WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

BHP Billiton Innovation Pty Ltd v. Domains By Proxy, LLC/ Invertising

Case No. D2015-0629

1. The Parties

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

The Respondent is Domains By Proxy, LLC of Scottsdale, Arizona, United States of America (the “United States”); Invertising of Nanjing, Jiangsu, China.

2. The Domain Name and Registrar

The disputed domain name <bhpshareplus.com> is registered with GoDaddy.com, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 9, 2015. On April 9, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 10, 2015, 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 April 14, 2015 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 April 15, 2015.

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 April 30, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was May 20, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 22, 2015.

The Center appointed Cherise Valles as the sole panelist in this matter on June 8, 2015. 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 wholly owned subsidiary of BHP Billiton Limited, which merged with Billiton Plc in June 2001 to form BHP Billiton. BHP Billiton is headquartered in Melbourne and has offices around the world, notably in London. It is the world’s largest diversified resources group, employing more than 40,000 people in 25 countries. The company’s annual turnover in 2009, 2010, 2011, 2012 and 2013 was approximately USD 50.2 billion, USD 52.8 billion, USD 71.7 billion, USD 72.2 billion and USD 65.9 billion respectively.

BHP controls numerous domain names containing the letters “bhp”. These include <bhp.us>, <bhp.mobi>, <bhp.info>, <bhp.biz>, <bhpconnect.com>, <bhpcopper.com>, <bhpcoal.com>, <bhpstrategy.com>, <bhptechnology.com>, <bhptherealstory.com>, <bhpenvironment.com>, <bhpexploration.com>, <bhp.asia> and <bhp.tel>. Moreover, the Complainant has recently registered the domain name <bhpbshareplus.com> (February 17, 2013).

The Complainant is the owner of multiple trademark registrations throughout the world, including in Australia and the United States, for the mark BHP. These include the following:

- Australian trademark registration No. 59146 for BHP, in class 6;

- Australian trademark registration No. 330272 for BHP, registered on March 16, 1979, in class 7;

- Australian trademark registration No. 362256 for BHP, registered on July 3, 1981, in class 37;

- Australian trademark registration No. 398095 for BHP, registered on October 7, 1983, in class 4;

- Australian trademark registration No. 406091 for BHP, registered on March 30, 1984, in class 42;

- Australian trademark registration No. 456429 for BHP, registered on October 7, 1983, in class 4;

- Australian trademark registration No. 543620 for BHP, registered on October 9, 1990, in class 6;

- Australian trademark registration No. 730190 for BHP, registered on March 19, 1997, in classes 1, 2, 8, 9, 11, 14, 16, 17, 19, 25, 35, 36, 37, 38, 39, 41 and 42;

- Australian trademark registration No. 842335 for BHP, registered on July 12, 2000, in classes 14, 37 and 41;

- Australian trademark registration No. 859375 for BHP, registered on October 7, 1983, in classes 4, 6, 35, 36, 38, 39, 40 and 42;

- Australian trademark registration No. 1171453 for BHP, registered on April 17, 2007, in classes 1, 4, 6, 9, 19, 35, 37, 39, 40, 41 and 42;

- United States trademark registration No. 1367145 for BHP, registered on October 22, 1985, in class 42.

The disputed domain name <bhpshareplus.com> was registered on May 26, 2014.

5. Parties’ Contentions

A. Complainant

The Complainant asserts that each of the elements enumerated in paragraph 4(a) of the Policy and the corresponding provisions in the Rules have been satisfied. In particular, the Complainant asserts that:

The disputed domain name is identical or confusingly similar to a trademark in which the Complainant has rights.

The disputed domain name is confusingly similar or identical to the Complainant’s registered trademark, BHP, in light of the fact that it wholly incorporates the Complainant’s mark.

The Respondent lacks rights or legitimate interests in the disputed domain name.

The Complainant states that the Respondent should be considered as having no rights or legitimate interests in the disputed domain name. The Complainant has never licensed or otherwise permitted the Respondent to use its trademarks or to register any domain name that included its trademarks.

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

The Complainant asserts that the disputed domain name was registered and is used in bad faith. The mere fact of registration of a domain name that is confusingly similar or identical to a famous trademark by an entity that has no relationship to that mark is itself evidence of bad faith registration and use.

The Complainant requests the Panel to issue a decision finding that the disputed domain name be transferred to the Complainant, in accordance with paragraph 4(i) of the Policy.

B. Respondent

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

6. Discussion and Findings

The Policy provides specific remedies to trademark owners against registrants of domain names where the owner of the mark (a complainant) establishes each of the following elements:

(i) the domain name is identical or confusingly similar to a trademark in which the complainant has rights;

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

(iii) the domain name was registered and is being used in bad faith.

The Complainant has the burden of proof in establishing each of these elements.

The Respondent has failed to file a response in these proceedings and is therefore in default and the Panel may draw appropriate inferences from the available evidence submitted by the Complainant.

A. Identical or Confusingly Similar

To prove this element, the Complainant must have trademark rights and the disputed domain name must be identical or confusingly similar to the Complainant’s trademark.

The Complainant is the sole and exclusive owner of the BHP mark. The Complainant is the owner of multiple trademark and domain name registrations in Australia, the United States and worldwide for the trademark BHP, as indicated in Section 4 above.

