WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

BHP Billiton Innovation Pty Ltd. v. Marketing Total S.A.

Case No. D2007-0916

1. The Parties

The Complainant is BHP Billiton Innovation Pty Ltd. of Melbourne, Australia.

The Respondent is Marketing Total S.A. of West Indies, Saint Kitts and Nevis.

2. The Domain Names and Registrars

The disputed domain names <bhpbilinton.com> and <bhpbillinton.net> are registered with Capitoldomains LLC and BelgiumDomains, LLC respectively.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 21, 2007. On June 22, 2007, the Center transmitted by email to Capitoldomains, LLC and BelgiumDomains, LLC a request for registrar verification in connection with the domain names at issue. On June 23, 2007, Capitoldomains, LLC and BelgiumDomains, LLC transmitted by email to the Center their verification responses confirming that the Respondent is listed as the registrant of the domain names <bhpbilinton.com> and <bhpbillinton.net> respectively and providing the contact details thereof. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on July 16, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was August 5, 2007. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 9, 2007.

The Center appointed Syed Naqiz Shahabuddin as the sole panelist in this matter on August 30, 2007. 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

4.1 BHP Billiton was created through the merger of BHP Limited (now BHP Billiton Limited) and Billiton Plc (now BHP Billiton Plc), which was concluded on June 29, 2001. The two entities continue to exist as dual listed companies, but operate as a combined group known as BHP Billiton. The Complainant is also part of the Group, holding some of BHP Billiton’s intellectual property.

4.2 The BHP Billiton Group is one of the world’s largest diversified resources Group employing approximately 37,000 people in more than 100 operations in 25 countries.

4.3 BHP Billiton is headquartered in Melbourne with major offices in London and supporting offices around the world.

4.4 BHP Billiton’s average turnover between 2001 and 2005 exceeded US$22 billion. BHP Billiton’s turnover for 2006 exceeded US$39 billion. As at January 2007, BHP Billiton’s market capitalization was US$118 billion.

4.5 BHP Billiton operates a website at “www.bhpbilliton.com” and has registered numerous domain names including the following:

4.6 BHP Billiton is also the owner of numerous trademarks worldwide for the marks BHP, BILLITON and BHP BILLITON including registrations for such trademarks in Germany, New Zealand, the United Kingdom of Great Britain and Northern Ireland and the United States of America.

4.7 The Respondent operates websites containing sponsored links using the domain names in dispute.

5. Parties’ Contentions

A. Complainant

The Complainant contends as follows:

5.1 The Respondent’s <bhpbillinton.net> and <bhpbilinton.com> domain names are confusingly similar to the Complainant’s portfolio of BHP, BILLITON and BHP BILLITON trademarks. These domain names differ from the Complainant’s trademarks only to the extent that they do not contain the letter “n” and in the case of “bhpbilinton.com”, it also does not contain the letter “l”. These domain names are, therefore, mere misspellings of the Complainant’s trademarks.

5.1.2 The Respondent has no rights or legitimate interests in respect of the domain names. In support thereof, the Complainant relies on the following factors:

(a) The Respondent has no connection with BHP Billiton and has not been licensed or authorized by BHP Billiton to use the disputed domain names.

(b) The disputed domain names are not the names of the Respondent and the Respondent has not at any time been commonly known by the said domain names.

(c) The Respondent is not using the domain names for a legitimate non-commercial or fair use as the domain names point to websites containing sponsored links.

(d) The Respondent is intentionally engaging in conduct which is misleading to consumers by diverting Internet traffic away from BHP Billiton’s website at www.bhpbilliton.com using misspellings of BHP Billiton’s trademarks.

5.1.3 The domain names were registered and are being used in bad faith. In this regard, the Complainant relies on the following circumstances:

(a) The Respondent registered the domain names primarily to disrupt the business of BHP Billiton by diverting Internet traffic through the use of misspelled trademarks as domain names.

(b) By using the disputed domain names, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the Respondent’s website, by creating a likelihood of confusion with the Complainant’s trademarks.

(c) It is highly unlikely that the Respondent was not aware of the Complainant’s well known BHP BILLITON trademark.

(d) The Respondent is engaging in “typosquatting” given the obvious misspellings of the trademarks.

(e) The Respondent has engaged in a pattern of conduct in registering domain names which are confusingly similar to well known trademarks including the following cases: Debevoise & Plimpton LLP v. Marketing Total SA, WIPO Case No. D2007-0451(<devevoise.com>); Educational Testing Service (ETS) v.Marketing Total SA,WIPO Case No. D2007-0450 (<asktoefl.com>, <etscanada.com>, <prepraxis.com>), Wal-Mart Stores Inc v. Marketing Total SA,WIPO Case No. D2007-0419 (<walmartcorporation.com>, <walmartcreditcard.com>); Confédération Nationale du Crédit Mutuel, Caisse Fédérale du Crédit Mutuel Nord Europe v. Marketing Total SA, WIPO Case No. D2007-0288 (<creditmutueldunord.com>); Shaw Industries Group Inc. and Columbia Insurance Company v. Marketing Total SA, WIPO Case No. D2007-0224 (shawhardsurfaces.com); Rude Chalets Limitedv. Marketing Total SA, WIPO Case No. D2007-0220 (<rudechalet.com>); HBH Limited Partnership v. Marketing Total SA, WIPO Case No. D2006-1452 (<honeybakedstore.com>).

