WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION BHP Billiton Innovation Pty Ltd. v. Demand Domains, Inc. Case No. D2009-1068 1. The Parties
The Complainant is BHP Billiton Innovation Pty Ltd., Melbourne, Australia, represented by Griffith Hack Patent and Trade Mark Attorneys, Australia.
The Respondent is Demand Domains, Inc., Bellevue, United States of America, represented internally, United States of America. 2. The Domain Name and Registrar
The disputed domain name is registered with eNom. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 10, 2009. On August 11, 2009, the Center transmitted by email to eNom a request for registrar verification in connection with the disputed domain name. On August 11, 2009, eNom 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 August 14, 2009 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 August 18, 2009. 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on August 20, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was September 9, 2009. The Response was filed with the Center on September 9, 2009.
The Center appointed Edoardo Fano as the sole panelist in this matter on September 22, 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 language of the proceeding is English, being the language of the Registration Agreement. 4. Factual Background
The Complainant is BHP Billiton Group, the world's largest diversified resources Group, operating in 25 countries in activities which include mining operations. The Group is commonly referred to as BHP.
Among others, the Complainant is the owner of the following trademark registrations:
- Australian Registration for BHP No. 59146, registered in 1931;
- Australian Registration for BHP No. 730190, registered in 1997;
- New Zeland Registration for BHP No. 265765, registered in 1999;
- Canadian Registration for BHP No. 565796, registered in 2002;
- European Community Registration for BHP No. 002037562, registered in 2002;
- Singapore Registration for BHP No.T9608794H, registered in 2000;
- United States Registration for BHP No. 1367145, registered in 1985;
- United States Registration for BHP No. 2653462, registered in 2002.
The Complainant provided evidence in support of the above-mentioned trademark registrations.
The Respondent's domain name was registered on October 25, 2006. It presently points to a webpage displaying advertising links to websites related to mining and mines. 5. Parties' Contentions A. Complainant
The Complainant states that the disputed domain name is confusingly similar to its trademark BHP, with the mere addition of the generic and descriptive term “mining”, and that does not change the fact that the Complainant's trademark is incorporated in full in the disputed domain name.
Moreover, the Respondent has no rights or legitimate interests in respect of the disputed domain name since it is not commonly known by the disputed domain name and is not making a legitimate non–commercial or fair use of the disputed domain name.
The Complainant submits that the Respondent has registered, used, and continues to use the disputed domain name in bad faith.
In fact, the Complainant's trademark BHP enjoys worldwide reputation and the Respondent could not have registered the domain name unknowingly of the Complainant's trademark rights.
Moreover, the Respondent is using the disputed domain name for diverting Internet traffic intended for BHP to the Respondent's website containing sponsored links.
Finally, the Complainant expressly requests the Panel to issue a decision on the merits even if the Respondent consents to the transfer of the disputed domain name following the filing of the Complaint. B. Respondent
The Respondent submits that it was unaware that the disputed domain name might conflict with the Complainant's alleged trademark rights until it received the Complaint.
After receiving the Complaint, the Respondent contacted the Complainant offering the transfer of the disputed domain name without delay: the Complainant rejected the offer.
The Respondent denies Complainant's allegations that the disputed domain name was registered in bad faith with prior knowledge that it might infringe Complainant's alleged trademark rights.
Finally, the Respondent requests that the Panel dismiss the Complaint as the Respondent acted in good faith: upon dismissal, the Respondent agrees to immediately transfer of the disputed domain name to the Complainant.
Alternatively, the Respondent requests that the Panel refrain from making any formal finding that the Respondent acted in bad faith, by simply endorsing the Respondent's offer to transfer the disputed domain name to the Complainant. 6. Discussion and Findings
First of all, the Panel deems necessary to issue a decision on the merits in the present case.
The situation in which a respondent is willing to transfer the disputed domain name after receiving the relevant complaint was very exhaustively examined by the panel of the case Sanofi-aventis v. Standard Tactics LLC,WIPO Case No. D2007-1909.
As stated in the above decision, the panel found that
“it has now become common practice among some cybersquatters to offer to transfer a domain name without payment whenever proceedings are commenced against it under the Policy. The respondent knows that the cost associated with the commencement of proceedings may of themselves dissuade the rights holder from commencing proceedings. It also knows that if a rights holder does commence proceedings, its offer, which carries with it the prospect of the domain name being quickly transferred, the return of some fees and the avoidance of the risks inherent in the matter proceeding to a panel, may prove commercially irresistible to many complainants. In this way the respondent is able to maintain a “clean record” so far as the rest of the world is concerned.[…]. However, the Complainant is in this case entitled to require this Panel to consider the substance of its Complaint and this is what this Panel will do.”
It is not clear from the record why on one side the Complainant insists for a decision on the merits to be issued and on the other side why the Respondent is willing that the case be dismissed or at least not decided on the merits.
