WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION BHP Billiton Innovation Pty Ltd v. Yorkshire Enterprises Limited Case No. D2008-1937 1. The Parties
Complainant is BHP Billiton Innovation Pty Ltd, of Melbourne, Victoria, Australia, represented by Griffith Hack Patent and Trade Mark Attorneys, Australia.
Respondent is Yorkshire Enterprises Limited, of St. Johns, Antigua and Barbuda. 2. The Domain Name and Registrar
The disputed domain name is registered with Az.pl, Inc. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 18, 2008. On December 18, 2008, the Center transmitted by email to Az.pl, Inc. a request for registrar verification in connection with the disputed domain name. On January 6, 2009, Az.pl, Inc. transmitted by email to the Center its verification response confirming that 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” 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 January 16, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was February 5, 2009. The Respondent did not submit any response. Accordingly, the Center notified Respondent's default on February 6, 2009.
The Center appointed Erica Aoki as the sole panelist in this matter on February 12, 2009. 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.
The Panel has received no further submission from either party since its appointment.
The Panel is requested to issue a decision on February 26, 2009, in the English language and is unaware of any other proceedings, which may have been undertaken by the parties or others in the present matter. 4. Factual Background
Complainant BHP Billiton Innovation is a company incorporated in Australia and is part of the world's largest diversified resources group, employing approximately 37,000 people in more than 100 operations in 25 countries. The core of the group is a dual listed company comprising BHP Billiton Limited and BHP Billiton Plc. The two entities continue to exist as separate companies, but operate as a combined group known as BHP Billiton.
Complainant BHP Billiton Innovation is a wholly owned subsidiary of BHP Billiton Limited, holding some of BHP Billiton's intellectual property.
Complainant also has an Internet presence, through its registered domain name since March 17, 2001. Respondent registered the disputed domain name on June 26, 2008. 5. Parties' Contentions
A. Complainant
Complainant submits that the disputed domain name is confusingly similar to its trade mark BHP BILLITON in which BHP Billiton has rights in numerous countries, including the United States of America.
Complainant claims that consumers, upon viewing the disputed domain name , are highly likely to expect an association with BHP Billiton.
Respondent does not have any rights or legitimate interests in the disputed domain name.
BHP Billiton is not aware of any trade marks in which the Respondent may have rights that are identical or similar to the disputed domain name.
Respondent is deriving commercial benefit from sponsored links. The website therefore cannot be said to be “noncommercial”.
Respondent is attempting to generate business through sponsored links by exploiting confusion amongst consumers as to the association or affiliation of Respondent's website with the goods and services of BHP Billiton.
B. Respondent
Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings
In order to succeed in a proceeding, Complainant must prove each of the following requirements specified under paragraph 4(a) of the Policy.
(i) that the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in respect of which Complainant has rights; and
(ii) that 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.
These three elements are considered hereinafter.
Also, under paragraph 15(a) of the Rules, this Panel must “decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”.
In view of Respondent's failure to submit a Response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences as it considers appropriate pursuant to paragraph 14(b) of the Rules.
A. Identical or Confusingly Similar
Based on the facts and evidence presented by Complainant, this Panel finds that the disputed domain name is confusingly similar to a mark in which Complainant has rights under Policy, paragraph 4(a)(i). The disputed domain name merely misses the letter “P” from Complainant's trademark. The subtraction of the letter “P” to Complainant's trademark does not sufficiently distinguish the disputed domain name from the trademark. The disputed domain name is therefore confusingly similar to the Complainant's registered trademark.
B. Rights or Legitimate Interests
Respondent is in default and thus has made no affirmative attempt to show legitimate rights and interests in the disputed domain name.
The Policy indicates that a registrant may have a legitimate interest in a domain name if it was making use of the domain name in connection with a bona fide offering of goods or services prior to notice of the dispute.
The Respondent appears to be in no way connected with Complainant and has no authorization to use Complainant's trademark.
There is no evidence that Respondent is or was commonly known by the disputed domain name as an individual, business or other organization.
The Policy also indicates that a registrant may have a legitimate interest in a domain name if it is making fair use of the domain name.
The website under the disputed domain name contains only sponsored links. The Respondent is deriving commercial benefit from such sponsored links. Thus, Respondent uses the disputed domain name to divert Internet traffic to gain revenue. Such use, profiting from Complainant's goodwill in its trademark, cannot be considered fair use of the disputed domain name. The Panel, therefore, finds that Respondent has no rights or legitimate interests in the disputed domain name, under Policy, paragraph 4(a)(ii).
C. Registered and Used in Bad Faith
For the purposes of paragraph 4(a) of the Policy, the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and used of a domain name in bad faith:
“(i) circumstances indicating that Respondent has registered or has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) 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 Respondent has engaged in a pattern of such conduct; or
(iii) Respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent's website or other on-line location, by creating a likelihood of confusion with Complainant's mark as to the source, sponsorship, affiliation, or endorsement of Respondent's website or location or of a product or service on the Respondent's website or location.
Based on the undisputed allegations of Complainant, Respondent's registration of the disputed domain name is in order to divert Internet users.
Respondent's obvious intention to draw Internet traffic through the disputed domain name, attracting Internet users to a website for commercial gain, and the lack of Respondent's reply in these proceedings, are facts which support that the disputed domain name was registered and is being used in bad faith. 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 name be transferred to the Complainant.
Erica Aoki
Sole Panelist
Dated: February 24, 2009
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