WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
BHP Billiton Innovation Pty Ltd. v. OS Domain Holdings IV LLC
Case No. D2008-0488
1. The Parties
The Complainant is BHP Billiton Innovation Pty Ltd., Melbourne, Victoria, Australia, represented by Griffith Hack Patent and Trade Mark Attorneys, Australia.
The Respondent is OS Domain Holdings IV LLC, c/o Oversee Domain Management LLC, Los Angeles, California, United States of America, represented by Willenken Wilson Loh & Lieb, LLP, United States of America.
2. The Domain Name and Registrar
The disputed domain name is registered with NameK.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 31, 2008. On March 31, 2008, the Center transmitted by email to NameK a request for registrar verification in connection with the domain name at issue. On the same date, NameK transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), 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 7, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was April 27, 2008. The Response was filed with the Center on April 26, 2008.
The Center appointed David Perkins as the sole panelist in this matter on May 9, 2008. 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. Preliminary Panel Decision
4.1 In its Response, the Respondent requested that the disputed domain name be transferred to the Complainant “without further findings of fact, including those related to the elements set forth in paragraph 4(a) UDRP Policy”.
4.2 Following a suspension of this administrative proceeding pending the outcome of negotiations between the parties – which negotiations did not result in settlement of this dispute – the Complainant requested leave to file a Supplementary Submission. The Respondent objected.
4.3 In a Preliminary Decision dated May 20, 2008 the Panel;
(1) admitted the Complainant’s Supplementary Submission of May 1, 2008 and the Respondent’s Response of May 5, 2008; and
(2) provided the Respondent 14 days within which, should it so wish, to file a Supplementary Response to the substance of the Complaint.
4.4 The Respondent duly filed a Supplementary Response on June 4, 2008. In that Response the Respondent stated that it continues to consent to transfer of the disputed domain name to the Complainant but requests the Panel not to make a bad faith finding against the Respondent under paragraph 4(a)(iii) of the Policy.
4.5 The date by which the Panel was required to forward its decision to the Center was extended to June 18, 2008. This Decision is made in respect of the Complaint, the Response and the said Supplementary Response.
5. Factual Background
5.A The Complainant
5.A.1 The Complainant is the entity within the BHP Billiton Group which holds certain of the Group’s intellectual property.
5.A.2 The Complainant says that the BHP Billiton Group is the world’s largest diversified resources Group. It employs approximately 37,000 people in more than 100 operations in 25 countries.
5.A.3 BHP Billiton was created through the merger on June 29, 2001 of BHP Limited and Billiton Plc. The Company is headquartered in Melbourne, Australia with a major office in London and supporting offices throughout the world. It is a Dual Listed Company, listed on the Australian Stock Exchange and the London Stock Exchange. It also has a secondary listing on the Johannesburg Stock Exchange and an American Depositary Receipts listing on the New York Stock Exchange.
5.A.4 The Group is engaged in major commodity businesses, including aluminum, energy coal and metallurgical coal, copper, manganese, iron ore, uranium, nickel, silver and titanium materials. It also has substantial interests in oil, gas, liquefied natural gas and diamonds.
5.A.5 The Group’s average annual turnover between 2001 and 2005 exceeded US$22 billion. In 2007 the Group generated turnover of US$47 billion. As at August 16, 2007 its market capitalisation was US$104.4 billion.
5.A.6 The Group’s activities in the United States – where the Respondent is located – include oil and gas exploration and production in the Gulf of Mexico. It is also a major supplier of energy coal to the US power market.
The BHP Billiton domain names
5.A.7 The Complainant is the registrant of numerous domain names incorporating the BHP Billiton corporate name and trademark. These include.
