The Complainant is Shell Brands International AG of Baar, Switzerland, represented by Rouse Legal, Viet Nam.
The Respondents are Phan Ngoc and Cong ty co phan Thuong mai dien tu Toan Cau of Ho Chi Minh, Viet Nam. 2. The Domain Names and Registrar
The disputed domain names and are registered with P.A. Viet Nam Company Limited (the "Registrar"). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on October 15, 2015. On October 15, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On October 16, 2015, the Registrar transmitted by email to the Center its verification response confirming that the Respondents are listed as the registrants and providing the contact details. Further to the Center's communication regarding the language of proceeding, the Complainant submitted its request for English to be the language of proceeding on November 6, 2015. The Respondents did not submit a language request.
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 Respondents in both English and Vietnamese of the Complaint and the proceedings commenced on November 16, 2015. In accordance with the Rules, paragraph 5, the due date for Response was December 6, 2015. The Respondents did not submit any response. Accordingly, the Center notified the Respondents' default on December 7, 2015.
The Center appointed George R. F. Souter as the sole panelist in this matter on December 17, 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 member of the well-known Shell group of companies, of which Royal Dutch Shell Plc is the parent. The Complainant trades world-wide in connection with commerce in oil, and this includes an office and a factory in Viet Nam.
Details of the Complainant's ownership of trademarks incorporating the word SHELL internationally, together with details of the world-wide renown of the SHELL trademark, have been supplied to the Panel. The earliest of these registrations dates back to 1921.
The disputed domain names and were registered on January 31, 2015 and February 27, 2015 respectively. 5. Parties' Contentions A. Complainant
The Complainant alleges that the disputed domain name is confusingly similar to its SHELL trademark in that it merely adds to the trademark SHELL the descriptive and/or non-distinctive element "dai ly dau", which would be understood by Vietnamese speaking Internet users and consumers as meaning "oil agent".
The Complainant alleges that the disputed domain name is confusingly similar to its SHELL trademark in that it merely adds to the trademark SHELL the descriptive and/or non-distinctive geographical element "Vietnam".
The Complainant alleges that the Respondents lack rights or legitimate interests in the disputed domain names, in particular that the Complainant has no business relationships with the Respondents, and has never consented to use by the Respondents of the trademark SHELL, and has not consented to the registration of the disputed domain names by the Respondents.
The Complainant alleges that the disputed domain names were registered in bad faith and are being used in bad faith. In the case of the disputed domain name the Complainant has supplied evidence that this disputed domain name is being used in connection with a website which has a link to a third party which is involved in the oil business.
The Complainant states that this third party is an authorized distributor of the Complainant in Viet Nam. B. Respondents
The Respondents did not reply to the Complainant's contentions. 6. Discussion and Findings
Paragraph 4(a) of the Policy lists three elements that the Complainant must prove to merit a finding that the disputed domain names be transferred to the Complainant:
(i) the disputed domain names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) the Respondents have no rights or legitimate interests in respect of the disputed domain names; and
(iii) the disputed domain names have been registered and are being used in bad faith. A. Language of the Proceeding
Paragraph 11 of the Rules provides that the language of the proceeding shall be the language of the registration agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceedings. The Registrar has confirmed the language of the registration agreement the disputed domain names as Vietnamese.
The Complainant has submitted the Complaint in English and requested that the language of the administrative proceeding be English. The Respondents have not submitted any objection to the Complainant's request, despite the Center's invitation sent in both English and Vietnamese. Further, the Panel notes that the notification of the Complaint and the commencement of this proceeding to the Respondents has been done both in English and Vietnamese by the Center. In the interest of procedural efficiency, the Panel accepts the Complaint filed in English and finds it fair to proceed to decision in English, given that the Respondents had the opportunity object to the Complainant's language request and also to make its response submission in either language but has failed to do so. B. Consolidation of Respondents
The Complainant requested the consolidation of the Respondents and claimed that the disputed domain names are subject to a common control. In particular, the Complainant noted that the disputed domain names share the same administrative and technical contact email address and postal address; both are registered with the same Registrar less than one month apart; and the Complainant alleges the legal representative of the registrant of the first disputed domain name is the registrant of the second disputed domain name.
