WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Shell Brands International AG v. Private Registrant / Cuong Nguyen

Case No. D2015-0199

1. The Parties

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

The Respondent is Private Registrant of Brea, California, United States of America / Cuong Nguyen of Ho Chi Minh, Viet Nam.

2. The Domain Name and Registrar

The disputed domain name <daunhotshell.com> is registered with New Dream Network, LLC dba DreamHost.com (the "Registrar").

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on February 6, 2015. On February 6, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 10, 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 13, 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 16, 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 March 3, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was March 23, 2015. On February 28, 2015, the Center received an email communication from the Respondent. The Respondent made further submission on March 3, 2015. Accordingly, the Center notified the parties about the commencement of panel appointment process on March 24, 2015.

The Center appointed Luca Barbero as the sole panelist in this matter on April 2, 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 of Great Britain and Northern Ireland 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's group of companies operates in Viet Nam since 1989, through the company Shell Vietnam Limited Company, located at Ho Chi Minh, which specializes in producing and trading in high-class lubricant for cars, motorbikes and other engines, and has an office in Hanoi and a factory in the Go Dau Industrial zone.

The Complainant is the owner of registrations for the trademark SHELL in numerous countries of the world, including the following:

- Australian Trademark No. 9267 for SHELL (word mark) filed on May 10, 1910 for several goods and services, including lubricating oils in International Class 4;

- Community Trademark No. 001118801 for SHELL (word mark) filed on March 25, 1999 in various classes, including lubricants in class 4;

- 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 Complainant operates its main web site at the domain name <shell.com>, registered on July 15, 1989, and provides information on its business activity in Vietnam at the domain name <shell.com.vn>, registered on September 27, 2002.

The trademark SHELL has been named as one of the "Top 100 Global Brands" in the study released by Business Week with Interbrand from 2001 to 2009. The trademark has also been ranked amongst the top 10 in Fortune Global 500 largest corporations since 2001 and amongst the top 10 companies in Forbes Global 2000 corporations for 7 years from 2005 to 2014.

The disputed domain name <daunhotshell.com> was registered on April 1, 2012 and is pointed to a web site where the sale of industrial oils, lubricants and greases under the trademark SHELL is promoted.

5. Parties' Contentions

A. Complainant

The Complainant contends that the disputed domain name is confusingly similar to the trademark SHELL since it incorporates the trademark in its entirety with the sole addition of the words "dau" (meanding "oil" in Vietnamese), "nhot" (meaning "lubricant" in Vietnamese) and the Top-Level Domain ".com".

The Complainant states that the Respondent has no rights or legitimate interests in the disputed domain name since i) the Respondent registered the disputed domain name long after the Complainant had established rights in and to the trademark SHELL; ii) the Respondent has no connection to or affiliation with the Complainant and has not received any franchise, license or consent agreement, express or implied, from the Complainant to use the trademark SHELL in a domain name or in any other manner; iii) SHELL is not a descriptive or generic term; and iv) there is no evidence that the Respondent, as a business, has been commonly known by the disputed domain name or is making a legitimate noncommercial or fair use of the disputed domain name.

With reference to the bad faith requirement, the Complainant states that, when the disputed domain name was registered, the trademark SHELL was well-known and registered in numerous jurisdictions across the world, including Viet Nam.

The Complainant concludes that, given the well-known status of the trademark SHELL, the disputed domain name is not one that one could legitimately adopt other than for the purpose of creating an impression of an association with the Complainant.

As to the use of the disputed domain name, the Complainant highlights that the Respondent is pointing it to a web site promoting various products, including SHELL industrial oils, lubricants, and greases. The Complainant notes that, at the bottom of the pages of the Respondent's site, the notice "Shell Distributor in Viet Nam" (in Vietnamese) is featured, and also the Complaiant's slogan "You can be sure of Shell" appears on the top-left part of the Respondent's site. The Complainant further states that, until recently, the Complainant's figurative mark and the name "Shell Vietnam Company Limited" were published on the Respondent's site.

