The Complainant is BHP Billiton Innovation Pty Ltd of Melbourne, Australia, represented by Griffith Hack., Australia.
The Respondent is charleswang of Beijing, China. 2. The Domain Name and Registrar
The disputed domain name is registered with eName Technology Co., Ltd. (the "Registrar"). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on September 16, 2014. On September 16, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 17, 2014, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
On September 18, 2014, the Center transmitted an email to the parties regarding the language of proceedings. On September 23, 2014, the Complainant submitted its request that English be the language of the proceeding. The Respondent did not submit its comments within the specified due date.
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 26, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was October 16, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on October 17, 2014.
The Center appointed Jonathan Agmon as the sole panelist in this matter on October 24, 2014. 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, BHP Billiton Innovation Pty Ltds, is a company incorporated in Australia.
The Complainant is the world's largest diversified resources group, employing more than 40,000 people in more than 100 operations in 25 countries worldwide. The Complainant's annual turnover in 2013 was USD 65,9 billion.
The trademark BHP BILLITON has become a well-known brand in diversified resources.
The Complainant is the owner of numerous trademark registrations for the trademark BHP BILLITON worldwide. Among others, the Complainant is the owner of United States of America trademark registration No. 3,703,871 – BHP BILLITON, with the registration date of November 3, 2009; Australia registration No. 1141449 – BHP BILLITON, with the registration date of October 18, 2006; European Union trademark registration No. 0986799 – BHP BILLITON, with the registration date of November 16, 2006; and many more.
The Complainant has also registered the trademark BHP BILLITON as a domain name under numerous generic Top-Level Domains ("gTLDs") and country code Top-Level Domains ("ccTLDs") worldwide, among these are: , and .
The disputed domain name was registered on August 27, 2014 long after the Complainant has registered the trademark BHP BILLITON worldwide.
The disputed domain name does not resolve to an active website. 5. Parties' Contentions A. Complainant
The Complainant argues that the disputed domain name is confusingly similar to the Complainant's well-known trademark BHP BILLITON, seeing that the dominant part of the disputed domain name comprises from the Complainant's trademark BHP BILLITON, which has been registered as a trademark and domain names in numerous countries all over the world.
The Complainant further argues that the addition of the suffix "China" and a hyphen is not relevant and will not have any impact on the overall impression of the dominant part of the disputed domain name, BHP BILLITON.
The Complainant further argues that with reference to the reputation of the BHP BILLITON trademark there is a considerable risk that the public will perceive the disputed domain name as a domain name owned by the Complainant or that there is some kind of commercial relation with the Complainant.
The Complainant further argues that the Respondent has no rights or legitimate interests with respect to BHP BILLITON mark or the disputed domain name.
The Complainant further argues the Respondent does not have any registered trademarks or trade name corresponding to the disputed domain name.
The Complainant further argues that the Respondent is not making legitimate noncommercial or fair use of the disputed domain name.
The Complainant further argues that the disputed domain name was registered and is being used in bad faith.
The Complainant further argues that the considerable value and goodwill of the mark BHP BILLITON is most likely what made the Respondent register the disputed domain name.
The Complainant further argues that the Respondent owns many domain names that include well-known third party trademarks such as FORD, CAMPARI, BMW and more that indicate that the Respondent engages in a pattern of such conduct. B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings A. Language of the Proceedings
Paragraph 11(a) of the Rules provides that:
"Unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding."
The language of the Registration Agreement for the disputed domain name is Chinese.
The Complainant requested that the language of proceedings should be English.
The Panel cites the following with approval:
"Thus, the general rule is that the parties may agree on the language of the administrative proceeding. In the absence of this agreement, the language of the Registration Agreement shall dictate the language of the proceeding. However, the Panel has the discretion to decide otherwise having regard to the circumstances of the case. The Panel's discretion must be exercised judicially in the spirit of fairness and justice to both parties taking into consideration matters such as command of the language, time and costs. It is important that the language finally decided by the Panel for the proceeding is not prejudicial to either one of the parties in his or her abilities to articulate the arguments for the case." (Groupe Auchan v. xmxzl,WIPO Case No. DCC2006-0004).
The Panel finds that in the present case, the following should be taken into consideration upon deciding on the language of proceedings:
a) The disputed domain name consists of Latin-script letters, rather than Chinese characters;
b) The disputed domain name includes the Complainant's mark, as well as the English name of the country China;
c) The Respondent did not object to the Complainant's request that English be the language of proceedings.
Upon considering the above, the Panel concludes, according to the Rules, paragraph 11(a), that there is no prejudice or unfairness to the Respondent for these proceedings to be conducted in English and for its decision to be rendered in English. Accordingly, the Panel determines that the language of this administrative proceeding should be English. B. Identical or Confusingly Similar
Paragraph 4(a)(i) of the Policy requires the Complainant to show that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.
A registered trademark provides a clear indication that the rights in the mark shown on the trademark certificate belong to its respective owner.
The Complainant is the owner of numerous trademark registrations for the trademark BHP BILLITON worldwide. Among others, the Complainant is the owner of United States of America trademark registration No. 3,703,871 – BHP BILLITON, with the registration date of November 3, 2009; Australia registration No. 1141449 – BHP BILLITON, with the registration date of October 18, 2006; European Union trademark registration No. 0986799 – BHP BILLITON, with the registration date of November 16, 2006; and many more.
The Complainant has also registered the trademark BHP BILLITON as a domain name under numerous gTLDs and ccTLDs worldwide, among these are: , and .
The disputed domain name differs from the registered BHP BILLITON trademark by the addition of the geographical term "china" and the additional hyphen and the additional gTLD ".com". The disputed domain name integrates the Complainant's BHP BILLITON trademark in its entirety, as a dominant element.
