The Complainants are Shell Vacations LLC and Shell Vacations Club. L.P., of Northbrook, Illinois, United States of America (“United States”), represented by DLA Piper US LLP, United States.
The Respondents are Gee Whiz Domains Privacy Services, of Las Vegas, Nevada, United States and DNS, Admin / Nevis Domains, of Charlestown, Saint Kitts and Nevis.
The disputed domain name <shellvacationclub.com> is registered with Moniker Online Services, LLC.
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 Moniker Online Services, LLC a request for registrar verification in connection with the disputed domain name. On November 14, 2008, Moniker Online Services, LLC transmitted by email to the Center its verification response disclosing the registrant and contact information for the disputed domain name which differed from the named Respondent (Gee Whiz Domains Privacy Services) 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 a First Amended Complaint on November 25, 2008, and a Second Amended Complaint on November 26, 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 UDRP Rules and the WIPO Supplemental Rules for UDRP (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 December 2, 2008. In accordance with the Rules, paragraph 5(a), the due date for service of a Response was December 22, 2008. The Respondents did not submit any Response. Accordingly, the Center notified the Respondents' default on December 23, 2008.
The Center appointed Clive Duncan Thorne as the sole panelist in this matter on January 13, 2009. 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.
In the absence of a Response the Panel relies upon the facts as set out by the Complainants in their Second Amended Complaint.
The Complainants have developed and currently operate 23 owned or affiliated vacation ownership resorts throughout the United States and Canada. The Complainants are owners of the well known Shell Vacations Club and Shell Vacations trade marks as well as the domain names <shellvacationsclub.com> and <shellvacationsllc.com>.
Since at least as early as 1999 the Complainants have used the trade marks SHELL VACATIONS CLUB and SHELL VACATIONS (the “Shell Vacations marks”) in connection with the development of the management and sales of their vacation ownership resorts.
The Complainants have over 120,000 owners and members who participate in the Complainants' vacation ownership programme under the Shell Vacations marks. Between 1999 and 2007, the Complainants have generated over USD 1.9 billion in revenue in connection with their activities under the Shell Vacations marks and specifically over USD 311 million in revenues in 2007 alone. The Complainants employ various media to promote their services under the Shell Vacations marks including sales presentations, broadcast advertising, print media and billboard. They have spent millions of dollars each year over the past few years in advertising including USD 1.4 million in 2007 alone.
The Complainants have been recognised with over 100 industry web awards. They 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.
As a result of this extensive use and promotion of their services under the Shell Vacations marks, the Complainants contend that the Shell Vacations marks have become distinctive and well known of the activities of the Complainants. Supporting evidence for this is given by the Affidavit of Tracy Sherles dated November 5, 2008 which is annexed as Annex C to the Complaint.
The Panel notes that no evidence is given as to registered trade marks owned by the Complainants. Rather, the Complainants appear to rely upon unregistered trade mark rights and refers throughout to the Complainants' “well known Shell Vacations Club mark”.
In the absence of evidence to the contrary from the Respondents and taking into account the evidence adduced in the Affidavit of Tracey Sherles, the Panel accepts the truth of the evidence referred to above. In particular, the Panel accepts on the basis of the evidence adduced that the Complainants, through the widespread use and promotion of the marks SHELL VACATIONS CLUB and SHELL VACATIONS, have established unregistered trade mark rights in those marks.
The history of the present dispute is that the Complainants learned of the Respondents' domain name as a result of their monitoring of improper or unauthorised use of the Shell Vacations marks as third party registered domain names. As a result, the Complainants discovered that the Respondents had registered the domain name in dispute, i.e. <shellvacationclub.com>. Their lawyers DLA Piper US LLP therefore wrote to Gee Whiz Domains Privacy Services on July 22, 2008 requesting a transfer to the Complainants of any domain names that contained the words “Shell”, “Shell Vacations” or “Shell Vacations Club”. No response was received and a further chasing letter was sent on August 26, 2008. No responses have been received by the Complainants to either letter.
The Complainants contend:
(i) The domain name is identical or confusingly similar to trade marks or service marks in which the Complainants have rights; and
(ii) There is no evidence that the Respondent can demonstrate a legitimate interest in the domain name in dispute under the Policy; and
(iii) The Respondent registered and is using the domain name in bad faith. The Complainants rely upon the links to third party websites created by the Respondent.
The Respondents did not reply to the Complainants' contentions.
The Complainants submit that the Respondents' domain name <shellvacationclub.com> consists of a near identical version of the Complainants' mark SHELL VACATIONS CLUB. The only differences between this domain name and the Complainants' mark SHELL VACATIONS CLUB are the addition of the generic top level domain “.com” and the deletion of the letter “s” from the term vacations.
The Panel accepts these contentions. It therefore finds that the domain name in dispute is confusingly similar to trade marks or services marks in which the Complainants have rights.
The Complainants rely upon paragraph 4(c)(i) of the Policy. Previous decisions referred to by the Complainants support the view that the use of a domain name as a portal to a complainant competitor's website does not constitute a bona fide offering of goods or services. The Complainants rely upon evidence of the Respondents' links to a website <ABCtravel.com> which provides click-through links to additional third party websites. Printouts of the <ABCtravel.com> website are set out in Annex Q to the Complaint. The owners of the third party website are various entities that offer hotel, lodging and travel services. Consumers looking for the Complainants would get directed to other providers of these services who are competitors of the Complainants.
The Complainants also rely upon the fact that there is no evidence to show that the Respondents are commonly known by the name “Shell Vacations Club” and therefore cannot claim a legitimate interest in the domain name in dispute under paragraph 4(c)(ii) of the Policy.
The Panel accepts these contentions and finds in favour of the Complainants in respect of this element.
The Complainants rely upon paragraphs 4(a)(iii) and 4(b)(iv) of the Policy as establishing that bad faith registration and use of a domain name can be established by circumstances indicating that the Respondents are using the domain name to intentionally attempt to attract, for commercial gain, Internet users to the Respondents' website or other on-line location, by creating a likelihood of confusion with the Complainants' marks as to source, sponsorship, affiliation or endorsement of the Respondent's website or location, or the product or service on the Respondents' website or location.
The Complainants rely upon the evidence of links to third party websites as evidence to support the submission that the Respondents registered and are using a domain name in bad faith by intentionally attracting users to their website by creating a likelihood of confusion with the Complainants' Shell Vacations marks.
The Complainants also rely upon the fact that the Respondent Gee Whiz Domains Privacy Services has failed to respond to the correspondence from their lawyers and that it has failed to forward these demand letters on to the registrant of the domain name.
The Complainants also adduce evidence of previous decisions (paragraph 47 of the Amended Complaint) which establish a pattern of registering domain names incorporating the well known trade marks of others in order to collect click-through fees. They submits that this pattern of conduct evidences bad faith registration pursuant to paragraph 4(b)(ii) of the policy.
The Panel having considered the evidence of bad faith finds that bad faith has been established by the Complainants who accordingly succeed in respect of this element.
For all the foregoing reasons and in accordance with paragraph 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <shellvacationclub.com> be transferred to the Complainants.
Clive Duncan Thorne
Dated: January 27, 2009