WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

BHP Billiton Innovation Pty Ltd. v. PrivacyProtect.org / Sam Webs

Case No. D2012-1101

1. The Parties

The Complainant is BHP Billiton Innovation Pty Ltd. of Melbourne, Victoria, Australia represented by Griffith Hack Patent and Trade Mark Attorneys, Australia.

The Respondent is PrivacyProtect.org of Nobby Beach, Australia and Sam Webs of Gujarat, India (jointly, hereinafter the “Respondent”).

2. The Domain Name and Registrar

The disputed domain name <bhpbillitononline.com> is registered with BigRock Solutions Pvt Ltd. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 28, 2012. On May 29, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 1, 2012, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on June 1, 2012 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on June 7, 2012.

The Center verified that the Complaint together with the amended 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 June 7, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was June 27, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 28, 2012.

The Center appointed Daniel Kraus as the sole panelist in this matter on July 4, 2012. 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

The Complainant is a large Australian-based international group of companies that extracts natural resources and supplies them to customers on a worldwide basis. The Complainant owns valid trademark registrations for its BHP BILLITON mark in particular but not exclusively in classes 4, 6, 37, 40 and 42 with many countries and continental authorities, including Australia (e.g., registration No. 1141449) and the European Union (e.g., registration No. 0986799).

The disputed domain name, <bhpbillitononline.com> was registered on March 13, 2012, well after the trademarks had been registered. The Respondent uses the disputed domain name to direct Internet users to a website that mirrors the Complainant’s, whilst adding a function allowing users to enter a user name and password, ostensibly on behalf of the Complainant, but without the Complainant’s authority or permission to do so.

5. Parties’ Contentions

A. Complainant

Headquartered in Australia, with major offices in the United Kingdom of Great Britain and Northern Ireland, the Complainant is the world’s largest diversified resources group, employing more than 40,000 people in more than 100 operations in 25 countries. Over the last four years, the Complainant’s revenues have averaged in excess of USD 50 Billion annually.

The Complainant owns numerous registrations across the globe for its BHP BILLITON trademark. The BHP BILLITON trademark is not only highly distinctive, but it has over the years become the world’s most well-known brand in diversified resources and the mining of such resources. Moreover, the Complainant has registered many domain names that incorporate “bhpbilliton”, including <bhpbilliton.com>.

The disputed domain name, <bhpbillitononline.com>, is confusingly similar to the Complainant’s BHP BILLITON trademark. The addition of the generic word “online” is not sufficient to distinguish the disputed domain name from BHP Billiton’s trademarks and the addition of the gTLD “.com” has no effect in differentiating the disputed domain name from the Complainant’s mark.

According to the Complainant, the Respondent has no rights or legitimate interests in the disputed domain name for the following reasons:

a) The disputed domain name is not similar or in any way connected with the name under which the Respondent holds the domain name registration. The WhoIs extract (Annexure 1 to the Complaint) evidences that PrivacyProtect.org is listed as the holder of the disputed domain name;

b) The Respondent has not at any time been commonly known by the disputed domain name. Furthermore, the Complainant is not aware of any trade marks in which the Respondent may have rights that are identical or similar to the disputed domain name.

c) Finally, the Respondent is not making legitimate noncommercial or fair use of the disputed domain name.

The Complainant further contends that the disputed domain name was registered and is being used in bad faith for the following reasons:

a) BHP Billiton enjoys a world wide reputation in its BHP BILLITON marks and domain names having generated turnover of USD 47.5 billion, USD 59.5 billion, USD 52.8 billion and USD 71.1 billion in 2007, 2008, 2009, 2010 and 2011 respectively. Reference is also made to Zwack Unicum Rt. v. Erica J. Duna, WIPO Case No. D2000-0037 and The Nasdaq Stock Market, Inc. v. NSDAQ.COM, NASDQ.COM and NASAQ.COM, WIPO Case No. D2001-1492, in which it was held that bad faith registration may be inferred from the registration of a well-known mark. Similarly, it may be inferred from the Respondent’s registration of a domain name that is confusingly similar to BHP Billiton’s well-known BHP BILLITON mark that the disputed domain name was registered in bad faith;

