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 Cameron Jackson, Sydney, New South Wales, Australia. 2. The Domain Name and Registrar
The disputed domain name (the "Domain Name") is registered with Instra Corporation Pty Ltd. (the "Registrar"). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on October 7, 2015. On October 7, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On October 8, 2015, 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.
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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on November 9, 2015. In accordance with the Rules, paragraph 5, the due date for Response was November 29, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on November 30, 2015.
The Center appointed William P. Knight as the sole panelist in this matter on December 2, 2015. 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 Domain Name was registered on September 27, 2015.
The Complainant is a member of the BHP Billiton group, the first company in which was formed in 1885 as the Broken Hill Proprietary Company Limited and is today one of Australia's largest and best known mineral resources companies, with a worldwide reach. The group adopted its present name in 2001 with the merger of BHP Limited with Billiton Plc.
The Complainant asserts and provides supporting information that it is the owner of the trademark BHP BILLITON in Australia, New Zealand, the United Kingdom of Great Britain and Northern Ireland, Europe, the United States of America, Canada and other countries. In support of these assertions, the Complainant provides the following registration details:
Country
Mark
Registration No.
Classes
Australia
BHP BILLITON
1141449
4, 6, 37, 40, 42
New Zealand
BHP BILLITON
764470
4, 6, 37, 40, 42
United Kingdom
BHP BILLITON
2264607
1, 2, 4, 6, 7, 8, 9, 11, 14,16, 17, 19, 21, 25, 35, 36, 37, 38, 39, 40, 41, 42
European Union
BHP BILLITON
986799
4, 6, 37, 40, 42
United States of America
BHP BILLITON
3703871
4, 6, 37, 40, 42
Canada
BHP BILLITON
TMA794995
Wares and Services Equivalent of Classes 4, 6, 37, 40, 42
The Complainant is the owner of several domain names containing the word BHP BILLITON namely:
;
;
;
;
; and
.
The Agreement between the Respondent and the Registrar under which the Domain Name was registered includes the Policy and section 2 states:
"By applying to register a domain name, or by asking us to maintain or renew a domain name registration, you hereby represent and warrant to us that (a) the statements that you made in your Registration Agreement are complete and accurate; (b) to your knowledge, the registration of the domain name will not infringe upon or otherwise violate the rights of any third party; (c) you are not registering the domain name for an unlawful purpose; and (d) you will not knowingly use the domain name in violation of any applicable laws or regulations. It is your responsibility to determine whether your domain name registration infringes or violates someone else's rights."
where the reference to "you" is to the Respondent.
The Domain Name is not being used in its own right, but presently points to a YouTube page, which displays information and videos concerning BHP Billiton, which is somewhat out of date.
The Respondent has been the subject of a number of complaints under the Policy, concerning his registration of a variety of well-known trademarks of others,WIPO Case No. D2005-0909 (PFIZER),WIPO Case No. D2007-1022 (ALSTOM),WIPO Case No. D2007-1290 (LINDT) andWIPO Case No. D2015-0090 (TOMMY BAHAMA), as well as another complaint involving the Complainant,WIPO Case No. D2008-1338 (concerning the marks BHP, EKATI, TEMCO, BMA and AURIAS), another well-known Australian company (NRMA) and a curious matter,WIPO Case No. D2007-1022, where the mark in question was ISO15022, the International Standards Organization's standard for messaging used in securities trading. The Respondent's interests are shown thereby to be quite catholic.
The Respondent's Australian address given to the Registrar at the time of registration appears not to be genuine as the Center was unable to use it to deliver by courier a copy of the notice of Complaint, but his apparent knowledge of a very local brand such as NRMA indicates that he is an Australian resident nonetheless. 5. Parties' Contentions A. Complainant
The Complainant argues that the Domain Name is confusingly similar to its BHP BILLITON trademark as the Domain Name fully incorporates the registered trademark and that the addition of the Top-Level Domain ("TLD") ".club" does not operate to distinguish the Domain Name such as to prevent it from being confusingly similar to its well-known trademark.
The Complainant asserts that the Respondent has no rights or legitimate interests in respect of the Domain Name because he is not commonly known by the Domain Name and is not making any legitimate noncommercial or fair use of the Domain Name.
The Complainant further says that, due to the international recognition of the BHP BILLITON mark, the mere registration of the Domain Name constitutes evidence of bad faith. B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings
Pursuant to paragraph 4(a) of the Policy, the Complainant must establish each of the following three elements to prevail in its request for transfer of the Domain Name from the Respondent:
1. The Domain Name is identical or confusingly similar to a trademark 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.
