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Sasol Limited v. Raymond Wong [2005] GENDND 398 (10 May 2005)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Sasol Limited v. Raymond Wong

Case No. D2005-0122

1. The Parties

The Complainant is Sasol Limited, Sasolburg, South Africa, represented by Mr. D. J. Greenberg of Groenewald Van Dyk (GVD) Incorporated, Pretoria, South Africa.

The Respondent is Raymond Wong, Brookline Village, Massachusetts, United States of America, who represents himself.

2. The Domain Name and Registrar

The disputed domain name <esasol.com> is registered with Network Solutions, LLC.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 3, 2005. On February 3, 2005, the Center transmitted by email to Network Solutions, LLC a request for registrar verification in connection with the domain name at issue. On February 4, 2005, Network Solutions, LLC transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).

In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on March 11, 2005. In accordance with the Rules, paragraph 5(a), the extended due date for Response was April 16, 2005. The Response was filed with the Center on April 14, 2005.

The Center appointed the Honourable Sir Ian Barker QC as the sole panelist in this matter on April 26, 2005. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.

4. Factual Background

The Complainant is an international petroleum chemical and technology company which supplies chemicals, fuel and oil in over 100 countries. Formed in 1950, in South Africa, it has regional companies and business units in many countries including the United States. Its products have been sold under the corporate name SASOL.

The Complainant has registered trademarks for the word SASOL (and other marks incorporating the word SASOL) in 127 countries, including the United States. It also has numerous domain names such as <sasol.com> (registered March 4, 1996) and <sasol.co.za> (registered January 1995). The websites at the above domain names have extensive use worldwide.

The first trademarks were registered in 1964. The Complainant’s US Trademark 76339066 was filed on November 19, 2001, and published on November 12, 2002. The disputed domain name was first registered on July 26, 1999, before the filing of the trademark in the United States.

On October 14, 2003, the Complainant’s attorney sent a “cease and desist” letter to the Respondent who did not reply to it.

The webpage associated with the disputed domain name is incomplete and includes a hyperlink to <ejade.com> which offers gifts and novelties for sale.

5. Parties Contentions

A. Complainant

(a) The disputed domain name is confusingly similar to Complainant’s registered marks.

(b) The Respondent has no rights or legitimate interests in the disputed domain name.

(c) The Respondent has shown bad faith registration and use by operating a website which attracts users for commercial gain and creates confusion as to whether the website has the sponsorship or endorsement of the Complainant.

B. Respondent

Confusingly Similar

ESASOL stands for Enterprise System Architecture SOLution. ESA by itself stands for Enterprise System Architecture and is the name of a computer operating system platform trademarked by IBM. The leading E is not intended to be a prefix to a commonly known name or entity. ESA is a widely familiar and recognized acronym in the computer industry. The IBM ESA trademark encompasses a multi-billion dollar software industry. Giving this, a similar complaint as SASOL Limited can be made by IBM with more merits. The following URL http://www.redbooks.ibm.com/redbooks/pdfs/sg246952.pdf leads to an IBM manual by the name of Distributed Functions of DB2 for z/OS and OS/390 and on page XVIII one can find a list of some of the IBM trademarks including MVS/ESA. The MVS/ESA trademark is referenced by literally thousands of IBM publications.

Legitimate Rights and Interest

ESASOL was founded in 1999, and is legally registered as an S-Corporation in the State of Massachusetts in the United States of America. (Taxpayer Identification number: 04-3485119).

ESASOL has been a ember of IBM’s software developer program since 1999. Such program allows certain IBM hardware and/or software to be obtained free of charge or at a minimal cost. The Respondent has over the last several years utilized this program to purchase and lease IBM mainframe hardware and software. Over $25,000 USD was spent in this area.

The rationale to use the ESA prefix is that it may lead a client using ESA as keyword to search for IBM platform related services to <esasol.com> and obviously ESA is a name suitable for what the Respondent has to offer. The Respondent has been working in the computer software industry since 1984.

ESA is a widely familiar and recognized acronym in the computer industry.

