WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Shell Brands International AG v. Jimmy Luis

Case No. D2018-1973

1. The Parties

Complainant is Shell Brands International AG of Baar, Switzerland, represented by Pointer Brand Protection and Research, Netherlands.

Respondent is Jimmy Luis of London, United Kingdom of Great Britain and Northern Ireland (“United Kingdom”).

2. The Domain Name and Registrar

The disputed domain name <shellcorporate.com> (the “Domain Name”) is registered with GoDaddy.com, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 30, 2018. On August 30, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On August 30, 2018, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details.

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 Respondent of the Complaint, and the proceedings commenced on September 12, 2018. In accordance with the Rules, paragraph 5, the due date for Response was October 2, 2018. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on October 4, 2018.

The Center appointed Nathalie Dreyfus as the sole panelist in this matter on October 12, 2018. 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

Complainant, Shell Brands International AG, is a company incorporated in Baar, Switzerland. It is a subsidiary of Royal Dutch Shell plc, a United Kingdom company, and manages, develops, promotes, enforces, and commercially exploits the trademarks, brands, and other brand-related assets of the Royal Dutch Shell Group of companies internationally.

Complainant is one of the largest oil and gas companies in the world, and is active in oil exploration, production, transportation and related activities worldwide. Founded in 1907, Complainant operates in more than 70 countries, including in the United Kingdom, with an average 92,000 employees.

Complainant operates its global website at the domain name <shell.com>, and its website for the United Kingdom at the domain name <shell.co.uk>.

Complainant has adduced evidence that it is the owner of a number of trademark registrations for SHELL in many jurisdictions around the world, including in the United Kingdom. Such trademark registrations include but are not limited to:

- United Kingdom Registration No. UK00000424407, for the SHELL word mark in Class 7, registered on March 15, 1922 (duly renewed);

- European Union (“EU”) Trademark Registration No. 001118801 for the SHELL word mark in Classes 1 - 40, registered on June 11, 2001 (duly renewed); and

- EU Trademark Registration No. 006628523 for the SHELL word mark in Classes 1 - 45, registered on May 18, 2009.

The Domain Name was registered on April 13, 2018. It was resolving to a website replicating Complainant’s official website at “www.shell.com” and was also being used to send fraudulent emails using the address […]@shellcorporate.com.

5. Parties’ Contentions

A. Complainant

Complainant asserts that the Domain Name is confusingly similar to the SHELL word mark as it incorporates the SHELL word mark in its entirety and the addition of the generic term “corporate” is insufficient to prevent confusing similarity.

Complainant further states that Respondent does not have any rights or legitimate interests in the Domain Name. In this regard, Complainant states that it has not authorized, licensed or otherwise permitted Respondent to use the SHELL trademark in the Domain Name or for any other purpose. Furthermore, Complainant states that Respondent is not commonly known by the Domain Name and does not have any registered trademarks or trade names corresponding to the Domain Name. Complainant also argues that Respondent is not using the Domain Name in connection with a bona fide offering of goods or services, or making a legitimate noncommercial or fair use of the Domain Name without intent for commercial gain, as the Domain Name resolves to a website which is a “complete copy of Shell’s official Global website available at <shell.com>”. In addition, Complainant stresses that Respondent is using the Domain Name and website for phishing purposes and has supplied evidence of emails that are being sent using the address […]@shellcorporate.com, misrepresenting himself as Complainant’s CEO.

Complainant submits that the Domain Name was registered and is being used in bad faith. In this regard, Complainant underlines that the Domain Name was registered on April 13, 2018, long after the registration of Complainant’s SHELL trademarks. Complainant stresses that its SHELL trademarks are well known internationally for many years, including in the United Kingdom, where Respondent is located, and where Complainant has been active since it was established. Complainant further states that Respondent was certainly aware and intended to take advantage of the SHELL trademarks, as shown by Respondent’s subsequent use of the Domain Name to resolve to a website replicating Complainant’s official website. Complainant also underlines Respondent’s use of the Domain Name for phishing purposes in order to demonstrate Respondent’s bad faith. Complainant also argues that, by using the Domain Name, Respondent intentionally attempted to attract for commercial gain, Internet users to Respondent’s website, by creating a likelihood of confusion with Complainant’s trademark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website, under paragraph 4(b)(iv) of the Policy.

