WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

BHP Billiton Innovation Pty Ltd v. Zhang Xiang/YinSi BaoHu Yi KaiQi (Hidden by Whois Privacy Protection Service)

Case No. D2014-1990

1. The Parties

The Complainant is BHP Billiton Innovation Pty Ltd of Melbourne, Victoria, Australia, represented by Griffith Hack, Australia.

The Respondent is Zhang Xiang of Guangzhou, Guangdong, China; YinSi BaoHu Yi KaiQi (Hidden by Whois Privacy Protection Service) of Beijing, China.

2. The Domain Name and Registrar

The disputed domain name <bhpbillitonfund.com> is registered with HiChina Zhicheng Technology Ltd. (the "Registrar").

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on November 12, 2014. On November 12, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 13, 2014, 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 the same day 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 November 14, 2014.

On November 13, 2014, the Center sent an email communication to the parties in both Chinese and English regarding the language of the proceeding. On November 14, 2014, the Complainant requested that English be the language of the proceeding while the Respondent requested that Chinese be the language of the proceeding.

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 in both Chinese and English, and the proceeding commenced on November 19, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was December 9, 2014. On December 1, 2014, the Center received email communications from the Respondent (the content of which is reproduced under Section 5.B. below). On December 10, 2014, the Center informed the parties that it shall proceed with the panel appointment.

The Center appointed Susanna H.S. Leong as the sole panelist in this matter on December 17, 2014. 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. The Panel subsequently extended the decision due date to January 7, 2015.

4. Factual Background

The Complainant is a subsidiary of BHP Billiton, a core company which is part of a large diversified resources group BHP Billiton Group, employing more than 40,000 people in more than 100 operations in 25 countries.

The Complainant's parent company BHP Billiton is the owner of numerous trademark registrations for the trademark BHP BILLITON around the world such as Australia, New Zealand, the United Kingdom of Great Britain and Northern Ireland, the European Union, the United States of America and Canada.

Furthermore, BHP Billiton controls numerous domain names containing the trademark BHP BILLITON, including <bhpbilliton.com>, <bhpbilliton.net>, <bhpbilliton.info>, <bhpbilliton.org>, <bhpbilliton.jobs>, <bhpbilliton.mobi> and <bhpbilliton.biz>.

The disputed domain name was registered on November 3, 2014.

5. Parties' Contentions

A. Complainant

First, the Complainant asserts that the disputed domain name is identical or confusingly similar to its mark. The reasons are summarized as follows:

(1) That the disputed domain name <bhpbillitonfund.com> is confusingly similar to BHP Billiton's extensive portfolio of BHP BILLITON trademark.

(2) That the BHP BILLITON trademark has over the years become the world's most well-known brand in diversified resources and the mining of such resources and that consumers, upon viewing the disputed domain name, are highly likely to expect an association with the Complainant, in particular in light of the similarity of the disputed domain name with the BHP BILLITON trademark.

(3) It is well settled that the addition of a generic Top-Level Domain (gTLD) such as ".com" does not affect the assessment that a domain name is confusingly similar to a particular trademark.

Second, the Complainant asserts that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The grounds are summarized as follows:

(1) That the Respondent has not at any time been commonly known by the disputed domain name.

(2) That the Complainant is not aware of any trademarks in which the Respondent may have rights that are identical or similar to the disputed domain name.

(3) That the Respondent is not making legitimate noncommercial or fair use of the disputed domain name.

Third, the Complainant contends that the Respondent has registered and is using the disputed domain name in bad faith. The grounds are summarized as follows:

(1) The Complainant and its parent company BHP Billiton enjoy a worldwide reputation in its BHP BILLITON trademark and relevant domain names. Prior UDRP decisions have 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 trademark that the disputed domain name was registered in bad faith.

(2) The Respondent has registered the disputed domain name in order to prevent the Complainant from reflecting its trademark in a domain name that includes a desirable descriptive term, namely "fund". It is also submitted that this was done in circumstances in which the Respondent engages in a pattern of such conduct pursuant to paragraph 4(b)(ii) of the Policy, such as the registration of other domain names including known third party trademarks such as HARVARD and MICHAEL KORS.

