notice is not sufficient to support a bad faith finding, the Panel infers that, due to the fame of Complainant’s mark, Respondent had actual knowledge of the mark and Complainant’s rights. Thus, the Panel holds that Respondent registered the domain in bad faith under Policy ¶ 4(a)(iii). See Custom Modular Direct LLC v. Custom Modular Homes Inc., FA 1140580 (Forum Apr. 8, 2008) (“There is no place for constructive notice under the Policy.”); see also Yahoo! Inc. v. Butler, FA 744444 (Forum Aug. 17, 2006) (finding bad faith where the respondent was “well-aware” of the complainant’s YAHOO! mark at the time of registration).
Finally, Complainant argues that Respondent’s domain is so obviously connected with Complainant’s business that use of the domain by anyone other than Complainant is suggestive of opportunistic bad faith, in violation of Policy ¶ 4(a)(iii). Specifically, Complainant argues that it is inconceivable that Respondent intended to operate a genuine business with the domain, which comprises a well-known trademark with a company designation used by Complainant to operate its business. Panels have concluded that where any active use of a domain by a respondent would create a false impression of association with a complainant, the respondent has engaged in bad faith registration and use per Policy ¶ 4(a)(iii). See Sony Kabushiki Kaisha v. Inja, Kil, D2000-1409 (WIPO Dec. 9, 2000) (finding bad faith registration and use where it is “inconceivable that the respondent could make any active use of the disputed domain names without creating a false impression of association with the Complainant”). As the Panel agrees with Complainant’s contention, it finds that Respondent registered and is using the domain in bad faith pursuant to Policy ¶ 4(a)(iii).
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.top> domain name be TRANSFERRED from Respondent to Complainant.
Ho Hyun Nahm, Esq., Panelist
Dated: June 30, 2016
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