WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Shell Brands International AG v. Phu Dan Nguyen
Case No. D2014-1559
1. The Parties
The Complainant is Shell Brands International AG of Baar, Switzerland, represented by Ranjan Narula Associates, India.
The Respondent is Phu Dan Nguyen of Ho Chi Minh City, Viet Nam.
2. The Domain Name And Registrar
The Disputed Domain Name <nhuaduongshell.com> is registered with Name.com LLC (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on September 11, 2014. On September 12, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On September 15, 2014, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Disputed Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on September 16, 2014, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on September 17, 2014.
The Center verified that the Complaint together with the amended Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the "Policy" or "UDRP"), 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 September 19, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was October 9, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on October 10, 2014.
The Center appointed Pham Nghiem Xuan Bac as the sole panelist in this matter on October 14, 2014. 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, which is a member of the Shell group of companies of which Royal Dutch Shell Plc is the parent company, was established in 1907 under the laws of Switzerland. The Complainant is a renowned corporation in the world for a highly diversified products or services including, inter alia, exploring and producing oil and gas on land and at sea; providing energy solutions and petrochemicals, transporting, marketing and trading in oil and gas, producing and selling fuel for ships and planes, generating electricity and providing stations worldwide. The Complainant is also a leader in bitumen and asphalt technology research and protection for over 85 years. The Complainant has its operations in more than 70 countries and employed around 92,000 employees worldwide. The Complainant has been ranked amongst top 10 in the Fortune Global 500 (largest corporations) since the year 2001 and amongst the top 10 companies in Forbes Global 2000 corporations in the world for the years 2005, 2006, 2007, 2008, 2009, 2010, 2011, 2012 and 2013.
The Complainant is the owner of the trademark SHELL, which is largely protected around the world, in connection with the bitumen and asphalt manufacturing and marketing industries, as well as in connection with other products and services. In Viet Nam, where the Respondent is located, the Complainant owns many SHELL trademark registrations, including, but not limited to, Trademark Registration No. 1901 dated November 6, 1990, valid till June 25, 2020, for goods in Classes 1, 2, 3, 4, 5, 17, 19; and No. 34507 dated August 4, 2000, valid till May 15, 2018, for services in Classes 35, 36, 37, 38, 39, 40, 41, 42.
The Complainant is also the owner of the domain name <shell.com>, which was registered on July 15, 1989.
The Disputed Domain Name was registered on June 30, 2011.
The Complainant sent a cease-and-desist letter to the Respondent on December 23, 2013. The Respondent did not reply despite the Complainant's subsequent reminder dated April 3, 2014.
5. Parties' Contentions
A. Complainant
The Complainant contends that each of the three elements specified in paragraph 4(a) of the Policy is satisfied in the present case, as follows:
(i) The Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.
The Complainant asserts that it owns numerous domain names and trademark registrations for marks comprising the element "shell" around the world including Viet Nam. The dates of registration and use of these domain names and trademark registrations are well prior to the registration date of the Disputed Domain Name by the Respondent.
The Complainant alleges that the Disputed Domain Name incorporates the Complainant's famous mark SHELL in its entirety and is confusingly similar to the Complainant's mark.
The Complainant further alleges that the addition of the Vietnamese word "nhuaduong" to the Complainant's dominant and distinctive SHELL mark in the Disputed Domain Name does not eliminate the confusing similarity between the Disputed Domain Name and the Complainant's SHELL mark. Such an addition does not alter the fact that there is a likelihood of confusion that the Disputed Domain Name refers to the Complainant or that the Respondent is associated with the Complainant.
Therefore, the Complainant contends that the Disputed Domain Name is identical or confusingly similar to the Complainant's SHELL mark.
(ii) The Respondent has no rights or legitimate interests in respect of the Disputed Domain Name.
The Complainant alleges that the Respondent was well aware of Complainant's prior rights in the SHELL mark/name at the time it registered the Disputed Domain Name in 2011. The Complainant further alleges that there is no credible legitimate reason for the Respondent to have chosen to adopt the Disputed Domain Name. The Complainant also alleges that the Respondent is not and has never been known by either the SHELL mark or name, or by any similar name. The Respondent has adopted nearly identical or deceptively similar domain name comprising of the "shell" word for offering Complainant's goods in order to attract Internet users to its websites and the Complainant alleges that such activities of the Respondent shall create a likelihood of confusion with the Complainant's trademark SHELL as to the sponsorship, affiliation, or endorsement of the website. Such use by the Respondent is neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the Disputed Domain Name.
Finally, the Complainant asserts that it has not licensed or otherwise permitted the Respondent to use the SHELL trademark, or any other trademark incorporating the SHELL mark.
Therefore, the Complainant claims that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name.
