shell-nigeria.com

Shell International Petroleum Company Ltd. v. Allen Jones

Case No. D2003-0821

The Complainant is Shell International Petroleum Company Ltd., Shell Center, London of United Kingdom of Great Britain and Northern Ireland, represented by Shell International Limited (IPL/3) of the same address.

The Respondent is Allen Jones, Shell Productions NG Unlimited, of Phoenix, Arizona of the United States of America.

The disputed domain name <shell-nigeria.com> is registered with InnerWise, Inc. d/b/a ItsYourDomain.com.

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on October 15, 2003. On October 15, 2003, the Center transmitted by email to InnerWise, Inc. d/b/a ItsYourDomain.com a request for registrar verification in connection with the domain name at issue. On October 16, 2003, InnerWise, Inc. d/b/a ItsYourDomain.com 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 October 24, 2003. In accordance with the Rules, paragraph 5(a), the due date for Response was November 13, 2003. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 14, 2003.

The Center appointed Frank R. Schoneveld as the sole panelist in this matter on December 10, 2003. 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.

The Respondent has provided to the Registrar of the disputed domain name the contact email address at Yahoo. This email address matches the name of Yahoo user, a 16-year-old computer engineer in Nigeria with the name of "afex adeyemi" and not the name of the Respondent as provided to the Registrar. No response has ever been received in reply to emails sent by the Center to this yahoo email address. Attempts to deliver a copy of the complaint to the Respondent have been unsuccessful. The courier attempting to make delivery of the paper version of the Complaint indicated that the address provided, namely the address given by the Respondent to the Registrar of the disputed domain name, is not correct. The Panel finds that the Respondent has used a fictitious name and address when registering the disputed domain name.

The Registration Agreement between the Respondent and the Registrar provides, in respect of any dispute in a Court, that "this agreement shall be governed in all respects by, and construed in accordance with the laws of the State of Illinois, United States of America….".

The Complainant is the registered holder of "www.shellnigeria.com" (NB: without a hyphen) which directs users to the appropriate part of the "www.shell.com" website for the Complainant’s Nigerian business. A copy of the welcome page at this website has the opening words "Welcome to Shell Nigeria" and the expression "Shell Nigeria" and on the website the words "Shell Nigeria" are used as a descriptor for the Complainant’s overall operations in Nigeria.

Because of its use on the internet by the Complainant and significant investment, employment and other activities by the Complainant and its related companies in Nigeria, "Shell Nigeria" is a name by which the Royal Dutch/Shell Group of companies, one of which is the Complainant, is well known. The Complainant’s <shellnigeria.com> domain name, as well as the "Shell Nigeria" name, is used to refer to Shell companies in Nigeria.

The website maintained by the Respondent at the disputed domain name <shell-nigeria.com>, is based on an unauthorized copy of a substantial part of the Complainant’s website located at "www.shellnigeria.com". The Complainant confirms that the contents of its’ "www.shellnigeria.com" website have been copied without authorization to the website of the disputed domain name.

The Respondent is offering consignments of oil at heavily discounted prices using the copied website maintained at the disputed domain name. A prospective buyer is directed to the website in order to verify the availability of the oil offered. The Complainant confirms that the offer for sale of oil products relying on fictitious information on the "www.shell-nigeria.com" website has no connection with the Royal Dutch/Shell Group of companies, including the Complainant.

An e-mail draft contract has been passed to the Complainant, which offers re-assignment of a quantity of crude oil in return for payments of a substantial sum of money - US$25,000. Verification of the availability of the consignment of oil is offered by means of the "Shell Screen" feature on the Respondent’s "www.shell-nigeria.com" website, to which the intending buyer of the consignment is given password-protected access. The Complainant confirms and the Panel finds that the information provided on this "Shell Screen" is fictitious.

The name "Shell Productions NG Unlimited" used by the Respondent, is unknown after searches made by the Complainant. In the absence of any contrary submission by the Respondent the Panel finds that this entity is fictitious.