The disputed domain name <bhpshareplus.com> wholly incorporates the term “BHP”, which is identical to the trademark BHP registered by the Complainant as trademarks and domain names in countries all over the world. Numerous earlier UDRP decisions have held that when a domain name wholly incorporates a complainant’s registered trademark, it is typically sufficient to establish confusing similarity for purpose of the Policy. See Alstom v. FM Laughna, WIPO Case No. D2007-1736. The addition of the generic Top-Level Domain “.com” is irrelevant in determining whether the disputed domain name is confusingly similar to the Complainant’s marks. See Research in Motion Limited v. Banay, WIPO Case No. D2009-0151.

Moreover, the likelihood of confusion created by the incorporation of the Complainant’s trademark BHP into the disputed domain name <bhpshareplus.com> is increased by the recent registration by the Complainant of the domain <bhpbshareplus.com>, as mentioned in section 4 above.

In the light of the foregoing, the Panel finds that the disputed domain name <bhpshareplus.com> is identical or confusingly similar to the Complainant’s registered mark and that paragraph 4(a)(i) of the Policy is satisfied.

B. Rights or Legitimate Interests

The burden of proof is on the Complainant to establish that the Respondent lacks rights or legitimate interests in the disputed domain name. Under the UDRP, if a prima facie case is established by the Complainant, then the burden of production of evidence shifts to the Respondent to demonstrate that it has rights or legitimate interests in the disputed domain name.

Paragraph 4(c) of the Policy enumerates three non-exclusive ways in which a respondent may demonstrate rights or legitimate interests in a domain name: “Any of the following circumstances, in particular but without limitation, if found by the panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):

(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.”

The Respondent did not submit a Response or attempt to demonstrate any rights or legitimate interests in the disputed domain name, and the Panel draws adverse inferences from this failure, where appropriate, in accordance with the Rules, paragraph 14(b).

The Complainant has registered the trademark BHP in Australia, the United States and in other countries around the world. The Respondent is not in any way associated with the Complainant and has never received authorization or a license to use the Complainant’s BHP mark in any way or manner, including registering a domain name containing the term “bhp”. There is no evidence that the Respondent is commonly known by the name “BHP” or by the disputed domain name <bhpshareplus.com>.

The Complainant has made a prima facie showing of the Respondent’s lack of rights or legitimate interests in the disputed domain name, , and the Respondent has failed to demonstrate its rights in the disputed domain name. Registration of a domain name incorporating another’s famous mark, in situations similar to this case, does not confer any rights or legitimate interests in the domain name, but rather constitutes bad faith under paragraph 4(b) of the Policy. See PRL USA Holdings, Inc. v. vivienne westwood / Contact Privacy Inc. Customer 0126347680, WIPO Case No. D2011-1292.

The Complainant’s BHP trademark is well known in Australia, the United States and in many other countries around the world, and, the Complainant owns a number of websites based in various countries which incorporate the trademark BHP, as mentioned in Section 4 above. The Respondent must therefore have been aware of the Complainant’s legal rights in the name BHP at the time of the registration of the dispute domain name. The Respondent cannot claim to have been using the trademark BHP without having been aware of the Complainant’s rights to it. This suggests that the Respondent’s interests cannot have been legitimate.

The Respondent is not using the disputed domain name <bhpshareplus.com> to make a bona fide offering of goods or services. Other than sponsored links, no meaningful content is displayed on the website for the disputed domain name. A view of the page related to the disputed domain name is attached as Annex 9 to the Complaint. In similar circumstances, where a respondent fails to make any meaning active use of a domain name, the respondent cannot be found to have any rights or legitimate interests in a domain name under the Policy.

In the light of the foregoing, the Panel finds that the Complainant has established an unrebutted prima facie case and concludes that paragraph 4(a)(ii) of the Policy is satisfied.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy states that any of the following circumstances, in particular but without limitation, shall be considered evidence of the registration and use of a domain name in bad faith:

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

(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;

(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 its website or other on-line location, by creating a likelihood of confusion with the 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 its website or location.

As indicated in Section 4 above, the Complainant’s BHP trademark is registered in numerous countries around the world, including in Australia and the United States. The Respondent must have been aware of the existence of the Complainant’s trademarks – as mentioned in Section 4 above, over the past several years the Complainant has consistently generated turnover of billions of US dollars. Previous panels have held that the registration of a domain name obviously connected with well-known trademarks by someone without any connection to these trademarks suggests opportunistic bad faith. See, among others, Zwack Unicum Rt. v. Erica J. Duna, WIPO Case No. D2000-0037. The Respondent should be considered to have registered, and to be using, the disputed domain name in bad faith. Moreover, in this case, the registration of a domain name that is confusingly similar to a well-known mark can be taken as an act of bad faith, since the Respondent appears to be attempting to attract users to its website by relying on the likelihood of confusion with the Complainant’s BHP mark.

As indicated in Section 6B above, the fame of the BHP marks and the Respondent’s failure to use the website for the disputed domain name in any meaningful way leads to the inference that the Respondent is using the disputed domain name in bad faith.

Accordingly, the Panel concludes that the Complainant has satisfied its burden of showing bad faith registration and use of the disputed domain name under 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 <bhpshareplus.com> be transferred to the Complainant.

Cherise Valles
Sole Panelist
Date: June 21, 2015