WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Shell Brands International AG v. Cuong Nguyen, Nguyen Van Cuong

Case No. D2016-2463

1. The Parties

The Complainant is Shell Brands International AG of Baar, Switzerland, represented by Rouse Legal, Viet Nam.

The Respondent is Cuong Nguyen, Nguyen Van Cuong of Hanoi, Viet Nam

2. The Domain Name and Registrar

The Disputed Domain Name <daushell.com> (the “Disputed Domain Name”) is registered with Name.com, Inc. (Name.com LLC) (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 6, 2016. On December 6, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On December 6, 2016, the Registrar transmitted by email to the Center its verification response confirming that, amongst others, the Respondent is listed as the registrant and providing the contact details and the language of the Registration Agreement for the Disputed Domain Name was English.

The Center verified that the 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on December 21, 2016. In accordance with the Rules, paragraph 5, the due date for Response was January 10, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 11, 2017.

The Center appointed Pham Nghiem Xuan Bac as the sole panelist in this matter on January 19, 2017. 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 was established in 1907 under the laws of Switzerland as a member of the Shell group of companies. The Complainant is a worldwide renowned corporation 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 energy efficiency solutions and services stations worldwide.

The Complainant is operating in more than 70 countries and employing around 92,000 staff worldwide. In Viet Nam, where the Respondent is located, the Complainant commenced its operation in 1989.

The Complainant is the owner of the trade name, trademark, brand name SHELL (word mark and device mark), which is largely protected around the world, in connection with the oil and lubricants manufacturing and marketing industries, as well as in connection with other products and services.

The Complainant owns many SHELL trademark registrations in numerous countries, including, but not limited to Australia, USA, Singapore, United Kingdom, Turkey, Thailand, Taiwan, Syria, and Switzerland. In Viet Nam, the Complainant is the owner of Vietnamese Trademark Nos. 1901 for SHELL (word mark), registered on June 25, 1990, in classes 1, 2, 3, 4, 5, 17, and 19; and 34507 for SHELL (word mark), registered on May 15, 1998, in classes 35, 36, 37, 38, 39, 40, 41, and 42; Nos. 1449 (figurative mark), registered on November 17, 1989, in classes 1, 2, 3, 4, 5, 17 and 19, and 34506 (figurative mark), registered on May 15, 1998, in classes 35, 36, 37, 38, 39, 40, 41, and 42.

The SHELL brand has been ranked amongst top 10 in the Fortune Global 100 (largest corporation) since 2001 and also amongst the top 10 companies in Forbes Global 2000 corporations in the world for seven (7) consecutive years from 2006 to 2013.

The Complainant is also the owner and operator of a number of domain names comprising the SHELL Trademark, including, but not limited to, the domain name <shell.com>, which was registered on July 15, 1989, and <shell.com.vn>, which was registered on September 27, 2002.

The Disputed Domain Name was registered on April 29, 2013 and updated on October 22, 2016.

On 18 July 2016, the Complainant sent a cease-and-desist letter to the Respondent, which is identified as the registrant of the Disputed Domain Name, and to Nghi Son Lubricant and Energy Company Limited, which is identified as the operator of the website, resolved to by the Disputed Domain Name. The Respondent and Nghi Son Lubricant and Energy Company Limited did not officially reply to the cease-and-desist letter of the Complainant. Instead, according to the Complainant’s allegations, the Respondent verbally rejected, via phone call with the Complainant’s counsel, all claims and requests in the cease-and-desist letter sent by the Complainant. Since then, the Complainant has received no reply from the Respondent or Nghi Son Lubricant and Energy Company Limited, despite the Complainant’s subsequent reminder on September 14, 2016.

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 nearly identical or confusingly similar to the Complainant’s SHELL trademark

The Complainant argues that the Disputed Domain Name, which is a mere combination of “dau”, “shell” and “.com” is nearly identical or confusingly similar to the Complainant’s SHELL trademark.

In details, the Complainant contends that the combination of the word “dau”, which is a descriptive term meaning “oil” in the Vietnamese language, with the Complainant’s trademark SHELL, which is inherently distinctive and does not have any meaning in Vietnamese, is very likely to be construed as “Shell-branded oil” to Vietnamese Internet users and consumers.

The Complainant refers to some previous UDRP decisions that the addition of the Vietnamese word "dau" which means “oil” in Vietnamese, 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.