(iii) The Disputed Domain Name was registered and is being used in bad faith
The Complainant asserts that it is incomprehensible that the Respondent would have been unaware of Complainant's SHELL mark at the time the Disputed Domain Name was registered in 2011 given the prominence and well-known stature of the Complainant's SHELL goods and services and also prior domain name and trademark registrations of the SHELL mark.
The Complainant further asserts that the registration of the Disputed Domain Name, which in the Complainant's view is confusingly similar to the Complainant's well-known SHELL mark, amounts to clear evidence of bad-faith registration and use. The Complainant alleges that in doing so, the Respondent has intentionally attempted to attract for commercial gain Internet users to the website, by intentionally misleading them and creating a likelihood of confusion with the Complainant's trademark as to the source, sponsorship, affiliation, or endorsement of the website.
Finally, the Complainant asserts that the Respondent's choice of the Disputed Domain Name is not accidental and has clearly been made to derive unfair monetary advantage as the Complainant contends: (1) the registration of the Complainant's well-known trademark SHELL and domain name <shell.com> well predate the registration of the Disputed Domain Name; (2) the adoption of the SHELL mark as part of the Disputed Domain Name by the Respondent and the use of Complainant's design mark on the website resolved to by the Disputed Domain Name cannot be a coincidence and is clearly to align its business and services with the Complainant which reflects "bad faith"; (3) the adoption of the Disputed Domain Name, which is in the Complainant's view is confusingly similar mark to Complainant's distinctive trademark SHELL, was not independent but parasitic and made in bad faith; and (4) the business activities carried out by the Respondent through the confusingly similar Disputed Domain Name are illegitimate and only to divert the Internet traffic by using the Complainant's well-known trademark SHELL.
Therefore, the Complainant contends that the Disputed Domain Name was registered and being used in bad faith.
B. Respondent
The Respondent did not reply to the Complainant's contentions.
6. Discussion And Findings
A. Procedural issues
First, in this case, the verification by the Registrar disclosed an underlying registrant of the Disputed Domain Name that differed from the privacy or proxy registration services which appeared in the WhoIs at the time the Complaint was filed. However, the Panel finds that the disclosure by the Registrar was clear and timely, and the Complainant amended the Complaint as to reflect the proper underlying respondent. Therefore, the Panel elects to disregard the privacy or proxy service entirely and focus solely on the registrar-confirmed registrant, i.e. the Respondent.
Secondly, the Respondent's failure to file a response does not automatically result in a decision in favor of the Complainant (see, e.g.,Tradewind Media, LLC d/b/a Intopic Media v. Jayson Hahn,
WIPO Case No. D2010-1413 and M. Corentin Benoit Thiercelin v. CyberDeal, Inc.,
WIPO Case No. D2010-0941). However, the Panel may draw appropriate inferences from the Respondent's default.
In accordance with paragraph 4(a) of the Policy, in order to decide on the remedy sought by the Complainant, the Panel will examine whether each of the following three elements are present:
(I) the Disputed Domain Name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(II) the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and
(III) the Disputed Domain Name has been registered and is being used in bad faith.
Consequently, the Panel shall further analyze the eventual concurrence of these three grounds in the present case.
B. Identical or Confusingly Similar
The Complainant is required to establish the two following elements: (1) that it has trademark rights, and, if so, (2) that the Disputed Domain Name is identical or confusingly similar to its trademark.
First, the Panel finds that the Complainant has clearly evidenced that it has trademark rights in and to SHELL, which has been registered since as early as 1910, and thus, well before the registration of the Disputed Domain Name. Also, it is evidenced that the Complainant has a lengthy use of its trademark SHELL for its commercial activities, including, inter alia, exploring and producing oil and gas on land and at sea; providing energy solutions and petrochemicals, transporting, marketing and trading in oil and gas, producing and selling fuel for ships and planes, generating electricity and providing stations worldwide. The Complainant has also involved in the bitumen and asphalt manufacture, marketing and technology research for over 85 years.
Secondly, the Panel finds that the Disputed Domain Name comprises the Complainant's distinctive and well-known SHELL trademark in its entirety. The difference between the Disputed Domain Name and the SHELL trademark is the addition of the word "nhuaduong", which is a Vietnamese term for "bitumen" and/or "asphalt". Despite the fact that "nhuaduong" itself has no meaning in English, Vietnamese customers are likely to perceive it as "nhựa đường" ("bitumen" or "asphalt" in English). Thus, this element should be considered as a descriptive term. The Panel also finds that SHELL remains the dominant element in the Disputed Domain Name. Thus, in the Panel's view, the addition of the word "nhuaduong" does nothing to distinguish the Disputed Domain Name from the SHELL trademark, nor to dispel the risk of confusing similarity, as it was found in previous UDRP decisions (See, e.g.,Playboy Enterprises International Inc. v. Melancia, WIPO Case No. D2006-1106; AT&T Corp. v. WorldclassMedia.com, WIPO Case No. D2000-0553; Six Continents Hotels, Inc. v. CredoNic.com / Domain Name for Sale,WIPO Case No. D2005-0755; Six Continents Hotels, Inc. v. Midas Search Limited,
WIPO Case No. D2004-0986; Six Continents Hotels, Inc, Inter-Continental Hotels Corporation. v. South East Asia Tours,
WIPO Case No. D2004-0388).