Finally, Complainant contends that an additional indication of Respondent’s bad faith is Respondent’s use of false contact details in the recently available public WhoIs records (as the PO Box and postal code provided do not exist in London, and the phone number is too short for a United Kingdom (mobile) phone number).

B. Respondent

Respondent did not reply to Complainant’s contentions.

6. Discussion and Findings

Paragraph 4(a) of the Policy provides that to obtain the transfer of the Domain Name, Complainant must prove that each of the following three elements are present:

(i) the Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights;

(ii) Respondent has no rights or legitimate interests in respect of the Domain Name; and

(iii) the Domain Name has been registered and is being used in bad faith.

Paragraph 15(a) of the Rules provides that “[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.” Paragraphs 10(b) and 10(d) also provide that “[i]n all cases, the Panel shall ensure that the Parties are treated with equality and that each Party is given a fair opportunity to present its case” and that “[t]he Panel shall determine the admissibility, relevance, materiality and weight of the evidence”.

Furthermore, paragraph 14(b) provides that “[i]f a Party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under, these Rules or any request from the Panel, the Panel shall draw such inferences therefrom as it considers appropriate”.

Respondent did not reply to Complainant’s contentions. Respondent’s failure to respond, however, does not automatically result in a decision in favour of Complainant, although the Panel is entitled to draw appropriate inferences therefrom, in accordance with paragraph 14(b) of the Rules. See section 4.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).

Taking the foregoing provisions into consideration the Panel finds as follows:

A. Identical or Confusingly Similar

Paragraph 4(a)(i) of the Policy requires the Panel to consider first whether Complainant has established relevant trademark rights. Complainant has adduced evidence that it has registered trademark rights in SHELL in connection with a variety of goods and services, including but not limited to industrial oils, greases, and fuels. The Panel is therefore satisfied that Complainant has established relevant trademark rights.

The Panel is also required to examine under paragraph 4(a)(i) of the Policy whether the Domain Name is identical or confusingly similar to Complainant’s trademarks. This test involves “a side-by-side comparison of the Domain Name and the textual components of the relevant trademark to assess whether the mark is recognizable within the disputed domain name”. Section 1.7. of the WIPO Overview 3.0.

The Panel finds that the Domain Name is confusingly similar to Complainant’s trademark. Complainant’s trademark is clearly recognizable in the Domain Name. The addition of the descriptive term “corporate” does not prevent a finding of confusing similarity with Complainant’s trademark.

The generic Top-Level Domain (gTLD) “.com” is generally disregarded under the identity or confusing similarity test, as it is a functional element. See section 1.11 of the WIPO Overview 3.0.

The Panel therefore finds that the Domain Name is confusingly similar to Complainant’s trademark.

Complainant has therefore satisfied paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

Paragraph 4(a)(ii) of the Policy requires a complainant to demonstrate that respondent has no rights or legitimate interests in the disputed domain name. Paragraph 4(c) of the Policy sets out the following non-exhaustive list of circumstances that a respondent may rely on to demonstrate rights to or legitimate interests in a domain name, including:

“(i) before any notice to [respondent] of the dispute, [respondent’s] 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) [respondent] (as an individual, business, or other organization) [has] been commonly known by the domain name, even if [respondent have] acquired no trade mark or service mark rights; or

(iii) [respondent is ] making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.”

A complainant is required to establish a prima facie case that respondent does not have rights or legitimate interests in the disputed domain name. Once such prima facie case is made, the burden of production shifts to respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the disputed domain name. If, however, respondent fails to come forward with such relevant evidence, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy. See section 2.1 of the WIPO Overview 3.0.

The Panel has considered the statements and documents submitted by Complainant and finds that Complainant has made a prima facie showing of Respondent’s lack of rights to or legitimate interest in the Domain Name and that, as a result of his default, Respondent has failed to rebut such a showing.

Complainant has asserted that Respondent is not affiliated to Complainant or has been authorized by Complainant to use Complainant’s trademark, in a domain name or otherwise.

There is no evidence that Respondent is commonly known by the Domain Name or a name corresponding to the Domain Name, in accordance with paragraph 4(c)(ii) of the Policy.

