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 Yuan Bei of Changsha, China. 2. The Domain Name and Registrar
The disputed domain name (the “Domain Name”) is registered with Alibaba Cloud Computing Ltd. d/b/a HiChina (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 14, 2015. On December 14, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On December 15, 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.
On December 15, 2015, the Center sent an email communication to the parties in both Chinese and English. On the same day, the Complainant confirmed its request that English be the language of the proceeding while the Respondent requested that Chinese be the language of the proceeding.
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 in both Chinese and English, and the proceeding commenced on December 21, 2015. In accordance with the Rules, paragraph 5, the due date for Response was January 10, 2016. On January 11, 2016, the Center informed the parties that it would proceed with panel appointment shortly.
The Center appointed Karen Fong as the sole panelist in this matter on January 15, 2016. 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 part of the BHP Billiton Group (the “Group”), one of the world’s largest diversified resources group. It employs more than 40,000 people in more than 100 operations in 25 countries. The core of the Group is a dual listed company comprising BHP Billiton Limited and BHP Billiton Plc. The Group is headquartered in Melbourne. Its annual turnover in 2014 was USD 67.2 billion.
The Group trades under the name BHP BILLITON. The Complainant owns trade mark registrations for the mark BHP BILLITON (“the Trade Mark”) in various jurisdictions including Australia, United States of America and the European Union. The earliest trade mark registration submitted in evidence dates back to 2001.
The Complainant controls numerous domain names containing the trade mark BHP BILLITON, including , , , , , and .
The Respondent registered the Domain Name on June 20, 2015. As at the date of the Complaint, the Domain Name did not point to a website. It still does not.
On July 7, 2015, the Complainant’s legal representatives wrote a cease and desist letter to the Respondent requesting the transfer the Domain Name to the Complainant. On July 3, 2015, the Respondent emailed the legal representatives indicating that he would transfer the Domain Name if it would pay USD 100 for registration and management fees. On December 14, 2015, the same day as the filing of the Complaint, the legal representatives emailed the Respondent repeating the request to transfer but refusing to make any payment. The Respondent emailed back that day saying, “[t]his is sheer day dreaming.” 5. Parties’ Contentions A. Complainant
The Complainant contends that the Domain Name is identical or confusingly similar to the Trade Mark, the Respondent has no rights or legitimate interests with respect to the Domain Name and that the Domain Name was registered and is being used in bad faith. The Complainant requests transfer of the Domain Name. B. Respondent
The Respondent did not reply to the Complainant’s contentions except to say that he wanted Chinese to be the language of the proceeding. 6. Discussion and Findings A. General
According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the Domain Name, the Complainant must prove each of the following, namely that:
(i) The Domain Name is identical or confusingly similar to a trade mark 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 was registered and is being used in bad faith. B. Language of the Proceeding
The Rules, paragraph 11, provide that unless otherwise agreed by the parties or specified otherwise in the registration agreement between the respondent and the registrar in relation to the disputed domain name, the language of the 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. According to the information received from the Registrar, the language of the Registration Agreement for the Domain Name is Chinese.
The Complainant submits in the Complaint that the language of the proceeding should be English. The Respondent requested that Chinese be the language of the proceeding.
The Complainant contends that the Respondent understands English for the following reasons – a) the Respondent has registered a well-known brand headquartered in an English speaking jurisdiction; b) the email chain between the Complainant’s legal representatives and the Respondent was in English; c) the Domain Name is in Latin script rather than Chinese script. If the Complainant had to translate the Complaint, it would be unduly disadvantaged.
The Panel accepts the Complainant’s submissions regarding the language of the proceeding. The Respondent communicated with the legal representatives in English. The Complainant may be unduly disadvantaged by having to conduct the proceeding in Chinese especially in circumstances where the Respondent has elected not to file a Response to the proceeding. The Panel notes that all of the communications from the Center to the parties were transmitted in both Chinese and English. The Respondent cannot avail himself of the excuse that he had no knowledge or did not understand that the proceeding had been filed against him. Having considered all the circumstances of this case, the Panel determines that English is the language of the proceeding. C. Identical or Confusingly Similar
The Panel is satisfied that the Complainant has established that it has rights to the trade mark BHP BILLITON.
