WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

BHP Billiton Innovation Pty Ltd v. Zong Wang

Case No. D2017-0537

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 Zong Wang of Nanning, Guangxi, China.

2. The Domain Name and Registrar

The disputed domain name <bhpcn.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 March 16, 2017. On March 16, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 17, 2017, 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. On March 22, 2017, the Complainant submitted an amended Complaint regarding the use of the disputed domain name.

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 24, 2017. In accordance with the Rules, paragraph 5, the due date for Response was April 13, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 18, 2017.

The Center appointed Richard Tan as the sole panelist in this matter on April 24, 2017. 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, a company incorporated in Australia, is part of the BHP Billiton Group, a diversified resources group. The core of the BHP Billiton Group is a dual listed company comprising BHP Billiton Limited and BHP Billiton Plc, which operate as a combined group known as BHP Billiton. The Complainant is a wholly owned subsidiary of BHP Billiton Limited, holding some of BHP Billiton’s intellectual property. BHP Billiton’s market capitalization as at June 30, 2015, was USD 108 billion with revenue from continuing operations as USD 44.6 billion.

BHP Billiton is the owner of numerous trade mark registrations for the trade mark BHP around the world, including in China, Australia and the United States of America (“United States”). These registered trade marks include registered trade marks in Australia Nos. 398095 (registered on October 7, 1983) and 456429 (registered on October 7, 1983) in class 4, No. 730190 (registered on March 19, 1997) in classes 1, 2, 8, 9, 11, 14, 46, 17, 19, 25, 35, 36, 37, 38, 39, 41, 42 (amongst others); in China Nos. 638536 (registered on April 21, 1993) and 717841(registered on November 28, 1994) in class 6, No. 843825 (registered on May 28, 1996) in class 35, No.1317251 (registered on September 21, 1999) in class 37, No. 927928 (registered on January 7, 1997) in class 39, No. 923910 (registered on December 28, 1996) in class 42 and No. 939943 (registered on January 28, 1997) in class 40; and in the United States of America No. 3685364 (registered on September 22, 2009) in class 37 and No.1367145 (registered on October 22, 1985) in class 42. The earliest of these registrations appears to date back to December 9, 1931. In addition BHP Billiton controls numerous domain names containing the trade mark BHP, including the following domain names: <bhp.com>, <bhp.us>, <bhpbillitonchina.com>, <bhpbilliton-china.com>, <bhp.asia>, <bhp.info>, <bhp.biz>, <bhpbilliton.cn>, <bhpbillitonchina.cn>, <bhpbits.cn>, <bhpsteel.cn>, <bhpbchina.cn>, <bhpbilliton.com.cn>, <bhpbchina.com.cn> and <bhpbillitonchina.cn>.

The disputed domain name <bhpcn.com> was registered on January 18, 2017. At the time of filing the Complaint, the disputed domain name resolved to an inactive website. At the time of filing the amended Complaint, the disputed domain name resolved to a website purporting to be an official website of the Complaint.

5. Parties’ Contentions

A. Complainant

The Complainant contends that the disputed domain name is confusingly similar to BHP Billiton’s trade mark BHP which has over the years become the world’s most well-known brand in diversified resources and the mining of such resources. The addition of the letters “cn” in the disputed domain name does not distinguish the disputed domain name from the BHP trade mark, as the letters “cn” are a common abbreviation for “China”.

The Complainant contends that the Respondent who is located in China has no rights or legitimate interests in the disputed domain name. The Respondent has not at any time been commonly known by the disputed domain name nor are there any trade marks in which the Respondent may have rights that are identical or similar to the disputed domain name. The Complainant contends that the Respondent is not making a legitimate noncommercial or fair use of the disputed domain name.

The Complainant contends that the disputed domain name was registered and is being used in bad faith. It contends that bad faith registration may be inferred from the registration of a well-known trade mark. Further, the Respondent’s registration of a domain name that is confusingly similar to BHP Billiton’s well-known BHP trade mark indicates that the disputed domain name was registered in bad faith. The Complainant asserted in its amended Complaint that the disputed domain name resolved to an active website. (At the time of the original Complaint, this did not appear to be the case.) BHP Billiton first became aware of the disputed domain name in February 2017, when a fake social media account was located on the Chinese social media platform WeChat. The WeChat account was listed under the name “BHP Billiton & China” in Chinese characters. Enquiries by BHP Billiton staff indicated that the account was part of an investment scam. The WeChat account stated that the official website associated with the account was located at “www.bhpcn.com”. The Complainant states it understands that the WeChat account has been disabled. On March 22, 2017, the Complaint became aware that the disputed domain name was now resolving to an active website. The Complainant further asserts that it become aware that a subdomain <vip.bhpcn.com> resolved to a website purporting to be an official BHP Billiton login page for Internet users who may have visited the website located at the disputed domain name address and by listing the disputed domain name in close proximately with BHP Billiton’s official website address and telephone and fax numbers, the Respondent is clearly seeking to create an association between the disputed domain name and BHP Billiton. The Complainant says that it suspects that the Respondent is engaging in an elaborate attempt at fraud which would constitute bad faith registration and use of the disputed domain name. Further, by using the disputed domain name, the Respondent has intentionally attempted to attract Internet users to an online location by creating a likelihood of confusion with the Complainant’s BHP trade mark as to the source, sponsorship, affiliation or endorsement of the Respondent’s website and social media accounts and possible fraudulent investment schemes.

