WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

BHP Billiton Innovation Pty Ltd v. Whois Privacy Services Pty Ltd / Lisa Katz, Domain Protection LLC

Case No. D2016-0370

1. The Parties

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

The Respondent is Whois Privacy Services Pty Ltd of Fortitude Valley, Australia / Lisa Katz, Domain Protection LLC of Dallas, Texas, United States of America ("United States").

2. The Domain Name and Registrar

The disputed domain name <bhpbilition.com> is registered with Fabulous.com (the "Registrar").

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on February 24, 2016. On February 24, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 26, 2016, 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 February 26, 2016 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 March 1, 2016.

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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on March 4, 2016. In accordance with the Rules, paragraph 5, the due date for Response was March 24, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on March 29, 2016.

The Center appointed Antony Gold as the sole panelist in this matter on April 7, 2016. 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, part of the BHP Billiton Group. The Group is an Anglo-Australian conglomerate and a world leader in diversified resources. The Group is dual listed and comprises two core companies, BHP Billiton Limited and BHP Billiton Plc. The Complainant holds some of the intellectual property of the BHP Billiton Group.

BHP Billiton Group has its headquarters in Melbourne, Australia with other offices around the world. In 2014, the Group's approximate annual turnover was USD 67.2 billion.

The BHP Billiton Group and its constituent companies own an extensive trade mark portfolio, including the following marks registered in the name of the Complainant:

BHP Billiton Group operates a website to which various domain names resolve including <bhpbilliton.com>, registered on November 11, 2001. Additionally, the Group is the proprietor of multiple domain names, incorporating its trade mark BHP BILLITON, including: <bhpbilliton.net>, <bhpbilliton.info>, <bhpbilliton.jobs> and <bhpbilliton.org>.

The disputed domain name was registered on December 6, 2005. As at the date of the Complaint, the disputed domain name redirected to an active but unrelated website, "www.bubhub.com.au" which offers advice on the care of new born babies and young children and provides additional information, including a directory of suppliers of childcare-related products.

5. Parties' Contentions

A. Complainant

The Complainant says that the disputed domain name is confusingly similar in relation to a trade mark in which it has rights, namely its extensive trade mark portfolio for BHP BILLITON, including the registrations detailed above. It says that its BHP BILLITON trade mark is famous worldwide and has become the leading brand associated with diversified resources and the mining of such resources. It also submits that consumers viewing the disputed domain name are, in view of its similarity with its trade marks, likely to perceive an association between the BHP Billiton Group and the Respondent. Lastly, the Complainant says that the generic Top-Level Domain ("gTLD") suffix ".com" should be disregarded for the purposes of assessing similarity between the disputed domain name and its BHP BILLITON trade mark.

The Complainant submits that the Respondent has no rights or legitimate interest in the disputed domain name. It says that the Respondent has never been commonly known by the disputed domain name. Moreover, the Complainant says that it is unaware of any trade marks in which the Respondent may have rights which are identical or similar to the disputed domain name. The Complainant says also that the Respondent is not making a legitimate noncommercial or fair use of the disputed domain name.

Finally, the Complainant says that the disputed domain name was registered and is being used in bad faith. The Complainant says that its BHP BILLITON trade marks are not only highly distinctive but that they have become the world's most well-known brand in the field of diversified resources. Reference is made by the Complainant to previous UDRP panel decisions, namely Zwack Unicum Rt. v. Erica J. Duna, WIPO Case No. D2000-0037 and TheNasdaq Stock Market, Inc. v. Act One Internet Solutions, WIPO Case No. D2003-0103 in which bad faith was inferred from the registration of domain names incorporating well-known trade marks by third parties who had no connection with the trade mark owner. The Complainant states that the Respondent's registration of a domain name which is confusingly similar to the well-known BHP BILLITON trade mark is, on the same basis, indicative of a bad faith registration.

Lastly, the Complainant says that, to the extent that the Respondent's use of the disputed domain name is considered "passive use", when considering the totality of the circumstances surrounding the registration and use of the disputed domain name it should be found to amount to bad faith use. In this respect, the Complainant refers to the decision of the panel in Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003. The Complainant submits that the Respondent's conduct in registering its well-known trade mark and the Respondent's failure to provide evidence of any actual or contemplated good faith use point to bad faith use of the disputed domain name.

