Complainants are Shell Brands International AG, Switzerland, and Shell Energy Europe B.V., the Netherlands, represented by Corsearch B.V., the Netherlands.
Respondent is George Reijnders, the Netherlands.
2. The Domain Name and RegistrarThe disputed domain name
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 14, 2021. On June 14, 2021, the Center transmitted by email to SIDN a request for registrar verification in connection with the disputed domain name. On June 15, 2021, SIDN 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 Complainants on June 17, 2021, providing the registrant and contact information disclosed by SIDN, and requesting Complainants to submit an amendment to the Complaint. Complainants filed an amended Complaint on June 18, 2021. The Center verified that the Complaint as amended satisfied the formal requirements of the Dispute Resolution Regulations for .nl Domain Names (the “Regulations”).
In accordance with the Regulations, articles 5.1 and 16.4, the Center formally notified Respondent of the Complaint, and the proceedings commenced on June 18, 2021. In accordance with the Regulations, article 7.1, the due date for Response was July 8, 2021. Upon Respondent’s request and after consulting Complainants, the Center extended the due date for Response to July 23, 2021. The Response was filed with the Center on July 22, 2021.
On July 26, 2021, SIDN commenced the mediation process. On August 18, 2021, SIDN informed parties that the dispute had not been solved in the mediation process. On August 19, 2021, Complainants submitted a further submission to the Center.
The Center appointed Alfred Meijboom as the panelist in this matter on September 30, 2021. The Panel finds that it was properly constituted. The Panelist has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required to ensure compliance with the Regulations, article 9.2.
4. Factual BackgroundComplainants are affiliates of the Royal Dutch Shell Group of companies (“Shell”). Complainant Shell Brands International AG (“SBI”) owns, manages, develops, promotes, enforces, and commercially exploits the trademarks, brands, and other brand-related assets of Shell. Complainant Shell Energy Europe B.V. (“SEE”) was established in 2003 and provides solutions to business-to-business customers.
Shell was established in 1907 and operates in more than 70 countries, with 83,000 employees in 2019. Shell produces the equivalent of 3.7 million barrels of oil per day, sold 74.5 million tons of liquefied natural gas (LNG) during 2019 and had a revenue of USD 344.9 billion in 2019.
Complainant SBI is the owner of the following registered word marks, which are valid in the Netherlands:
- European Union trademark SHELL with registration number 001118801, registered on June 11, 2001, with seniority dating back to August 11, 1971, for goods and services in classes 1 through 42 for, inter alia, oils, greases, lubricants, fuels, and liquid petroleum gas;
- European Union trademark SHELL, with registration number 006628523, registered on May 18, 2009, for goods and services in classes 1 through 45 for, inter alia, industrial oils and greases, lubricants, fuels (including motor spirit) and illuminants;
- European Union trademark SHELL ENERGY, with registration number 017959013, registered on February 26, 2019, for goods and services in 9, 35, 37, 39, 40, and 42 for, inter alia, installation, maintenance and repair of electric, gas, power, water and solar energy appliances, equipment, installations and supplies.
The European Union trademarks with registration numbers 001118801 and 006628523 shall be referred to as the “SHELL Marks”.
Complainant SEE has been using its corporate name as trade name in the Netherlands since 2005.
According to the Response, Respondent since May 2008 is Managing Director of Legal Energy Solutions which provides specialized services in the areas of strategy and change management, corporate law, IP, construction law, legal and contract management and dispute resolution inter alia in connection with a bio energy project, energy projects, and a startup solar energy initiative.
Respondent registered the disputed domain name on February 4, 2012, and the disputed domain name does not resolve to an active website.
5. Parties’ Contentions A. ComplainantsComplainants put forward that Shell is an international energy company with expertise in the exploration, production, refining and marketing of oil and natural gas, and the manufacturing and marketing of chemicals. Shell is active across the whole energy value chain and in renewable energy, including biofuels, solar, wind, and hydrogen. The SHELL Marks are world-famous and the company has been ranked among the top 10 in the Fortune Global 500 since 2001. According to Complainants, Shell also developed and now fully owns the first large scale offshore wind farm built off the Dutch North Sea coast which was completed in 2007. Shell operates its global website at the domain name
After Complainant SBI became aware of Respondent’s registration of the disputed domain name, it approached Respondent and attempted to settle the case amicably. According to Complainants, Respondent was only prepared to sell or license the disputed domain name to Complainant SBI for a “fair economic market value”, which Complainants refused.