Domain Name
Date Registered
November 7, 2001
November 7, 2001
March 16, 2001
March 18, 2007
September 18, 2001
September 18, 2001
March 17, 2001
March 18, 2001
March 18, 2001
March 18, 2001
May 11, 2005
December 11, 2005
December 11, 2005
December 11, 2005
December 11, 2005
May 11, 2005
December 11, 2005
The Complainant’s registered trademarks
5.A.8 The Complainant asserts ownership of numerous trademarks worldwide for the marks BHP BILLITON, BHP and BILLITON. Annexed to the Complaint are the following registered trademarks
Country
Trademark Registration
Mark
Classes
Application and Registration Date
Germany
30118073
BHP BILLITON
1, 2, 4, 6-9, 11, 15, 17, 19, 21, 25 and 35 to 42
Filed Mark 19, 2001 Registered January 18, 2002
New Zealand
634,243-8: 634,250: 634, 252-256 and 634,263
BHP BILLITON
1, 2, 4, 7, 8, 11, 16, 21, 25 and 41
Filed March 19, 2001 Registered September 2001
New Zealand
634,249: 634,251: 634,258: 634,260 and 634,261
BHP BILLITON
9, 14, 36 and 39
Filed March 19, 2001 Registered July 8, 2002
United Kingdom
2,264,607
BHP BILLITON
1, 2, 4, 6-9, 11, 15, 17, 19, 21, 25 and 35 to 42
Filed March 19, 2001 Registered August 20, 2002
United States
1,482,969
BHP
4
Filed April 9, 1984 Registered April 5, 1988
United States
1,527,768
BILLITON
6
Filed April 3, 1987 Registered March 7, 1989
5.A.9 In addition, the Group is the registered proprietor of the following Community Trade Marks for BHP
Country
Trademark Registration
Mark
Classes
Application and Registration Date
European Economic Community
002037562
BHP
14 & 37
Filed January 11, 2001 Registered October 18, 2002
European Economic Community
001848167
BHP VILLAGE
38
Field September 11, 2000 Registered January 24, 2002
European Economic Community
001322312
BHP
35, 36 & 38
Filed September 24, 1999 Registered November 7, 2000
European Economic Community
000056747
BHP
4,. 6, 39 & 42
Filed April 1, 1996 Registered August 19, 19978
5.B. The Respondent
5.B.1 The Respondent, a Californian limited liability company, owns a portfolio of domain names. The Respondent is managed by Oversee Domain Management LLC [Oversee], which is a subsidiary of O the General Manager of Os’ Declaration is annexed to the Supplementary Response.
5.B.2 The General Manager describes that O
“seeks to register domain names consisting of generic and descriptive words that Internet users might seek through direct navigation (i.e. typing the terms directly into the address bar of their web browser and adding a gTLD such as “.com” at the end). For example, one such domain might be .”
5.B.3 The disputed domain name was created by the Respondent on November 11, 2004. The General Manager explains that domain names registered by the Respondent are based on an automated process which automatically suggests the registration of particular domain names based on Internet data. Consequently, if Internet data suggests that users are searching for the phrase “graphite tennis rackets”, the Respondent’s automated process would attempt to register .
5.B.4 The General Manager explains that at the time when the disputed domain name was registered [November 2004], the automated system would simply have registered the domain name. That procedure has, however, now changed. First, two different people review the domain name registered by the automated process to ensure, to the best of their ability, that it does not violate the intellectual property rights of a third party. Second, since about July 2005 various automated filters have been used, which filters are designed to prevent the registration of domain names that might violate third party trademarks. The General Manager cites as an example, a typographical mistake such as would be filtered out.
5.B.5 In addition to those two checks, the Respondent has always followed a procedure whereby within 5 days from the date of registration, a domain name created by the automated process is manually reviewed for “potential intellectual property problems an for projected profitability”. Accordingly, such a manual review of the disputed domain name was carried out between November 11 and November 16, 2004.
5.B.6 Furthermore, between March 15 and May 31, 2007, O implemented a two tier review of all domain names owned by all its companies, including the Respondent. The first tier involved review by a team of outside consultants – independent of O and the Respondent – comprising graduates from US Law Schools. Domain names considered to be “potentially problematic” were forwarded to O’s Legal Department.
5.B.7 Domain names that were not considered to be “potentially problematic” were re-reviewed by a team of internal employees of O, including the General Manager who is “an experienced California attorney”.
5.B.8 Since the disputed domain name remains in the Respondent’s portfolio after May 30, 2007 it follows that none of those who carried out the review process considered that it violated any third party rights. The General Manager says that 4 different individuals examined the disputed domain name on March 26 and 28, 2007 and came to that judgment.
5.B.9 The General Manager also explains that O is a founding member of the Internet Commerce Association [ICA] and adheres to the ICA’s Code of Conduct. The ICA was founded in 2006 and describes itself as a non-profit domain name industry organisation representing individuals and companies that own, buy, sell, resell, host and manage Internet traffic which comes from search engines, domain names and Internet links. The ICA’s Code of Conduct prohibits members from intentionally or in bad faith registering or using a domain name that is identical or confusingly similar to a trademark or service mark.
