The Complainant is Shell Brands International AG of Baar, Switzerland, represented by Rouse Legal, Viet Nam.
The Respondent is Phu Loc Metal Trading Co. Ltd. of Ho Chi Minh City, Viet Nam / CONG TY TNHH TM KIM LOAI PHUC LOC of Ho Chi Minh City, Viet Nam. 2. The Domain Name and Registrar
The disputed domain name is registered with OnlineNic, Inc. d/b/a China-C (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 20, 2015. On January 20, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 21, 2015, 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 February 9, 2015 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 February 10, 2015.
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 February 11, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was March 3, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 4, 2015.
The Center appointed Steven A. Maier as the sole panelist in this matter on March 11, 2015. 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 a company organized under the laws of Switzerland. It is a subsidiary of a United Kingdom company, Royal Dutch Shell plc, and comprises part of a group of companies involved in oil exploration, production, transportation and related activities worldwide.
The Complainant is the owner of registrations for the trademark SHELL in numerous territories throughout the world. The registrations include, for example:
- Australian trademark number 9267 for SHELL filed on May 10, 1910 for goods and services, including lubricating oils in International Class 4: the Complainant states that this is its earliest registration;
- Community Trade Mark number 001118801 for SHELL filed on March 25, 1999 in various classes, including lubricants in International Class 4;
- Vietnam trademark number 1901 for SHELL filed on June 25, 1990 in various classes, including lubricants in International Class 4.
The Complainant states that it is also the owner of similar registrations in other territories including the United States of America, however, a number of these marks appear to be registered by entities other than the Complainant. As a general observation, the Panel notes that the Complaint includes a number of references to “the Complainant” which plainly relate to legal entities within the Complainant’s group other than the Complainant itself. While, in this particular case, the Panel has decided not to require amendment of the Complaint or the filing of additional evidence, the Complainant is urged to take greater care in this regard in any future proceedings. In this case, the Panel is prepared to infer that the Complainant is duly authorized to act as agent for other relevant entities within the Complainant’s group and references in this Decision to “the Complainant” include other entities within the Complainant’s group as and where appropriate.
The Complainant is also the owner of a figurative trademark in the form of a scallop shell device (the “Shell Device”) in various territories.
The disputed domain name was registered on July 26, 2010.
The Complainant submits evidence in the form of screen prints of a website to which the disputed domain name resolved on two separate dates:
(1) As at November 11, 2013, the disputed domain name resolved to a Vietnamese website headed “CÔNG TY TNHH DÀU NHÒ’N PHÚ CU’Ò’NG”, which the Complainant asserts translates as “Phu Cuong Lubricants Co., Ltd”. The website prominently featured the Shell Device and the heading “Shell Lubricants” and included images of what appeared to be the Complainant’s products.
(2) As at January 15, 2015 the disputed domain name resolved to a similar website, but the Shell Device and heading “Shell Lubricants” no longer appeared. The website included images of what appeared to be the Complainant’s products and also those of at least one other manufacturer. 5. Parties’ Contentions A. Complainant
The Complainant states that it is well known for a host of activities relating to the petrochemical industry including exploration, production and transport and also for operating service stations worldwide. It was established in 1907 and currently operates in over 70 countries with over 92,000 employees. It sells 3.2 million barrels of oil every day and its overall revenue in 2013 was USD 451.2 bn. The Complainant submits that the mark SHELL is a world famous and globally respected brand and provides evidence that it has, for example, been ranked among the top 10 in the Fortune Global 500 since 2001.
The Complainant states that it is the registrant of the domain name and numerous other domain names incorporating the term “shell”.
The Complainant also states that it is the world’s leading supplier of lubricants, having over 13% of the market by volume. It provides a list of 12 of its specialist lubricant formulations in including “Shell Rimula”, “Shell Helix” and other all including the prefix “Shell”.
The Complainant also provides evidence of its business activities in Viet Nam, where it has traded since 1989, including refining, manufacturing and distribution activities.
The Complainant submits that the disputed domain name is confusingly similar to its trademark SHELL. The Complainant states that the disputed domain name incorporates the mark SHELL together with the prefix “nhot” and the generic top level domain (“gTLD”) “.com” which is to be disregarded for the purposes of comparison. The Complainant states that the term “nhot” is the Vietnamese word for “lubricant” and as such it is purely a descriptive term which does not affect the dominance of the Complainant’s mark within the disputed domain name.
