The Complainant is BHP Billiton Innovation Pty Ltd (“BHP Billiton”) of Melbourne, Australia, represented by Griffith Hack Patent and Trade Mark Attorneys, Australia.
The Respondent is Walter Surhand (“Surhand”) of Manchester, the United Kingdom of Great Britain and Northern Ireland.
2. The Domain Name and Registrar
The Disputed Domain Name <bhpbilliton-services.com> is registered with Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainRegistry.com.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 19, 2010. On February 19, 2010, the Center transmitted by email to Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainRegistry.com a request for registrar verification in connection with the Disputed Domain Name. On February 25, 2010, Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainRegistry.com 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” or “UDRP”), 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 March 22, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was April 11, 2010. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on April 12, 2010.
The Center appointed Richard W. Page as the sole panelist in this matter on April 20, 2010. 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 one of the world's largest diversified resources group, employing approximately 37,000 people in more than 100 operations in 25 countries. The core of the Group is a dual listed company comprising BHP Billiton Limited and BHP Billiton Plc. The two entities continue to exist as separate companies, but operate as a combined group known as BHP Billiton.
BHP Billiton was created through the DLC merger of BHP Limited (now BHP Billiton Limited) and Billiton Plc (now BHP Billiton Plc), which was concluded on June 29, 2001. As indicated above the combined group shall be referred to in this decision as “BHP Billiton.”
BHP Billiton is headquartered in Melbourne with major offices in London and supporting offices around the world. BHP Billiton operates a website at “www.bhpbilliton.com” and at “www.bhp.com”. The average annual turnover between 2001 and 2005 exceeded USD 22 billion. In 2007 and 2008, BHP Billiton generated turnover of USD 47.5 billion and USD 59.5 billion respectively.
BHP Billiton Innovation Pty Ltd is a wholly owned subsidiary of BHP Billiton Limited, holding some of BHP Billiton's intellectual property. BHP Billiton is the registrant of numerous domain names, all including the phrase “bhp-billiton.”
BHP Billiton is the owner of numerous trademarks worldwide for marks consisting of BHP Billiton. The primary registrations listed in the Complaint are in New Zealand, Australia and the United Kingdom. These trademarks shall be referred to in this decision as the “BHP Billiton Marks.”
The Disputed Domain Name resolves to a website indicating that the Registrant has installed Apache software to maintain the site but not further developed the site. The Disputed Domain Name was brought to the attention of BHP Billiton by a third party. The third party informed BHP Billiton that he had received an email from “www.bhpbilliton-services.com”. The email claims to be from BHP Billiton and a request that the recipient send his resume immediately, with a view of collecting the recipient's personal details. The email claims to be from GHP Billiton PLC United Kingdom. The Respondent has not been authorised to use the BHP Billiton trademark or register the Disputed Domain Name.
BHP Billiton recently succeeded in challenging another of the Respondent's domain names <bhp-sevices.com>. See, BHP Billiton Innovation Pty Ltd v. Walter Surhand,WIPO Case No. D2009-1651.
5. Parties' Contentions
A. Complainant
BHP Billiton alleges that the Disputed Domain Name is confusingly similar to BHP Billiton's extensive portfolio of BHP Billiton Marks. It is further submitted that the BHP Billiton Marks are not only highly distinctive but they have over the years become the world's most well-known brand of diversified resources. It follows that the non-distinctive alteration (the addition of the generic and descriptive term “-services”) to the highly distinctive BHP Billiton Marks does not sufficiently distance the disputed domain name from the BHP Billiton Marks in order to avoid confusion. It is submitted that the alteration to BHP Billiton's highly distinctive marks is not capable in any way of signifying to consumers that the Respondent is not associated with BHP Billiton. The Complainant therefore submits that the Disputed Domain Name <bhpbilliton-service.com> is confusingly similar to the BHP Billiton Marks in which BHP Billiton has rights in numerous countries.