5.B.10 O also operates its own process designed to resolve expeditiously concerns of third parties that a domain name registered by an O company violates the rights of such third parties. Exhibited to the Supplementary Response is an extract from the website of O entitled “Domain Management”. This includes the following:
“Domain name inquiries
If you have an intellectual property question or concern about any name registered by an O company, please use our online Domain Inquiry Form. You’ll receive an automated email concerning your Inquiry Ticket number. And within one business day, you’ll get a response from our Customer Service Professionals”
6. Parties’ Contentions
6.A Complainant
6.A.1 Identical or Confusingly Similar
6.A.1.1 The Complainant asserts that the BHP BILLITON trademark is both highly distinctive and is one of the world’s most well known brands in the resources industry. Addition of the prefix “jobs” is not sufficiently adequate to distinguish the disputed domain name from the well known BHP BILLITON trademark.
6.A.1.2 The Complainant cites a number of decisions under the Policy where the addition of generic words to distinctive trademarks has been held to be confusingly similar to such trademarks. They are:
Google Inc v. Xtraplus Corp,WIPO Case No. D2001-0125 – where the disputed domain names used the words “googlegear” and “googlebuy”.
Telstra Corporation Limited v. Ozuris,WIPO Case No. D2001-0046 – where the 15 disputed domain names all included the well-known TELSTRA trademark. For example, ; ; ; >
Telstra Corporation Limited v. Peter Lombardo et al,WIPO Case No. D2000-1511 – where the 8 disputed domain names again included the well-known TELSTRA trademark. For example, and .
Credit Lyonnais v. Jehovah Technologies Pte Ltd,WIPO Case No. D2000-1425 – where the disputed domain name was .
Nintendo of America Inc v. Gray West International, WIPO Case No. D2000-1219 – where the disputed domain name was .
6.A.1.4 Similarly, in this case the Complainant submits that consumers are highly likely to expect an association between the disputed domain name and BHP BILLITON
6.A.2 Rights or Legitimate Interests
6.A.2.1 The Complainant states that the Respondent has not been licensed or otherwise authorized to use any of the BHP BILLITON, BHP or BILLITON trademarks.
6.A.2.2 The Complainant states that, self evidently, the Respondent cannot bring itself within paragraph 4(c)(ii) of the Policy.
6.A.2.3 Nor, the Complainant says, is the Respondent using the disputed domain name in connection with a bona fide offering of goods or services. The website to which the domain name resolves provides sponsored links for, inter alia, mining. For example:
“� Mining Dump Truck Jobs
Begin work as a high paid dump truck driver in the Australian mines.
� Get a Mining Job in Australia
Find out how to get a good job in the gold mines without a trade.
� New Mining Jobs – Australia
Find 70,000+ jobs in Australia. Post your resume & search for free.”
6.A.2.4 BHP Billiton has extensive mining activities in Australia and this use of the disputed domain name is, the Complainant says, clearly intended to mislead consumers by creating the impressions that the domain name is authorised by BHP Billiton. The Complainant also suggests that it believes the Respondent is thereby attempting to generate an offer from BHP Billiton to purchase the domain name.
6.A.2.5 In the circumstances, the Complainant’s case is that the Respondent cannot demonstrate that any of the circumstances set out in paragraph 4(c) of the Policy apply on the facts of this dispute and that, accordingly, the Respondent cannot show rights or legitimate interests in respect of the disputed domain name.
6.A.3 Registered and Used in Bad Faith
6.A.3.1 The Complainant’s case is that the Respondent has registered the disputed domain name primarily for the purpose of disrupting the business of BHP Billiton; paragraph 4(b)(iii) of the Policy. In that respect, the Complainant points to the Respondent’s website which the Complainant says is aimed to divert Internet traffic intended for BHP Billiton to the Respondent’s website containing sponsored links. Such conduct is disruptive of the trademark owner’s business and was held to amount to bad faith registration and use in Expedia Inc v. European Travel Network,WIPO Case No. D2000-0137.
6.A.3.2 In that case the complainant’s trademark was expedia and the disputed domain name was . The complainant provided online travel agency services under the EXPEDIA mark and during a particular period in 1999 was one of the top ten visited e-commerce sites. The disputed domain name linked to a website at ETN.NL, an online travel service website which competed with the complainant. The panel held that the respondent had registered the disputed domain name
“… with the primary purpose of diverting potential customers of Complainant to the Respondent’s website, and thus disrupting the business of a competitor, the Complainant.”