Finally, the Complainant submits that the addition of the suffix “.com”, which only serves to indicate the type and code level of the Disputed Domain Name, cannot be taken into account when evaluating the confusing similarity.

Therefore, the Complainant contends that the Disputed Domain Name is 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 Disputed Domain Name was registered long after the Complainant established its rights in and to the SHELL Trademarks.

The Complainant further alleges that the Respondent has no connection to or affiliation with the Complainant.

The Complainant contends that “shell” is not a descriptive or generic term.

Therefore, the Complainant submits that the Respondent has no rights or interests in the Disputed Domain Name.

(iii) The Disputed Domain Name was registered and is being used in bad faith

Firstly, the Complainant asserts that the Disputed Domain Name was registered in bad faith by arguing that the Disputed Domain Name is not a domain name that one could legitimately adopt other than for the purpose of creating an impression of an association with Complainant, given the well-known status of the SHELL Trademarks, and the Respondent’s knowledge of the existence of such marks at the time the Disputed Domain Name was registered in April 29, 2013.

Secondly, the Complainant further submits that the Disputed Domain Name was used in bad faith.

The Complainant argues and submits relevant evidence that the Respondent has adopted the SHELL Trademarks as part of the Disputed Domain Name and used the misleading title “Dầu Shell – Dầu Nhớt Shell – Dầu nhờn Shell – Shell Lubricant” (roughly translated into English as “Shell-branded oil – Shell-branded oil and lubricants – Shell branded grease – Shell Lubricant”) and the Complainant’s marketing materials in the website resolved to by the Disputed Domain Name.

Therefore, the Complainant asserts that such behaviors cannot be a co-incidence and are clearly to align its business / services with the Complainant, and hence, indicate “bad faith”, and that the entire business activity of the Respondent is to deceive the innocent trade and public by misleading itself as part of the Complainant’s company or to misrepresent that its activities have been authorized, approved or sponsored by the Complainant.

For these above reasons, the Complainant contends that the Disputed Domain Name was registered and is being used in bad faith.

Thirdly, the Complainant submits and provides relevant evidence with regard to the Respondent’s repeated registration of infringing domain names, including the domain name <daunhotshell.com> and the Disputed Domain Name.

Fourthly, the Complainant contends and tries to evidence that the Complainant has made efforts to resolve the matter amicably through (i) sending cease-and-desist letter to the Respondent, which is identified as the registrant of the Disputed Domain Name, and to Nghi Son Lubricant and Energy Company Limited, which identified as the operator of the website, on 18 July 2016; (ii) making follow-up calls to the Respondent and Nghi Son Lubricant and Energy Company Limited; and (iii) sending the Respondent and Nghi Son Lubricant and Energy Company Limited a subsequent reminder on September 14, 2016. However, the Respondent and Nghi Son Lubricant and Energy Company Limited did not officially reply to the cease-and-desist letter of the Complainant, except the alleged verbal rejection of all the Respondent’s claims and requests, via phone call with the Complainant’s counsel.

The Complainant submits that there is no credible legitimate reason for the Respondent to have chosen to adopt the Disputed Domain Name and that the Respondent’s purpose in selecting the Disputed Domain Name was plainly to use the fame of the Complainant’s SHELL Trademarks to generate web traffic and to confuse the Internet users visiting the Respondent’s website when looking for the Complainant and its goods/services.

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

(i) Respondent’s identity

The Panel notes that in the Complaint, the Complainant identifies two Respondents, namely, Cuong Nguyen, Nguyen Van Cuong of Hanoi, Vietnam, and Whois Agent at Whois Privacy Protection Service Inc. of Kirkland Washington, United States of America. In the verification by the Registrar on 6 December 2016, Cuong Nguyen, Nguyen Van Cuong of Hanoi, Vietnam was identified as the registrant of the Disputed Domain Name.

As such, the Panel finds that the present case involves privacy and/or proxy registration services, and Cuong Nguyen, Nguyen Van Cuong of Hanoi, Vietnam is the actual registrant of the domain name in question. Therefore, in accordance with paragraph 4.9 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), the Panel determines the identity of the proper respondent in this case to be Cuong Nguyen, Nguyen Van Cuong of Hanoi, Vietnam.

