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WIPO refuses to order transfer of domain names critical of Shell

Legalupload.co.uk: WIPO refuses to order transfer of domain names such as tellshell.org that were critical of Shell

“The WIPO panel found that Shell clearly had rights in the Shell brand in 190 countries and the domain names were confusingly similar to Shell’s brand. However, Donovan had a legitimate interest in the names and had not registered them in bad faith as he was using them to exercise his right to free speech and criticise Shell.”

Posted Friday 21 October 2005

Shell, the multinational petrol business, has failed to persuade the World Intellectual Property Organisation to order the transfer of various Shell domain names to it under the Uniform Domain Name Dispute Resolution Policy. The Uniform Dispute Resolution Policy provides a quick arbitration procedure for disputes over top level domain names such as ‘.com’ and ‘.org’. WIPO is one of the accredited arbitration bodies that can hear domain name disputes under that procedure.

To win the names, Shell needed to show that it had rights in a trade mark confusingly similar to the domain names, that the owner had no legitimate rights in the domain names and that the names had been registered and used in bad faith. However, a registrant can show that he should keep the names if he can show he is making legitimate non-commercial or fair uses of the names without intent for commercial gain to misleadingly divert consumers or to tarnish the trade marks. The names in question were ‘royaldutchshellgroup.com’, ‘royaldutchshellplc.com’ and ‘tellshell.org’. They had been registered by Alfred Donovan.

The WIPO panel found that Shell clearly had rights in the Shell brand in 190 countries and the domain names were confusingly similar to Shell’s brand. However, Donovan had a legitimate interest in the names and had not registered them in bad faith as he was using them to exercise his right to free speech and criticise Shell. There had been no intent for commercial gain out of Shell’s brand and the websites had made it clear that there was no link with Shell. He had also left other domain names free for Shell to use and had not intended to stop it having a web presence.

This decision can be contrasted with other similar cases. It is often hard to predict which way ‘free speech’ registration decisions will go under the UDRP procedure. In this case, the WIPO arbitration panel took a wide view of what constituted someone’s legitimate right or interest in a domain name. If a trend exists, it is that non-US arbitration panels tend to be less willing to support free speech arguments than US panels.

royaldutchshellplc.com and its sister websites royaldutchshellgroup.com, shellenergy.website, shellnazihistory.com, royaldutchshell.website, johndonovan.website, shellnews.net and shell2004.com are all owned by John Donovan. There is also a Wikipedia article.

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