6.A.3.3 Additionally, since doubtless the Respondent derives revenue from the sponsored links, the Complainant asserts that the Respondent is using the disputed domain name to attract for commercial gain, Internet users to the Respondent’s website, by creating a likelihood of confusion with the BHP BILLITON mark; paragraph 4(b)(iv) of the Policy.
6.A.3.4 When registering the disputed domain name in November 2004 the Complainant asserts that it is inconceivable that the Respondent was not aware of BHP Billiton, given its size, geographical reach and the reputation acquired in the BHP BILLITON mark. Further and in any event, where a trademark is well known, as the Complainant says, its BHP BILLITON mark is, bad faith registration may be inferred. In that respect, the Complainant cites The Nasdaq Stock Market v. NSDAQ.COM & Others –WIPO Case No. D2001-1492. In that case, the complainant was the proprietor of the well known NASDAQ trademark and the disputed domain names were ; and . The panel found that the NASDAQ trademark was inherently distinctive and without any meaning other than as a trademark of the complainant. Finding for the complainant, the Panel went on to state:
“The Internet and financial communities would be seriously confused if mistyping “” would lead to the MegaGo website. In short, it is clearly bad faith to register three domain names that are all clearly misspellings of a world famous trademark.”
6.A.3.5 In the circumstances, the Complainant asserts that the disputed domain name was registered and is being used in bad faith.
6.B Respondent
6.B.1 Complainant’s rights in the BHP BILLITON trademark
6.B.1.1 While, as stated in its initial Response and in its Supplemental Response, the Respondent is willing to transfer the disputed domain name to the Complainant, the Respondent resists any finding of bad faith registration under paragraph 4(a)(iii) of the Policy.
6.B.1.2 In that respect, the Respondent challenges the Complainant’s assertion that BHP BILLITON is a well known mark. First, it points to the fact that the BHP BILLITON trademark registrations relied upon in the Complaint are registered only in Germany, New Zealand and the United Kingdom.
6.A.1.3 Second, the Respondent points to the Complainant’s US trademark application for BHP BILLITON in Classes 1, 2, 4, 6-9, 11, 14, 16-17, 19, 21, 25 and 35-42 [US App. 76226056] which was filed on March 19, 2001 but abandoned on December 24, 2001.
6.A.1.4 Third, the Respondent points to the Complainant’s presently pending US trademark application No. 76675435 for BHP BILLITON in Classes 4, 6, 37, 40 and 42 which was filed on April 12, 2007 and claims priority from October 18, 2006. That, the Respondent says, is the date of first use of the BHP BILLITON trademark in the US, some 2 years after the Respondent registered the disputed domain name.
6.B.1.5. Consequently, the Respondent says that BHP BILLITON is not a commonly known company or trademark in the US, a factor which is relevant to the assessment to the Respondent’s case that it did not know of that mark in November 2004 when the disputed domain name was registered, nor can knowledge of that mark be imputed to the Respondent. This is because it is not in the category of well-known marks such as COCA-COLA or KODAK.
6.B.2 Registered in Bad Faith
6.B.2.1 As stated, the Respondent requests the Panel to find that the disputed domain name was not registered in bad faith. This is based on three propositions.
6.B.2.2 Proposition (1): The Complainant cannot show bad faith because the Respondent did not knowingly target Complainant or its mark.
6.B.2.3 This proposition relies on decisions under the Policy where the panel has followed the analysis propounded by a three member panel in Ancien Restaurant Chartier v. T Co,WIPO Case No. D2008-0272.
“It is in general essential to a finding of bad faith registration and use under the Policy, that a Respondent must have targeted the Complainant or its trademark, or at least had the Complainant in mind, when it registered the disputed domain name.”
6.B.2.4 That analysis referred to three earlier decisions, where the panel took a similar approach. They are Builder’s Best, Inc v. Yoshiki Okada –WIPO Case No. D2004-0748, where the panel said
“In this Panel’s view, however, to warrant a finding of bad faith under the Policy, in general, there must be some evidence of knowledge that the Respondent knew the domain name was identical or similar to the Complainant’s mark, not just ‘someone’s mark”.
Emilio Pucci SRL v. M, Inc.,WIPO Case No. D2000-1786 - where a strong three member panel said:
“Here there is no evidence that the Respondent had the Complainant in mind when registering the Domain Name. “Pucci” was just one of many thousands of surnames registered as domain names by the Respondent.”