B. Respondent

The Respondent did not formally submit a Response to the Complaint. However, the Respondent has through an email communication dated December 1, 2014 raised a number of rebuttals which are summarized below:

(1) The Respondent claims that the disputed domain name was registered for his/her personal and noncommercial use. It is not for commercial and the purpose of making a profit.

(2) The Respondent has never put up the disputed domain name for sale to obtain a profit.

(3) The Respondent, or any other person, is free to combine letters in the alphabet and register them as domain names as long as he/she does not operate in a similar business. As such, this does not constitute an infringement of the Complainant's rights.

(4) The Complainant is at liberty to register the disputed domain name but has failed to do so. As such, it shows that the Complainant does not care about the ownership of the disputed domain name. As of December 1, 2014, domain names such as <bhpbillitonfund.cn>, <bhpbillitonfund.net>, <bhpbillitoninnovation.com> and <bhpbillitoninnovation.net> are still available.

6. Discussion and Findings

6.1. Language of the Proceeding

According to the information received by the Center from the Registrar, the language of the Registration Agreement for the disputed domain name is Chinese. Pursuant to the Rules, paragraph 11, in the absence of an agreement between the parties, or specified otherwise in the registration agreement, the language of the administrative proceeding shall be the language of the registration agreement. From the evidence presented in the case file, no agreement appears to have been entered into between the Complainant and the Respondent to the effect that the proceeding should be in English. Complying with the instructions from the Center, the Complainant has submitted a request that the proceeding should be in English. The Respondent in an email dated November 14, 2014 indicated that that the language of the proceeding should be Chinese on the ground that he/she does not understand English.

After considering the circumstances of the present case and the submission of the parties' language requests, the Panel is of the opinion that the language of the present proceeding shall be English and the decision will be rendered in English. The Panel based its decision on the following reasons:

(i) The Panel's discretion under the Policy

Paragraph 11(a) of the Rules provides:

"Unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding."

Thus, the parties may agree on the language of the administrative proceeding. In the absence of an agreement, the language of the registration agreement shall dictate the language of the proceeding. However, the Panel has the discretion to decide otherwise having regard to the circumstances of the case. The Panel's discretion must be exercised judicially in the spirit of fairness and justice to both parties taking into consideration matters such as command of the language, time and costs. It is important that the language finally decided by the Panel for the proceeding is not prejudicial to either one of the parties in his or her ability to articulate the arguments for the case.

(ii) The circumstances of this proceeding

One important consideration is the issue of fairness to both parties in their abilities to prepare the necessary documents for this proceeding and also to respond adequately to these documents when they are served upon the parties.

In the present case, the Panel notes that the material facts of this proceeding are generated in the English language. In particular, the Panel notes that (a) the disputed domain name is made up of letters in Ascii-Script and could be pronounced phonetically in English; (b) although the Respondent has asserted that he/she does not understand English, the Respondent was able to communicate an informal response in Chinese; (c) the Center has notified the Respondent of the proceeding in both Chinese and English and the Respondent has been able to make an informal response which the Panel will take into consideration in rendering its decision.

Therefore the Panel is of the view that the choice of English as the language of the present proceeding is fair to both parties and is not prejudicial to either one of the parties in his or her ability to articulate the arguments for this case.

In considering the circumstances of the present case, the Panel decides that the language of the proceeding shall be English and the decision will be rendered in English.

6.2. Substantive Elements of the Policy

In accordance with paragraph 4(a) of the Policy, in order to succeed in this proceeding and obtain the transfer of the disputed domain name, the Complainant must establish that each of the three following elements is satisfied:

(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.

Paragraph 4(a) of the Policy clearly states that the burden of proof lies with the Complainant to establish that all these three elements are satisfied in this proceeding.

Furthermore, pursuant to paragraph 15(a) of the Rules, the Panel shall decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable. Moreover, in accordance with paragraph 14(b) of the Rules, if a party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under the Rules or any request from the Panel, the Panel shall draw such inferences therefrom, as it deems appropriate.