The Complainant states that it is a member of the Royal Dutch/Shell Group of companies and is the principal company designated within that Group to hold the Group’s non-US trademark and domain name assets. It is contended that currently the Complainant is the owner of the "SHELL" trademark in nearly 190 countries of the world, amounting to more than 3,450 registrations and that, in addition to these, the Complainant owns more than 570 registrations for the word "SHELL" combined with a "shell" emblem, and more than 3,000 registrations in which the word "SHELL" is combined with another product mark, such as "SHELL HELIX". In Nigeria alone, the Complainant says it owns 35 registrations of the name "SHELL", 24 registrations of the name "SHELL" combined with a "shell" emblem, and 13 registrations of product marks which are prefixed by the name "SHELL". The Complainant states that the "SHELL" trademark has been used since at least 1904, in many countries of the world for a wide variety of petroleum and other products, and as a consequence it has become a very well-known trademark.

The Complainant says that since companies of the Royal Dutch/Shell Group of companies operate in many countries of the world using the name "Shell", it is common for the local operating company in any particular country to be known by the name "Shell" plus the name of the country. The Complainant also says that it or its’ affiliates are the owners of the "shell" domain name both at the ".com" and ".info" levels and at more than 240 country-code levels. The total number of domain names owned by the Complainant that incorporate the word "shell" is greater than 1,700, and of these, around 35 consist of the word "shell" plus a country name. One of these is "www.shellnigeria.com" (NB: without a hyphen) which directs users to the appropriate part of the "www.shell.com" website for Shell’s Nigerian business (a copy of this welcome page is provided). It is noted that the opening words at this website are "Welcome to Shell Nigeria" and that the expression "Shell Nigeria" is used as a descriptor for Shell’s overall operations in Nigeria.

The Complainant contends that the disputed name <shell-nigeria.com> consists essentially of the trademark "SHELL" plus a country indication. Whilst the Complainant does not own any identical trademark (i.e., "SHELL NIGERIA") it contends that the "Nigeria" suffix should be disregarded as being non-distinctive and the common and natural way to indicate the Nigerian operations of the Royal Dutch/Shell Group of companies. Shell companies are very well-known in Nigeria due to Shell’s extensive oil exploration and production activity there, which has been described as "one of the largest and most complex industrial operations in the world". The Complaint states that the main Shell operating company in Nigeria is the Shell Petroleum Development Corporation ("SPDC"), the oldest and largest producer of oil and gas in Nigeria. SPDC directly employs over 4,000 people (of whom 95% are Nigerian nationals), with a further 8,000 contract staff and an estimated 20,000 people employed by contractors working for SPDC. Thus, "Shell Nigeria" is a name in which the Royal Dutch/Shell Group of companies has built up a strong reputation.

The Complainant argues that the name "www.shell-nigeria.com" registered and used by the Respondent is confusingly similar to the Complainant’s "www.shellnigeria.com" domain name, as well as to the widely-used "Shell Nigeria" name used to refer to Shell companies in Nigeria. It is contended that the use of the hyphen is a common typo-squatting ploy in these types of composite names.

It is stated that the website maintained by the Respondent at "www.shell-nigeria.com" is based on an unauthorized copy of the Complainant’s website at "www.shellnigeria.com" and that the background elements of the Respondent’s site have clearly been copied directly from the Complainant’s. Copies of the two websites are provided. It is alleged that the unsuspecting visitor to the Respondent’s "www.shell-nigeria.com" would probably accept quite readily that he is visiting a genuine Shell website.

The Complainant submits that the purpose of such a "look-alike" website may be explained by the copy provided of an e-mail draft contract received by a potential victim of the deception, which has been passed to the Complainant. This contract offers re-assignment of a quantity of crude oil in return for payments of a substantial sum of money - US$25,000. The relationship between the Respondent and the sender of this e-mail has not been established. However, verification of the availability of the consignment of oil is offered by means of the "Shell Screen" feature on the Respondent’s "www.shell-nigeria.com" website, to which the intending buyer of the consignment is given password-protected access. The Complainant says that the information provided on this "Shell Screen" is fictitious but sufficiently plausible to deceive an unsuspecting oil trader. It is also pointed out by the Complainant that the oil is being offered at heavily discounted prices to make it very attractive.

The Complainant confirms that the contents of its Shell Nigeria website have been copied without authorization, and that the offer for sale of oil products relying on fictitious information on the "www.shell-nigeria.com" website has no connection with the Royal Dutch/Shell Group of companies, but may be an attempt at fraud.