The threshold test for confusing similarity involves the comparison between the trade mark and the domain name itself to determine likelihood of Internet user confusion. The trade mark would generally be recognizable within the domain name. In this case the Domain Name comprises the trade mark BHP BILLITON in its entirety which is identical to the Trade Mark. For the purposes of assessing identity and confusing similarity under paragraph 4(a)(i) of the Policy, it is permissible for the Panel to ignore the generic Top-Level Domain (“gTLD”) suffix, in this case “.pub”.
The Panel finds that the Domain Name is identical or confusingly similar to a trade mark in which the Complainant has rights. D. Rights or Legitimate Interests
Pursuant to paragraph 4(c) of the Policy, a 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 domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) the respondent has been commonly known by the domain name, even if it has acquired no trade mark or service mark rights; or
(iii) the respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain, to misleadingly divert consumers, or to tarnish the trade mark or service mark at issue.
Although the Policy addresses ways in which a respondent may demonstrate rights or legitimate interests in a disputed domain name, it is well established that, as it is put in paragraph 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”) that 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, the burden of production shifts to the respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name. If the respondent does come forward with some allegations of evidence of relevant right or legitimate interest, the panel weighs all the evidence, with the burden of proof always remaining on the complainant.
The Complainant alleges that the Respondent has not at any time been commonly known by the Domain Name. It is also not aware of any trade marks in which the Respondent may have rights that are identical or similar to the Domain Name. Further the Respondent is not making a legitimate noncommercial or fair use of the Domain Name.
The Panel finds that the Complainant has made out a prima facie case, a case calling for an answer from the Respondent. The Respondent has not filed a Response and the Panel is unable to conceive of any basis upon which the Respondent could sensibly be said to have any rights or legitimate interests in respect of the Domain Name.
The Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name. E. Registered and Used in Bad Faith
To succeed under the Policy, the Complainant must show that the Domain Name has been both registered and used in bad faith. It is a double requirement.
The Domain Name is not connected to an active website. This does not prevent a finding of bad faith. The consensus view in paragraph 3.2 of the WIPO Overview 2.0 states that the apparent lack of active use of the domain name without any active attempt to sell or to contact the trade mark owner does not prevent a finding of bad faith. The Panel has to examine the circumstances of the case to determine whether the respondent is acting in bad faith. UDRP Panels may draw inferences about whether the domain name was used in bad faith given the circumstances surrounding registration, and vice versa.
The Trade Mark is a well-known mark and used and registered by the Complainant extensively and for a substantial period of time in many parts of the world. The combination of the acronym BHP and BILLITON has no other meaning other than a reference to the Complainant and its Group. It was created through a merger of BHP Limited and Billiton Plc. A search on Google revealed only references to the Complainant. It would be inconceivable that the Respondent had no knowledge and actual notice of the Trade Mark when the Domain Name was registered. The Panel concludes that the registration was made in bad faith.
In addition to the circumstances of registration referred to above, the following facts indicate that the Domain Name is being used in bad faith. The Complainant’s Trade Mark is a well-known trade mark with a global reputation and the Trade Mark has no other meaning other than in reference to the Complainant. Further the Respondent’s contact addresses in Changsha, China does not include a flat or house number and appear likely to be false. The Written Notice was unable to be delivered to the Respondent at this address. Also, the Respondent failed to file a Response.
Considering the circumstances, the Panel considers that the Domain Name is also being used in bad faith.
The Panel finds that the Domain Name has been registered and is being used 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.
Karen Fong
Sole Panelist
Date: January 26, 2016
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