The Perfect Potion v. Domain Administrator,WIPO Case No. D2004-0743 – where the Chairman of the Panel in the Emilio Pucci case, as sole panelist in this case, said:
“… the Panel’s basic view is that for a bad faith allegation to succeed under paragraph 4(a)(iii) of the Policy there has to be a bad faith intent on the part of the Respondent directed at the Complainant or its trademark.”
In that case, the panel found that the respondent registered the disputed domain name without any knowledge of the existence of the complainant or if its trademark. The Complaint was duly rejected.
6.B.2.5 Applying that approach to the facts of this case, where – as explained in paragraph 5.B above – the disputed domain name was registered as part of an automated process that creates domain names from Internet data, it is plain, the Respondent says, that it neither targeted BHP Billiton nor did it have the Complainant’s BHP BILLITON trademark in mind.
6.B.2.6 Still less – the Respondent says – can the Complainant show deliberate targeting by the Respondent or even that the Respondent had the Complainant in mind when it registered the disputed domain when one examines the post registration procedure implemented in this case by O. This is the manual review within 5 days of registration [paragraph 5.B.5 above] and the subsequent re-review on March 26 and 28, 2007 [paragraph 5.B.8 above].
6.B.3 Proposition (2): the Complainant cannot show bad faith because the Respondent makes reasonable good faith efforts to avoid the registration and use of infringing domain names.
6.B.3.1 Respondent acknowledges that as a professional domainer it cannot avoid a holding of bad faith registration by simply turning
“… a blind eye to the possibility that the names they are registering will infringe or violate the rights of trademark owners” [Grundfos A/S c. Texas International Property Associates,WIPO Case No. D2007-1448.”
6.B.3.2 That panel stated that the domainer must make “… good faith efforts to avoid registering and using domain names that are identical or confusingly similar to marks held by others”. In such circumstances, the panel said a registration of a domain name would most likely be regarded as legitimate.
6.B.3.3 Here the Respondent submits that it used “reasonable” good faith effort to avoid violating third party trademarks when registering the disputed domain name,. It is not, the Respondent submits, surprising that those reviewing the disputed domain name – on the three occasions explained in paragraph 5.B.5 and 5.B.8 above – did not consider it as potentially problematic. This is for three reasons.
6.B.3.4 First, at the time the disputed domain name was registered (November 2004) the BHP BILLITON mark had apparently not been used in the United States: see, paragraph 6.B.1.4 above. First use was not apparently made until some two years later, October 2006.
6.B.3.5 Second, because BHP Billiton as a Company or as a trademark was not well known, at least in the United States where the respondent is located and where the initial manual review in November 2005 took place. Although it might have been known to those in the field of diversified resources, it was certainly not in the category of generally known marks such as COCA-COLA or KODAK.
6.B.3.6. Third, at the time when the re-review took place on March 26 And 28, 2007, there was no registered or even pending US trademark application for BHP BILLITON. The presently pending application was not filed until April 2007: see, paragraph 6.B.1.4 above. Even if it had been filed before the March 2007 re-review, because an application gives no guarantee of registration, it was reasonable not to regard the disputed domain name as potentially problematic. The onus even of a domainer cannot reasonably – the Respondent says – extend to having to keep a daily watch on the USPTO website for registrations.
6.B.3.7 Also, the Respondent through O operates its “Domain Management” website (described in paragraph 5.B.10 above) and, as a consequence, is apparently for the most part able to resolve disputes of this type without the need to resort to proceedings under the Policy.
6.B.3.8 On the facts of this case, it is manifestly not in the same category as Mobile Communications Services, Inc v. WebReg, RN,WIPO Case No. D2005-1304.
“Where, in contrast, a Respondent registers large swaths of domain names for resale, often through automated programs that snap up domain names as they become available, with no attention whatsoever to whether they may be identical to trademarks, such practices may well support a finding that Respondent is engaged in a pattern of conduct that deprives trademark owners of the ability to register domain names reflecting their marks.”
or, as the Grundfos case
“In this case, the Panel has already noted that the Domain Name can hardly be regarded as a “dictionary word” and it is questionable whether in fact it could be characterized as a “generic or descriptive phrase” at all. In those circumstances, the Panel believes that an experienced professional Internet operator such as the Respondent was obliged to make some level of “good faith efforts to avoid registering and using domain names that are identical to confusingly similar to marks held by others”.”
