The Complainant is BHP Billiton Innovation Pty Ltd. of Melbourne, Victoria, Australia, represented by Griffith Hack Patent and Trade Mark Attorneys, Australia.
The Respondent is AC International Group Corp / Robert Robins of New York City, New York, United States of America; Whois Privacy Protection Service, Inc. of Bellevue, Washington, United States of America. 2. The Domain Name and Registrar
The disputed domain name (the “Disputed Domain Name”) is registered with eNom (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 18, 2012. On October 18, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On October 18, 2012, the Registrar 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 October 19, 2012 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 October 22, 2012.
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 October 26, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was November 15, 2012. An email communication was received by the Center from the technical contact for the Disputed Domain Name on October 29, 2012, whereby it appears that this communication is not made on behalf of the Respondent. The Respondent did not submit any Response, and the Center notified the parties on November 16, 2012 that it would proceed to appoint the Administrative Panel.
The Center appointed Jacques de Werra as the sole panelist in this matter on November 23, 2012. 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
BHP Billiton Group is the world's largest diversified resources group, employing more than 40,000 people in more than 100 operations in 25 countries. The core of the BHP Billiton 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. The Complainant BHP Billiton Innovation is a wholly owned subsidiary of the BHP Billiton Group, holding some of the BHP Billiton Group's intellectual property.
The Complainant is the owner of numerous trade marks including the terms BHP BILLITON, including the following ones (“the Trademark”):
- United States, No. 3703871 for classes 4, 6, 37, 40 and 42;
- European Union, No. 0986799 for classes 4, 6, 37, 40 and 42;
- Australia No. 1141449 for classes 4, 6, 37, 40 and 42.
The Complainant operates many domain names including , , , , and .
The Disputed Domain Name was registered on January 4, 2012. The website associated to it indicates: “WEB SITE UNDER CONSTRUCTION PLEASE VISIT WWW.BHPBILITON.COM or WWW.BHPBILITON.COM.AU”.
On September 28, 2012 an email was sent using the Disputed Domain Name from a person claiming to be Ms.Harris, a “purchase manager” at BHP Billiton, to a third party, thereby creating the misleading impression that such email originated from an employee of the group of companies to which the Complainant belongs. 5. Parties’ Contentions A. Complainant
The Complainant submits that the Disputed Domain Name is confusingly similar to the Trademark which is not only highly distinctive but has over the years become the world’s most well-known brand in diversified resources and the mining of such resources, whereby the addition of the generic word “corp” is not sufficient to distinguish the Disputed Domain Name from the Trademark. Consumers, upon viewing the website associated with the Respondent’s Disputed Domain Name are highly likely to expect an association with the Complainant in particular as the Disputed Domain Name is being used to send emails purporting to emanate from the Complainant. The Complainant suspects in this respect that the name Ms. Harris for the email was chosen as it is similar to the name of a BHP Billiton employee responsible for investor relations in the UK (Mr. Harris).
The Complainant submits that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name because it is not similar or in any way connected with the name under which the Respondent holds the domain name registration, because the Respondent has not at any time been commonly known by the Disputed Domain Name. Furthermore, the Complainant is not aware of any trademarks in which the Respondent may have rights that are identical or similar to the Disputed Domain Name. It is further submitted that the Respondent is not making legitimate noncommercial or fair use of the Disputed Domain Name.
The Complainant submits that the Disputed Domain Name was registered and is being used in bad faith because the Respondent knew about the Trademark when it registered the Disputed Domain Name. The fact that the Disputed Domain Name is being used to send emails purporting to emanate from the Complainant is in itself evidence of bad faith registration and use of the Disputed Domain Name, as it constitutes a fraudulent activity. The website to which the Disputed Domain Name points contains links to two of the Complainant’s official websites creating the impression that the Disputed Domain Name is bona fide. In so doing, the Respondent has intentionally attempted to attract Internet users to its website by creating a likelihood of confusion with the Complainant’s Trademark as to the source, sponsorship, affiliation or endorsement of the Respondent’s website. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
According to paragraph 15(a) of the Rules, the Panel shall decide a complaint in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.
Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:
(i) that the Disputed Domain Name registered by the Respondent 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 Disputed Domain Name; and
(iii) that the Disputed Domain Name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
The Complainant has established that it has rights in the Trademark and has stated that the Disputed Domain Name is confusingly similar to it.