Thirdly, the Panel finds, similar to other UDRP panels, that the addition of the generic Top-Level-Domain (gTLD) ".com" to the Disputed Domain Name does not constitute an element so as to avoid confusing similarity for purposes of the Policy (see, e.g.,Volkswagen AG v. Privacy Protection Services,
WIPO Case No. D2012-2066; The Coca-Cola Company v. David Jurkiewicz,
WIPO Case No. DME2010-0008; Telecom Personal, S.A., v. NAMEZERO.COM, Inc.,
WIPO Case No. D2001-0015; F. Hoffmann La Roche AG v. Macalve e-dominios S.A.,
WIPO Case No. D2006-0451; Telstra Corporation Limited v. Nuclear Marshmallows,
WIPO Case No. D2000-0003).
On the basis of the foregoing findings, the Panel finds that the Disputed Domain Name is confusingly similar to the Complainant's SHELL trademark, and the first element under paragraph 4(a)(i) of the Policy is established.
C. Rights or legitimate interests
Paragraph 4(c) of the Policy lists circumstances, in particular but without limitation, which, if found by the Panel to be proved, demonstrate the Respondent's rights or legitimate interests in the Disputed Domain Name for the purposes of paragraph 4(a)(ii) of the Policy. Paragraph 4(c) of the Policy reads:
"When you receive a complaint, you should refer to paragraph 5 of the Rules of Procedure in determining how your response should be prepared. Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue".
The Panel finds that the Complainant has submitted contentions that the Respondent has no rights or legitimate interests in the Disputed Domain Name. The Respondent did not reply to the Complainant's contentions and, therefore, has not refuted the Complainant's contentions.
Regarding paragraph 4(c)(i) of the Policy, the Panel finds, in light of the Complainant's asserted facts, that no license, permission or authorization of any kind to use the Complainant's trademark has been granted to the Respondent. There is no evidence available that the Respondent holds any registered or unregistered trademark rights in any country in the world. Thus, the Panel finds that the Respondent has no rights in the trademark SHELL.
On the date of this Decision, the Panel accessed the website "www.nhuaduongshell.com", and found that the Disputed Domain Name is resolving to an active website, which is providing information (in Vietnamese) on Vietnamese legislation and news relating to bitumen and asphalt industries in Vietnam; no information on Tin Thinh Services and Production & Trading Co., Ltd., which is mentioned in the Complaint, and its goods and services, is available.
Suspecting that the Respondent has revised the contents of the website after receiving the notice of dispute, the Panel1 searched for archives of the website via the archive tool at "www.archive.org", and found that before the time the Complaint was filed, the website at the Disputed Domain Name was used for promoting a company named Cong ty TNHHH Thuong Mai- San Xuat-Dich Vu Tin Thinh (Tin Thinh Trade- Protection and Service Co., Ltd.- ("Tin Thinh")). According to these archives, Tin Thinh claimed to be a distributor of bitumen products, including those imported from Shell Singapore, and another bitumen product named "hot asphalt 60/70" without any mentioning to its brand. Further, Tin Thinh also claimed to provide services in the manufacture of wooden products, land and water freight transportation, and customs declaration for others. The Panel finds that such previous use , as further explained in section 6.D below, cannot be considered a bona fide offering of goods or services.
Further, the Panel finds that before the time that the Complaint was filed, and even as of the date of this decision, the Respondent is not mentioned anywhere in the website, which the Disputed Domain Name resolves to. Furthermore, there is no evidence showing that the Respondent currently operates a business or any other organization under the Disputed Domain Name. In addition, the Panel notes that the Disputed Domain Name was registered through a privacy or proxy service, and thus, it is until the Registrar's verification that the name and address of the underlying Respondent was unveiled. Therefore, the Panel upholds that the Respondent has not been commonly known by the Disputed Domain Name, and paragraph 4(c)(ii) of the Policy is not applicable.
In addition, the Panel finds that with the aforesaid information on the use of the Disputed Domain Name before the time the Complaint was filed, there is no doubt that the Respondent used the Disputed Domain Name for commercial purpose. Paragraph 4(c)(iii) of the Policy is not applicable.