B. Respondent

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

6. Discussion and Findings

Turning, first, to the Respondent's failure to serve a response, paragraph 14(b) of the Rules provides that if a party, in the absence of exceptional circumstances, does not comply with a provision of, or requirement under these Rules, the Panel shall be entitled to draw such inferences from this omission as it considers appropriate.

Paragraph 4(a) of the Policy provides that the Complainant must prove each of the following elements:

i. the disputed domain name is identical or confusingly similar to a trade mark in which the Complainant has rights;

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.

A. Identical or Confusingly Similar

As the Complainant says, it has been well established by previous UDRP panel decisions that the gTLD suffix ".com" can be disregarded when assessing the degree of similarity between a disputed domain name and a complainant's trade mark.

The Complainant has established that it is the owner of extensive trade mark rights in the words "BHP BILLITON". So far as similarity is concerned, the disputed domain name comprises the BHP BILLITON trade mark, save that a letter "l" has been omitted from "BILLITON" and an "i" inserted after the "t". These changes do not create a word which is aurally, visually or conceptually different to the Complainant's trade mark and accordingly the disputed domain name remains confusingly similar to it. This view is reflected in the decisions of previous panels which have held that a domain name containing an obvious or deliberate misspelling of a trade mark, the form of which does not affect the inherent distinctiveness of the trade mark, will be found to be confusingly similar to it (see for example, Humana Inc. v. Cayman Trademark Trust, WIPO Case No. D2006-0073).

Accordingly, the Panel finds that the disputed domain name is confusingly similar to a trade mark in which the Complainant has rights.

B. Rights or Legitimate Interests

The Policy sets out at paragraph 4(c) examples of circumstances, without limitation, by which a respondent may demonstrate rights or legitimate interests in a disputed domain name, namely that:

(i) before any notice of the dispute, it can show use of, or demonstrable preparations to use, the domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; or

(ii) it can show that (as an individual, business, or other organisation) it has been commonly known by the domain name, even if no trade mark or service mark rights have been acquired; or

(iii) it can demonstrate a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.

The Respondent has failed to respond to this Complaint and has thereby declined to take the opportunities available to it to provide any evidence which might suggest that it has a right or legitimate interest in the disputed domain name whether on these specific grounds or on any other basis.

The only known use made of the disputed domain name by the Respondent appears to be to divert Internet users to a third party website unconnected with the BHP Billiton Group. At the time the Complaint was filed by the Complainant, the disputed domain name resolved to a website offering products and services relating to babies and young children. Irrespective of the Respondent's motive in redirecting Internet users to this website, such use cannot bring the Respondent within any of the examples of rights or legitimate interests set out at paragraph 4(c) of the Policy nor is there anything to suggest that any analogous rights might arise. The Panel accordingly finds that the Respondent has no rights or legitimate interests in the disputed domain name.

C. Registered and Used in Bad Faith

It is unclear whether the Respondent was the registrant of the disputed domain name as at the date of its first registration in December 2005. That date precedes the dates of registration of the trade marks referred to above but it post-dates the registration by the Complainant of its domain name <bhpbilliton.com> in November 2001. The distinctive nature of the Complainant's trading style is such that, in the absence of any evidence to the contrary from the Respondent, the Panel finds that, on a balance of probabilities, the Respondent was aware of the Complainant's brand as at the time it registered the disputed domain name. For the same reasoning as was applied in The Nasdaq Stock Market v. Act One Internet Solutions, WIPO Case No. D2003-0103 the Panel finds that the disputed domain name was registered in bad faith.

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

None of these specific grounds are precisely applicable to the current facts. In particular, it is unclear whether the Respondent is deriving per-pay-click or other income from the website to which the disputed domain name pointed as the time the Complaint was filed, although it seems likely. If so the circumstances of registration will fall within paragraph 4(b)(iv) of the Policy which provides that bad faith registration and use is found when a 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 a respondent's website or location.

In any event, the specific examples of bad faith registration and use are "without limitation". The Respondent has registered a domain name comprising a misspelling of a very well known trade mark which is both inherently distinctive and without any other meaning than as a trade mark of the Complainant. It has not provided any evidence of actual or contemplated good faith use. There is no known or justifiable good faith reason why the Respondent would acquire the disputed domain name in order to point it to an unconnected third party website. In all the circumstances, the Panel finds that the disputed domain name was registered and used in bad faith.

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 <bhpbilition.com> be transferred to the Complainant.

Antony Gold
Sole Panelist
Date: April 21, 2016