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 Domains By Proxy LLC of Scottsdale, Arizona, United States of America / Douglass Johnson of Millbrae, California, United States of America. 2. The Domain Name and Registrar
The disputed domain name is registered with GoD, LLC (the "Registrar"). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on February 23, 2016. On February 23, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 23, 2016, 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 February 25, 2016, 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 February 26, 2016.
The Center verified that the Complaint and the Amended Complaint (hereinafter both named together as 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 March 4, 2016. In accordance with the Rules, paragraph 5, the due date for Response was March 24, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on March 30, 2016.
The Center appointed Antony Gold as the sole panelist in this matter on April 7, 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 an Anglo-Australian mining, minerals and petroleum conglomerate BHP Billiton Group. The Group is the world's largest diversified resource group. It is dual listed and comprises two core companies, BHP Billiton Limited and BHP Billiton Plc. The Complainant is a wholly owned subsidiary of BHP Billiton Limited and holds some of its intellectual property.
BHP Billiton Group is headquartered in Melbourne with other offices around the world. In 2014, the group's approximate annual turnover was USD 67.2 billion.
In addition, the BHP Billiton Group owns an extensive international trade mark portfolio. The Complainant is the owner of the following BHP BILLITON marks, among others:
Country
Mark
Registration No.
Classes
Registration Date
Australia
BHP BILLITON
1141449
4, 6, 37, 40, 42
October 18, 2006
New Zealand
BHP BILLITON
764470
4, 6, 37, 40, 42
June 12, 2008
United States of America ("United States")
BHP BILLITON
3703871
4, 6, 37, 40, 42
November 3, 2009
Canada
BHP BILLITON
TMA794995
Wares and Services Equivalent of Classes 4, 6, 37, 40, 42
April 7, 2011
BHP Billiton Group operates a main website that is resolved to through various domain names including , registered on November 11, 2001. Additionally, the Group is the proprietor of multiple domain names, incorporating its trade mark BHP BILLITON, including: , , and .
The disputed domain name was registered on February 19, 2016. The disputed domain name does not resolve to an active website. The nominal registrant of the disputed domain name is a privacy protection service, which has been used to conceal the identity of the true registrant (referred to in this decision as the Respondent). The name of the Respondent supplied by the Registrar to the Center is Douglass Johnson, an individual who is evidently located in California, United States of America.
The disputed domain name does not point to an active website. However, evidence is provided within the Complaint that the Respondent sent an email derived from the Internet address of the disputed domain name, that is from "[_]@", to a third party to inform them of a job interview with BHP Billiton Limited and requesting that the third party take further steps in response to the email. The content of the email gave the impression that it had been sent by the human resources department of BHP Billiton Limited and not by the Respondent. 5. Parties' Contentions A. Complainant
The Complainant asserts that the disputed domain name is confusingly similar to its portfolio of trade marks for BHP BILLITON, including those specifically mentioned above.
The Complainant says that its BHP BILLITON trade mark is very well-known as the foremost brand in diversified resources and in the mining of those resources. The Complainant asserts that Internet users are highly likely to perceive a connection between the disputed domain name and the BHP Billiton Group, particularly given the high degree of similarity between the disputed domain name and its BHP BILLITON trade marks. Such similarity is heightened, the Complainant says, by the use of the suffix "hr" which is a commonly recognised acronym for "human resources". Moreover, the Complainant submits that the generic Top-Level Domain (gTLD) ".com" does not affect the perception of whether the disputed domain name is confusingly similar to its trade marks and should therefore be disregarded in any assessment of similarity.
The Complainant asserts that the Respondent has no rights or legitimate interests in the disputed domain name. It says that the Respondent has not at any time been commonly known by the disputed domain name, and that the Complainant is not aware of any trade marks in which the Respondent may have rights which are similar or identical to the disputed domain name. Further, the Complainant submits that the Respondent is not making any legitimate noncommercial or fair use of the disputed domain name.
Lastly, the Complainant says that the disputed domain name was registered and is being used in bad faith. The Complainant points to the very substantial turnover which it transacts under its BHP BILLITON trade marks and related domain names (USD 67.2 billion in 2014) and says that decisions of other panels under the Policy, such as, Zwack Unicum Rt. v. Erica J. Duna,WIPO Case No. D2000-0037; and The Nasdaq Stock Market, Inc v. NSDAQ.COM, NASDQ.COM and NASAQ.COM,WIPO Case No. D2001-1492, have found that bad faith can be inferred from the registration of a domain name incorporating a very well-known mark. On this basis, the Complainant says that registration of a domain name confusingly similar to its well-known BHP BILLITON trade marks should be found to constitute a registration in bad faith.