The addition of the geographical term "china" and the additional hyphen do not serve sufficiently to distinguish or differentiate the disputed domain name from the Complainant BHP BILLITON trademark as "china" stands for the People's Republic of China, where the Complainant also conducts business. It is clear that the most prominent element in the disputed domain name is the term "BHP BILLITON". The use of a hyphen between the mark BHP BILLITON and the word "china" in the disputed domain name also cannot avoid confusing similarity (see Fort Knox National Company v. Ekaterina Phillipova,WIPO Case No. D2004-0281). Consequently, this Panel finds that the disputed domain name is confusingly similar to the Complainant's BHP BILLITON trademark.
Previous UDRP panels have ruled that the mere addition of a non-significant element does not sufficiently differentiate the domain name from the registered trademark: "The incorporation of a trademark in its entirety is sufficient to establish that a domain name is identical or confusingly similar to the Complainant's registered mark" (Britannia Building Society v. Britannia Fraud Prevention,WIPO Case No. D2001-0505). See also, "the trademark RED BULL is clearly the most prominent element in this combination, and that may cause the public to think that the domain name is somehow connected with the owner of RED BULL trademark" (Red Bull GmbH v. PREGIO Co., Ltd.,WIPO Case No. D2006-0909).
Indeed, "[t]he mere addition of a descriptive term to an identical trademark has been repeatedly held by previous panels as not sufficient to avoid confusion between the domain name and the trademark" (Red Bull GmbH v. Chai Larbthanasub,WIPO Case No. D2003-0709).
The addition of the gTLD suffix ".com" to the disputed domain name does not avoid confusing similarity (see, F. Hoffmann-La Roche AG v. Macalve e-dominios S.A.,WIPO Case No. D2006-0451 and Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003). Thus, the gTLD suffix ".com" is without legal significance since the use of a gTLD is technically required to operate the domain name.
Consequently, the Panel finds that the Complainant has proven that the disputed domain name is confusingly similar to the trademark in which the Complainant has rights. C. Rights or Legitimate Interests
Once the Complainant establishes a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name, the burden shifts to the Respondent to show that it has rights or legitimate interests in respect to the disputed domain name, WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0"), paragraph 2.1.
In the present case, the Complainant has demonstrated to the Panel that the Respondent lacks rights or legitimate interests in respect of the disputed domain name and the Respondent had failed to assert any such rights or legitimate interests.
The Panel finds that the Complainant has established a prima facie case in this regard, inter alia, due to the fact that the Complainant has not licensed or otherwise permitted the Respondent to use the BHP BILLITON trademark, or a variation thereof.
The Respondent had not submitted a Response and did not provide any evidence to show any rights or legitimate interests in the disputed domain name that is sufficient to rebut the Complainant's prima facie case.
Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name. D. Registered and Used in Bad Faith
The Complainant must show that the Respondent registered and is using the disputed domain name in bad faith (Policy, paragraph 4(a)(iii)). Paragraph 4(b) of the Policy provides circumstances that may prove bad faith under paragraph 4(a)(iii).
The Complainant submitted evidence, which shows that the Respondent registered the disputed domain name long after the Complainant started to use the name and trademark BHP BILLITON and long after the Complainant registered its trademark. According to the evidence filed by the Complainant and the trademark, the Complainant has owned a registration for the BHP BILLITON trademark since the year 2006. It is suggestive of the Respondent's bad faith in these particular circumstances where the trademark, owned by the Complainant, was registered long before the registration of the disputed domain name (Sanofi-Aventis v. Abigail Wallace,WIPO Case No. D2009-0735).
Paragraph 4(b)(iv) of the Policy provides that it will be evidence of bad faith registration and use by a respondent, if by using the disputed domain name, it had intentionally attempted to attract, for commercial gain, Internet users to the website or other online location to which the disputed domain name resolves, by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of the website or location or of a product or service on the website or location to which the disputed domain name resolves.
The disputed domain name is confusingly similar to the Complainant's trademarks. Previous UDRP panels ruled that "a likelihood of confusion is presumed, and such confusion will inevitably result in the diversion of Internet traffic from the Complainant's site to the Respondent's site" (See E, Incv. Triple E Holdings Limited,WIPO Case No. D2006-1095). To this end, prior UDRP panels have established that attracting Internet traffic by using a domain name that is identical or confusingly similar to a registered trademark may be evidence of bad faith under paragraph 4(b)(iv) of the Policy.
Another indication for the Respondent's bad faith is raised from the incorporation of the Complainant well-known trademark into the disputed domain name by the Respondent who has no plausible explanation for doing so (Intel Corporation v. The Pentium Group,WIPO Case No. D2009-0273).
In light of the Complainant's distinctive registered trademark and the Respondent's passive holding of a confusingly similar disputed domain name without evidence of any actual or contemplated good faith use, the Panel finds that the Respondent registered and is using the disputed domain name in bad faith.
Lastly, another indication of bad faith is the fact that the Respondent owns many domain names that include well-known third party trademarks such as FORD, CAMPARI, BMW and more, which indicates that the Respondent engages in a pattern of such bad faith conduct. See Wikimedia Foundation Inc. v. Kevo Ouz a/k/a Online Marketing Realty,WIPO Case No.D2009-0798.
This also constitutes a pattern of conduct consisting of registering a domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name (See EPSON Europe BV v. M31 Internet Palma, S.L.,WIPO Case No. D2005-0604)
Accordingly, having regard to the circumstances of this particular case, the Panel finds that the Complainant has met its burden under 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.
Jonathan Agmon
Sole Panelist
Date: November 6, 2014
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