BHP Billiton submits that customers, upon viewing the Disputed Domain Name <bhpbilliton-services.com> are highly likely to expect an association with BHP Billiton. It is well settled that the addition of the .gTLD “.com” does not affect the assessment that a domain name is confusingly similar to a particular trademark.
BHP Billiton further submits that Respondent does not have any rights or legitimate interests in the Disputed Domain Name, because the Respondent (1) is not connected in any way to the name under which it holds the Disputed Domain Name, (2) has never been commonly known by the Disputed Domain Name and (3) has not used the Disputed Domain Name in a legitimate noncommercial or fair use.
BHP Billiton argues that Respondent is intentionally engaging in conduct which is misleading to Internet users by using the Disputed Domain Name to send fraudulent emails.
BHP Billiton submits that the Respondent registered and is using the Disputed Domain Name in bad faith. BHP asserts that the Respondent's registration of the Disputed Domain Name was primarily for the purpose of disrupting the business of BHP Billiton. The Disputed Domain Name contains the BHP Billiton Marks with the addition of generic term “-services” to the BHP Billiton Marks. It is submitted that the Respondent registered the Disputed Domain Name with the primary aim of eliciting personal information from persons by deceiving them into believing he is associated with BHP Billiton. It is submitted that it therefore follows that the Disputed Domain Name was obtained with the intention of disrupting the Complainant's business.
It is submitted that pursuant to paragraph 4(b)(iv) of the Policy, by using the Disputed Doman Name, the Respondent has intentionally attempted to attract Internet users to email personal information to a location hosted under the Disputed Domain Name, namely an email location, by creating a likelihood of confusion with BHP Billiton's well-known BHP Billiton Marks as to the source, sponsorship, affiliation or endorsement of that email location to which the recipients are requested to send their personal information.
It is submitted that the choice of the Disputed Domain Name, namely combining both the BHP Billiton Marks with a reference to “-services” and the use of BHP Billiton's distinctive logo is in itself evidence of the Respondent's knowledge of BHP Billiton's trademark rights and its business.
It is submitted that it may be inferred from the Respondent's conduct in registering a domain name consisting of an alternation of BHP Billion Marks that the Respondent was aware of the Complainant's trademark rights. It is submitted that this creates a presumption that the Disputed Domain Name was registered in bad faith. It is submitted the Respondent is engaging in a pattern of conduct of registering the Complainant's well-known trademarks. Reference is made to the prior UDRP decision mentioned in section 4 above. It is submitted that this pattern of conduct is further evidence of bad faith.
B. Respondent
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
A. Failure to File a Response
A respondent is not obliged to participate in a domain name dispute proceeding, but if it were to fail to do so, asserted facts that are not unreasonable would be taken as true and the respondent would be subject to the inferences that flow naturally from the information provided by the complainant: Reuters Limited v. Global Net 2000, Inc.,
WIPO Case No. D2000-0441. See also Hewlett-Packard Company v. Full System, NAF Claim No. FA 0094637; David G. Cook v. This Domain is For Sale, NAF Claim No. FA0094957 and Gorstew Jamaica and Unique Vacations, Inc. v. Travel Concierge, NAF Claim No. FA0094925.
B. Prove Up of Elements
Even though the Respondent has failed to file a Response or to contest the Complainant's assertions, the Panel will review the evidence proffered by the Complainant to verify that the essential elements of the claims are met.
Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:
(i) the Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and
(iii) the Disputed Domain Name has been registered and is being used in bad faith.
C. Identical or Confusingly Similar
As stated above, BHP Billiton alleges that the Disputed Domain Name is confusingly similar to BHP Billiton's extensive portfolio of BHP Billiton Marks. It is further submitted that the BHP Billiton Marks are not only highly distinctive but they have over the years become the world's most well-known brand of diversified resources. It follows that the non-distinctive alteration (the addition of the generic and descriptive term “-services”) to the highly distinctive BHP Billiton Marks does not sufficiently distance the Disputed Domain name from the BHP Billiton Marks in order to avoid confusion. Furthermore, it is submitted that the alteration to BHP Billiton Marks in is not capable in any way of signifying to consumers that the Respondent is not associated with BHP Billiton. BHP Billiton further submits that Internet users, upon viewing the Disputed Domain Name are highly likely to expect an association with BHP Billiton.