The Complainant informs the Panel that it sent a cease and desist letter to the Respondent, on July 7, 2014, requesting to cease any use of the disputed domain name and of the web site published therein, withdraw the disputed domain name and remove from the Respondent's site the Complainant's marks and the name "Shell Vietnam Company Limited". The Respondent replied, on August 8, 2014, claiming to be a staff of Yen Hung Tradir Company Limited, an authorized distributor of the Complainant in Viet Nam, and undertaking only not to use the name "Shell Vietnam Company Limited" on its web site. The Complainant states that it made several calls through its counsel to the Respondent but it indicated not to be willing to negotiate. The Complainant also verified with its authorized distributor that the person operating the web site at the disputed domain name was actually one of their employees but the company was unaware of his independent activity. Following contacts between Yen Hung Trading Company Limited and the Respondent, the latter undertook also to cease any use of the disputed domain name for trading oils and lubricants via a letter dated July 10, 2014. However, notwithstanding said undertaking, the use of the disputed domain name by the Respondent was not discontinued.

The Complainant asserts that the Respondent's use of the disputed domain name is apt to deceive the trade and public by misrepresenting itself as part of the Complainant's company or to misrepresent that its activities have been authorized, approved or sponsored by the Complainant. The Complainant concludes that the Respondent's purpose in selecting the disputed domain name was plainly to use the fame of the Complainant's trademark to generate traffic and to confuse Internet users visiting the Respondent's site when looking for the Complainant's and its goods and services.

B. Respondent

The Respondent states that its registration of the disputed domain name does not violate the trademark SHELL and that the products sold on the web site published at the disputed domain name originate from the Complainant's authorized distributor in Viet Nam, Yen Hung Tradir Company Limited.

6. Discussion and Findings

According to paragraph 15(a) of the Rules: "A Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable." Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:

(i) that the disputed domain name registered by the Respondent is identical or confusingly similar to a trademark or a service in which the Complainant has rights; and

(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.

A. Identical or Confusingly Similar

The Complainant has provided evidence of ownership of trademark registrations for SHELL in many countries of the world, including in Viet Nam, where the Respondent is based.

The threshold test for confusing similarity under paragraph 4(a)(i) of the Policy involves a comparison between the trademark and the disputed domain name to determine the likelihood of confusion by Internet users. The trademark at issue generally needs to be recognizable as such within the domain name, and the addition of common, dictionary, descriptive or negative terms are typically not regarded as sufficient to prevent threshold confusion by Internet users. See paragraph 1.2 of WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0").

In the case at hand, the Panel finds that the addition of the generic terms "dau" (meanding "oil" in Vietnamese) and "nhot" (meaning "lubricant" in Vietnamese) is not sufficient to prevent the finding of confusing similarity between the disputed domain name and the Complainant's trademark.

See also, among the numerous UDRP decisions finding that the addition of generic or descriptive terms to a trademark is not a distinguishing feature, Barry D. Sears, Ph.D. v. YY / Yi Yanlin, WIPO Case No. D2007-0286 ("diet" added to the ZONE mark); Fry's Electronics, Inc. v. Whois ID Theft Protection, WIPO Case No. D2006-1435 ("electronic" added to the FRY mark); Wal-Mart Stores, Inc. v. Henry Chan, WIPO Case No. D2004-0056 ("chase", "girlsof", "jobsat", "sams", "application", "blackfriday", "blitz", "books", "career(s)", "check", "flw", "foundation", "games", "mart", "photostudio", "pictures", "portrait", "portraitstudio(s)", "registry", "retaillink", and "wire" added to the WALMART mark); PepsiCo, Inc. v. Henry Chan, WIPO Case No. D2004-0033 ("chart", "miusic", "earena", "sweep", "nfl", and "coliseum" added to the PEPSI mark); International Organization for Standardization ISO v. Quality Practitioners Institute and Website Pros, Inc. and Quality, WIPO Case No. D2005-1028 ("net" and "training" added to the ISO mark); Banca Intesa S.p.A v. Roshan Wickramaratna, WIPO Case No. D2006-0215 ("online" added to BANCAINTESA mark); Groupe Auchan v. Jakub Kamma, WIPO Case No. D2007-0565 (addition of the term "software" to the trademark AUCHAN).

Indeed, the Panel finds that the inclusion of the terms "dau" and "nhot" is particularly apt to mislead Internet users into believing that the web site published at the disputed domain name is operated by, or with the authorization of, the Complainant to sell SHELL oils and lubricants. See, amongst others, Swarovski Aktiengesellschaft v. Yuenan, WIPO Case No. D2012-1477.

In view of the above, the Panel finds that the Complainant has proven that the disputed domain name is confusingly similar to the trademark in which the Complainant has rights in accordance with paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

The Complainant must show that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent may establish a right or legitimate interest in the disputed domain name by demonstrating in accordance with paragraph 4(c) of the Policy any of the following:

"(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."