Notwithstanding the failure of the Respondent to respond to the Complaint in this matter, the Complainant still bears the burden of proof on each of these elements. The Respondent's default does not automatically result in a determination in favour of the Complainant. The failure of the Respondent to argue its case does not mean that the Panel must accept the propositions of the Complainant (see Brooke Bollea, a.k.a Brooke Hogan v. Robert McGowan,WIPO Case No. D2004-0383). A. Identical or Confusingly Similar
The Panel finds that the Complainant has trademark rights in BHP BILLITON for the purposes of the Policy. The Panel is also satisfied that the Domain Name is confusingly similar to the Complainant's BHP BILLITON trademark. The Panel is satisfied that the dominant component of the Domain Name is "bhpbilliton", which is most distinctive and has gained a significant international reputation in the field of the mineral resources. The TLD ".club" in the Domain Name does not carry any distinguishing weight.
The first element of the UDRP is satisfied. B. Rights or Legitimate Interests
The Panel finds that the Respondent was most likely aware of the Complainant's established reputation and trademark rights at the time of registering the Domain Name. The Respondent appears to be resident in Australia and BHP BILLITON is one of the best known trademarks in Australia at least.
It is clear that the Respondent has no connection to the BHP Billiton group in the diversity of his past domain name registrations and the pattern of conduct they reveal.
The linking of the Domain Name to YouTube materials concerning the BHP Billiton group offers no indication that the Respondent is making any legitimate use of the Complainant's BHP BILLITON mark. The TLD ".club" offers an opportunity for those unrelated to the BHP Billiton group to make legitimate noncommercial or fair use of the Domain Name for some sort of club but there is nothing in the Respondent's use to indicate any such purpose and the Respondent has had ample opportunity to give such an explanation.
In such circumstances, and given the use made of the Domain Name by the Respondent, the Panel concludes that the Respondent has no rights or legitimate interests in respect of the Domain Name. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides a non-exhaustive list of circumstances that may indicate registration and use in bad faith. Paragraph 4(b)(i) of the Policy provides that evidence of the registration and use of a domain name in bad faith includes circumstances in which the Respondent "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."
This issue, particularly where there has been no use made of the domain name in dispute (the Panel considers the redirect to YouTube described supra an instance of "passive holding"), has been dealt with significantly in earlier decisions under the UDRP, notably in Telstra Corporation Ltd v. Nuclear Marshmallows,WIPO Case No. D2000-0003, and Telstra Corporation Limited v. Barry Cheng Kwok Chu,WIPO Case No. D2000-0423, the reasoning of the learned panel in each of which this Panel respectfully adopts.
So far as concerns registration in bad faith, since this is a case in which:
(a) the Respondent registered the Domain Name in circumstances where it is inconceivable that he was unaware of the pre-existing rights of the Complainant;
(b) there is virtually no commercial use which could be made of the Domain Name which would not infringe the legal rights of the Complainant and be misleading and deceptive upon the public; and
(c) in seeking registration of the Domain Name, if the Respondent had any intention to make a commercial use of the Domain Name – and he has had ample opportunity to either do otherwise or otherwise explain his conduct, and he has done neither – then he gave a transparently false representation to the Registrar in the Agreement entered into with respect to registration of the Domain Name.
This Panel concludes that the Respondent registered the Domain Name with bad faith, in the sense required by the UDRP.
Turning now to "use in bad faith", in the Nuclear Marshmallows decision referred to above, the learned panel stated (at paragraph 7.6):
"the relevant issue is not whether the Respondent is undertaking a positive action in bad faith in relation to the domain name, but instead whether, in all the circumstances of the case, it can be said that the Respondent is acting in bad faith. The distinction between undertaking a positive action in bad faith and acting in bad faith may seem a rather fine distinction, but it is an important one. The significance of the distinction is that the concept of a domain name 'being used in bad faith' is not limited to positive action; inaction is within the concept. That is to say, it is possible, in certain circumstances, for inactivity by the Respondent to amount to the domain name being used in bad faith."
In that decision, the panel found the required bad faith in:
"(i) the Complainant's trademark has a strong reputation and is widely known, as evidenced by its substantial use in Australia and in other countries,
(ii) the Respondent has provided no evidence whatsoever of any actual or contemplated good faith use by it of the domain name,
(iii) the Respondent has taken active steps to conceal its true identity, by operating under a name that is not a registered business name,
(iv) the Respondent has actively provided, and failed to correct, false contact details, in breach of its registration agreement, and
(v) taking into account all of the above, it is not possible to conceive of any plausible actual or contemplated active use of the domain name by the Respondent that would not be illegitimate, such as by being a passing off, an infringement of consumer protection legislation, or an infringement of the Complainant's rights under trademark law."
This matter is virtually identical in these regards.
This Panel comes to the same conclusion with respect to the conduct of the Respondent in this matter. The Panel is assisted in reaching this conclusion by the string of previous UDRP decisions in which the Respondent was found to be acting in bad faith.
The Panel therefore concludes that the Respondent registered and is using the Domain Name in bad faith. 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 Domain Name be transferred to the Complainant.
William P. Knight
Sole Panelist
Date: December 7, 2015
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