Sasol Limited v. wangxiuhe / xiuhe wang
Claim Number: FA1210001466152
Complainant is Sasol Limited (“Complainant”), represented by Daniel Greenberg of Lexsynergy Limited, United Kingdom. Respondent is wangxiuhe / xiuhe wang (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <chinasasol.com> and <sasolmetal.com>, registered with Bizcn.com, Inc.
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.
David A. Einhorn appointed as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on October 8, 2012; the National Arbitration Forum received payment on October 8, 2012. The Complaint was submitted in both Chinese and English.
On October 10, 2012, Bizcn.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <chinasasol.com> and <sasolmetal.com> domain names are registered with Bizcn.com, Inc. and that Respondent is the current registrant of the names. Bizcn.com, Inc. has verified that Respondent is bound by the Bizcn.com, Inc. 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 11, 2012, the Forum served the Chinese language Complaint and all Annexes, including a Chinese language Written Notice of the Complaint, setting a deadline of October 31, 2012 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@chinasasol.com, postmaster@sasolmetal.com. Also on October 11, 2012, 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 9, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed David A. Einhorn 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.
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.
Complainant requests that the domain names be transferred from Respondent to Complainant.
A. Complainant’s Allegations
Complainant conducts business as an international petroleum, chemical, mining, and technology company that operates in 149 countries throughout the world and specializes in manufacturing and supplying chemicals, fuels, and oils. Complainant was formed on September 26, 1950 in South Africa, and adopted the acronym “SASOL” from the company name South African Coal, Oil and Gas Corporation Limited. Complainant began operating internationally in 1953. Complainant owns over seven hundred domain names incorporating the SASOL trademark, including the <sasol.com> domain name. Complainant markets its brand in a number of ways, including sponsoring the South African Rugby Team, advertising on national and local radio advertising, television advertising, publishing its own newspaper, exhibiting products and services at South African exhibitions, and sponsoring the South African National Youth Orchestra. Complainant operates a Chinese language website at <sasolasia.com.cn>. Complainant owns trademark registrations for its SASOL mark in numerous countries, including with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 3,114,541 registered July 11, 2006), the United Kingdom Intellectual Property Office (“UKIPO”) (e.g. Reg. No. 749,057 registered December 15, 1955), and South Africa’s Department of Trade and Industry Companies and Intellectual Property Commission (“CIPC”) (Reg. No. 81/2659 registered April 27, 1981). The CTM trademark Sasol (Ref. No. 003505426) is registered, inter alia, for “industrial oil and greases including engine oil and gear oils”. These oils and greases are used in metal processing and lubricating for metal working.
Respondent registered the <chinasasol.com> and <sasolmetal.com> domain names on February 21, 2008. Respondent uses the disputed domain names to redirect Internet users to a website that promotes a variety of “chemically related products.” Respondent removed the website on February 23, 2012 after Complainant’s representative contacted them requesting that the website be removed based on trademark infringement and concern over a potential phishing scheme. The <chinasasol.com> and <sasolmetal.com> domain names are confusingly similar to Complainant’s SASOL mark. Respondent does not demonstrate preparations to use the domain names in connection with a bona fide offering of goods or services, and has no association with Complainant or authorization to use its trademarks. Respondent is not commonly known by the <chinasasol.com> and <sasolmetal.com> domain names. Respondent registered and uses the disputed domain names in bad faith, due to Respondent’s attempts to disrupt Complainant’s business and the fact that Respondent is a competitor of Complainant. Respondent attempts to attract Internet traffic to its commercial website in exchange for monetary gain. Respondent attempts to pass itself off as Complainant in order to defraud clients searching for Complainant’s business.
B. Respondent
Respondent failed to submit a Response in this proceeding.
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 claims to own trademark rights in its SASOL mark through its numerous global trademark registrations, such as with the USPTO (Reg. No. 3,114,541 registered July 11, 2006), the UKIPO (e.g. Reg. No. 749,057 registered December 15, 1955), and the CIPCO (Reg. No. 81/2659 registered April 27, 1981) and as a European Community Trademark (Reg. No. 003505476). Complainant’s many trademark registrations with agencies around the world serve to establish Complainant’s rights in the SASOL mark under Policy ¶ 4(a)(i). The Panel further finds that Complainant is not required to register its mark in Respondent’s country of residence, pursuant to Policy
¶ 4(a)(i). See 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).
