WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION BHP Billiton Innovation Pty Ltd, BMA Alliance Coal Operations Pty Ltd v. Cameron Jackson Case No. D2008-1338 1. The Parties
The Complainants are BHP Billiton Innovation Pty Ltd, and BMA Alliance Coal Operations Pty Ltd of Australia, represented by Griffith Hack Patent and Trade Mark Attorneys, Australia.
The Respondent is Cameron Jackson of Australia. 2. The Domain Names and Registrar
The disputed domain names
(the “Disputed Domain Names”) are registered with Directi Internet Solutions d/b/a PublicDomainRegistry.Com and Registrar Company, Inc., respectively. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 2, 2008. On September 2, 2008 and September 9, 2008, the Center transmitted by email to Directi Internet Solutions d/b/a PublicDomainRegistry.Com and Registrar Company, Inc. a request for registrar verification in connection with the Disputed Domain Names. On September 3, 2008 and September 10, 2008, Directi Internet Solutions d/b/a PublicDomainRegistry.Com transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for all of the Disputed Domain Names, and confirming that the information they had provided was accurate and sent also on behalf of the sponsoring registrar (Registrar Company, Inc). The Center verified that the 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 September 25, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was October 15, 2008. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on October 17, 2008.
The Center appointed Alistair Payne as the sole panelist in this matter on November 10, 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. Factual Background
The Complainants are BHP Billiton Innovation Pty Ltd and BMA Alliance Coal Operations Pty Ltd. The BHP Billiton Group is the world's largest diversified resources group. The Complainants are the owners of numerous trade marks worldwide for the marks BHP, TEMCO, EKATI, AURIAS and BMA.
The Respondent is Cameron Jackson. 5. Parties' Contentions A. Complainants
The Complainants assert that the Disputed Domain Names are confusingly similar to their registered trade marks. They claim that the addition of generic words is insufficient to distance the Disputed Domain Names from their marks.
The Complainants argue that the Respondent does not have any rights or legitimate interests in the Disputed Domain Names. The Complainants state that they have not agreed or consented to the Respondent's use or registration of the Disputed Domain Names. In addition the Complainants claim that the Respondent is not commonly known by the Disputed Domain Names.
The Complainants argue that the Respondent registered the Disputed Domain Names primarily for the purpose of selling them to the Complainants. The Complainants also assert that the Respondent registered the Disputed Domain Names in order to prevent the Complainants from reflecting their trade marks in corresponding domain names and that the Respondent has engaged in a pattern of such conduct. Finally the Complainants submit that the Respondent is merely passively holding the Disputed Domain Names which is evidence of the Respondent's bad faith. B. Respondent
The Respondent did not reply to the Complainants' contentions. 6. Discussion and Findings A. UDRP Elements
The Respondent has not filed a Response to the Complaint. Pursuant to paragraph 14(a) of the Rules, the Panel will proceed to a decision on the Complaint in the absence of a Response from the Respondent.
Notwithstanding the fact that the Respondent has not filed a Response to the Complaint, it is still necessary for the Complainants, if they are to succeed in this administrative proceeding, to prove each of the three elements referred to in paragraph 4(a) of the Policy, namely that:
(i) the Disputed Domain Names are identical or confusingly similar to a trade mark or service mark in which the Complainants have rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the Disputed Domain Names; and
(iii) the Disputed Domain Names have been registered and are being used in bad faith.
The Panel will proceed to establish whether the Complainants have discharged the burden of proof in respect of each of the three elements referred to in paragraph 4(a) of the Policy. The Panel also notes that pursuant to paragraph 14(b) of the Rules, the Panel may draw such inferences as it considers appropriate in the absence of a Response from the Respondent. B. Identical or Confusingly Similar
The Complainant BHP Billiton Innovation Pty Ltd has shown in evidence that it is the proprietor of the registered trade marks BHP, TEMCO, EKATI, EKATI DIAMONDS and AURIAS. The Complainant BMA Alliance Coal Operations Pty Ltd has shown in evidence that it is the proprietor of the registered trade mark BMA.
The Disputed Domain Names are not identical to the Complainants' marks. However, the Disputed Domain Names are all formed by adding a generic term to the Complainants' marks.
In numerous cases, it has been held that a domain name that wholly incorporates a complainant's registered mark may be sufficient to establish confusing similarity for purposes of the UDRP: Dr. Ing. h.c. F. Porsche AG v Vasiliy Terkin, WIPO Case No. D2003-0888.
The panel in Diageo Brands B.V., Diageo North America, Inc. and United Distillers Manufacturing, Inc. v. iV a.k.a. Alec Bargman,WIPO Case No. D2004-0627 held that:
“adding a word such as ‘vodka,' that is descriptive of the goods offered by Complainants under its Marks, does not distinguish the Domain Names from the Marks namely GORDON's and GIBLEY's but rather supports a finding of confusing similarity.”
The panel in PepsiCo, Inc. v. PEPSI, SRL (a/k/a P.E.P.S.I.) and EMS COMPUTER INDUSTRY (a/k/a EMS),WIPO Case No. D2003-0696 held that the mere addition of common terms such as “sports”, “basketball”, “soccer”, “volleyball”, “rugby” and the like to the PEPSI mark, does not change the overall impression of the designations as being domain names connected to the complainant. See also National Association for Stock Car Auto Racing, Inc. v. David Crawford, Jr., WIPO Case No. D2001-1338 (The only distinctive part of all the disputed domain names is the complainant's NASCAR mark: the words “games, interactive and TV channel” are merely descriptive and in no case create a mark different from the complainant's); and Chanel, Inc. v. Estco Technology Group,WIPO Case No. D2000-0413 (“the addition of the generic terms store and fashion are not sufficient to avoid confusion” between the mark CHANEL and the domain names and ).