The intended audiences and clients of ESASOL are companies that require IBM ESA platform related services. There is no scheme or strategy in place or in mind, as dramatically stated in the complaint, to somehow divert a petroleum buyer to buy a piece of software or to buy a coffee mug.

The Respondent never worked in the petroleum industry and had no knowledge of SASOL Limited until the Respondent was first contacted by SASOL Limited’s attorney in 2003.

There is no intention to have SASOL as part of the domain name to attract audiences to the ESASOL website. SASOL is not exactly a household name in the United States of America.

6. Discussion and Findings

Paragraph 15(a) of the Rules instructs the 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.”

The burden for the Complainant, under paragraph 4(a) of the Policy, is to show:

- that the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

- that the Respondent has no legitimate rights or interests in respect of the domain name; and

- that the domain name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

In the Panel’s view, the disputed domain name is confusingly similar to the Complainant’s registered mark. It does not matter for the purposes of this criterion, that, at the date of registration of the disputed domain name, the trademark had not been registered in the United States.

The prefix: “e” has become a common descriptive term to identify electronic commerce activity. “Ecommerce” or “e-commerce” is a word used to describe the conduct of business over an electronic network.

This view has been reached by two previous WIPO UDRP Panels in Inter-IKEA Systems B.V. v. Technology Education Center, WIPO Case No. D2000-0522 – domain name = <e-ikea.com>, trademark IKEA) and Busy Body Inc v Fitness Outlet Inc, WIPO Case No. D2000-0127 – domain name = <efitnesswarehouse.com>, trademark FITNESS WAREHOUSE. In both cases, the letter “e” at the start of a domain name, which otherwise consisted of a registered trademark, did not prevent he domain name being considered confusingly similar to the Complainant’s mark.

The Panel adopts the reasoning in the above cases to conclude that the disputed domain name is confusingly similar to the Complainant’s marks.

B. Legitimate Rights & Interests

Although the Complainant gave the Respondent no rights in its mark, if a Respondent can come within one of the grounds of paragraph 4(c) of the Policy, a Complainant cannot succeed.

In this case, the Respondent claims he has been operating a corporation, registered under Massachusetts law since 1999, under the name “Esasol Inc”. He produces a cheque made out to IBM dated November 12, 1999, and a bank statement dated November 30, 1999. The drawer of the cheque is “Esasol Inc” and the bank statement is addressed to “Esasol Inc”. On the body of the cheque are the words: “T:7399995 re Advanced security deposit 5139013”.

Registration of the disputed domain name occurred in 1999 – i.e. before the first filing of the Complainant’s trademark in the US in 2001.

In the Panel’s view, although a greater amount of probative material from the Respondent would have been preferable, the Respondent has sufficiently discharged the onus of showing that, before any notice to him of the dispute, he has made use of the disputed domain name in connection with a bona fide offering of goods and services. There is clear evidence from the cheque and bank statement that (a) an entity called Esasol Inc existed; and (b) it paid money to IBM, thus corroborating the Respondent’s assertion that he is in some sort of contractual relationship with IBM. Accordingly, the Respondent has brought himself within paragraph 4(c) of the Policy.

C. Bad Faith Registration

These facts about the Respondent’s operation, make it difficult to infer bad faith registration in 1999. The name “Sasol”, whilst no doubt well-known to the South African population and to oil and financial interests in the United States, has not been shown to be well-known to the United States population at large.

The Panel cannot make the inference of the Respondent’s bad faith at the time of registration of the disputed domain name when, at that date, the Complainant had not yet applied for US trademark registration.

The situation might have been different if the US trademark registration had occurred first. There is a line of WIPO UDRP authority that predicates searching the US trademark register to see whether a proposed domain name is identical or confusingly similar to a registered trademark. This Panel does not necessarily accept such a constructive notice doctrine as applicable in every case. However, the question is academic because a search of the US trademark register in 1999, would not have shown the Complainant’s mark. The Complainant has failed to prove bad faith on the part of the Respondent at the date of registration of the disputed domain name.

7. Decision

For the foregoing reasons the Complaint is denied.

Sir Ian Barker QC
Sole Panelist

Dated: May 10, 2005