BHP Billiton Innovation Pty Ltd v. Wan-Fu China Ltd.
Case No. D2007-1566
1. The Parties
The Complainant is BHP Billiton Innovation Pty Ltd (the “Complainant”), of Melbourne Australia, represented by Griffith Hack, Patent & Trade Mark Attorneys, Australia.
The Respondent is Wan-Fu China Ltd., Nassau, Bahamas.
2. The Domain Name and Registrar
The disputed domain name <bhpbillitom.com> is registered with Capitoldomains, LLC.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 23, 2007. On October 24, 2007, the Center transmitted by email to Capitoldomains, LLC, a request for registrar verification in connection with the domain name at issue. On October 24, 2007, Capitoldomains, LLC, transmitted by email to the Center its verification response confirming that the 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”), 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 November 1, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was November 21, 2007. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on November 22, 2007.
The Center appointed Michel N. Bertschy as the sole panelist in this matter on November 29, 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
BHP Billiton Group is the world's largest diversified resources Group, employing approximately 37,000 people in more than 100 operations in 25 countries. The Group is a dual-listed company comprising BHP Billiton Limited and BHP Billiton Plc. They are separate companies but operate as a combined group known as BHP Billiton. BHP Billiton Innovation is also part of the Group and it holds some of the BHP Billiton Group's intellectual property.
BHP Billiton was created through the June 29, 2001 DLC merger of BHP Limited (now BHP Billiton Limited) and Billiton Plc (now BHP Billiton Plc). It is headquartered in Melbourne with offices in London and supporting offices around the world. It has had an average annual turnover between 2001 and 2005 in excess of US$22 billion; its 2006 turnover exceeded US$39 billion. As at January 2007, BHP Billiton's market capitalization was US$118 billion.
BHP Billiton operates a website at “www.bhpbilliton.com”. It also is the registrant of a number of domain names, many of which start with “bhpbilliton”.
BHP Billiton is the owner of numerous trade marks worldwide for the marks BHP, BILLITON and BHP BILLITON.
The Respondent operates a website at “www.bhpbillitom.com”, consisting of a standard linking website containing sponsored links. None of the links relate or link to BHP Billiton or its websites.
5. Parties' Contentions
A. Complainant
(i) The Complainant contends that the domain name <bhpbillitom.com> is confusingly similar to its extensive portfolio of BHP, BILLITON and BHP BILLITON trade marks. The disputed domain name differs from the Complainant's BHP Billiton trade mark only in that the letter “n” is replaced with a letter “m”. The replacement of one letter within the Complainant's trade mark does not sufficiently distance the disputed domain name from the Complainant's mark. For these reasons, the Complainant contends that the disputed domain name is confusingly similar to BHP Billiton's trade marks pursuant to paragraph 4(a)(i) of the Policy.
(ii) The Complainant further argues that the Respondent has no rights or legitimate interests in the domain name, pursuant to paragraph 4(a)(ii) of the Policy. The Respondent has no connection with BHP Billiton, has not been licensed or authorized by the Complainant to use the disputed domain name. Moreover, the Respondent has not been at any time been commonly known by the disputed domain name.
(iii) The Complainant contends that the Respondent is engaging in conduct that is misleading to consumers by diverting Internet traffic away from BHP Billiton's website at “www.bhpbilliton.com”. The Complainant submits that the Respondent is attempting to generate business by luring customers to the Respondent's own website by exploiting a common misspelling of BHP Billiton's well-known trade mark.
(iv) The Complainant submits that pursuant to paragraph 4(b)(iii) of the Policy, the Respondent has registered the disputed domain name primarily for the purpose of disrupting the business of BHP Billiton and is intentionally attempting to attract for commercial gain Internet users to the Respondent's website, by creating a likelihood of confusion with the Complainant's trade mark pursuant to paragraph 4(b)(iv) of the Policy. The Complainant also submits that bad faith registration may be inferred by the registration of a well-known trade mark and that the Respondent is engaging in “typo squatting” which in itself constitutes bad faith registration and use.
The Complainant requests for these reasons that the Panel issue a decision that the disputed domain name be transferred.
B. Respondent
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy sets forth three elements that must be established by the Complainant to merit a finding that the Respondent has engaged in abusive domain name registration and to obtain relief. These elements are that:
(i) the Respondent's domain name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) the Respondent's domain name has been registered and is being used in bad faith.
Each of the aforesaid elements must be proved by the Complainant to warrant relief.
A. Identical or Confusingly Similar
There are two requirements that a complainant must establish under paragraph 4(a)(i) of the Policy; that it has rights in a trade or service mark, and that the domain name is identical or confusingly similar to the marks.