In this case the addition of the generic term “diamonds” is not sufficient to avoid confusion between the mark AURIAS and the domain name particularly as the word diamonds is descriptive of the goods provided by the Complainants under the mark AURIAS. Similarly the addition of the generic words “alloys” and “coal” to the marks TEMCO and BMA is not sufficient to avoid confusion as these words are descriptive of the goods provided by the Complainants under the marks in question.
The addition of the words “diamond mine” to the mark EKATI is merely descriptive and doesn't distinguish the Disputed Domain Name from the Complainants' mark, this finding is supported by the fact that the EKATI Diamond Mine is an important part of the Complainants' business. Also the addition of the generic words “limited” and “innovation” to the Complainants' mark BHP does not change the overall impression of the designations as being domain names connected to the Complainants.
Finally it is well established that the generic top level domain must be excluded from consideration as being a generic or functional component of the Domain Name: Belo Corp v. George Latimer,WIPO Case No. D2002-0329.
Therefore, in the Panel's view, the Disputed Domain Names are confusingly similar to the Complainants' marks for the purposes of paragraph 4(a)(i) of the Policy. C. Rights or Legitimate Interests
It is the Complainants' burden to prove that Respondent lacks rights or a legitimate interest. Document Technologies, Inc. v. International Electronic Communications, Inc., WIPO Case No. D2000-0270. As it is difficult to produce evidence to support a negative statement, the threshold for the Complainants to prove a lack of legitimate interest is somewhat low. Once a prima facie case is shown the burden of proof then shifts to the Respondent who must demonstrate its rights or legitimate interests to the Panel.
It is generally regarded as sufficient prima facie proof, for a complainant to show that the disputed domain name is identical or confusingly similar to its mark, that the respondent is not commonly known by the disputed domain name, and that the complainant has not authorized the respondent to use its mark (or an expression which is confusingly similar to its mark), whether in the disputed domain name or otherwise. Roust Trading Limited v AMG LLC, WIPO Case No. D2007-1857. The Respondent has provided no evidence that it has any rights or legitimate interests in the Disputed Domain Names. In this case, the Panel has found that the Disputed Domain Names are confusingly similar to the marks in which the Complainants have rights. There is no suggestion of the Respondent, or any business or organization operated by the Respondent, being commonly known by any of the Disputed Domain Names and the Respondent is not affiliated with the Complainants and has never been authorized by the Complainants to use the Complainants' trade marks or any trade mark confusingly similar thereto.
Finally, previous panels have recognized that the mere registration of a domain name does not of itself give rise to rights or legitimate interests in that domain name for the purpose of paragraph 4(a)(ii) of the Policy. See e.g. Educational Testing Service v. TOEFL,WIPO Case No. D2000-0044 and Pharmacia & Upjohn Company v. Peoples Revolutionary Suicide Jazz Band,WIPO Case No. D2000-0816.
In the Panel's opinion the Complainants have made out a prima facie case that the Respondent has no rights or legitimate interests in the Disputed Domain Names which the Respondent, by his failure to respond to the Complaint has failed to rebut in any way.
Therefore, the Complainants have, in the Panel's view satisfied paragraph 4(a)(ii) of the Policy. D. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy lists a number of circumstances which, without limitation, are deemed to be evidence of the registration and use of a domain name in bad faith. Those circumstances are:
(i) circumstances indicating that [the respondent has] registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trade mark or service mark or to a competitor of that 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 trade mark 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 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 [the respondent's] website or location.
The Complainants contend that the Disputed Domain Names were registered or acquired in bad faith and primarily for the purpose of selling, renting, or otherwise transferring the domain name registrations to Complainants for valuable consideration in excess of Respondent's documented out-of-pocket costs directly related to each Disputed Domain Name.
The overriding objective of the Policy is to prevent abusive domain name registrations and use for the benefit of legitimate trademark owners, in circumstances where the registrant is seeking to profit from and exploit the trademark of another: M, LP v. Bill Zag and NWLAWS.ORG,WIPO Case No. D2004-0230.
The Panel is persuaded from the circumstances in this case that the Respondent registered the Disputed Domain Names primarily for the purpose of selling them to the Complainants. Although no specific amount of money was asked for the Disputed Domain Names in the email in the record sent by the Respondent to the Complainants' representative, the Panel is prepared to infer that the purpose of the email is apparently to offer the domain names for a consideration which exceeds the out-of-pocket registration costs. Bank of Ireland Securities Services Limited v. David Boissonnault, WIPO Case No. D2004-0352.
The Respondent's unsolicited offer to sell these domain names to the Complainants within a week of registering the marks is compelling evidence of the Respondent's bad faith under paragraph 4(b)(i) of the Policy.
The Complainants also submit that the Respondent registered the Disputed Domain Names in order to prevent the Complainants from reflecting their trade marks in corresponding domain names. In Terroni Inc. v. Gioacchino Zerbo, WIPO Case No. D2008-0666 the Panel found that registering domains which correspond to some of the most well-known brands in the world was “behaviour which has been held in numerous decisions to be indicative of bad faith”. The fact that the Respondent has been the respondent party in five other UDRP administrative proceedings and in all such cases the disputed domain names have been transferred to the relevant complainant is evidence of registration and use in bad faith under paragraph 4(b)(ii).
For the reasons stated above, the Panel is satisfied that the Disputed Domain Names were registered and used in bad faith. As such, paragraph 4(a)(iii) of the Policy is satisfied. 7. Decision
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain names
be transferred to the Complainant BHP Billiton Innovation Pty Ltd and the domain name be transferred to the Complainant BMA Alliance Coal Operations Pty Ltd.
Alistair Payne
Sole Panelist
Dated: November 24, 2008
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