On the basis of the evidence introduced by the Complainant and in particular with regard to the content of the relevant provisions of the Policy (paragraphs 4(a), (b), (c)), the Panel concludes as follows:

A. Identical or Confusingly Similar

The Complainant has adduced evidence to demonstrate that it has registered trademark rights and continues to have such rights in the BHP BILLITON mark in connection with its goods and services in many countries in the world. The Panel finds that the Complainant's BHP BILLITON mark is well known in connection with the goods and services offered by the Complainant in many countries.

In assessing the degree of similarity between the Complainant's trademark and the disputed domain name, the Panel shall have regard to the degree of visual, aural or conceptual similarity between them and where appropriate, evaluate the importance to be attached to these different elements. The issue of degree of similarity between the Complainant's trademark and the disputed domain name is to be considered from the perspective of the average consumer of the goods or services concerned in this case, and the average consumer is the Internet users seeking information about the Complainant's products or services.

The disputed domain name consists of the Complainant's BHP BILLITON mark in its entirety with the addition of the word "fund" and the gTLD suffix ".com". The Panel is of the view that the most prominent and distinctive part of the disputed domain name is the word "bhpbilliton" which is identical to the Complainant's registered trademark BHP BILLITON. Given the fame and notoriety of the Complainant's BHP BILLITON mark, the addition of a descriptive word like "fund" and suffixes such as ".com" being the gTLD are not typically distinguishing factors.

Bearing in mind the following factors, in particular the distinctive character of the Complainant's BHP BILLITON mark and the dominant component of the disputed domain name, the Panel therefore finds that the disputed domain name is confusingly similar to the BHP BILLITON mark in which the Complainant has rights.

The Panel finds for the Complainant on the first part of the test.

B. Rights or Legitimate Interests

Based on the following reasons, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name:

(1) The Respondent has not provided evidence of a legitimate use of the disputed domain name or reasons to justify the choice of the term "bhpbilliton". The mere registration of a domain name does not necessarily confer upon the Respondent rights or legitimate interests;

(2) There was no evidence to show that the Complainant has licensed or otherwise permitted the Respondent to use its trademark or to apply for or use any domain name incorporating the BHP BILLITON mark;

(3) There is no indication whatsoever that the Respondent is commonly known by the disputed domain name and/or is using the disputed domain name in connection with a bona fide offering of goods or services;

(4) The Respondent has not adduced any concrete evidence of the use of, or demonstrable preparations to use, the disputed domain name in connection with a bona fide offering of goods or services. To date, the disputed domain name remains passive and inactive. The Panel finds that the Respondent therefore does not have the right to use the BHP BILLITON mark in the disputed domain name. Therefore, the Respondent has no rights or legitimate interests in the disputed domain name;

(5) The Complainant and its BHP BILLITON mark enjoy a widespread reputation and high degree of recognition as a result of their fame and notoriety in connection with its goods and services in many countries all over the world. Consequently, in the absence of contrary evidence from the Respondent, the BHP BILLITON mark is not one that traders could legitimately adopt other than for the purpose of creating an impression of an association with the Complainant.

The Panel notes that the overall burden of proof on this element rests with the Complainant. However, it is well established by previous UDRP decisions that once a complainant establishes a prima facie case that a respondent lacks rights or legitimate interests in a domain name, the burden of production shifts to the respondent to rebut the complainant's contentions. (See the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0"), paragraph 2.1). Based on the above reasons, the Complainant has therefore established a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name and thereby shifted the burden of production to the Respondent to produce evidence to rebut this presumption.

According to paragraph 4(c) of the Policy, a respondent may establish its rights or legitimate interests in a domain name, among other circumstances, by showing any of the following elements:

"(i) before any notice to [the respondent] of the dispute, [the respondent's] 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) [the respondent] (as an individual, business, or other organization) [has] been commonly known by the domain name, even if [the respondent has] acquired no trademark or service mark rights; or

(iii) [the respondent is] 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."

The Panel notes that the Respondent has not provided evidence of circumstances of the type specified in paragraph 4(c) of the Policy, or evidence of any other circumstances giving rise to a right to or legitimate interest in the disputed domain name. In particular, the Respondent has failed to make submissions or adduce evidence to demonstrate rights or legitimate interests in the disputed domain name.