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

In order to succeed in its Complaint, the Complainant is required to establish the following elements set out under paragraph 4(a) of the Policy:

(a) that the domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(b) that the Respondent has no rights or legitimate interest in respect of the domain name; and

(c) that the domain name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

The Panel is satisfied that the Complainant has rights to the trademarks BHP, BILLITON and BHP BILLITON. The evidence of domain name and trademark registrations as well as evidence of use adduced by the Complainant sufficiently substantiates its rights.

The domain names in dispute wholly incorporate the BHP BILLITON trademarks except that these domain names do not contain the letter “n” and in the case of the domain name <bhpbilinton.com>, the letter “l” appears to be missing. Past UDRP panel decisions have held that misspellings of a Complainant’s trademark satisfies the requirement under the first limb of paragraph 4(a) (see Amazon.com, Inc. v. Steven Newman a/k/a Jill Wasserstein a/k/a Pluto Newman, WIPO Case No. D2006-0517; CPP. Inc. v. Virtual Sky, WIPO Case No. D2006-0201; Sharman License Holdings, Limited v. Icedlt.com, WIPO Case No. D2004-0713; Volvo Trademark Holding AB v. Unasi, Inc., WIPO Case No. D2005-0556).

An aural and visual inspection of the domain names and the BHP BILLITON trademark leads this Panel to the conclusion that the domain names are confusingly similar to the Complainant’s trademarks. It is probable that a person with imperfect recollection of the Complainant’s BHP BILLITON trademark would be confused when viewing the words the subject of the disputed domain names.

This Panel, therefore, concludes that the Respondent’s domain names are confusingly similar to the Complainant’s trademark and is satisfied that the first element of paragraph 4(a) of the Policy has been proven by the Complainant.

B. Rights or Legitimate Interests

This Panel accepts the contention that there is no relationship between the Complainant and the Respondent giving rise to any licence, permission or other right by which the Respondent could own or use any domain name incorporating the Complainant’s trademarks. This Panel also accepts the contention that the Respondent is not known by the domain name at issue. No evidence to the contrary was submitted by the Respondent.

The Complainant has adduced evidence that the websites comprising the domain names are being used to point towards websites containing sponsored links. Given the strong probability that the domain names are obvious misspellings of the BHP BILLITON trademark, it is conceivable that the domain names are not being used for a legitimate non-commercial or fair use as they seek to generate business by luring BHP Billiton’s customers or potential customers to the Respondent’s websites.

The failure of the Respondent to respond to the Complainant’s contentions and the evidence adduced by the Complainant leads the Panel to find that the Respondent has no rights or legitimate interests in the domain name. The Panel could find no justification, rights or legitimate interests on the part of the Respondent to the words comprising the domain names.

Based on the above circumstances, the Panel is satisfied that the second element of paragraph 4(a) of the Policy has been proven by the Complainant.

C. Registered and Used in Bad Faith

This Panel is satisfied with the contention that the Respondent must have been aware of BHP Billiton’s reputation and goodwill relating to the BHP BILLITON trademark prior to registering the domain names in issue. The evidence of the Respondent’s pattern of conduct in registering other domain names comprising trademarks of third parties is indicative of a similar intent in registering the domain names in issue. In those cases, the panelists concluded that the domain names were registered and used in bad faith and found in favour of the complainants.

The evidence led by the Complainant also suggests that the Respondent is engaging in a common practice commonly known as “typo squatting”. This occurs where a respondent misspells a trademark belonging to a complainant as part of its domain name. In doing so, the respondent expects to disrupt the business of the complainant, divert Internet users from the complainant’s website or to otherwise hold the complainant at ransom under the threat of passing off. It is well settled that the practice of “typo-squatting” constitutes bad faith registration and use (see ESPN, Inc. v. XC2, WIPO Case No. D2005-0444; CPP, Inc. v. Virtual Sky, WIPO Case No. D2006-0201; Trustmark National Bank v. Henry Tsung, WIPO Case No. D2004-0274; First Tennessee National Corporation v. Henry Tsung, WIPO Case No. D2004-0103; Fleet Boston Financial Corporation v. Albert Jackson, WIPO Case No. D2003-0915; The Sportsman’s Guide, Inc. v. Vipercon, WIPO Case No. D2003-0145; Go Daddy Software, Inc. v. Daniel Hadni, WIPO Case No. D2002-0568; The Nasdaq Stock Market, Inc., v. Act One Internet Solutions, WIPO Case No. D2003-0103).

Accordingly, the Panel is also satisfied that the third element of paragraph 4(a) of the Policy has been satisfactorily proven by the Complainant.

7. Decision

For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain names, <bhpbilinton.com> and <bhpbillinton.net> be transferred to the Complainant.

Syed Naqiz Shahabuddin
Sole Panelist

Dated: September 13, 2007