The Respondent has not contested these assertions by BHP Billiton.
The Panel concludes that the Complainant has enforceable rights in the BHP Billiton Marks and finds that the Disputed Domain Name is confusingly similar to the BHP Billiton Marks in which BHP Billiton has rights in numerous countries. Indeed, it is well settled that the addition of a generic expression such as “-services” as well as that of the gTLD “.com” do not affect the assessment that a domain name is confusingly similar to a particular trademark.
D. Rights or Legitimate Interests
BHP Billiton submits that the Respondent does not have any rights or legitimate interests in the Disputed Domain Name, because the Respondent (1) is not connected in any way to the name under which it holds the Disputed Domain Name, (2) has never been commonly known by the Disputed Domain Name and (3) has not used the Disputed Domain Name in a legitimate noncommercial or fair use.
BHP Billiton further submits that the Respondent is intentionally engaging in conduct which is misleading to Internet users by using the Disputed Domain Name to send fraudulent emails.
The Panel finds that the Complainant has sustained its burden of coming forward with evidence that the Respondent lacks rights to or legitimate interests in the Disputed Domain Name. The Respondent has offered no evidence that the use of the Disputed Domain Name meets the elements for any of the nonexclusive methods provided for in the Policy, paragraph 4(c). Therefore, the Panel finds that the Respondent has no rights or legitimate interests in the Disputed Domain Name pursuant to the Policy, paragraph 4(a)(ii).
E. Registered and Used in Bad Faith
BHP Billiton submits that the Respondent registered and is using the Disputed Domain Name in bad faith. BHP Billiton asserts that the Respondent's registration of the Disputed Domain Name was primarily for the purpose of disrupting the business of BHP Billiton. The Disputed Domain Name is an obvious variant of the BHP Billiton Marks, being the addition of the generic term “-services” to the BHP Billiton Marks. It is submitted that the Respondent registered the Disputed Domain Name with the primary aim of eliciting personal information from persons by deceiving them into believing he is associated with BHP Billiton. BHP Billiton submits that it therefore follows that the Disputed Domain Name was obtained with the intention of disrupting the Complainant's Business.
BHP Billiton submits that pursuant to paragraph 4(b)(iv) of the Policy, by using the Disputed Doman Name, the Respondent has intentionally attempted to attract Internet users to email personal information to a location hosted under the Disputed Domain Name, namely an email location, by creating a likelihood of confusion with BHP Billiton's well-known BHP Billiton Marks as to the source, sponsorship, affiliation or endorsement of that email location to which the recipients are requested to send their personal information.
BHP Billiton submits that the choice of the Disputed Domain Name, namely combining both the BHP Billiton Marks with a reference to “-services” and the use of BHP Billiton's distinctive logo is in itself evidence of the Respondent's knowledge of BHP Billiton's trademark rights and its business.
BHP Billiton submits that it may be inferred from the Respondent's conduct in registering a domain name consisting of an alternation of BHP Billion Marks that the Respondent was aware of the Complainant's trademark rights. It is submitted that this creates a presumption that the Disputed Domain Name was registered in bad faith. It is submitted the Respondent is engaging in a pattern of conduct of registering the Complainant's well-known trademarks. Reference is made to the prior UDRP decision mentioned in section 4 above. It is submitted that this pattern of conduct is further evidence of bad faith.
The Respondent has chosen not to respond to any of the allegations by BHP Billiton that the Respondent has acted in bad faith. Therefore, the Panel finds that for the reasons outlined above, the Disputed Domain Name was registered and is being used in bad faith in accordance with paragraph 4(a)(iii) of the Policy.
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 Disputed Domain Name <bhpbilliton-services.com> be transferred to the Complainant.
Richard W. Page Sole Panelist
Dated: May 1, 2010
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