Nor is this a case where the Respondent failed to describe what, if any, steps it took in good faith to avoid registering, using and selling domain names that correspond to third party trademarks [Media General Communications, Inc v. Rarenames, WebReg,WIPO Case No. D2006-0964]
6.B.3.9 On the contrary, the review and subsequent re-reviews conducted by the Respondent in this case, coupled with its voluntary dispute resolution policy, constitute “reasonable good faith efforts” to avoid registering and maintaining domain names that infringe third party trademarks. Consequently, according to the good faith standard set out in cases decided under the Policy, the Respondent in this case cannot be found to have registered the disputed domain name in bad faith.
6.B.4 Proposition (3): The Complainant cannot show bad faith under paragraph 4(b)(iii) of the Policy
6.B.4.1 The Respondent refers to the Expedia case relied upon by the Complainant – see, paragraph 6.A.3.1 above – where the Respondent was a “competitor” of the trademark owner in the provision of travel agency services online. The Complainant’s activities are in the exploration of natural resources whereas the Respondent registers domain names that Internet users might seek through direct navigation – see, paragraphs 5.B.2 and 3 above. They cannot, the Respondent says, be regarded as competitors.
6.B.4.2 Further, the primary purpose of the Respondent’s registration of the disputed domain name was to populate it with Pay-per-Click advertisements. It was not to disrupt BHP Billiton’s business. In fact, the Respondent is not equipped to compete with the Complainant. For example, if a hypothetical customer looking for aluminum from one of BHP Billion’s production sites contacted the Respondent through the website to which the disputed domain name resolves, the Respondent could not supply that person.
6.B.5 The Respondent criticizes the Complainant for unnecessarily invoking this Complaint under the Policy when, instead of using the O dispute resolution policy and accepting the offer to transfer the disputed domain name, the Respondent has persisted with the Complaint knowing that the Policy provides neither of the additional remedies demanded – see, paragraph 4.7.1 of the Preliminary Panel Decision.
6.B.6 This is not, the Respondent says, a case where the registrant of the disputed domain name has willfully turned a blind eye to the existence of third party trademark rights or has failed to make reasonable food faith efforts to avoid infringement of such rights. In short, the disputed domain name was registered in good faith and no finding to the contrary should be made.
7. Discussion and Findings
7.1 The Policy paragraph 4(a) provides that the Complainant must prove each of the following in order to succeed in an administrative proceeding:
(i) that the Respondent’s domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) that the Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) that the domain name has been registered and is being used in bad faith.
7.2 The Policy paragraph 4(c) sets out circumstances which, in particular but without limitation, if found by the Panel to be proved shall demonstrate the Respondent’s rights or legitimate interest in the domain name in issue.
7.3 The Policy paragraph 4(b) sets out circumstances which, again in particular but without limitation, if found the Panel to be present shall be evidence of the registration and use of a domain name in bad faith.
7.4 As stated, the circumstances set out in paragraph 4(b) and 4(c) of the Policy are not exclusionary. They are without limitation. That is, the Policy expressly recognizes that other circumstances can be evidence relevant the requirements of paragraphs 4(a)(ii) and (iii) of the Policy.
7.5 Identical or Confusingly Similar
7.5.1 The Respondent does not, as stated, seek to resist transfer to the Complainant of the disputed domain name. However, in the context of its denial of registration of that domain name in bad faith, the Respondent appears to suggest that, to the extent the Complainant has trademark rights in the BHP BILLITON mark, such rights are in someway rather weak. This impacts on the Respondent’s case that there cannot be on the facts of this case be an inference that the Respondent knew or should have known of the existence of that mark when the disputed domain name was registered in November 2004. At the most, the Respondent concedes that BHP Billiton may have been well known to a limited class of persons, namely those involved in the field of diversified resources; see, paragraph 6.B.3.5 above.
7.5.2 Three factors should be considered here. First, although as at November 2004 the Complainant had no US registered trademark for BHP BILLITON, both of the former entities that formed the merged company in June 2001 had US trademark registrations, namely BHP dating from 1984 and BILLITON dating from 1987. The Complainant relies on those registrations in addition to the composite BHP BILLITON trademark – see, paragraph 6.A.1.2 above – and this will be referred to further below in relation to the issue of whether the disputed domain name was registered in bad faith.
7.5.3. Second, the Panel of its own volition looked to see what Community Trademarks the Complainant might be the proprietor of. There are three (3) CTM registrations of BHP, the earliest being registered in 1998 following an application filed in April 1996; see, paragraph 5.A.9 above.
7.5.4. Third, the Respondent makes no mention of the numerous BHP BILLITON domain names registered in the name of the Complainant dating from March 2001.