However the Panel considers appropriate to issue a decision on the merits in the present case, both because it was expressly requested by the Complainant and since it is a clear case of registration and use in bad faith of the disputed domain name, as explained further below.
Paragraph 4(a) of the Policy lists three elements, which the Complainant must satisfy in order to succeed:
(i) the domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) the domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
The Panel finds that the Complainant is the owner of the trademark BHP both by registration and acquired reputation and that the disputed domain name is confusingly similar to the trademark BHP.
Regarding the addition of the generic term “mining”, the Panel notes that it is now well established that the addition of generic terms to a domain name does not necessarily distinguish the domain name from a trademark (see, e.g., Aventis Pharma SA., Aventis Pharma Deutschland GmbH v. Jonathan Valicenti,WIPO Case No. D2005-0037; Red Bull GmbH v. Chai Larbthanasub, WIPO Case No. D2003-0709; America Online, Inc. v. Dolphin@Heart,WIPO Case No. D2000-0713). The addition of the term “mining” does not therefore prevent the disputed domain name from being confusingly similar to the Complainant's trademark.
It is also well accepted that a top-level domain, in this case “.com”, may be ignored when assessing identity of mark and domain name (see, e.g., VAT Holding AG v. V,WIPO Case No. D2000-0607).
The Complainant has therefore met its burden of proving that the disputed domain name is confusingly similar to the Complainant's trademark, pursuant to the Policy, paragraph 4(a)(i). B. Rights or Legitimate Interests
The Panel finds that the Complainant has established a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name. The Respondent is not using the disputed domain name for a legitimate non-commercial or fair use or in connection with a bona fide offering of goods or services.
The prima facie case presented by the Complainant is enough to shift the burden of proof to the Respondent to demonstrate that it has a right or legitimate interest in the disputed domain name. However, the Respondent has not presented any evidence of any rights or legitimate interests it may have in using the disputed domain name.
The Panel therefore finds, also in view of its findings below, that the Policy, paragraph 4(a)(ii), has been satisfied. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides that for the purposes of paragraph 4(a)(iii) 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 use of a domain name in bad faith:
(i) circumstances indicating that the Respondent has registered or has 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 trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of its documented out-of-pocket costs directly related to the domain name; or
(ii) that the 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 the Respondent has engaged in a pattern of such conduct; or
(iii) that the Respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) that by using the domain name, the Respondent had 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.
As regards the registration in bad faith of the disputed domain name, the reputation of the Complainant's trademark is clearly established and the Panel finds that the Respondent knew or must have known that the disputed domain name was confusingly similar to a trademark of a third party.
Moreover, the addition of the generic term “mining” further suggests the Respondent's registration in bad faith of the disputed domain name, since mining is one of the Complainant's main field of activities.
As regards the use in bad faith of the disputed domain name, the domain name is used by the Respondent in order to divert Internet users to other websites by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of the Respondent's website.
The Complainant's trademark BHP is very well-known, at least in the mining field, and the Respondent was clearly aware thereof, since the website with the disputed domain name is full of references to the mining field.
The Respondent is therefore intentionally attempting to attract, for commercial gain, Internet users to its website, by creating a likelihood of confusion with the Complainant's trademark (See, e.g., Pfizer, Inc. v. Seocho and Vladimir Snezko,WIPO Case No. D2001-1199; Pfizer, Inc. v. jg a/k/a Josh Green,WIPO Case No. D2004-0784; Aventis Pharma S.A. and Merrell Pharmaceuticals, Inc. v. Rx USA,WIPO Case No. D2002-0290).
In its reply, the Respondent claims that when the disputed domain name was registered, it did not know that it was infringing the Complainant's trademark rights.
First of all, both the addition of the generic term “mining” and the actual content of the relevant website corresponding to the disputed domain name inherently contradicts the Respondent's statement.
Secondly, it would not be in this case a valid reason since a domain name holder cannot be “willfully blind” to whether a domain name may infringe trademark rights (See, e.g., mVisible Technologies, Inc. v. Navigation Catalyst Systems, Inc.,WIPO Case No. D2007-1141; Grundfos A/S v. Texas International Property Associates,WIPO Case No. D2007-1448).
It is in fact the registrant's responsibility to “determine whether your domain name registration infringes or violates someone else's rights” (according to paragraph 2 of the Policy).
Considering the above, the Panel finds that the Complainant has presented sufficient evidence to satisfy its burden of proof with respect to the issue of whether the Respondent has registered and is using the disputed domain name in bad faith.
The Panel therefore finds that the Policy, paragraph 4(a)(iii) has been 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 name be transferred to the Complainant.
Edoardo Fano
Sole Panelist
Dated: October 4, 2009
Full & Egal Universal Law Academy