b) The fact that the website to which the disputed domain name points mirrors BHP Billiton’s website is evidence of bad faith registration and use of the disputed domain name;

c) By using the disputed domain name, the Respondent has intentionally attempted to attract Internet users to the Respondent’s website by creating a likelihood of confusion with the Complainant’s BHP BILLITON trade mark “as to the source, sponsorship, affiliation or endorsement of the Registrant’s website” (see paragraph 4(b)(iv) of the Policy). By using the disputed domain name as an URL, users are directed to a website that mirrors BHP Billiton’s website. As such users are likely to conclude, contrary to fact, that they have accessed BHP Billiton’s website.

d) The Respondent’s website, whilst mirroring BHP Billiton’s website, contains additional functionality allowing users to enter a user name and password. It is suspected that this functionality is used by the Respondent for the purposes of phishing or other questionable conduct.

B. Respondent

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

6. Discussion and Findings

In order for the Complainant to obtain a transfer of the disputed domain name, <bhpbillitononline.com>, Policy paragraphs 4(a)(i) – (iii) require that the Complainant must demonstrate to the Panel that:

- The disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

- The Respondent has no rights or legitimate interests in respect of the disputed domain name; and

- The disputed domain name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

By furnishing the Panel with clear evidence (Annex 6 to the Complaint) that it owns valid trademark registrations in Australia and internationally, the Complainant has demonstrated its possession of rights in the BHP BILLITON mark in satisfaction of Policy paragraph 4(a)(i). See, Sensis Pty Ltd., Telstra Corporation Limited v. Yellow Page Marketing B.V, WIPO Case No. D2011-0057 (“It is undisputed that the Complainants have rights in the YELLOW PAGES mark that is registered in Australia.”); and Skype Limited v. Roeshar LLC c/o Erik Mannon, NAF Claim No. 1234547 (“The Panel finds that Complainant has sufficiently established rights in the SKYPE mark under Policy [paragraph] 4(a)(i) because it holds a registration of the mark with the Australian trademark authority and the USPTO.”).

Upon observation, the Panel sees that the disputed domain name, <bhpbillitononline.com>, while not identical to the BHP BILLITON mark, bears an obvious similarity to the same.

The disputed domain name includes the Complainant’s trademarks in their entirety together with the generic word “online”. This additional generic term however fails to dispel the connection between the disputed domain name and the trademarks (see e.g., HUGO BOSS AG, HUGO BOSS Trade Mark Management, GmbH & Co. KG v. Above.com Domain Privacy / Above.com Legal, Host Master / Transure Enterprise LtdWIPO Case No. D2012-0273; AutoScout24 Deutschland GmbH. v. Mark Marchese, WIPO Case No. D2005-0777; Lilly ICOS LLC v. Tommy Hillinger, WIPO Case No. D2005-0475; ISL Marketing AG, and The Federation Internationale de Football Association v. J.Y. Chung, Worldcup2002.com, W Co., and Worldcup 2002, WIPO Case No. D2000-0034; The Price Company v. Price Club, also known as Tsung-Pei Chang, WIPO Case No. D2000-0664).

The disputed domain name is dominated solely by the element “bhpbilliton”, since “online” is a purely descriptive term, in particular in the field of telecommunications, where it commonly indicates a state of connectivity in regard to computer technology (see e.g., definition on Wikipedia). Thus, the disputed domain name <bhpbillitononline.com> is solely dominated by the element “bhpbilliton” which is confusingly similar to the Complainant’s BHP BILLITON trademarks.

Moreover, the additional gTLD “.com” found in the disputed domain name furnish no relevant basis for distinction (DHL Operations B.V. v. ZLEX, WIPO Case No. D2007-1612 (“The suffix ‘.com’ is irrelevant […] since it is a technical requirement of the domain name system.”).

The Panel finds that the disputed domain name is therefore confusingly similar to the Complainant’s BHP BILLITON trademarks.

