WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

BHP Billiton Innovation Pty Ltd v. Joseph Effiong / Jo Systems

Case No. D2012-2351

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 Joseph Effiong / Jo Systems of Oshodi, Calabar, Nigeria.

2. The Domain Name and Registrar

The disputed domain name <bhpbillitonuk.com> is registered with NetEarth One Inc. d/b/a NetEarth (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the ”Center”) on November 29, 2012. On November 29, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 30, 2012, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amended Complaint on December 3, 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 December 5, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was December 25, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 27, 2012.

The Center appointed Luca Barbero as the sole panelist in this matter on January 8, 2013. 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 more than 40,000 people in more than 100 operations in 25 countries. The core of the BHP Billiton 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. The Complainant BHP Billiton Innovation is a wholly owned subsidiary of the BHP Billiton Group, holding some of the BHP Billiton Group's intellectual property.

The Complainant is the owner of numerous trademark registrations for BHP BILLITON (word mark), including the Australian trademark No. 1141449, filed on October 18, 2006, in classes 4, 6, 37, 40 and 42; the New Zealand trademark No. 764470, filed on March 5, 2007, in classes 4, 6, 37, 40 and 42; the International Trademark designating European Community No. 0986799, registered on November 16, 2006, in classes 4, 6, 37, 40 and 42; the United States trademark No. 3703871, filed on April 12, 2007, in International classes 4, 6, 37, 40 and 42.

The Complainant is the owner of several domain names containing the trademark BHP BILLITON, including <bhpbilliton.com>, <bhpbilliton.org>, <bhpbilliton.info>, <bhpbilliton.jobs>, <bhpbilliton.net>, <bhpbilliton.mobi>, <bhpbilliton.co.uk>, <bhpbilliton.org.uk> and <bhpbilliton.eu>.

The disputed domain name <bhpbillitonuk.com> was registered on October 16, 2012 and is redirected, at the time of the drafting of the decision, to the Complainant’s web site “www.bhpbilliton.com”. According to the screenshots available on records, the disputed domain name was pointed in the past to a web site, published at the disputed domain name <bhpbillitonuk.com>, that reproduced the layout and contents of the Complainant’s web site “www.bhpbilliton.com”.

5. Parties’ Contentions

A. Complainant

The Complainant states that the trademark BHP BILLITON has over the years become the world’s most well-known brand in diversified resources and the mining of such resources.

The Complainant contends that the disputed domain name is confusingly similar to the Complainant’s trademark since the addition of the generic word “uk” is not sufficient to distinguish the disputed domain name from the BHP BILLITON trademark. The Complainant emphasizes that consumers are highly likely to expect an association of the disputed domain name with the Complainant, in particular because the disputed domain name is pointed to a web site that mirrors the one operated by the Complainant. The Complainant also states that the addition of a Top Level Domain, such as “.com”, does not affect the assessment that a domain name is confusingly similar to a particular trademark.

The Complainant also asserts that the Respondent does not have any right or legitimate interest in the disputed domain name, as it has not at any time been commonly known by the disputed domain name, has no rights on trademarks identical or similar to the disputed domain name and is not making a legitimate noncommercial or fair use of the disputed domain name.

The Complainant contends that bad faith may be inferred from the registration as a domain name of the well-known trademark BHP BILLITON, which is well-known worldwide. The Complainant submits that also the use of the disputed domain name amounts to bad faith since “by using the domain name, the Registrant has intentionally attempted to attract internet users to the Registrant’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”. The Complainant underlines that, since the disputed domain name has been redirected to a web site that mirrors the Complainant’s one, users would likely conclude that they have accessed the Complainant’s web site.

B. Respondent

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

6. Discussion and Findings

According to paragraph 15(a) of the Rules: “A Panel shall decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”. Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:

(i) that the disputed domain name registered by the Respondent is identical or confusingly similar to a trademark or a service in which the Complainant has rights; and

(ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and

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

A. Identical or Confusingly Similar

The disputed domain name reproduces the Complainant’s trademark BHP BILLITON in its entirety, with the mere addition of the suffix “uk” and of the “.com” Top Level Domain.

Pursuant to a number of prior decisions rendered under the Policy, the addition of descriptive or generic terms to a trademark is not a distinguishing feature.

In the present case, the addition of the geographical term “uk” is not sufficient to avoid the similarity with the trademark but is apt to induce Internet users to believe that the disputed domain name is owned by, or associated with the Complainant, since, as highlighted on the web site “www.bhpbilliton.com”, the Complainant has also a corporate office and a production unit in the United Kingdom.

Moreover, as stated, inter alia, in Rollerblade, Inc. v. McCrady, WIPO Case No. D2000-0429 and in DHL Operations B.V. v. ZLEX, WIPO Case No. D2007-1612, the suffix “.com” is irrelevant for the purpose of determining whether a domain name is identical or confusingly similar, since it is a technical requirement of the domain name system.