(ii) The Respondent’s Failure to Respond:

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 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 of all, the Panel finds that the Complainant has clearly evidenced that it has registered trademark rights to SHELL well before the Disputed Domain Name was registered. Also, the Complainant has sufficiently demonstrated and evidenced that it had a lengthy use of its trademark for its commercial activities in connection with the oil and lubricants manufacturing and marketing industries, as well as in connection with other products and services worldwide.

Secondly, the Disputed Domain Name comprises the Complainant’s distinctive and widely known SHELL mark in which the Complainant has exclusive rights. The difference between the Disputed Domain Name and the trademark is the addition of the prefixes “dau”, which can be written with accent marks as “dầu” in Vietnamese and means “oil” in English. Despite the fact that “dau” itself has no meaning in English, Vietnamese customers are likely to perceive it as “dầu” (“oil” in English). Thus, the prefix “dau” should be considered as a descriptive term. The Panel finds that SHELL remains the dominant element in the Disputed Domain Name. It is well established that the addition of a descriptive terms (such as “dau”) to a trademark does not prevent confusing similarity, thus, in the Panel’s view, the addition of the said prefix does nothing to distinguish the Disputed Domain Name from the Complainant’s trademark, nor to dispel the risk of confusing similarity, as it was found in previous UDRP decisions (see, e.g., AB SHELL v. Ilgaz Fatih Micik, WIPO Case No. D2009-0777; Aktiebolaget SHELL v. ibp, WIPO Case No. D2013-0795; AB SHELL v. Ong Bui TrungKien, WIPO Case No. D2012-2320).

Thirdly, the Panel finds, similarly 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 trademark purposes (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, and according to paragraph 4(a)(i) of the Policy, 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)(iii) 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 presented sufficient evidence that the Respondent has no rights or legitimate interests in the 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.

Normally, a reseller or distributor can be making a bona fide offering of goods and services and thus have rights or legitimate interests in the domain name if its use meets certain requirements, which are described in the decision Oki Data Americas, Inc. v. ASD, Inc, WIPO Case No. D2001-0903 (“Oki Data”), including:

- the respondent must actually be offering the goods or services at issue;

- the respondent must use the site to sell only the trademarked goods (otherwise, there is the possibility that the respondent is using the trademark in a domain name to bait consumers and then switch them to other goods);

- the site itself must accurately disclose the respondent’s relationship with the trademark owner; and

- the respondent must not try to “corner the market” in all relevant domain names, thus depriving the trademark owner of the ability to reflect its own mark in a domain name.

The Panel finds, similarly to other prior UDRP panels, that the Oki Data criteria are appropriate even when the respondent is not an authorized reseller, such as it is the case in this dispute (see, e.g., National Association for Stock Car Auto Racing, Inc. v. Racing Connection / The Racin’ Connection, Inc., WIPO Case No. D2007-1524).

However, in this particular case, the Panel finds that the Respondent does not fulfill the Oki Data criteria.

As of the date of this decision, by accessing the website under the Disputed Domain Name, the Panel is redirected to a website under the domain name <lubricants.vn>. This website is deemed active, however, it bears no posts and contents, except for a scrolling box at the center of the page for Internet users to choose appropriate language in order to enter into such website. As such, as of the date of this decision, the Respondent is neither actually offering the goods or services at issue nor disclosing the Respondent’s relationship with the trademark owner in the website that the Panel is redirected to. Moreover, such use for redirection is almost per se not legitimate.

The Panel then refers to the Complaint and was convinced by evidence submitted by the Complainant that by the date of the filing of the Complaint, the Disputed Domain Name was redirected to the website at <lubricants.vn>, but at that time, the said website was used for promoting a company named “Công ty TNHH Hoá dầu và Năng lượng Nghi Sơn” (English name: “Nghi Son Lubricant and Energy Company Limited”), which offers the Complainant’s products, such as industrial oil, lubricants and grease, for sale. However, in review of these screenshots, the Panel once again finds that although selling the Shell oil, lubricants and grease at that time, the Respondent did not place anywhere in the website any statement or disclaimer disclosing the lack of relationship with the Complainant.

For all the foregoing reasons, the Panel finds the Respondent’s use of the Disputed Domain Name does not meet the Oki Data criteria to be considered to be a bona fide offering of goods or services.

Moreover, the Panel finds that there is no evidence that would suggest that the Respondent, as an individual, business, or other organization, has been commonly known by the Disputed Domain Name.