The consensus view of WIPO UDRP panels is that if a complainant owns a registered trade mark then it satisfies the requirement of having trade mark rights (Overview of WIPO Panel Views on Selected UDRP Questions,First UDRP Element, 1.1.).
The Panel is satisfied that the Complainant has rights to the trade marks BHP, BILLITON and BHP BILLITON. The evidence of domain name and trade mark registrations as well as evidence of use adduced by the Complainant sufficiently substantiates its rights.
The disputed domain name wholly incorporates the BHP BILLITON trade mark except in that in the domain name the letter “n” is replaced with a letter “m”. Past UDRP Panels have held that misspellings of a complainant's trade mark satisfy 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).
The first requirement of the Policy is satisfied.
B. Rights or Legitimate Interests
The Complainant bears the “general burden of proof” under paragraph 4(a)(ii) of the Policy, which burden rests on the Respondent once the Complainant makes his case prima facie. Once such prima facie case is made, the Respondent carries the burden of demonstrating rights or legitimate interests in the domain name. If the Respondent fails to do so, the Complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy (Overview of WIPO Panel Views on Selected UDRP Questions,Second UDRP Element, 2.1.).
Paragraph 4(c) of the Policy sets forth examples of circumstances whereby a domain name registrant may demonstrate a right or legitimate interest in a domain name:
“(i) before any notice to you of the dispute, your 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) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trade mark or service mark rights; or
(iii) you are 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.”
The Respondent did not reply to the Complainant's contentions. However the Respondent's default does not automatically result in a decision in favour of the Complainant. Subject to the principles described above, the Complainant must establish each of the three elements required by paragraph 4(a) of the Policy. While a panel may draw negative inferences from a respondent's default, paragraph 4 of the Policy requires a complainant to support its assertions with actual evidence in order to succeed in a UDRP proceeding (Overview of WIPO Panel Views on Selected UDRP Questions,Procedural questions, 4.6.).
The Respondent is not a licensee of the Complainant and is not otherwise authorized to use the Complainant's marks.
The Complainant has adduced evidence that the website comprising the disputed domain name is being used to point towards a website containing sponsored links. Given such use and that the disputed domain name is an obvious misspelling of the BHP BILLITON trade mark, the domain name is not being used for a legitimate non-commercial or fair use as it seeks to generate business by luring BHP Billiton's customers or potential customers to the Respondent's website.
In these circumstances, the Respondent is clearly making a commercial use of the domain name, with intent for commercial gain, and has misleadingly diverted consumers to its website.
Moreover, the Respondent's use of the disputed domain name does not suggest any right or legitimate interest. There appears to be no reason to suppose that the Respondent could claim a right or legitimate interest in respect of the domain name on any other basis.
The Panel finds the Complainant has made its prima facie case of the Respondent's lack of rights or legitimate interests. The Respondent is in default and has thus not rebutted the Complainant's contentions.
The Panel finds that the second requirement of the Policy is satisfied.
C. Registered and Used in Bad Faith
For paragraph 4(a)(iii) to apply, the Complainant must demonstrate the conjunctive conditions that the Respondent registered the domain name in bad faith and continues to use it in bad faith.
Paragraph 4(b) of the Policy sets out four non exclusive criteria which shall be evidence of the registration and use of a domain name in bad faith including: (1) “[the 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 [the Respondent's] documented out-of-pocket costs directly related to the domain name;” or (2) “[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 [the Respondent has] engaged in a pattern of such conduct;” or (3) “[the Respondent] has registered the domain name primarily for the purpose of disrupting the business of a competitor;” or (4) “by using the domain name [the Respondent] has intentionally attempted to attract, for commercial gain, Internet users to [its] website or other on line location, by creating a likelihood of confusion with the Complainant's mark as to the source, affiliation or endorsement of [its] website or location or of a product or service on [its] website or location.”
Whether the Respondent has registered and used the Complainant's name in bad faith is clearly evident on the facts of this case. Indeed, the Complainant has proved that the Respondent has registered a domain name which is confusingly similar to the trade mark “BHP BILLITON” suggesting an affiliation to the Complainant. The website operated by the Respondent diverts Internet users to a sponsored site offering goods unrelated to the Complainant. As the Respondent has failed to provide any bona fide explanation for this, the Panel concludes that the Respondent has attempted to attract, for commercial gain, internet users to a commercial on line location by creating a likelihood of confusion with the Complainant's marks. The fact that the Respondent has an extensive history of typosquatting only strengthens the inference of bad faith.
The Panel finds that the Complainant has shown the necessary elements of bad faith under the Policy paragraph 4(b).
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 name, <bhpbillitom.com> be transferred to the Complainant.
Michel N. Bertschy Sole Panelist
Dated: December 13, 2007
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