In view of the above, the Panel finds that the Complainant has proven that the disputed domain name is confusingly similar to the trademark in which the Complainant has rights in accordance with paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

The Complainant must show that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent may establish a right or legitimate interest in the disputed domain name by demonstrating in accordance with paragraph 4(c) of the Policy any of the following:

“(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 trademark 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 trademark or service mark at issue.”

It is well-established that the burden of proof lies on the Complainant. However, satisfying the burden of proving a lack of the Respondent’s rights or legitimate interests in respect of the disputed domain name according to paragraph 4(a)(ii) of the Policy is potentially quite onerous, since proving a negative circumstance is always more difficult than establishing a positive one.

Accordingly, in line with the UDRP precedents, it is sufficient that the Complainant show a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name in order to shift the burden of production on the Respondent. If the Respondent fails to demonstrate rights or legitimate interests in the disputed domain name in accordance with paragraph 4(c) of the Policy or on any other basis, the Complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy (see Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455; Belupo d.d. v. WACHEM d.o.o., WIPO Case No. D2004-0110; MetAmerica Mortgage Bankers v. Whois ID Theft Protection, c/o Domain Admin, NAF Claim No. FA852581).

In the case at hand, by not submitting a Response, the Respondent has not rebutted the Complainant’s prima facie case, failing to invoke any circumstance that could demonstrate, pursuant to paragraph 4(c) of the Policy, any rights or legitimate interests in the disputed domain name.

The Panel observes that there is no relation, disclosed to the Panel or otherwise apparent from the record, between the Respondent and the Complainant. The Respondent is not a licensee of the Complainant, nor has the Respondent otherwise obtained an authorization to use the Complainant’s trademark. There is also no evidence that the Respondent is commonly known by the disputed domain name.

Furthermore, there is no indication before the Panel that the Respondent, which has pointed the disputed domain name to a web site reproducing the layout and content of the Complainant’s web site, has made preparations to use the disputed domain name in connection with a bona fide offering of goods or services, or that it intends to make a legitimate, noncommercial or fair use of the disputed domain name.

Thus, in light of the above, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name, in accordance with paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

As to bad faith at the time of the registration, the Panel notes that, in light of the widely known character of the trademark BHP BILLITON in the field of discovery, acquisition, development and marketing of natural resources, the Respondent was more likely than not aware of the Complainant’s trademark, with which the disputed domain name is confusingly similar.

The Panel shares the view of a number of panel findings of “opportunistic bad faith” in the registration of renowned or even somewhat less famous trademarks, as found, inter alia, in Gateway, Inc. v. Lorna Kang, WIPO Case No. D2003-0257. Along the same lines were Veuve Cliquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co., WIPO Case No. D2000-0163; Expedia, Inc. v. European Travel Network, WIPO Case No. D2000-0137; Prada S.A. v. Mark O'Flynn, WIPO Case No. D2001-0368; Ferrari S.p.A. v. Inter-Mediates Ltd., WIPO Case No. D2003-0050 and The Nasdaq Stock Market, Inc. v. Act One Internet Solutions, WIPO Case No. D2003-0103. As stated inter alia in DHL Operations B.V v. Net Marketing Group, WIPO Case No. D2005-0868 ”It is obvious that the value and goodwill, of the Complainant’s mark DHL which has an extensive worldwide recognition, would have been known to the Respondent at the time of registration of the disputed domain name. The registration and use of the mark by an entity unconnected to the Complainant gives rise to the presumption of opportunistic bad faith”.

Moreover, the Panel observes that the disputed domain name has been pointed to a web site similar to the one of the Complainant. Therefore, the Panel finds that the Respondent was likely aware of the Complainant’s trademark when the disputed domain name was registered. Furthermore, as recognized also in BHP Billiton Innovation Pty Ltd. v. PrivacyProtect.org / Sam Webs, WIPO Case No. D2012-1101, such deceptive and illegitimate use of the disputed domain name constitutes an example of bad faith use.

As an additional circumstance suggesting bad faith, the Panel notes that there has been no Response in this case. As stated in Sports Holdings, Inc v. Whois ID Theft Protection, WIPO Case No. D2006-1146 “it is open for the Panel to infer a prima facie case of bad faith registration. The Panel also notes that the Respondent has used the present domain name in a commercial website. The evidence before the Panel indicates that the Respondent has used (or allowed the use) of the domain name for the purpose of some apparently commercial nature from which the Respondent (or a related third party) presumably derives or intends to derive revenue. This is not conduct consistent with registration and use in good faith”.

In light of the above, the Panel finds that the disputed domain name was registered and is used in bad faith according to paragraph 4(a)(iii) of the Policy.

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 <bhpbillitonuk.com> be transferred to the Complainant.

Luca Barbero
Sole Panelist
Date: January 22, 2013