The Complainant is BHP Billiton Innovation Pty Ltd of Melbourne, Australia, represented by Griffith Hack Patent and Trade Mark Attorneys, Australia.
The Respondent is Jefry Brukeman of New York, United States of America (“United States”). 2. The Domain Name and Registrar
The disputed domain name is registered with NameSilo, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 19, 2016. On September 19, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 19, 2016, 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. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amended Complaint on September 22, 2016.
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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on September 22, 2016. In accordance with the Rules, paragraph 5, the due date for Response was October 12, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 17, 2016.
The Center appointed Johan Sjöbeck as the sole panelist in this matter on October 20, 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 has submitted evidence that it is the owner of numerous trademark registrations for the trademarks BHP BILLITON and BHP. Examples of such trademark registrations are:
BHP BILLITON, Australian trademark with registration No. 1,141,449, registration date October 18, 2006 for the classes 4, 6, 37, 40 and 42.
BHP BILLITON, United States trademark with registration No. 3,703,871, registration date November 3, 2009 for the classes 4, 6, 37, 40 and 42.
According to the Registrar, the disputed domain name was registered on August 23, 2016. According to the evidence submitted in the Complaint, the disputed domain name resolves to a website which resembles the Complainant’s official website. 5. Parties’ Contentions A. Complainant
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 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”. BHP Billiton was created through the DLC merger of BHP Limited (now BHP Billiton Limited) and Billiton Plc (now BHP Billiton Plc), which was concluded on June 29, 2001. The Complainant, BHP Billiton Innovation Pty Ltd, is a wholly owned subsidiary of BHP Billiton Limited, holding some of BHP Billiton’s intellectual property. BHP Billiton is often referred to simply as “BHP”. BHP Billiton is headquartered in Melbourne with major offices in London and supporting offices around the world. BHP Billiton operates a website that is accessible via various domain names including “”.
The Complainant’s approximate annual turnover in 2009, 2010, 2011, 2012, 2013 and 2014 amounted to around USD 50,2 billion, USD 52,8 billion, USD 71,7 billion, USD 72,2 billion, USD 65,9 billion and USD 67,2 billion respectively.
The website to which the disputed domain name resolves, closely resembles the official website of the Complainant. The website has been blocked by the Mimecast firewall on suspicion of phishing content. This would be supported by some of the functionalities on the website, for example an online form for applying for jobs. Such functionality is not offered by the Complainant.
The disputed domain name is confusingly similar to the Complainant’s portfolio of BHP and BHP BILLITON trademarks. Consumers, upon viewing the Respondent’s domain name, are highly likely to expect an association with the Complainant, in particular in light of the similarity of the disputed domain name with the BHP BILLITON trademark.
The Respondent does not have any right or legitimate interest in the disputed domain name. Not at any time has the Respondent 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. The Respondent is not making legitimate noncommercial or fair use of the disputed domain name.
It may be inferred from the Respondent’s registration of a domain name that is confusingly similar to the Complainant’s well-known BHP BILLITON trademark that the disputed domain name was registered in bad faith. Furthermore, the disputed domain name is pointing to a website that is clearly designed to resemble the Complainant’s official website. The manner in which the website has been set up in conjunction with the fact that the disputed domain name contains the word “jobs” suggests that the website is being used or intended to be used in the pursuit of employment fraud. The Complainant has previously been the target of a number of such operations. The modus operandi is to garner the interest of individuals to apply for a position with the Complainant, which establishes a line of communication with the target. At some point during the process the individual is invited to pay for “expenses” such as legal or immigration expenses in order to secure the position. The website R contains an entry reporting that the website accessible via the disputed domain name is a fake employment website. The Complainant submits that the Respondent’s conduct in using the disputed domain name can only be in bad faith. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
According to paragraph 4(a) of the Policy, the Complainant must prove each of the following:
(i) that the disputed domain name 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 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 is, according to the submitted evidence, the owner of the registered trademarks BHP BILLITON and BHP. The disputed domain name incorporates the trademark BHP BILLITON in its entirety with the exception of the letter “l”. The disputed domain name contains only one “l” letter in “biliton” while the trademark contains two. Furthermore, the disputed domain name contains the addition of the descriptive term “jobs”. The ability for a descriptive term, such as “jobs”, to clearly distinguish the disputed domain name from the trademark BHP BILLITON, is limited in this case.