B. Respondent

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

6. Discussion and Findings

The Complainant has the burden of proving each of the following three elements under paragraph 4(a) of the Policy in order to be entitled to a transfer of the disputed domain name:

(i) the disputed domain name is identical or confusingly similar to a trade mark 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.

A. Identical or Confusingly Similar

Based on the evidence adduced by the Complainant as noted above, the Panel has no hesitation in finding that the Complainant has rights in the BHP trade marks which have been registered around the world and have been in long use.

The threshold test for confusing similarity under the Policy involves a comparison between the relevant marks belonging to the Complainant and the disputed domain name to ascertain the presence of the trade mark in the disputed domain name. In order to satisfy this test, the relevant marks would generally need to be recognizable as such within the disputed domain name, with the addition of merely descriptive, common or geographical wording typically being regarded as insufficient to prevent a finding of confusing similarity.

The disputed domain name incorporates the Complainant’s BHP trade mark in its entirety. The mere inclusion of “cn”, which is a common abbreviation of “China”, in the disputed domain name is insufficient to prevent a finding of confusing similarity. The disputed domain name incorporates a mark clearly recognizable as such within the disputed domain name and which is the dominant component.

This Panel accordingly finds that the disputed domain name is confusingly similar to marks in which the Complainant has rights, for the purpose of paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

As several UDRP panels have found, a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests in the domain name and once such a prima facie case is made, the respondent carries the burden of production in order to evidence its rights or legitimate interests in the domain name. If the respondent fails to do so, a complainant may be deemed to have satisfied paragraph 4(a)(ii) of the Policy.

The Respondent has not submitted a response to the Complainant’s assertions mentioned above. This Panel is satisfied on the totality of the evidence before the Panel that the Respondent’s use of the disputed domain name is not in connection with a bona fide offering of goods or services. The Respondent has not been authorized or licensed by the Complainant to use its trade marks. Nor is there any evidence that the Respondent has been commonly known by the disputed domain name or any similar name. Neither is there evidence that the Respondent has been making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark of the Complainant. As discussed in more detail below, the use of the disputed domain name in connection with a website that creates a misleading impression of association with the Complainant does not give rise to any rights or legitimate interests in the disputed domain name on the part of the Respondent.

In all the circumstances, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name and that accordingly, paragraph 4(a)(ii) of the Policy has been satisfied.

C. Registered and Used in Bad Faith

Paragraph 4(a)(iii) of the Policy provides that a complainant must, in addition to the matters set out above, demonstrate that the relevant disputed domain name has been registered and is being used in bad faith.

The undisputed evidence establishes that the Respondent is not affiliated with the Complainant and has no license or other authorization to use the Complainant’s marks.

As contended by the Complainant, bad faith registration may be inferred from the registration of a well-known trade mark: Zwack Unicum Rt. v. Erica J. Duna, WIPO Case No. D2000-0037, and The Nasdaq Stock Market v. Act One Internet Solutions, WIPO Case No. D2001-1492. The Complainant has established that it has a worldwide reputation in the BHP trade mark. It may be inferred from the registration of the trade marks, particularly in China where the Respondent is located, and in other parts of the world long before the registration of the disputed domain name that the Respondent was obviously aware of the Complainant’s reputation in the trade marks and sought to take advantage of that reputation by attracting for commercial gain Internet users to the website of the Respondent by creating a likelihood of confusion with the Complainant’s mark through the registration and use of the disputed domain name.

Further, the Respondent’s website resolved to an active website which had a connection with a website purporting to be an official BHP Billiton login page for Internet users who may have visited the website located at the disputed domain name and which listed the disputed domain name in close proximately with BHP Billiton’s official website address and telephone and fax numbers. It may be inferred from this that the Respondent’s aim was to intentionally create an association between the disputed domain name and BHP Billiton where no such association existed. This is evidence of bad faith registration and use of the disputed domain name.

The Complainant has further asserted that the Respondent was also engaging in an attempt at fraud as part of an investment scam. While there was no clear evidence to show what the fraud or investment scam was, the Respondent has not filed a response to refute this allegation. It is unnecessary however for the Panel to make a finding on whether the Respondent’s use of the disputed domain name was an attempt to perpetrate fraud as the Panel is satisfied that in all the circumstances, the Respondent’s use of the disputed domain name must have been intended to attract for commercial gain Internet users to the website by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the website, which is sufficient to warrant a finding of bad faith registration and use.

Accordingly, this Panel concludes and finds that the disputed domain name was registered and is being used in bad faith within the meaning of 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 <bhpcn.com> be transferred to the Complainant.

Richard Tan
Sole Panelist
Date: May 6, 2017