WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Shell Vacations LLC, Shell Vacations Club, L.P. v. Pluto Domain Services Private Limited/PrivacyP Case No. D2008-1713 1. The Parties
The Complainants are Shell Vacations LLC and Shell Vacations Club, L.P., of Illinois, United States of America, represented by DLA Piper US LLP, United States of America.
The Respondent is Pluto Domain Services Private Limited, of Maharashtra, India; PrivacyP, of Moergestel, Netherlands. 2. The Domain Name and Registrar
The disputed domain name is registered with Lead Networks Domains Pvt. Ltd. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 7, 2008. On November 10, 2008, the Center transmitted by email to Lead Networks Domains Pvt. Ltd. a request for registrar verification in connection with the disputed domain name. On November 18, 2008, Lead Networks Domains Pvt. Ltd. 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 Complainants on November 18, 2008 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainants to submit an amendment to the Complaint. The Complainants filed an amended Complaint on November 21, 2008. The Center verified that 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 November 27, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was December 17, 2008. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on December 18, 2008.
The Center appointed Francine Tan as the sole panelist in this matter on December 30, 2008. 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 Complainants, with over 2,500 employees, operate 23 owned or affiliated vacation ownership resorts throughout the United States of America (“U.S.”) (namely, in California, Oregon, Arizona, Hawaii, Nevada, New Hampshire, Texas and Wisconsin) and Canada. They are the owners of the trade marks SHELL VACATIONS CLUB and SHELL VACATIONS (hereinafter referred to collectively as “the SHELL VACATIONS marks”). The Complainants registered the domain name on February 4, 1999 and the domain name on February 3, 1998.
The Complainants have used the SHELL VACATIONS marks in connection with the development, management and sales of their vacation ownership resorts since as early as 1999. Over 120,000 owners and members participate in the Complainants' vacation ownership program under the SHELL VACATIONS marks. Between the years 1999 and 2007, the Complainants generated over USD1.9 billion in revenue in connection with their activities under the SHELL VACATIONS marks. In the year 2007, over USD311 million dollars in revenue were generated. The Complainants employ various media to promote their services under the SHELL VACATIONS marks, including sales presentations, broadcast advertising, print advertising, print media and billboards. They have spent millions each year for the last several years in advertising. Since 1999, the Complainants have been recognized with over 100 industry and web awards.
The Complainants have also relied on the Internet as a forum to promote and disseminate information regarding their services offered in connection with the SHELL VACATIONS marks.
The Respondent in these proceedings is, collectively, Pluto Domain Services Private Limited and PrivacyP. The disputed domain name was registered on January 28, 2002 anonymously by Pluto Domain Services Private Limited through PrivacyP's proxy service. 5. Parties' Contentions A. Complainants
The Complainants assert that:
1. The disputed domain name is confusingly similar to the SHELL VACATIONS marks in which the Complainants have rights.
The disputed domain name consists of a near identical version of the Complainants' distinctive and well-known SHELL VACATIONS mark. The only difference is the addition of the generic top-level domain “.com”.
Additionally, the disputed domain name incorporates the most distinctive element of the Complainants' SHELL VACATIONS CLUB mark, namely the term “shell” as well as the term “vacations”. The only difference between the disputed domain name and the Complainants' SHELL VACATIONS CLUB mark are the addition of the generic top-level domain “.com” and the omission of the word “club”.
In this case, the disputed domain name comprises the phrase “shell vacations” and the generic top-level domain “.com”. Previous cases have established the principle that the addition of the generic top-level domain is completely without significance (see PepsiCo, Inc. v. PEPSI, SRL (a/k/a P.E.P.S.I.) and EMS Computer Industry (a/k/a EMS), WIPO Case No. D2003-0696). Additionally, in assessing a likelihood of confusion between a registrant's domain name and the complainant's marks, “points of similarity are weighed more heavily than points of difference” (see Nintendo of America, Inc. v. Gray West International, WIPO Case No. D2000-1219). The disputed domain name is virtually identical to the Complainants' SHELL VACATIONS mark and confusingly similar to their SHELL VACATIONS CLUB mark. Internet users are likely to be confused as to whether an association exists between the disputed domain name and the Complainants.
2. The Respondent has no right or legitimate interest in the disputed domain name.
The Complainants referred to paragraph 4(c) of the Policy which sets out how a respondent can demonstrate a legitimate interest in a domain name and to previous UDRP decisions which have established a principle that the use of a domain name as a portal to a complainant's competitor's website does not constitute a bona fide offering of goods and services (see Humana, Inc. v. Henry Tsung,WIPO Case No. D2005-0221 and Humana, Inc. v. Domain Deluxe, WIPO Case No. D2005-0231).