The Complainant contends that the Respondent is not, and has never been, commonly known by the name "Shell Nigeria" or any similar name, adding that the name "Shell Productions NG Unlimited" used by the Respondent ("NG" presumably being used as the common country-code for Nigeria) appears to be completely fictitious. The Complainant says no such company exists within the Royal Dutch/Shell Group, nor can any trace be found of any other genuine company with such a name.

For these reasons the Complainant argues that the Respondent has no legitimate right or interest in the domain name, and appears not to be using the name for any bona fide offering of goods or services. As such, the Respondent, with the intent for commercial or other gain, is attempting to mislead consumers who believe they are entering into a contract with the safeguard of verification by the Royal Dutch/Shell Group of companies.

The Complainant contends that the facts set out in the preceding paragraphs are evidence in themselves that the domain name was registered and is being used in bad faith. The Complainant alleges that it was registered, and is being used, for the purpose of attempting to attract for commercial gain, Internet users to the Respondent’s website or other on-line location, by creating a likelihood of confusion with the Complainant’s business name and website, or as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website or location. Specifically, it is alleged the domain name has been used to set up a cloned website in order to deceive members of the public into believing that they can safely pay money to a third party in reliance on information provided by a trusted company, Shell, when in fact the website has no connection with Shell.

The Respondent did not reply to the Complainant’s contentions.

The Rules Para.14 provides that

(a) if a Party does not comply with any of the time periods established by the Rules, the Panel can proceed to a decision on the complaint, and

(b) if a Party does not comply with any provision of the Rules, the Panel shall draw such inferences therefrom, as it considers appropriate

In the absence of any response or other communication from the Respondent, and in view of the above mentioned Paragraph 14 of the Rules, the Panel proceeds to a decision "on the complaint".

The Complainant asserts it has rights in the trademark "SHELL", and that it is the registered owner of thousands of registrations in nearly 190 countries, including Nigeria, of the trademark "SHELL". However, in this case there is no evidence available that the Complainant is in fact the registered owner of the trademark "SHELL". There are many assertions to that effect but no evidence is provided that the Complainant actually holds any registered trademark in the word "SHELL". Whilst it seems likely the Complainant is a holder of such a trademark, this Panel cannot proceed on the mere basis that the Complainant is likely to be the registered holder of that mark. No copy of a trademark certificate, even one trademark registration number or an extract from a trademark register, was provided. In the absence of any evidence the Panel declines to find that the Complainant has any trademark or service mark right in the word "SHELL".

Nevertheless, evidence is provided of use by the Complainant of the domain names <shell.com> and <shellnigeria.com>. In particular, the Complainant asserts and provides evidence that "it is common for the local operating company in any particular country to be known by the name "SHELL", plus the name of the country: " as is the case for the Complainant’s registered domain name <shellnigeria.com>.

The Respondent does not refute any of the Complainant’s submissions of use of the word "shell" in combination with the country name, in "Shell Nigeria". Nor does the Respondent refute the Complainant’s contention that "Shell Nigeria" is a name in which the Royal Dutch/SHELL Group of Companies has built up a strong reputation or that the Complainant is one of the Royal Dutch/SHELL Group of Companies, as is apparent from the copies provided of the Complainant’s website at "www.shellnigeria.com".

The Panel finds that "Shell Nigeria" is and has been in wide use in Nigeria and elsewhere and is and has been used in the domain name <shellnigeria.com> which is registered by the Complainant. An unregistered mark (as, for example, it is called in the USA) or common law trademark (eg. as periodically called in England and other common law countries) is obtained when a trademark has been in continuous use and has obtained a distinctive character in association with the Complainant. The Complainant has provided extracts of websites and domain names, which demonstrate that this has occurred with the words read together of "Shell Nigeria". The application of the concept of unregistered marks found in the law of the USA is relevant since the Respondent has accepted in his Registration agreement with the Registrar, that in respect of any dispute in a Court that "this agreement shall be governed in all respects by, and construed in accordance with the laws of the State of Illinois, United States of America….".