Having the above in mind, the Panel concludes that the disputed domain name is confusingly similar to the Complainant’s trademark BHP BILLITON and that the Complainant has proven the requirement under paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
The Complainant must show, at least prima facie, that the Respondent has no rights or legitimate interests with respect to the disputed domain name. The Respondent may establish rights or legitimate interests in the disputed domain name by demonstrating in accordance with paragraph 4(c) of the Policy any of the following:
(i) that it has used or made 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 prior to any notice of the dispute; or
(ii) that it is commonly known by the disputed domain name, even if it has not acquired any trademark or service mark rights; or
(iii) that it 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.
The Complainant has not licensed or otherwise consented to the Respondent’s use of the trademark BHP BILLITON in connection with the disputed domain name which is confusingly similar to the Complainant’s trademark. There is no evidence indicating that the Respondent has made preparations to use the disputed domain name in connection with a bona fide offering of goods or services prior to the dispute.
Although given the opportunity, the Respondent has not rebutted the Complainant’s prima facie case. It has not submitted any evidence indicating that the Respondent is the owner of any trademark rights or that the Respondent is commonly known by the disputed domain name . Furthermore, there is no evidence in the case file indicating that 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.
The Respondent has failed to invoke any circumstances which could demonstrate, pursuant to paragraph 4(c) of the Policy or otherwise, any rights or legitimate interests in respect of the disputed domain name . Thus, there is no evidence in the case that refutes the Complainant’s submissions, and the Panel concludes that the Complainant has also proven the requirement under paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
Under paragraph 4(b) of the Policy, evidence of bad faith registration and use include:
(i) circumstances indicating that the disputed domain name was registered or acquired primarily for the purpose of selling, renting, or otherwise transferring the disputed domain name registration to the owner of a trademark or to a competitor of the trademark owner, for valuable consideration in excess of the documented out-of-pocket costs directly related to the disputed domain name; or
(ii) circumstances indicating that the disputed domain name was registered in order to prevent the owner of a trademark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or
(iii) circumstances indicating that the disputed domain name was registered primarily for the purpose of disrupting the business of a competitor; or
(iv) circumstances indicating that the disputed domain name has intentionally been used in an attempt to attract, for commercial gain, Internet users to a website or other online location, by creating a likelihood of confusion with a trademark as to the source, sponsorship, affiliation, or endorsement of the website or location or of a product or service on the website or location.
The Complainant’s trademark registrations predate the registration of the disputed domain name. The submitted evidence indicates that the Respondent is directing the disputed domain name to a website which is very similar to the Complainant’s website. The evidence clearly demonstrates that the content on the Respondent’s website refers to the Complainant. On the website, “billiton” is spelled with two “l” letters and not with one “l” letter, as in the disputed domain name. The content on the website is misleading and confusing to anyone seeking information regarding employment with the Complainant as the Respondent is passing himself off as the Complainant by displaying the Complainant’s logotype. The content on the website gives the impression that the website is created by the Complainant. Consequently, it is clear that the Respondent knew or must have known of the Complainant’s trademark when registering and using the disputed domain name. In addition to the above, the evidence provided by the Complainant indicates that the Respondent’s website may contain phishing content.
Thus, based upon the submitted material, the Panel finds that the disputed domain name has intentionally been registered and used in an attempt to attract, for commercial gain, Internet users to the Respondent’s website by creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation, or endorsement of the website or of a product or service on the website.
There is no evidence in the case file that refutes the Complainant’s submissions.
The Panel concludes that the Complainant has proved the requirements under paragraph 4(b) of the Policy and that the disputed domain name has been 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.
Johan Sjöbeck
Sole Panelist
Date: October 27, 2016
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