In light of the Complainant's arguments and considering that this consolidation would be fair and equitable to the parties, the Panel accepts the Complainant's request for consolidation. C. Identical or Confusingly Similar
It is well established in decisions under the UDRP that generic Top-Level Domain ("gTLD") indicators (e.g., ".com", ".info", ".net", ".org") may typically be considered irrelevant in assessing confusing similarity between a trademark and a disputed domain name. The Panel agrees with this view and considers the gTLD indicator ".com" to be irrelevant when assessing identity or confusing similarity in the present case.
The Panel has no difficulty in recognizing the Complainant's registered SHELL trademark as being
well-known.
It is well established in prior decisions under the UDRP that the mere addition of descriptive or non-distinctive elements to a trademark in which a complainant has rights is insufficient to avoid a finding of confusing similarity.
In connection with the disputed domain name , the allegation is that the element "dai ly dau" would be understood by Vietnamese speaking Internet users and consumers as meaning "oil agent", which the Panel has independently confirmed. As the element "dailydau" would be understood by Vietnamese speaking Internet users and consumers as meaning "oil agent", which refers directly to the Complainant's business in connection with its SHELL trademark, the Panel has no difficulty in deciding that the element "dai ly dau" is descriptive and does not serve to distinguish the domain name from the Complainant's mark in the circumstances of the present case. Accordingly, the Panel finds that the disputed domain name is confusingly similar to the Complainant's SHELL trademark.
In connection with the disputed domain name , it is well established in prior decisions under the UDRP that the mere addition of a geographical term to a trademark in which a complainant has rights is not sufficient to avoid a finding of confusing similarity. The Panel, accordingly, finds that the disputed domain name is confusingly similar to the Complainant's SHELL trademark.
The Panel, consequently, finds that the Complainant has satisfied the requirement of paragraph 4(a)(i) of the Policy in connection with both the disputed domain names. D. Rights or Legitimate Interests
It is the consensus view of UDRP panels, with which the present Panel agrees, that a prima facie case advanced by the complainant will generally be sufficient for the complainant to be deemed to have satisfied the requirement of paragraph 4(a)(ii) of the Policy, provided the respondent has not come forward with evidence demonstrating rights or legitimate interests in the domain name and the complainant has presented a sufficient prima facie case to succeed under paragraph 4(a)(ii) of the Policy.
The Panel regards the submissions put forward by the Complainant as sufficient to establish as a prima facie case, and the Respondents did not take the opportunity to advance any claim of rights or legitimate interests in the disputed domain names to rebut this prima facie case.
Accordingly, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy. E. Registered and Used in Bad Faith
The Panel is of the view that the finding that a respondent has no rights or legitimate interests in a disputed domain name, may lead, in appropriate circumstances, to a finding that a disputed domain name was registered in bad faith. The Panel regards the circumstances of the present case, in which the Complainant's trademark was incorporated in its entirety, with no additions beyond descriptive or non-distinctive elements and the legally irrelevant ".com" gTLD indicator in the case of both the disputed domain names, as sufficient for the Panel to find that both the disputed domain names were registered in bad faith. The Panel further infers the Respondents' knowledge of the Complainant and its mark, given that the Respondents have chosen domain names that include words descriptive of the Complainant's services.
In connection with the disputed domain name , the Complainant has supplied evidence that this disputed domain name was used to redirect to a website of the Complainant's authorized distributor in Viet Nam. It is well-established in prior decisions under the UDRP that redirecting the domain name to a website associated with a complainant would confuse users and falsely infer association with complainant, constituting use in bad faith. The Panel accordingly finds, in the circumstances of the present case, that the disputed domain name is being used in bad faith.
In connection with the disputed domain name is not, as yet, being used in connection with a website. Legitimate concern as to an inactive website was addressed by the panel in Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003, which found in favour of the complainant. The Panel agrees with the reasoning in that case. In the circumstances of the present case, where the Complainant trades under the trademark SHELL in Viet Nam and where the Respondents have not provided evidence of any actual or contemplated good faith use by them of the disputed domain name, and in view of the Respondents' registration of multiple domain names containing the Complainant's mark, the Panel cannot conceive of any contemplated use that would not be in bad faith, particularly in light of the use of described above. Accordingly, the Panel finds it appropriate to consider the current passive holding of the disputed domain name as use of the disputed domain name in bad faith.
The Panel, accordingly, finds that the Complainant has satisfied the dual requirement of paragraph 4(a)(iii) of the Policy in connection with both the disputed domain names. 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 names and be transferred to the Complainant.
George R. F. Souter
Sole Panelist
Date: December 30, 2015
Full & Egal Universal Law Academy