With regard to the applicability of unregistered marks in the Policy and Rules, it is sufficient to quote the Panel’s decision in Museum of Science v. Asia Ventures Inc., WIPO Case No. D2003-0691 where it states:

"….the wording of Paragraph 4(a) (i) to ‘trademark or service mark’ has been interpreted by numerous Panels in the past to include both registered marks and the common law marks. See inter alia The British Broadcasting Corporation v. Jaime Renteria, WIPO Case No. D2000-0050; United Artists Theatre Circuit, Inc. v. Domains for Sale Inc.,WIPO Case No. D2002-0005; The Professional Golfers’ Association of America v. Golf Fitness Inc., a/k/a Golf Fitness Association, WIPO Case No. D2001-0218; Brooklyn Institute of Arts and Sciences v Fantastic Sites, Inc., National Arbitration Forum No.: FA0009000095560. With respect to the latter, the Complaint must show that the mark has been in continuous use (See United Artists Theatre Circuit, Inc. v. Domains for Sale Inc, already cited; Keppel TatLee Bank Limited v. Lars Taylor, WIPO Case No. D2001-0168) and that the mark achieved secondary meaning ("distinctive character") in association with the Complainant. (See Australian Trade Commission v. Matthew Reader, WIPO Case No. D2002-0786; (1) Galatasaray Spor Kulubu Dernegi (2) Galatasaray Pazarlama A.S. (3) Galatasaray Sportif Sinai Ve Ticari Yatirimlar A.S. v. Maksimum Iletisim A.S., WIPO Case No. D2002-0726)."

As there is no refuting argument made by the Respondent and since the evidence provided by the Complainant indicates that the mark "Shell Nigeria" has been in continuous use and that the mark has achieved a distinctive character in association with the Complainant, this Panel finds that the Complainant has unregistered trademark rights in "Shell Nigeria". Since "Shell Nigeria" is nearly exactly the same as the disputed domain name <shell-nigeria.com>, the only difference being the hyphen between the two words and the technically necessary ‘.com’ attachment, the Panel finds that the disputed domain name is confusingly similar to a trademark or service mark in which the Complainant has rights.

The Respondent makes no response to the allegation that he has no right or legitimate interest in respect of the disputed domain name. The website at the disputed domain name:

- Substantially and illicitly copies the Complainant’s home page of its website at "www.shellnigeria.com", and is deceptively similar in layout, colour and content;

- Uses the "Shell screen" feature for password protected access to a page which purports to sell oil to oil traders, thereby trading off the Complainant’s rights in "Shell Nigeria" for commercial gain;

- Uses a fictitious name, "Shell Productions NG Unlimited" to attempt to trade oil using "Shell Nigeria", the unregistered mark of the Complainant;

- Used a fictitious name and address in registering the disputed domain name contrary to Paragraph 2 of the Policy, and in breach of Clause 2.4 of the Respondents’ Registration Agreement with the Registrar of the domain name.

If the Respondent had some right or legitimate interest in respect of the domain name he would not have gone to such extremes to attempt to hide his identity and contact details, used the name of a fictitious company, used the domain name to substantially and illicitly copy the website of the Complainant’s unregistered trademark and attempted to (or actually did) trade in oil, using the Complainant’s unregistered trademark. Given this level of subterfuge on the part of the Respondent, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name.

The Panel finds that the Respondent has registered the disputed domain name and is using it to host an illicit copy of the Complainant’s homepage (sited at "www.shellnigeria.com") on a website using the Complainant’s unregistered trademark "Shell Nigeria" without the consent of the Complainant. The disputed domain name attempts to attract Internet users by prominently using, without permission, the Complainant’s unregistered mark on the website to which the disputed domain name devolves. This creates a likelihood of confusion as to the source, affiliation or endorsement of the Respondent’s website. This is done for commercial gain in that the Respondent seeks to sell (at what may be an attempt at fraud) oil to those who go to the website. Further, false information has been provided to the Register of the disputed domain name, including a false name and contact particulars of the Respondent. This is in breach of the Respondent’s obligations under its registration agreement with the Registrar and contrary to Paragraph 2 of the Policy. All these factors establish, and the Panel finds, that the Respondent has registered and is using the domain name in bad faith.

For all the foregoing reasons, in accordance with Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name, <shell-nigeria.com>, be transferred to the Complainant