Taking into account all of the above, the Panel finds that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name, and the second element under paragraph 4(a)(ii) of the Policy is established.
D. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy identifies, in particular but without limitation, four circumstances which, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith. Paragraph 4(b) of the Policy reads:
"For the purposes of Paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location".
Each of the four circumstances in paragraph 4(b) of the Policy, if found, is an instance of "registration and use of a domain name in bad faith".
The Panel finds that the Complainant has put forth sufficient evidence that the Respondent has registered and used the Disputed Domain Name in bad faith. The Respondent did not reply to the Complainant's contentions and, therefore, has not refuted the Complainant's contentions.
Registration in bad faith
The Panel further finds that the Complainants' trademarks SHELL has been registered on worldwide basis, and enjoyed significant reputation. The Complainant's trademark has been registered and used for decades in, among others, Viet Nam where the Respondent resides.
The Complainant also owns and operates the website at the domain name <shell.com>, to which the Disputed Domain Name is identical, except for the addition of the descriptive word "nhuaduong", which is a Vietnamese word for "bitumen" or "asphalt". The phrase "nhuaduongshell" describes exactly one of the businesses that the Complainant is involved in.
Both the Complainant's trademark SHELL, which was first registered in 1910 and domain name <shell.com>, which was registered in 1989, well predate the Disputed Domain Name. The word "shell" is, in the Panel's opinions, neither descriptive nor generic of the Complainant's products and services in general and of its bitumen and asphalt industry in particular.
Therefore, the Panel agrees with the Complainant's contention on the Respondent's constructive notice of the Complainant's trademark before its registration of the Disputed Domain Name. These facts show that the Respondent did not register the Disputed Domain Name in a fortuity. The Respondent knew or should have known the Complainant and the Complainant's trademark SHELL and domain name <shell.com> before its registration of the Disputed Domain Name, and the Panel considers the registration an attempt by the Respondent as to take advantage of the Complainant's goodwill.
Use in bad faith
As discussed earlier, the Respondent is using the Complainant's well-known trademark SHELL in its entirety as the uniquely distinctive element in the Disputed Domain Name. The Disputed Domain Name resolves to an active commercial website, which, before the time the Complaint was filed, promoted a company involving in distributing bitumen and asphalt products (it is deemed that not all of these bitumen and asphalt products are under the SHELL brand), and providing services in several other different business sectors.
The Panel finds that before the time the Complaint was filed, in addition to the adoption of the famous SHELL mark in the Disputed Domain Name, the Respondent did use the Complainant's design mark on the website at the Disputed Domain Name, but not disclose its actual relationship with the Complainant at that website. As such, any access to the website at the Disputed Domain Name would inevitably lead Internet users to a likelihood of confusion with the Complainant's SHELL trademark as to the source, sponsorship, affiliation, or endorsement of the website, or any relation or association between the Complainant and Respondent, where such relation or association does not exist. Therefore, the Panel finds that the Respondent used the Disputed Domain Name to take a free ride on the Complainant's well-known mark SHELL.
Further, after being notified of the dispute, the Respondent revised the website by removing all its commercial contents, and making it a neutral site for posting news and Vietnamese legislations on the bitumen or asphalt industry. The Panel opines that the Respondent need not do so, if it had been using the Disputed Domain Name for conducting its business in good faith. In this regard, the Panel further notes that despite removing all commercial contents, the Respondent leaves its telephone number in the section "Assistant Number". It can be inferred that the Respondent still attempts to keep contact with its possible customers through such a website, while covering its bad faith business by the aforementioned removal of the website's prior content.
In addition, as mentioned in Section C. above, it is evidenced that the Respondent does not have any rights or legitimate interests in the Disputed Domain Name.
Therefore, the Panel upholds that the Respondent is using the Disputed Domain Name to capitalize on the Complainant's trademark by intentionally attempting to attract Internet users to its commercial website through the creation of a likelihood of confusion with the Complainant's trademarks as to the source, sponsorship, affiliation or endorsement of its website, for commercial gain.
Taking into account all of the above, the Panel finds that the Disputed Domain Name was registered and used by the Respondent in bad faith under paragraph 4(b)(iv), and the third element under paragraph 4(a)(iii) of the Policy is established.
7. Decision
For the foregoing reasons, in accordance with paragraphs 4(a) of the Policy and 15 of the Rules, the Panel orders that the Disputed Domain Name "<nhuaduongshell.com>" be transferred to the Complainant.
Pham Nghiem Xuan Bac
Sole Panelist
Date: October 27, 2014
1 The Panel may undertake limited factual research into matters of public record, see paragraph 4.5 of WIPO Overview 2.0