The Complainant submits that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant states that the Respondent has no affiliation or connection with the Complainant and has never been authorized to use the Complainant’s mark SHELL for the purpose of a domain name or in any other manner. The mark SHELL is not a generic or descriptive term. The Complainant also submits that there is no evidence that the Respondent has ever been commonly known by the disputed domain name or that it is making legitimate noncommercial or fair use of the disputed domain name.
The Complainant submits that the Respondent registered and is using the disputed domain name in bad faith. The Complainant states that the Respondent registered the disputed domain name long after the Complainant established its rights in the SHELL trademark and that its registration and use of the disputed domain name was demonstrably intended to profit from customers’ confusion by attracting Internet users to the Respondent’s website for commercial gain. Given the well-known status of the Complainant’s mark, the Respondent could not have registered the disputed domain name other than for the purpose of creating an impression of association with the Complainant.
The Complainant also states that the Respondent’s website originally used the Complainant’s Shell Device in addition to its trademark SHELL. The Complainant provides evidence of communications with the Respondent in March 2014, as a result of which is submits that the Respondent removed the Shell Device but did not agree to cease to use the disputed domain name. The Complainant states that in the course of a telephone conversation, Mr. Quyen of the Respondent offered to sell the disputed domain name to the Complainant for USD 10,000.
The Complainant seeks a transfer of the disputed domain name. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
In order to succeed in its Complaint, the Complainant is required to show that all three of the elements set out under paragraph 4(a) of the Policy are present. Those elements are:
(i) that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) that the disputed domain name has been registered and is being used in bad faith.
Even in a case such as this where the Respondent has failed to file a Response, the Complainant must still establish that all three of the above elements are present. A. Identical or Confusingly Similar
The Complainant has demonstrated that it has rights in the registered trademark SHELL in numerous territories throughout the world. Ignoring the gTLD “.com”, the disputed domain name comprises the elements “nhot” and “shell”. The Panel accepts the Complainant’s undisputed submission that “nhot” means “lubricant” in Vietnamese and that this is a descriptive term which does not serve to distinguish the disputed domain name from the Complainant’s mark: on the contrary, the Panel finds that the term is descriptive of one of the areas of activity in which the Complainant’s mark enjoys a substantial reputation and therefore adds to the potential for confusion.
Accordingly, the Panel finds that that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights. B. Rights or Legitimate Interests
On the basis of the submissions contained in the Complaint as set out above, the Complainant has established a prima facie case that the Respondent has no rights or legitimate interests in respect of the disputed domain name. While it was open to the Respondent to participate in these proceedings and to answer the Complainant’s case, the Respondent has failed to do so. Furthermore, there is no other evidence before the panel of any rights or legitimate interests on the Respondent’s part. In certain circumstances, a reseller of a trademark owner’s product, even if unauthorized, may legitimately use that trademark for the purposes of a domain name: see, e.g. Paragraph 2.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”). However the Respondent has put forward no such defence in this case and in any event it appears clear to the Panel that the conditions for such legitimate use have not been met. In particular, it is not apparent that the Respondent is selling only the Complainant’s goods, nor that the Respondent has accurately and prominently disclosed its relationship (or lack of any relationship) with the Complainant.
In the circumstances, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name. C. Registered and Used in Bad Faith
Based on the evidence of the Respondent’s website submitted by the Complainant, it is plain that the Respondent registered and has used the disputed domain name in the knowledge of the Complainant’s trademark SHELL and with the intention of making reference to that trademark. Further, the Panel infers that the Respondent adopted the disputed domain name with the intention of benefitting from the Complainant’s substantial goodwill in its long-established trademark. In circumstances where the Respondent has failed to make out any case that the Complainant’s trademark was used legitimately, the Panel finds that the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of its website or of a product or service on its website (Paragraph 4(b)(iv) of the Policy).
In the circumstances, the Panel finds that the disputed domain name has been registered and is being used in bad faith. 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 be transferred to the Complainant.
Steven A. Maier
Sole Panelist
Date: March 17, 2015
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