Complainants assert that Complainant SBI owns the trademark registrations for the SHELL word mark in over a hundred jurisdictions worldwide, including the trademarks listed in paragraph 4 above, and Complainant SEE has rights in the trade name “Shell Energy Europe” which Complainant SEE has been using in the Netherlands since 2005. According to Complainants, the disputed domain name is identical to Complainant SBI’s European Union word mark SHELL ENERGY which the disputed domain name incorporates in its entirety, and the disputed domain name is also confusingly similar to the SHELL Marks and Complainant SEE’s trade name “Shell Energy Europe”, as the disputed domain name incorporates the SHELL Marks in their entirety, and the addition of the term “energy”, which Complainants consider descriptive, does not dispel confusing similarity but rather increases confusing similarity given that the term describes Shell’s area of activity; and the disputed domain name also incorporates the words “Shell Energy”, which are the distinctive part of Complainant SEE’s trade name.
Complainants assert that Respondent has no rights or legitimate interests in respect of the disputed domain name because Complainants have not authorized, licensed, or otherwise permitted Respondent to use the trademarks identified in paragraph 4 above or part of the trade name “Shell Energy Europe” in the disputed domain name or for any other purpose, and Respondent is not commonly known by the disputed domain name. Complainants allege that Respondent appears to have registered the disputed domain name without any intention to use it and with full knowledge of Complainant’s SEE business and the SHELL Marks, which, according to Complainants, is further evidenced by the fact that Respondent has also registered the domain names
According to Complainants the disputed domain name has been registered and is being used in bad faith. The disputed domain name was registered long after Shell was established, long after the registration of the SHELL Marks and long after Complainant SEE started trading under its company name. Complainants allege that it is beyond doubt that Respondent had actual knowledge of Shell and the SHELL Marks at the time of registration of the disputed domain name, having regard to the fame of the SHELL Marks in the Netherlands and internationally, the field of business Shell operates in and especially in the light of Respondent’s professional background in the energy sector and admitted personal knowledge of Shell. Complainants further argue that Complainant SBI’s registration of European Union trademark SHELL ENERGY in 2019 does not change the fact that Complainant SBI has strong rights in the SHELL Marks which has significant fame particularly in the energy industry and Complainant SEE has strong rights in the trade name “Shell Energy Europe”, all such rights pre-dating the registration of the disputed domain name.
Complainants contend that Respondent’s main defense appears to be that at the time of registration of the disputed domain name Shell had no interest or plan to become an energy company and that therefore Respondent’s registration of the disputed domain name would be legitimate and not harm Shell’s business interest, which assumption Complainants believe to be incorrect on multiple levels. First and foremost, Shell is and has always been an energy company, with its core business activities being in the energy industry, and Respondent’s claim that the term “energy” only relates to companies providing renewable energy or to “diversified energy companies”, is refuted by Complainants which refer to Wikipedia sources and earlier panel decisions confirming that the energy industry includes the exploration and development of oil or gas reserves, oil and gas drilling, and refining, and oil and gas as energy products. In addition, Complainants allege that Shell has been active across the whole energy value chain through inter alia its subsidiary, Complainant SEE, and has been active in renewable energy, including biofuels, solar and wind, well before the disputed domain name was registered. According to Complainants, Respondent also acknowledged to Complainant SBI that he was aware not only of Shell’s core activities in the energy sector, but also in renewable energy, as for example he mentioned the divestment of Shell’s solar business activities around 2009. Complainants believe that Respondent seems to base his justification for registering the disputed domain name on Shell’s divestment of certain renewable energy activities around 2009, ignoring however Shell’s shifting focus to biofuels as renewable energy activity at that point in time as well as other ongoing renewable energy projects. Even if Respondent’s assumption would have some merit, Complainants claim that panels have consistently held that registering a domain name consisting of a famous mark and a term that corresponds to the complainant’s natural zone of expansion is a determining factor in establishing bad faith.
