WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION BHP Billiton Innovation Pty Ltd. v. Walter Surhand Case No. D2009-1651 1. The Parties
The Complainant is BHP Billiton Innovation Pty Ltd., Victoria, Australia, represented by Griffith Hack Patent and Trade Mark Attorneys, Australia.
The Respondent is Walter Surhand, Manchester, United Kingdom of Great Britain and Northern Ireland. 2. The Domain Name and Registrar
The disputed domain name is registered with Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainR. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 4, 2009. On December 7, 2009, the Center transmitted by email to Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainR a request for registrar verification in connection with the disputed domain name. On December 8, 2009, Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainR 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” 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 December 14, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was January 3, 2010. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on January 4, 2010.
The Center appointed Francine Tan as the sole panelist in this matter on January 13, 2010. 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 is a company incorporated in Australia and part of the BHP Billiton Group (“the Group”), one of the world's largest diversified resources group, employing 37,000 people in more than 100 operations in 25 countries. The Group is involved extensively in mining operations. The core of the Group comprises two entities, BHP Billiton Limited and BHP Billiton Plc, which operate as a combined group known as “BHP Billiton” or simply “BHP”. The Complainant is a wholly-owned subsidiary of BHP Billiton Limited, holding some of BHP's intellectual property. BHP's average annual turnover between 2001 and 2005 exceeded USD22 billion. In 2007 and 2008, BHP generated a turnover of USD47.5 billion and USD59.5 billion, respectively.
BHP operates a website at and . It owns numerous other domain names containing “bhp” including , , , , , , and .
BHP is the owner of trademark registrations for the mark BHP not only in Australia but also in Europe, New Zealand, Canada, the United States of America and Singapore.
The disputed domain name resolves to a website indicating that the registrant has installed Apache software to maintain the website but not further developed the website. The disputed domain name was brought to the attention of the Complainant by two separate persons. They had received emails emanating from the disputed domain name. The emails claimed to be from BHP and included application forms with a view to collecting the recipients' personal details. The application forms depicted BHP's logo. The Respondent had not been authorized to register the disputed domain name or to use BHP's logo. 5. Parties' Contentions A. Complainant
The Complainant's assertions are as follows:
1. The disputed domain name is confusingly similar to the trade mark, BHP, in which it has rights (paragraph 4(a)(i) of the Policy). The BHP trade mark is not only distinctive but has, over the years, become the world's most well-known brand in diversified resources. The addition of the descriptive and generic term, “-services” to the trade mark in the disputed domain name does not distance the disputed domain name from the BHP trade mark in order to avoid confusion. Consumers, upon viewing the Respondent's domain name , are likely to expect an association with BHP.
2. The Respondent has no rights or legitimate interests in respect of the disputed domain name (paragraph 4(a)(ii) of the Policy). The Respondent has not at any time been commonly known by the disputed domain name. Furthermore, BHP is not aware of any trade marks in which the Respondent may have rights that are identical or similar to the disputed domain name. Furthermore, the Respondent is not making legitimate non-commercial or fair use of the disputed domain name. Use of the disputed domain name has been made by the Respondent, inter alia, to send fraudulent emails by which to elicit personal information from recipients.
3. The disputed domain name was registered and is being used in bad faith (paragraph 4(a)(iii) of the Policy) and this is supported by the following circumstances:
BHP enjoys a worldwide reputation in its BHP trade mark and domain names. It has been established in previous panel decisions that bad faith registration may be inferred from the registration of a well-known mark. Similarly, it can be inferred from the Respondent's registration of a domain name confusingly similar to BHP's well-known BHP mark that the disputed domain name was registered in bad faith.
In this case, the Respondent registered the disputed domain name primarily for the purpose of eliciting personal information from persons by deceiving them into believing he is associated with BHP, thereby disrupting the business of BHP (paragraph 4(b)(iii) of the Policy).
The Respondent has intentionally attempted to attract users to email personal information to a location hosted under the disputed domain name, namely an email location, by creating a likelihood of confusion with BHP's well-known BHP mark as to the source, sponsorship, affiliation, or endorsement of that email location to which the recipients are requested to send their personal information.
The Respondent's choice of domain name and the use of BHP's distinctive logo is itself evidence of the Respondent's knowledge of BHP's trade mark and its business.
It can further be inferred from the Respondent's conduct in registering a domain name consisting of an alteration of BHP's well- known trade mark that the Respondent was aware of that trade mark. B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings
Paragraph 4(a) of the Policy prescribes that the Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by the Respondent is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
(2) the Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
The Complainant has proven that it has rights in the trade mark BHP. This trade mark is included in the disputed domain name. The fact that the word “-services” has, in the disputed domain name, been added to the trade mark BHP does not remove confusion with the Complainant's trade mark as “-services” is a descriptive component of the disputed domain name. It is a well-established principle that the addition of a generic or descriptive term to a trade mark will not alter the fact that the domain name at issue is confusingly similar to the mark in question. (See Nokia Corporation v. N aka IBCC, WIPO Case No. D2000-0102; EAuto L.L.C. v. EAuto Parts,WIPO Case No. D2000-0096.)
In this case, the Panel further finds that such a descriptive component in the disputed domain name even adds to the confusion as it leads Internet users to believe that the Complainant operates the web site associated to the disputed domain name. The Panel accordingly finds that the first requirement under paragraph 4(a)(i) of the Policy has been satisfied by the Complainant. B. Rights or Legitimate Interests
The general consensus view that has been established in earlier panel decisions is that “While the overall burden of proof rests with the complainant, panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is often primarily within the knowledge of the respondent. Therefore a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, respondent carries the burden of demonstrating rights or legitimate interests in the domain name. If the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the UDRP.”
(See item 2.1 in the WIPO Overview of WIPO Panel Views on Selected UDRP Questions).
In the present case, the Complainant has established a prima facie case that the Respondent has no rights or legitimate interests in respect of the disputed domain name and the Respondent has failed to assert any such rights. Accordingly, the Panel finds that Respondent has no rights or legitimate interests in respect of the domain name at issue. C. Registered and Used in Bad Faith
Under paragraph 4(b) of the Policy, evidence of bad faith registration and use can be found to be established in any of the following situations:
(i) circumstances indicating that the respondent 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 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 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 web site 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 web site or location or of a product or service on the web site or location.
The Panel finds that the circumstances in this case indicate that the Respondent knew or must have known about the Complainant's well-known trade mark, and that the disputed domain name has intentionally been used to disrupt the Complainant's business and/or in an attempt to attract, for commercial gain, Internet users to the Respondent's website by creating a likelihood of confusion with the trade mark BHP as to the source, sponsorship, affiliation, or endorsement of the website and/or email location to which the recipients of the fraudulent emails were requested to send their personal information. The Panel cannot see how the Respondent would be able to explain his choice of the domain name without reference to the Complainant's BHP trade mark. The fact that the descriptive word “-services” was added to the distinctive element of the disputed domain name shows that the Respondent must have already been aware of the existence of the domain name belonging to the owners of the mark BHP. It has long been established by earlier panel decisions that the registration of a domain name that is obviously connected with a trade mark which is widely known by someone who has no connection whatsoever with the trade mark suggests opportunistic bad faith. (See Veuve Cliquot Ponsardin, Maison Fondee en 1772 v. The Polygenic Group Co.,WIPO Case No. D2000-0163.)
The Respondent has not refuted the assertions made in the Complaint.
The Panel accordingly has no difficulty finding that registration and use of the disputed domain name was made 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.
Francine Tan
Sole Panelist
Dated: January 25, 2010
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