Lastly, the Complainant says that to the extent that the Respondent's conduct in pointing the disputed domain name to an empty website is considered "passive use", the passive holding of the disputed domain in the context of the surrounding circumstances and in the light of the decision of the panel in Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003, should be treated as evidence of bad faith use of the disputed domain name. The Complainant says that the Panel should take into account the Respondent's conduct in registering a well-known trade mark, its failure to provide evidence of actual or contemplated use and the use of the disputed domain name in order to send an email purporting to be from the human resources department of BHP Billiton Limited to third parties, evidently for dishonest purposes. B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings
Turning, first, to the Respondent's failure to serve a response, paragraph 14(b) of the Rules provides that if a party, in the absence of exceptional circumstances, does not comply with a provision of, or requirement under these Rules, the Panel shall be entitled to draw such inferences from this omission as it considers appropriate.
Paragraph 4(a) of the Policy requires that the Complainant prove each of the following three elements in order to succeed in its Complaint:
(i) the disputed domain name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights;
(ii) the Respondent has no rights or legitimate interests with respect to the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
It is well established by previous UDRP decisions that the gTLD suffix in the disputed domain name (".com") and the use of a hyphen should be disregarded for the purposes of assessing similarity.
The Complainant has established that it owns registrations for numerous BHP BILLITON trade marks in many jurisdictions around the world, including Australia, the United States and Canada. The disputed domain name entirely incorporates the BHP BILLITON trade mark and has a similar format to domain names used by the BHP Billiton Group, such as . The degree of similarity between the disputed domain name and the Complainant's trade marks is not reduced by the hyphenated suffix "hr" as, in this context, it would commonly be understood by Internet users to be an acronym for "human resources". The addition of this suffix to the BHP BILLITON trade mark makes it likely that Internet users would assume that there was some association or connection between the disputed domain name and the human resources department of the BHP Billiton Group or one of its constituent companies.
Accordingly, the Panel finds that the Complainant has established rights in the word mark BHP BILLITON and that the disputed domain name is confusingly similar to the Complainant's trade mark. B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy sets out, without limitation, several means by which a respondent may be able to demonstrate rights or legitimate interests in a domain name, namely that;
(i) before any notice of the dispute, it can show 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) it can show that it has been commonly known by the domain name, even if no trade mark or service mark rights have been acquired; or
(iii) it can demonstrate 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.
There is no evidence before the Panel to suggest that the Respondent could bring himself within any of these grounds. The Respondent has failed to reply to any correspondence from the Complainant or to respond to this Complaint and has thereby not taken any of the opportunities available to him in order to assert a right or legitimate interest in the disputed domain name. The sole known use by the Respondent of the disputed domain name has been to assist him in masquerading as the human resources department of BHP Billiton Limited in order to initiate contact with third parties. The Panel accordingly finds that the Respondent has no rights or legitimate interests with respect to the disputed domain name. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets out circumstances which, without limitation, shall be evidence of the registration and use of a domain name in bad faith. None of these specific grounds are applicable to the current facts and the Complainant does not suggest otherwise.
However, the specific examples of bad faith registration and use set out at paragraph 4(b) of the Policy are "without limitation". In this respect, whilst the facts of this case are not entirely analogous to those in Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003, which held that passive holding when considered in the totality of the applicable circumstances, can amount to use in bad faith, they are very similar. First, the Panel agrees with the view of previous panels (see for example, HP Billiton Innovation Pty Ltd (BHP Billiton Innovation) v. Bruno Wase,WIPO Case No. D2015-1273) that the BHP BILLITON trade mark is very well-known. Second, the Respondent has not provided any evidence of actual or contemplated good faith use. In addition, the Respondent has also sought to hide behind a privacy service. Whilst the use of such services can often be for perfectly proper purposes, the desire of the Respondent to conceal his identity when perpetrating an evidently dishonest act is another factor to take into account. As a result of all of the above, and as was expressed in Telstra, "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 trade mark law".
The findings above would be sufficient for the Panel to find bad faith use and registration, but the Panel further concludes that the use of an email address associated with the disputed domain name, to send a phishing email for the purposes of dishonest activity is in itself evidence that the disputed domain name was registered and is being used in bad faith. This is consistent with the decisions of earlier panels; see for example, Haas Food Equipment GmbH v. Usman ABD, Usmandel,WIPO Case No. D2015-0285, in which the fact that the disputed domain name was being used to perpetrate a fraud against the complainant was found by the panel to constitute evidence of registration and use in bad faith.
Accordingly, the Panel finds that the disputed domain name was registered and 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 disputed domain name be transferred to the Complainant.
Antony Gold
Sole Panelist
Date: April 21, 2016
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