B. RespondentRespondent alleges that Shell, at the time Respondent registered the disputed domain name, was not an energy company in the true sense of the word, but rather an oil and gas company, and Shell’s former CEO restructured the company which would concentrate on its core activities, oil and gas, and divested its non-core business activities such as solar energy technology in 2009. Respondent asserts that he was made aware of this development at a lunch with a member of Shell’s executive committee, and noticed that Shell’s reports focused predominantly on oil and gas related activities. Respondent argues that he was free and legally entitled to register the dispute domain name under these circumstances and because he foresaw that oil and gas companies would have to change their activities in the years to come, especially due to environmental constraints. Respondent further alleges that he was professionally involved in renewable energy projects, and that he was aware of an idea to make biofuels from feedstock such as wasted shells, household waste, waste wood and waste of plants, for which future business he thought of the name “shellenergy”. Respondent considers Complainants’ assertion that Shell presented itself as an energy company since 1998 a farce as Respondent considers Shell to be mainly concerned with oil and gas, which, according to Respondent, does not involve energy in the modern (or true) sense of the word, which term, the Panel understands, Respondent reserves for renewable energy.
With respect to the first element of Article 2.1 of the Regulations, Respondent alleges that Complainant SBI waited until 2019 to register the trademark SHELL ENERGY, which is well after he registered the disputed domain name, while Respondent considers this trademark to be descriptive and missing distinctiveness.
For the reasons set out above, Respondent considered himself fully entitled to register the disputed domain name, and alleges that Complainants have not brought forward evidence or proof that the disputed domain name is being used in bad faith. Moreover, Respondent disputes that there would be a time statute for domain name holders to use a website in connection with their domain name.
6. Further SubmissionAfter the mediation process was concluded, Complainants submitted a further submission without being so invited to the Center, alleging that such submission contained a response to the statements and allegations made in the Response which Complainants could not have reasonably anticipated.
Article 11.2 of the Regulations provides that the panel in its sole discretion shall determine the admissibility of further submissions. Without prejudice to a panel’s power to decide otherwise, it is well established that further submissions normally are admissible only in demonstrated exceptional circumstances that made it impossible for a party to file such submission before the deadline of the proceedings, provided such exceptional circumstances are explained in the further submission (see, e.g., Formula One Licensing B.V. v. Louis Theunisse,WIPO Case No. DNL2009-0033; BIC Graphic Europe S.A. and Société BIC v. Alpha Holding B.V.,WIPO Case No. DNL2015-0059).
The basic premise of the Regulations is that both parties may file only one submission – the Complaint and Response respectively. This implies that it is not always possible for a complainant to anticipate all defenses in the Response. However, it is not intended that this can still be done later in the proceedings, unless appropriately timed and in exceptional circumstances. In this matter, Complainants only filed their further submission after the conclusion of the mediation, which may have made it impossible for the mediator, and possibly also Respondent, to consider in the mediation procedure Complainants’ arguments contained in the further submission. Complainants have failed to invoke exceptional circumstances why the further submission was submitted after the conclusion of the mediation, so that the Panel will follows its earlier decision in Betty Blue S.P.A. v. Hugo Vis,WIPO Case No. DNL2021-0025 that the further submission is inadmissible.
7. Discussion and FindingsPursuant to Article 2.1 of the Regulations, Complainants must assert and establish each of the following:
a. the disputed domain name is identical or confusingly similar to:
I. a trademark, or trade name, protected under Dutch law in which Complainants have rights; or
II. a personal name registered in the General Municipal Register (“gemeentelijke basisadministratie”) of a municipality in the Netherlands, or the name of a Dutch public legal entity or the name of an association or foundation registered in the Netherlands under which Complainants undertakes public activities on a permanent basis; and
b. the registrant has no rights to or legitimate interests in the disputed domain name; and
c. the disputed domain name has been registered or is being used in bad faith.
A. Identical or Confusingly SimilarWith regard to the assessment of identity or confusing similarity, it is generally accepted that this test involves a reasoned but relatively straightforward comparison between Complainants’ trademark and/or trade name and the disputed domain name (see section 1.7 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).1 It is also well established precedent that the country-code Top-Level Domain “.nl” may be disregarded in assessing confusing similarity between the trademark (or trade name) on the one hand and the disputed domain name on the other hand (see, e.g., Roompot Recreatie Beheer B.V. v. Edoco LTD,WIPO Case No. DNL2008-0008).
The disputed domain name incorporates the SHELL Marks in their entirety and the addition of the term “energy” to the SHELL Marks does not prevent a finding of confusing similarity between Complainants’ trademark and the disputed domain name, while the added term “energy” to the SHELL Marks in the disputed domain name may actually contribute to the confusion as it describes Shell’s main activities (see also paragraph 7.B below).