Respondent’s use of the Domain Name to resolve to a website replicating Complainant’s official website and to send fraudulent emails misrepresenting himself as Complainant cannot be considered a bona fide offering of goods or services or a legitimate noncommercial or fair use of the Domain Name, in accordance with paragraphs 4(c)(i) and 4(c)(iii) of the Policy, as Respondent is using the Domain Name, which is confusingly similar to Complainant’s trademark, to unduly take advantage of Complainant’s rights by deceptive means.

Respondent’s failure to respond to Complainant’s contentions is also a strong indication of lack of rights or legitimate interests in the Domain Name. See Pomellato S.p.A v. Richard Tonetti, WIPO Case No.
D2000-0493 (“non-response is indicative of a lack of interests inconsistent with an attitude of ownership and a belief in the lawfulness of one’s own rights”).

The Panel finds that Respondent has no rights or legitimate interests in the Domain Name.

Complainant has therefore satisfied paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

Paragraph 4(a)(iii) of the Policy requires Complainant to demonstrate that the Domain Name was registered and is being used in bad faith. Paragraph 4(b) of the Policy sets out a non-exhaustive list of circumstances that may indicate bad faith, including but not limited to:

“(i) circumstances indicating that [respondent has] registered or [has] acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trade mark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or

(ii) [respondent has] registered the domain name in order to prevent the owner of the trade mark or service mark from reflecting the mark in a corresponding domain name, provided that [respondent has] engaged in a pattern of such conduct; or

(iii) [respondent has] registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, [respondent has] intentionally attempted to attract, for commercial gain, Internet users to [respondent’s] web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of [respondent’s] website or location or of a product or service on [respondent’s] web site or location.”

The Panel finds that Respondent registered the Domain Name in bad faith. Complainant’s trademarks significantly predate the registration date of the Domain Name and are well known worldwide, including in the United Kingdom, where Respondent is based. It therefore seems rather unlikely that Respondent did not have awareness of Complainant’s rights at the time of registration of the Domain Name.

Furthermore, the nature of the Domain Name itself which consists of Complainant’s trademark together with the term “corporate”, which is strongly related to Complainant as it is a business entity, is a strong indication that Respondent registered the Domain Name for its trademark value as opposed to any descriptive value it may have.

Respondent’s immediate subsequent use of the Domain Name as described below is also strongly indicative, on balance, that Respondent was targeting Complainant at the time of registration.

Therefore, in view of the above, the Panel finds that Respondent registered the Domain Name with Complainant’s rights in mind and that he did so with the intention of taking advantage of such rights, as shown by the subsequent use of the Domain Name.

The Panel also finds that Respondent’s use of the Domain Name, which is confusingly similar to Complainant’s trademark, to resolve to a website replicating Complainant’s official website constitutes bad faith within the meaning of paragraph 4(b)(iv) of the Policy, as Respondent is using the Domain Name to intentionally attempt to attract, for commercial gain, Internet users to his website by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the website.

Furthermore, Respondent’s use of the Domain Name to send emails fraudulently misrepresenting himself as Complainant constitutes additional strong evidence of bad faith as Respondent is intentionally seeking to deceive Internet users for financial gain. See Accor v. Shangheo Heo / Contact Privacy Inc., WIPO Case No. D2014-1471). See also section 3.4 of WIPO Overview 3.0 (“Panels have held that the use of a domain name for purposes other than to host a website may constitute bad faith. Such purposes include sending email, phishing, identity theft, or malware distribution. (In some such cases, the respondent may host a copycat version of the complainant’s website.) Many such cases involve the respondent’s use of the domain name to send deceptive emails, e.g., to obtain sensitive or confidential personal information from prospective job applicants, or to solicit payment of fraudulent invoices by the complainant’s actual or prospective customers.”).

Finally, given the overall circumstances of this case, the Panel also draws an adverse inference from Respondent’s failure to take part in the present proceedings.

The Panel finds that Respondent has both registered and used the Domain Name in bad faith.

Complainant has therefore satisfied paragraph 4(a)(iii) of the Policy.

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 Domain Name, <shellcorporate.com>, be transferred to Complainant.

Nathalie Dreyfus
Sole Panelist
Date: October 26, 2018