7.5.5. While the Respondent is correct to say that the BHP BILLITON – and, presumably, the BHP and BILLITON – trademarks are not in the category of COCA-COLA or KODAK in terms of recognition by the general public, it cannot be said that they are weak trademarks. Indeed, in international business the Panel takes the view that BHP Billiton is a very well known company and mark and was so at the date when the disputed domain name was registered in November 2004.
7.5.6. On this requirement of the Policy, the Panel finds that the Complainant has registered trademark rights in the marks BHP BILLITON, BHP and BILLITON. Addition of the prefix “jobs” to the combination of BHP and BILLITON and to the composite BHP BILLITON marks does not avoid confusing similarity. Accordingly, the Complaint satisfies the requirements of paragraph 4(a)(i) of the Policy.
7.6 Rights or Legitimate Interests
7.6.1. For the reasons explained above, the Respondent does not address this requirement of paragraph 4(a)(ii) of the Policy.
7.6.2 However, on the evidence – namely, the fact that the Complainant has not licensed or otherwise authorized the Respondent to use its trademarks, that the Respondent is not commonly known by the disputed domain name and the use to which the disputed domain name is being put – the Panel has no hesitation in finding that the Respondent would not be able to demonstrate any of the circumstances set out in paragraph 4(c) of the Policy.
7.6.3 Accordingly, the Complaint satisfies the requirement of paragraph 4(a)(ii) of the Policy.
7.7 Registered and Used in Bad Faith
7.7.1 The Respondent through the General Manage of O, has described the processes to which the disputed domain name has been subjected with a view to ensuring that it was not originally registered in violation of any third party trademark rights [paragraph 5.B.5 above] and that it has not been maintained and used in violation of such rights [paragraph 5.B.6 above].
7.7.2 However, the Respondent does not describe the nature of the manual review within five (5) days of registration. For example, was a trademark search made against the composite mark BHP BILLITON? If so, was that search restricted to the Register maintained by the USPTO? If it was, how can such a limited search be considered adequate having regard to the intended worldwide use of the disputed domain name and the business of the Respondent, namely that of a professional domainer? Furthermore, was any trademark search made in relation to the BHP and/or BILLITON trademarks. Still further, was any search made of top level domain names incorporating the BHP BILLITON mark?
7.7.3 Similarly, with regard to the re-review of the disputed domain name made on March 26 and 28, 2007 by graduates from US Law Schools, the same questions arise but no information is provided by the Respondent. Presumably, the manual reviews were made according to a set of criteria for judging “potentially problematic” domain names but the Supplemental Response is silent in that very material respect.
7.7.4 Where a Company such as the Respondent is in the business of registering domain names and is conscious of the need to not to infringe third party trademark rights – see, the ICA Code of Conduct to which the Respondent not only subscribes but was a founding member of the Association – it is not unreasonable to expect a rigorous “freedom to operate” review designed to alert it to such rights. Had such a review been carried out, then the Respondent would inevitably have become aware in November 2004 of the existence of the BHP and BILLITON trademark registrations in its own country of residence (the United States) but also of registrations of the composite BHP BILLITON mark in other countries. It would also have alerted the Respondent to the then existing numerous top level domain names incorporating the BHP BILLITON mark.
7.7.5 Additionally, the Respondent states in the Supplementary Response that O – which manages the business of the Respondent – “seeks to register domain names consisting of generic and descriptive words that Internet users might seek through direct navigation”; see, paragraph 5.B.2 above. None of BHP, BILLITON or BHP BILLITON can by any stretch of the imagination be classified as “generic” or “descriptive” words.
7.7.6 When all these factors are taken together, the vigorous assertion of good faith registration, lack of prior knowledge of the Complainant or its trademarks and of taking “reasonable” precautions to avoid infringement of third party trademark rights just does not ring true.
Respondent’s Proposition (1)
7.7.7. The Respondent cites a number of decisions under the Policy in relation to its three Propositions. As to the First Proposition, the Respondent cites decisions where panels have held that it is essential to a finding of bad faith registration and use under the Policy that the respondent must have targeted the Complainant or its trademarks, or at least had the complainant in mind when it registered the disputed domain name In effect, constructive notice of existing third party trademark rights is insufficient to indicate bad faith registration.