Further, the Panel is satisfied that Complainant SEE has been using the trade name “Shell Energy Europe” in the Netherlands well before the registration of the disputed domain name. The disputed domain name consists of the first two elements of this trade name while the third element “Europe” cannot be regarded as distinctive so that its omission does not take away the confusing similarity between the disputed domain name and the trade name.
Consequently, the Panel finds that Complainants have satisfied the requirement of article 2.1 sub a. of the Regulations.
B. Rights or Legitimate InterestsArticle 2.1 sub b. of the Regulations requires Complainants to establish that Respondent has no rights to or legitimate interests in the disputed domain name. This condition is met if Complainants make out a prima facie case that Respondent has no such rights or legitimate interests and if Respondent fails to rebut this (see, e.g., Technische Unie B.V. and Otra Information Services v. Technology Services Ltd.,WIPO Case No. DNL2008-0002).
As is described in WIPO Overview 3.0, “while the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the often impossible task of ‘proving a negative’, requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element.”
Respondent’s defense is based on the assertion that Shell is not an energy company in, what he calls, the modern or true sense of the word, and that he therefore has a right to register the disputed domain name. The Panel notes that the public – including at the time Respondent registered the disputed domain name –considers oil and gas to be energy products and Complainants to be part of an energy company. In this respect, the Panel does not accept Respondent’s view of the term “energy” as an equivalent for renewable energy only, as such restricted meaning of the term “energy” is not evidenced by Respondent, whereas Complainants have referred to publicly available sources supporting their claim in this regard.
Respondent did not contest Complainants’ allegation that they have not authorized, licensed, or otherwise permitted Respondent to use the SHELL Marks or the tradename “Shell Energy Europe” as part of the disputed domain name and that Respondent was not commonly known by the disputed domain name. Respondent has also not claimed that he has made demonstrable preparations to use the disputed domain name, or a name corresponding to the disputed domain name, in connection with a bona fide offering of goods or services, but rather admitted that he has made no use of the disputed domain name at all.
The mere availability of a domain name which includes a famous trademark, such as the SHELLL Marks, is not sufficient to claim a right to or a legitimate interest in the disputed domain name.
In conclusion, the Panel finds that Complainants have satisfied the requirement of article 2.1 sub b. of the Regulations.
C. Registered or Used in Bad FaithArticle 2.1 sub c. of the Regulations requires Complainants to show that the disputed domain name was registered or is being used in bad faith.
Respondent admits that he was familiar with Shell and the SHELL Marks when he registered the disputed domain name. He believed that he could register the disputed domain name because Shell, at that time, was, in his opinion, not interested in renewable energy. Respondent alleges that he wanted to claim the disputed domain name for a future business in connection with making biofuels from feedstock such as wasted shells, household waste, waste wood and waste of plants. Respondent’s implication, reinforced by his assertion that the trademark SHELL ENERGY would be descriptive or lack distinctiveness, that the disputed domain name uses a descriptive term and therefore was not registered in bad faith, fails as such implication does not consider that the SHELL Marks and “Shell Energy” trade name existed well before Respondent’s registration of the disputed domain name, while the SHELL Mark is a famous mark and the term “energy” cannot reserved for renewable energy – apart from the fact that Shell was already involved in renewal energy at the time Respondent registered the disputed domain name. With the registration of the disputed domain name, which includes the famous SHELL Marks, and the addition of the term “energy”, which term the public likely also associates with Shell, and Respondent’s intention to use the disputed domain name for a future energy company, which may compete with Shell, the Panel is satisfied that Complainants have shown that Respondent registered the disputed domain name in bad faith. The Panel furthermore finds that this case meets the conditions of bad faith to passive holding; see Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003.
The Panel also finds that Complainants have satisfied the requirement of article 2.1 sub c. of the Regulations.
8. DecisionFor all the foregoing reasons, in accordance with articles 1 and 14 of the Regulations, the Panel orders that the domain name
Alfred Meijboom
Panelist
Date: October 14, 2021
1 In view of the fact that the Regulations are substantially similar to the Uniform Domain Name Dispute Resolution Policy (“UDRP”), it is well established that both cases decided under the Regulations and cases decided under the UDRP, and therefore WIPO Overview 3.0, may be relevant to the determination of this proceeding (see, e.g., Aktiebolaget Electrolux v. Beuk Horeca B.V.,WIPO Case No. DNL2008-0050).