CommTech Newsletter (e-update): Shell complaints sites keep their domain names: “The WIPO panel found unanimously that although the domain names were identical or similar to Shell's various trade names, Mr Donovan had a prima facie right to the free expression of his criticism, and a legitimate interest in using the domain names for his non-commercial forum”: Friday 9 Sept 2005
A World Intellectual Property Organisation (WIPO) panel has found against Shell in a dispute over ownership of the domain names royaldutchshellgroup.com, royaldutchshellplc.com and tellshell.org.
Alfred Donovan, an 88 year old war veteran and Shell shareholder, uses the domain names to direct to his website which offers a forum for criticism of the Royal Dutch/Shell Group of companies. Shell International Petroleum Company Limited, which looks after the Group's domain name and trademark assets, complained to WIPO that the domain names were identical or confusingly similar to the trade names of the Royal Dutch/Shell Group, and that Mr Donovan had no legitimate interest in the names and had registered them in bad faith.
The WIPO panel found unanimously that although the domain names were identical or similar to Shell's various trade names, Mr Donovan had a prima facie right to the free expression of his criticism, and a legitimate interest in using the domain names for his non-commercial forum. Shell also argued that the names were only registered after the merger of the Shell and Royal Dutch companies, in order to prevent the Group from using them. However, the panel found that there was no evidence that the names had been registered in bad faith.
The case is a reminder that a non-commercial forum can use a trademarked name without being forced to transfer the domain name to the trademarked entity.
Although in another case a WIPO panel held that the domain name airfrancesucks.com, registered by a company called Virtual Dates Inc., should be transferred to Air France, the complainant in that case showed that Virtual Dates was not in fact using the name for a discussion forum, and that the name had been registered with the object of exploiting the Air France mark in order to redirect business to another commercial website.
In order to succeed in an application to WIPO for the transfer of a domain name, a complainant must show that (1) the domain name is identical or confusingly similar to a trade mark in which the complainant has rights, (2) the registrant of the domain name has no rights or legitimate interest in the name, and (3) the domain name has been registered and is being used in bad faith. The burden of proving these facts falls upon the complainant, and all three elements must be satisfied before the WIPO panel will order the transfer of a domain name.
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CommTech Newsletter (e-update): September 2005
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