Accordingly, the Panel finds that the Complainant has satisfied the requirements of Policy, paragraph 4(a)(i).

B. Rights or Legitimate Interests

The Panel concludes that the Complainant has made a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name by establishing rights in the BHP BILLITON trademark and asserting that no permission was granted to the Respondent to use that mark in a domain name. Therefore, the Respondent must put forth convincing evidence to rebut the Complainant’s case. See Telex Communications, Inc. v. Jinzheng Net, NAF Claim No. 833071 (“Once Complainant makes a prima facie case in support of its allegations, the burden then shifts to Respondent to show it does have rights or legitimate interests pursuant to Policy [paragraph] 4(a)(ii).”); and Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270.

Because the Respondent failed to file a response, as already done in BHP Billiton Innovation v. BHP / PrivacyProtect.org, WIPO Case No. D2011-0465, the Panel will accept these contentions, as well as other reasonable contentions made by the Complainant, as true. See, for example, Randstad General Partner (U.S.), LLC v. Domains For Sale For You, WIPO Case No. D2000-0051 (“Because Respondent has failed to submit an answer to the Complaint in a timely fashion, and because the allegations of the Complaint, taken on their face, engender no substantial doubt, the Panel accepts as true all allegations set forth in the Complaint.”); and Talk City, Inc. v. Michael Robertson, WIPO Case No. D2000-0009.

In the absence of a Response, the Panel will assess the Respondent’s actions and status with respect to paragraph 4(c) of the Policy, which provides three avenues by which the Respondent might establish its rights or legitimate interests in the disputed domain name, to determine whether the Complainant’s prima facie case is rebutted by other evidence found in the record. Considering the requirements set forth in paragraphs 4(c)(i) and (iii), the Panel finds that those requirements are not satisfied in this case, because the Respondent merely copied the Complainant’s website, adding a functionality according to which users can enter a username and password, which, it is suspected, is used by the Respondent for the purposes of phishing or other questionable conduct. This is not considered as “a bona fide offering of goods or services” nor “a legitimate noncommercial or fair use” of the disputed domain name.

As to paragraph 4(c)(ii) of the Policy, there is no evidence that the Respondent has been commonly known by the disputed domain name.

Accordingly, the Panel finds that the Complainant’s prima facie case prevails, so that the Complainant has satisfied the requirements of Policy paragraph 4(a)(ii).

C. Registered and Used in Bad Faith

In paragraph 4(b), the Policy sets forth four circumstances that the Panel may consider in reaching a determination as to whether the disputed domain name was registered and is being used in bad faith. The list is not exhaustive of the circumstances that might give rise to a determination of bad faith. See, Media General Communications, Inc. v. Rarenames, WebReg, WIPO Case No. D2006-0964 (“However, the list of instances of bad faith in Policy, paragraph 4(b) is explicitly non-exclusive.”); and Advanta Corp. v. St. Kitts Registry, NAF Claim No. 1068741 (“The Panel finds that the factors listed under Policy [paragraph] 4(b) are not the exclusive examples of evidence of bad faith registration and use”).

In this case, the Complainant has asserted, and provided uncontested evidence, that the Respondent uses the disputed domain name to attract unsuspecting Internet users to a website confusingly similar with that of the Complainant, whilst adding a function which induces users to enter a user name and password. The risk of confusion which is created - and which may well have occurred - it is suspected, is used by the Respondent for the purposes of phishing or other questionable conduct. The Panel finds that such deceptive and illegitimate use of the disputed domain name by the Respondent constitutes an obvious example of bad faith use. Moreover, due to the above mentioned facts, the Panel concludes that the Respondent must have intended such bad faith use when the disputed domain name was registered. Thus, the Panel is convinced that the disputed domain name was also registered in bad faith.

Accordingly, the Panel finds that the Complainant has satisfied the requirements of Policy paragraph 4(a)(iii).

7. Decision

For 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, <bhpbillitononline.com>, be transferred to the Complainant.

Daniel Kraus
Sole Panelist
Dated: July 18, 2012