7.7.8 While there is no system of binding precedent under the Policy, clearly decisions of strong three member panels are to be accorded weight. However, decisions under the Policy are typically quite specific to the facts. For example, three of the Decisions cited by the Respondent relate to situations where the Respondent set out to register surnames and to offer them as subdomains for a personal or business email address. In the Emilio Pucci case, “Pucci” was just one of many thousands of surnames registered as domain names by the Respondent; see, paragraph 6.B.2.4 above. The Ancien Restaurant Chartier case is another surname case where some 5,000 people in the United States alone have the surname “Chartier”. In both cases bad faith registration was rejected. By contrast, in the Champagne Lanson case, the three member panel found that “Lanson” was not a very common surname. Indeed, they characterized the LANSON trademark as “famous and well known”. The Panel concluded that the facts supported an inference that the disputed domain name was registered for reasons other than the fact that it is a surname and held that it had been registered and was being used in bad faith.
7.7.9 Here we are not dealing with surname cases, nor are the facts in anyway comparable to the Builder’s Best case where the panel found no evidence that the complainant’s “NNN” stylized mark was known or used in the respondent’s country of residence, Republic of Korea.
7.7.10 On the present facts, the Complainant company is the world’s largest diversified resources Group. COCA-COLA, KODAK and LANSON are well-known consumer brands. BHP BILLITON is not a consumer brand. However, in terms of international corporations, BHP / BHP BILLITON is also well-known. Whatever the criteria used by O to review (in November 2004) and then re-review (in March 2007) the disputed domain name for potential conflict with third party trademarks, it was inadequate. It is not necessary to show that a Respondent has been “willfully blind” in order to establish bad faith registration, nor is it necessary to show that the Respondent specifically targeted BHP Billiton. Had appropriate “clearance / freedom to operate” procedures been implemented, the Panel cannot believe that those employed by O to carry out the manual checks could have failed to identify BHP, Billiton or BHP Billiton and their registered trademarks. In addition, to suggest that BHP or BHP BILLITON are generic or descriptive words is quite untenable.
Respondent’s Proposition (2)
7.7.11 As to the Second Proposition, the Panel in the Grundfos case did not proposed that “good faith efforts” are required by a domainer. The Respondent here has read that to mean that “reasonable” good faith efforts are required. That difference is not, however, of consequence here.
7.7.12. It may be that the filters that have been developed by O subsequent to registration of the disputed domain name would have alerted the Respondent to the existence of the Complainant’s rights in the BHP, BILLITON and BHP BILLITON trademarks. It may also be that the totality of the checks, filters and reviews currently employed by O are adequate to alert the Respondent to potential infringement of third party trademark generally. Those, however, are not the issues in this case.
7.7.13 The issue in this case is specific to the Complainant and its trademarks and the procedures which the General Manager says were followed. To have failed to alert the Respondent to the existence of the Complainant and its trademarks, in the Panel’s view those procedures were either inadequate or they were not adequately implemented. It is, quite simply, not credible to assert that in November 2004 the Respondent was not aware of the Complainant or that, by making reasonable good faith enquiries, the Respondent could have become aware of the Complainant where the Respondent is apparently a leader in the business of creating domain names and is plainly very aware (see, the ICA Code) of the need to be vigilant for third party rights. Additionally, BHP BILLITON is neither a generic nor a descriptive phrase.
7.7.14 Consequently, the Respondent on the specific facts of this case cannot avoid a finding of bad faith registration on the assertion that it took “reasonable” good faith efforts to avoid registration and use of a domain name confusingly similar to the Complainant’s trademarks.
Proposition (3)
7.7.14 The Panel agrees that the Complainant cannot be regarded as a “competitor” of the Respondent and, accordingly, the Complaint fails to establish bad faith registration under paragraph 4(b)(iii) of the Policy.
Conclusion on Bad Faith
7.7.15 However, failure to make out its case under that paragraph of the Policy is not fatal to the Complainant. The Panel has already found, for the reasons set out extensively above, that the Respondent cannot on the facts of this case avoid a finding that the disputed domain name was registered in bad faith.
7.7.16 As to use in bad faith, the Panel finds the circumstances of paragraph 4(b)(iv) of the Policy present in this case. This follows from the finding of no rights or legitimate interests in paragraph 7.6.2 above.
7.7.17 Accordingly, the Panel finds that the disputed domain name was registered and used in bad faith, so that the Complaint satisfies the two requirements of paragraph 4(a)(iii) of the Policy.
8. Decision
8.1. For all the forgoing reasons, in accordance with paragraphs 4(1) of the Policy and 15 of the Rules, the Panel orders that the domain name be transferred to the Complainant.
David Perkins
Sole Panelist
Dated: June 18, 2008
Full & Egal Universal Law Academy