It is well-established that the burden of proof lies on the Complainant. However, satisfying the burden of proving a lack of the Respondent's rights or legitimate interests in respect of the disputed domain name according to paragraph 4(a)(ii) of the Policy is potentially quite onerous, since proving a negative circumstance is always more difficult than establishing a positive one.

Accordingly, in line with the previous UDRP decisions, it is sufficient that the Complainant show a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name in order to shift the burden of production on the Respondent. If the Respondent fails to demonstrate rights or legitimate interests in the disputed domain name in accordance with paragraph 4(c) of the Policy or on any other basis, the Complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy (See Malayan Banking Berhad v. Beauty, Success & Truth International, WIPO Case No. D2008-1393; Accor v. Eren Atesmen, WIPO Case No. D2009-0701).

In the case at hand, the Panel finds that the Complainant has made a prima facie case and that the Respondent has failed to prove any of the circumstances that could demonstrate, pursuant to paragraph 4(c) of the Policy, rights or legitimate interests in the disputed domain name.

According to the documents and statements submitted by the parties, there is no relation between the Respondent and the Complainant; the Respondent is not a licensee of the Complainant nor has the Respondent otherwise obtained an authorization to use the Complainant's trademark or to register the disputed domain name. As mentioned above, the web site published at the disputed domain name is operated by an employee of one of the Complainant's authorized distributors in Viet Nam. However, both the Complainant and said authorized distributor were unaware of the independent commercial activity initiated by the employee under the disputed domain name.

In addition, there is also no indication before the Panel that the Respondent is commonly known by the disputed domain name or has used or made preparations to use the disputed domain name in connection with a bona fide offering of goods or services, or with a legitimate, noncommercial or fair use.

The Panel finds that the Respondent cannot establish rights to, or legitimate interests in the disputed domain name since, in light of the contents published on the correspondent web site, users might be mislead into believing that the web site is associated with or approved by the Complainant. Indeed, the current use of the disputed domain name does not fulfil the requirements established in the prior UDRP case, Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903 ("Oki Data"), in order for a reseller or distributor to demonstrate that it is making a bona fide offering of goods or services, as the web site published at the disputed domain name does not accurately disclose the holder's relationship with the Complainant. Furthermore, before the Complainant's sending of a cease and desist letter to the Respondent, the Complainant's figurative mark and the name "Shell Vietnam Company Limited" were published on the Respondent's web site, thus increasing the likelihood of confusion, amongst Internet users, as to the source or affiliation of the site and products offered therein.

Thus, in light of the above, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name, in accordance with paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

As to bad faith at the time of the registration, the Panel finds that, in light of well-known character of the trademark SHELL, including in Viet Nam, where the Respondent is based, and of the fact that the Complainant is doing business in such country since 1989, it is highly unlikely that the Respondent would not have had actual notice of the Complainant's trademark rights at the time of the registration of the disputed domain name.

Moreover, the Respondent's redirection of the web site at disputed domain name featuring the Complainant's trademark and offering for sale SHELL products and the circumstance that the web site is operated by an employee of one of the Complainant's distributors in Viet Nam, show that the Respondent was actually aware of the Complainant's trademark.

As mentioned in the paragraphs above, the disputed domain name has been redirected to a web site where the Complainant' trademark SHELL, the Complainant's logo and the name of a Complainant's affiliated company in Viet Nam were published and purported SHELL products were – and still are – offered for sale. The Panel finds that the Respondent's use of the disputed domain name, confusingly similar to the trademark SHELL, to divert users to a web site featuring the Complainant's trademarks in order to sell identical or similar products to those of the Complainant and without disclaiming the relationship with the trademark owner constitutes bad faith use.

The Panel also finds that, even if the SHELL products offered for sale on the Respondent's web site were actually SHELL products deriving from the Complainant's authorized distributor as claimed by the Respondent, Internet users could erroneously believe that the web site published at the disputed domain name is operated by the Complainant or its authorized agents.

Therefore, the Panel finds paragraph 4(b)(iv) of the Policy to be applicable in this case since the Respondent has attempted to attract Internet users to its web site for commercial gain, by creating a likelihood of confusion with the Complainant's trademark as to the source, sponsorship, affiliation or endorsement of its web site and of the products promoted therein.

In view of the above, the Panel finds that the disputed domain name was 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 <daunhotshell.com> be transferred to the Complainant.

Luca Barbero
Sole Panelist
Date: April 15, 2015