Complainant argues that the <chinasasol.com> and <sasolmetal.com> domain names are confusingly similar to its SASOL mark, because each of the disputed domain names includes the entire SASOL mark, in addition to the geographic term “china,” or the descriptive term “metal.” In this context, the term “metal” is descriptive because the Sasol mark is used for oils and grease used in metal processes and as lubricants in metal working. The Panel finds that the addition of a geographic or a descriptive term to Complainant’s mark does not prevent the <chinasasol.com> and <sasolmetal.com> domain names from being confusingly similar to Complainant’s SASOL mark under Policy ¶ 4(a)(i). See Experian Info. Solutions, Inc. v. Credit Research, Inc., D2002-0095 (WIPO May 7, 2002) (finding that several domain names incorporating the complainant’s entire EXPERIAN mark and merely adding the term “credit” were confusingly similar to the complainant’s mark); see also Laboratoires De Biologie Vegetale Yves Rocher v. Choi, FA 104201 (Nat. Arb. Forum Mar. 22, 2002) (holding that the <yveskorea.com> domain name was confusingly similar to the complainant’s YVES ROCHER mark, even though the domain name adding a geographic designation was only similar in part).
The Complainant has therefore satisfied Policy ¶ 4 (a)(i).
Complainant alleges that Respondent is not commonly known by the <chinasasol.com> and <sasolmetal.com> domain names and does not have any association with Complainant’s business, and argues that no evidence exists to support any such claim. The Panel notes that the WHOIS information for both the disputed domain names identifies “wangxiuhe / xiuhe wang” as the registrant. This Panel finds that the WHOIS information, and Respondent’s lack of permission to use the SASOL mark, support a finding that Respondent is not commonly known by either of the <chinasasol.com> and <sasolmetal.com> domain names pursuant to Policy ¶ 4(c)(ii).
Complainant asserts that Respondent fails to make a bona fide offering of goods or services or a legitimate noncommercial or fair use of the domain names due to Respondent’s activity at the resolving website, which Complainant describes as “masquerad[ing]” as Complainant, in order to defraud potential clients. Complainant alleges that Respondent constitutes a competitor to its business and that by attempting to lure consumers by using Complainant’s mark, Respondent demonstrates a lack of rights and legitimate interests in the domain name. The Panel concludes that by maintaining a website attempting to pass itself off as Complainant, Respondent is not making a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use of the <chinasasol.com> and <sasolmetal.com> domain names under Policy ¶ 4(c)(iii). See Crow v. LOVEARTH.net, FA 203208 (Nat. Arb. Forum Nov. 28, 2003) (“It is neither a bona fide offerings [sic] of goods or services, nor an example of a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) & (iii) when the holder of a domain name, confusingly similar to a registered mark, attempts to profit by passing itself off as Complainant . . . .”). Alternatively, the Panel finds that Respondent’s competing use in the sale of chemical products is evidence that 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 under Policy ¶ 4(c)(iii). See Alcon, Inc. v. ARanked, FA 1306493 (Nat. Arb. Forum Mar. 18, 2010) (“The Panel finds that capitalizing on the well-known marks of Complainant by attracting internet users to its disputed domain names where Respondent sells competing products of Complainant is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).”).
This Complainant has also satisfied Policy ¶ 4(a)(ii).
Complainant argues that Respondent was “clearly aware” of Complainant’s mark when it registered the <chinasasol.com> and <sasolmetal.com> domain names. The Panel observes that Respondent’s use of Complainant’s SASOL mark and its use of the resolving website demonstrate that Respondent knew of Complainant’s rights in the SASOL mark at the time Respondent registered the disputed domain names, and concludes that Respondent’s knowledge demonstrates its bad faith registration of the domain names pursuant to Policy
¶ 4(a)(iii).
Complainant further argues that Respondent unfairly disrupts Complainant’s business by diverting consumers intended for Complainant, in order to sell chemical products. The Panel concludes that Respondent’s registration and use of the <chinasasol.com> and <sasolmetal.com> domain names is in bad faith pursuant to Policy ¶ 4(b)(iii) because Respondent’s competing use is disruptive to Complainant’s business. See Surface Prot. Indus., Inc. v. Webposters, D2000-1613 (WIPO Feb. 5, 2001) (finding that, given the competitive relationship between the complainant and the respondent, the respondent likely registered the contested domain name with the intent to disrupt the complainant's business and create user confusion).
Therefore, Complainant has also satisfied 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 <chinasasol.com> and <sasolmetal.com> domain names be TRANSFERRED from Respondent to Complainant
David A. Einhorn, Panelist
Dated: December 12, 2012
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