The Panel further finds that no evidence has been presented that the Respondent is making a legitimate noncommercial or fair use of the Disputed Domain Name. In fact, as it appears following the Complainant’s assertions and evidence with regard to the Respondent’s registration of the Disputed Domain Name, the Respondent had full knowledge of the Complainant’s trademark and had an intention to gain profit by riding on the good reputation of the Complainant.

Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name. 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 evidence 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 Complainant’s trademark 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 websites at the domain names <shell.com>; and <shell.com.vn>, to which the Disputed Domain Name is identical, except for the addition of the descriptive word “dau”, which is a Vietnamese word for “oil”. The phrase “daushell” describes exactly one of the businesses that the Complainant is involved in.

The Complainant’s trademark SHELL, which was first registered in 1990, the domain name <shell.com>, which was registered in 1989, and domain name <shell.com.vn>, which was registered in 2002, all well predate the registration of the Disputed Domain Name. The word “shell” is, in the Panel’s opinion, neither descriptive nor generic of the Complainant’s products and services in general and of its oil, lubricants and grease industry in particular.

Therefore, the Panel agrees with the Complainant’s contention on the Respondent’s knowledge 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 the domain name <shell.com> before its registration of the Disputed Domain Name, and the Panel considers the registration of the Disputed Domain Name as an attempt by the Respondent as to take advantage of the Complainant’s goodwill.

Use in bad faith

In Section C above, the Panel finds that the Respondent has no rights or legitimate interests in the Disputed Domain Name. In the Panel’s view, use of a domain name, to which one has no rights or legitimate interests, is very often a clear indication of use in bad faith.

In addition, the Complainant also successfully evidences to the Panel that before the commencement of this UDRP proceeding, the Respondent’s website, to which the Disputed Domain Name resolved, contained, amongst others, copyrighted publications of the Complainant’s marketing materials and other related business materials, without the Complainant’s consent. In the Panel’s view, besides possibly causing the Respondent liability for a copyright infringement, such behaviors by the Respondent may further evidence the Respondent’s intention to create a false relationship between Nghi Son Lubricant and Energy Company Limited with the Complainant.

As such, use of the Disputed Domain Name creates a likelihood of confusion to the online retailers as to the Complainant’s sponsorship, affiliation, or endorsement of the website to which the Disputed Domain Name resolves. Numerous UDRP panels have held that a respondent who intentionally diverts Internet users to its website through such a likelihood of confusion is acting in bad faith. In this particular case, the Panel finds that, similar to numerous previous UDRP decisions, the use of the Complainant’s SHELL mark to generate visitors to such a for-profit website also constitutes bad faith (see, e.g., Pfizer Inc. v. Fizer Inc., WIPO Case No. D2005-0285; Pfizer Inc. v. Phillip Pizzurro, WIPO Case No. D2004-0600; Pfizer Inc. v. Generic Viagra Pills, WIPO Case No. D2004-0592; Pfizer Inc. v. Asia Ventures, Inc.,WIPO Case No. D2005-0256; Pfizer Inc. v. NA, WIPO Case No. D2005-0072; Pfizer Inc. v. BargainName.com, WIPO Case No. D2005-0299; Pfizer Inc. v. Peter Carrington a/k/a Party Night Inc., WIPO Case No. D2003-0622).

In addition, the Panel notes the fact that the Respondent received a cease-and-desist letter from the Complainant and did not respond to it. Instead, the Respondent continued to use the Disputed Domain Name, and redirected it to another domain name <lubricants.vn>, which then resolved to a commercial website. Commercial contents of this website were removed after the commencement of this UDRP proceeding, but the website is still active as of the date of this decision. This is another indication of bad faith.

With such facts, the Panel opines that the Respondent’s purpose in using the Disputed Domain Name is to capitalize on the reputation and goodwill of the Complainant’s trademark, and thus to generate unjustified revenues. Such behavior is indicative of bad faith within the meaning of paragraph 4(b)(iv) of the Policy, on the part of the Respondent.

Taking into account all of the above and the available record, the Panel finds that the Disputed Domain Name was registered and used by the Respondent in bad faith under paragraph 4(b)(iv) of the Policy, 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(i) of the Policy and 15 of the Rules, the Panel orders that the Disputed Domain Name <daushell.com> be transferred to the Complainant.

Pham Nghiem Xuan Bac
Sole Panelist
Date: February 2, 2017