In accordance with the Rules, paragraph 14, the Panel thus draws such inferences as it considers appropriate, which are that the Complainant has therefore established a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name, and the Respondent has not adduced evidence of any rights or legitimate interests in the disputed domain name.

The Panel finds for the Complainant on the second part of the test.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy sets out four circumstances which, without limitation, shall be evidence of the registration and use of the domain name in bad faith, namely:

(i) circumstances indicating that a respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to a complainant who is the owner of the trademark or service mark or to a competitor of the complainant, for valuable consideration in excess of the respondent's documented out-of-pocket costs directly related to the domain name; or

(ii) the respondent has registered the domain name in order to prevent the owner of the trademark 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

(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to the respondent's website or other online location, by creating a likelihood of confusion with a complainant's mark as to the source, sponsorship, affiliation, or endorsement of the respondent's website or location or of a product or service on the respondent's website or location.

The above circumstances are indicative of registration and use of a domain name in bad faith but they are by no means exhaustive. Evidence of other circumstances adduced before the panel can also constitute registration and use of the domain name in bad faith by a respondent in appropriate cases.

One important consideration in the Panel's assessment of whether the Respondent has registered and used the disputed domain name in bad faith is prior knowledge on the part of the Respondent of the Complainant's rights in the trademark concerned. In this day and age of the Internet and advancement in information technology, the reputation of brands and trademarks often transcend national borders. Taking into account the worldwide reputation of the Complainant and its BHP BILLITON trademark in numerous countries, the Panel finds that it is highly unlikely that the Respondent would not have had actual notice of the Complainant's trademark rights at the time of the registration of the disputed domain name.

A simple search on the Internet would reveal the presence of the Complainant's trademark and domain names. Therefore, the Panel finds that it is not conceivable that the Respondent would not have had actual notice of the Complainant's trademark rights at the time of the registration of the disputed domain name. Consequently, it would have been pertinent for the Respondent to provide an explanation for the choice of the disputed domain name, failing which the Panel draws the conclusion that the disputed domain name was registered in bad faith with intent to create an impression of an association with the Complainant and its products. In this regard, the Panel finds that the Respondent has not provided an acceptable explanation for the choice of the disputed domain name which for all intents and purpose is identical to a world famous registered trademark BHP BILLITON.

Where the Respondent has chosen to register a disputed domain name that is identical or confusingly similar to the Complainant's trademark and where the trademark in question has through substantial use acquired worldwide fame, reputation and notoriety, a reasonable conclusion is that the trademark is not one that traders could legitimately adopt other than for the purpose of creating an impression of an association with the Complainant. Thus, the Respondent may show that the choice of the disputed domain name was made legitimately and in good faith for the genuine offering of goods or services on the Internet. In this case, there is no evidence that the Respondent has used or intends to use the disputed domain name for purposes of bona fide offering of goods and services over the Internet. On the contrary, the disputed domain name remains passive and inactive since registration. It should be noted that passive holding of a disputed domain name does not negate the possibility of bad faith registration and use, especially where the Complainant's trade mark is a well known mark. Such behaviour on the part of the Respondent is indicative of bad faith registration and use as per paragraph 4(b)(iv) of the Policy. The Respondent could have explained the choice of the disputed domain name and his/her subsequent conduct. However, the Respondent has failed to do so and the Panel was not provided with any plausible explanation.

The Panel finds that given the widespread fame of the Complainant's BHP BILLITON mark and a lack of plausible explanation for the choice of incorporating the Complainant's well-known trademark in the disputed domain name, the lack of any rights or legitimate interests on the part of the Respondent in the disputed domain name, the passive holding of the disputed domain name since registration without any definitive plans for use in connection with bona fide offering of goods or services, are certainly relevant factors indicating bad faith registration and use.

Thus, the Panel finds for the Complainant on the third part of the test.

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 <bhpbillitonfund.com> be transferred to the Complainant.

Susanna H.S. Leong
Sole Panelist
Date: January 7, 2015