The Complainants assert that in this case, the disputed domain name links to a website that provides click-through links to additional third-party websites. The owners of the third-party websites are various entities that offer hotel, lodging and travel services. Consumers looking for the Complainants would get diverted to other providers of these services. These third parties are competitors of the Complainants and therefore the Respondent has not made use of the disputed domain name in connection with a bona fide offering of goods or services (per paragraph 4(c)(i) of the Policy). Further, to the best of the Complainants' knowledge, the Respondent (Pluto Domain Services Private Limited and PrivacyP) is not commonly known by the name “Shell Vacations” and therefore cannot claim a legitimate interest in the domain name (per paragraph 4(c)(ii) of the Policy). Finally, as the Respondent provides links to competing websites, it presumably receives click-through fees and therefore it cannot claim that it is making a legitimate non-commercial or fair use of the disputed domain name (per paragraph 4(c)(iii) of the Policy).
3. The disputed domain name has been registered and used in bad faith.
The Complainants base their claim of bad faith registration and use of the disputed domain on the fact that the Respondent has made use of the disputed domain name to provide links to third-party websites. They contend that the Respondent has thereby intentionally attempted to attract users to its website by creating a likelihood of confusion with the Complainants' SHELL VACATIONS marks and as to the source, sponsorship, affiliation or endorsement of the Respondent's website, location or of a product or service on the Respondent's website or location. B. Respondent
The Respondent did not reply to the Complainants' contentions. 6. Discussion and Findings
According to paragraph 4(a) of the Policy, the complainant must prove that:
(i) The disputed domain name is identical or confusingly similar to a trade mark or service mark in which the complainant has rights; and
(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. A. Identical or Confusingly Similar
In this case, the Complainants did not furnish any evidence of a valid trade mark registration(s) for either the SHELL VACATIONS CLUB mark or the SHELL VACATIONS mark in any jurisdiction. Nevertheless, the Panel finds that the Complainants have been able to establish common law rights in both trade marks. Previous panels have found complainants to have common law trade mark rights and these rights are sufficient to satisfy the requirements of paragraph 4(a)(i) of the Policy. (See Fairview Commercial Lending, Inc. v. Aleksandra Pesalj, WIPO Case No. D2007-0123; Jeffrey Archer v. Alberta Hotrods tda CELEBRITY 1000,WIPO Case No. D2006-0431.)
On the other issue, the Panel is of the view that the disputed domain name is essentially identical to the Complainant's SHELL VACATIONS mark and confusingly similar to the Complainant's SHELL VACATIONS CLUB mark. In accordance with what has been well established in prior UDRP decisions, the Panel agrees that the existence of the generic top-level domain “.com” in this case is of no significance in relation to the issue at hand.
Accordingly, the Panel finds that paragraph 4(a)(i) of the Policy is satisfied. B. Rights or Legitimate Interests
According to paragraph 4(c) of the Policy, the Respondent may establish its rights or legitimate interests in the disputed domain name, among other circumstances, by showing any of the following elements:
(i) before any notice to you [the Respondent] 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 [the Respondent] (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trade mark or service mark rights; or
(iii) you [the Respondent] 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 trade mark or service mark at issue.
The Respondent has not filed a Response and so it has not been able to demonstrate its rights or legitimate interest (if any) in the disputed domain name. On the other hand, the Complainants have asserted that they did not authorize the Respondent to register the disputed domain name nor do they maintain any licensing relationship with the Respondent. Moreover, they have in the Complaint addressed each of the circumstances in paragraph 4(c) of the Policy. In particular, the Panel agrees with the principle established in earlier cases like those cited by the Complainants, namely that the using of a domain name “for a portal linking to websites of the complainant's competitors is not a bona fide offering, but rather one which seeks to profit from confusion with the complainant”.
The Panel therefore finds that a prima facie case has been made out by the Complainants that the Respondent has no rights or legitimate interests in respect of the disputed domain name.
Accordingly, the Panel finds that paragraph 4(a)(ii) of the Policy is satisfied. C. Registered and Used in Bad Faith
The third requirement that the Complainants must demonstrate to succeed is that the disputed domain name has been registered and used in bad faith. In connection with this factor, paragraph 4(b) of the Policy provides that 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 [the Respondent] 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
(b) you [the Respondent] 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
(c) you [the Respondent] have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(d) by using the domain name, you [the Respondent] have intentionally attempted to attract, for commercial gain, Internet users to your website 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 website or location or of a product or service on your website or location.
In this case, the Panel finds that a case of bad faith registration and use by the Respondent has been established. Having considered the evidence submitted by the Complainants, the Panel finds that the Respondent must probably have known of the Complainants' rights in the SHELL VACATIONS marks when it registered the disputed domain name. The providing of links to competing websites are indications of bad faith. Further, Internet users who are looking for the Complainants' website are very likely to type in the domain name and would legitimately expect to be led to the Complainants' website, and having been directed to the Respondent's site, they are likely to be confused or misled into thinking that that site is affiliated to, or sponsored/endorsed by the Complainants. The Respondent's conduct is potentially disruptive to the Complainants' business and the Respondent stands to profit from this. Hence, the Panel finds that this situation falls squarely within the circumstance described in paragraph 4(b)(iv) of the Policy.
Accordingly, the Panel finds that paragraph 4(a)(iii) of the Policy is satisfied. 7. Decision
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name be transferred to the Complainants.
Francine Tan
Sole Panelist
Dated: January 13, 2009
Full & Egal Universal Law Academy