In July of this year, the Swiss company Shell Brands International AG filed a complaint about the domain shell.bet with WIPO (World Intellectual Property Organization) and asked for transfer of the domain.
This example shows that the new domain extensions are also increasingly being misregistered by third parties. The TLD (top-level domain) .bet has been developed for the sports bets and online gaming community and has been opened for registration since 2016. The domain concerned was registered on 21 August 2017 by a private person from China. Products and services are offered on the website and it appears that the operator is an authorised representative of the complainant.
The complainant is a worldwide known mineral oil company and has been represented in Switzerland, for example, since 1906. The current shell logo and the striking colours in red and yellow can also look back on more than 100 years of history. According to its own statements, it is one of the best-known company logos in the world. The complainant has also been active in China since its foundation. She is owner of various trademark rights worldwide, including Chinese trademark rights.
In its appeal, it states that the domain name is identical to its trademarks and consists only of the trademark "shell". Therefore, the TLD .bet would be negligible in the context of a similarity test. Furthermore, the respondent has no rights or a legitimate interest in this domain. The domain was maliciously registered and used by him. Therefore, in her complaint, the complainant pleads for the transfer of the disputed domain.
The respondent does not take any position and does not respond to the complainant's allegations in these proceedings.
WIPO states that the complainant has existing trademark rights and that the domain contains the trademark in its entirety. It also neglects the TLD, since a similarity test of this kind does not take the domain extension into account. In the further justification, there is a list of circumstances, one of which is sufficient to show that the respondent has rights or a legitimate interest in the domain. The burden of proof lies with the complainant. However, previous decisions have shown that this obligation can be transferred to the respondent. This is the case if the appellant provides prima facie evidence that he lacks rights or a legitimate interest in a domain name. If the respondent fails to provide evidence as in this case, it is presumed that the respondent has complied with this directive. Finally, there are four circumstances which provide unrestricted evidence of the registration and use of a domain name in bad faith. WIPO accepts the complainant's evidence that the confusingly similar domain name was intended to deliberately attempt to attract Internet users to the defendant's website or other online location for commercial purposes. For these reasons, WIPO decides in favour of the complaining party. The domain is to be transferred to Shell Brands International AG. The complete decision is published on the WIPO website (http://www.wipo.int/amc/en/domains/decisions/text/2018/d2018-1507.html).
According to the current status (17.09.2018), the domain was updated on 15 September 2018 and the current domain owner is now Shell Brands International AG. However, the domain is still in a status that prohibits a transfer and a parking page of the current registrar is displayed when the domain is called. From our point of view this is a common procedure and it seems to be just a formality until the domain is transferred into the portfolio of the Shell Group.
What is more astonishing in this case, however, is that the respondent had almost a year in which to use the domain anonymously. Otherwise, Shell would probably have stated in its reasoning that injunctions or other contacts had been made. If you would like to learn about strategies for domains that may harm your trademark, we look forward to hearing from you.
Source: WIPO, Shell.com, nic.bet