The Panel considers in this respect that the Trademark constitutes the distinctive element of the Disputed Domain Name and that the addition of the term “corp” which merely indicates a type of corporate structure and therefore lacks any distinctiveness does not avoid the confusing similarity between the Disputed Domain Name and the Complainant’s Trademark.
Accordingly, the Panel finds that the Complainant has satisfied paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
Pursuant to paragraph 4(c) of the Policy, the Respondent may establish rights to or legitimate interests in the Disputed Domain Name by demonstrating any of the following:
(i) before any notice to it of the dispute, the Respondent’s use of, or demonstrable preparations to use, the Disputed Domain Name or a name corresponding to the Disputed Domain Name in connection with a bona fide offering of goods or services; or
(ii) the Respondent has been commonly known by the Disputed Domain Name, even if it has acquired no trademark or service mark rights; or
(iii) the Respondent is making a legitimate noncommercial or fair use of the Disputed Domain Name, without intent for commercial gain, to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
Although the Complainant bears the ultimate burden of providing all three elements of paragraph 4(a) of the Policy, previous panels have consistently ruled that paragraph 4(c) of the Policy shifts the burden to the Respondent to come forward with evidence of its rights or legitimate interests in the Disputed Domain Name, once the Complainant has made a prima facie showing. See Document Technologies, Inc. v. International Electronic Communications Inc.,WIPO Case No. D2000-0270.
The Complainant has established that the Respondent is not known by the Disputed Domain Name and that it has made a fraudulent use of email addresses connected to the Disputed Domain Name by sending a email message to a third party by a person claiming to be Ms. Harris, a “purchase manager” at BHP Billiton, to a third party, thereby creating the misleading impression that such email originated from an employee of the group of companies to which the Complainant belongs.
The Panel thus accepts the Complainant’s prima facie showing and finds that it was consequently up to the Respondent to come forward with evidence of its rights or legitimate interests in the Disputed Domain Name.
In view of the circumstances and given that the Respondent has not filed a response in these proceedings, the Panel finds that the Respondent has no rights or legitimate interests in the Disputed Domain Name pursuant to paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy states that any of the following circumstances, in particular but without limitation, shall be considered evidence of registration and use of a domain name in bad faith:
(i) circumstances indicating that the Respondent registered or acquired the Disputed Domain Name primarily for the purpose of selling, renting, or otherwise transferring the Disputed Domain Name registration to the Complainant (the owner of the trademark or service mark) or to a competitor of that the Complainant, for valuable consideration in excess of documented out-of-pocket costs directly related to the Disputed Domain name;
(ii) circumstances indicating that the Respondent registered the Disputed 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;
(iii) circumstances indicating that the Respondent registered the Disputed Domain Name primarily for the purpose of disrupting the business of a competitor; or
(iv) circumstances indicating that the Respondent intentionally is using the Disputed Domain Name in an attempt to attract, for commercial gain, Internet users to its 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 its website or location.
The examples of bad faith registration and use set forth in paragraph 4(b) of the Policy are not meant to be exhaustive of all circumstances from which such bad faith may be found. See Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003. The overriding objective of the Policy is to curb the abusive registration of domain names in circumstances where the registrant is seeking to profit from and exploit the trademark of another. See M, LP v. Bill Zag and NWLAWS.ORG,WIPO Case No. D2004-0230.
In this case, the Panel holds that the Respondent registered the Disputed Domain Name in bad faith because the Trademark is distinctively identifying the Complainant and the Complainant’s services so that the choice of the Disputed Domain Name cannot be reasonably explained otherwise than as a reference to the Trademark of the Complainant (this being further evidenced by the fact that the website associated with the Disputed Domain Name also makes reference to the Complainant’s own websites). The Respondent also uses the Disputed Domain Name in bad faith because it has used an email address connected to it in order to contact a third party, thereby creating the misleading impression that such email originated from an employee of the group of companies to which the Complainant belongs which is not true. This type of misleading activities in connection with disputed domain names have been found to constitute bad faith by previous UDRP panels. See e.g. Grupo Financiero Inbursa, S.A. de C.V. v. inbuirsa,WIPO Case No. D2006-0614 and CareerBuilder, LLC v. Stephen Baker,WIPO Case No. D2005-0251.
For these reasons, the Panel considers that the Complainant has established that the Disputed Domain Name was registered and is being used in bad faith by the Respondent pursuant to paragraph 4(a)(iii) of the Policy. 7. Decision
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Disputed Domain Name be transferred to the Complainant.
Jacques de Werra
Sole Panelist
Dated: December 7, 2012
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