The Complainant is BHP Billiton Innovation Pty Ltd of Melbourne, Australia, represented by Griffith Hack, Patent and Trade Mark Attorneys, Australia.
The Respondent is Charles Derick of Cincinnati, Ohio, United States of America. 2. The Domain Name and Registrar
The disputed domain name (the “Disputed Domain Name”) is registered with PDR Ltd. d/b/a PublicDomainR (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 18, 2017. On January 18, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On the same day, 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 January 25, 2017. In accordance with the Rules, paragraph 5, the due date for Response was February 14, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 15, 2017.
The Center appointed Michael D. Cover as the sole panelist in this matter on February 24, 2017. 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 an Australian company, based in Melbourne, Australia. The Complainant is part of the BHP Billiton group and holds certain of the intellectual property rights of the BHP Billiton group. BHP Billiton group is large diversified resources group, employing more than 40,000 people in over 100 operations throughout the world. The group came together in 2001, through a merger. BHP Billiton group has a turnover (revenue) of over USD 44 billion and controls numerous domain names containing the trademark BHP BILLITON. These domain names are owned by the Complainant.
The Complainant is the proprietor of numerous trademark registrations throughout the world, consisting of or including BHP BILLITON, including in Australia (trademark No. 1141449, dated October 18, 2006), New Zealand (trademark No. 764470, dated June 12, 2008), Canada (trademark No. TMA794995, dated July 4, 2011), the United Kingdom of Great Britain and Northern Ireland (trademark No. 2264607, dated August 30, 2002) and the United States (trademark No. 3703871, dated November 3, 2009).
The Respondent is an individual, Charles Derick, with an address in Cinncinnati, Ohio, United States.
The Disputed Domain Name was registered on December 10, 2016. 5. Parties’ Contentions A. Complainant
Identical or Confusingly Similar
The Complainant submits that the Disputed Domain Name is confusingly similar to its trademark BHP BILLITON. The Complainant submits that the trademark BHP BILLITON has become over the years the world’s most well-known trademark for diversified resources and mining of such resources. The Complainant goes on to submit that consumers, on viewing the Disputed Domain Name, are highly likely to expect an association with BHP Billiton, in view of the similarity of the Disputed Domain Name to the trademark BHP BILLITON and that this is notwithstanding the addition of the non-distinctive element “us”.
The Complainant also notes that the addition of a generic Top-Level Domain (“gTLD”), such as “.com” does not affect the assessment that the Disputed Domain Name is confusingly similar to a particular trademark.
The Complainant concludes that the Disputed Domain Name is confusingly similar to its trademark BHP BILLITON and that the requirement of the Policy’s first point is met.
Rights or Legitimate Interests
The Complainant submits that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name. In particular, the Respondent has not at any time been commonly known by the Disputed Domain Name and the Complainant is not aware that the Respondent has any rights in any trademarks that are identical or similar to the Disputed Domain Name.
The Complainant also submits that the Respondent is not making any legitimate noncommercial of fair use of the Disputed Domain Name.
The Complainant concludes that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name.
Registered and Used in Bad Faith
The Complainant submits that the Disputed Domain Name has been registered and is being used in bad faith.
The Complainant notes that BHP Billiton has a worldwide reputation in its trademark BHP BILLITON. It submits that Zwack Unicum Rt. v. Erica J. Duna,WIPO Case No. D2000-0037 and The Nasdaq Stock Market v. Act One Internet Solutions,WIPO Case No. D2003-0103 show that bad faith registration may be inferred from the registration of a well-known trademark.
The Complainant also submits that it suspects that the Respondent registered the Disputed Domain Name intending to engage in an elaborate attempt at recruitment fraud, including by intentionally attempting to attract Internet users to an online location by creating a likelihood of confusion with the Complainant’s BHP BILLITON trademark.
The Complainant goes on to submit that the mere passive use of the Disputed Domain Name by the Respondent is evidence of bad faith and supports this contention by reference to Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003.
Remedy Requested
The Complainant requests that the Panel decide that the Disputed Domain Name be transferred to the Complainant. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
The Complainant must demonstrate on the balance of probabilities that the Disputed Domain Name is identical or confusingly similar to its trademark, in which the Complainant has rights, that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name and that the Disputed Domain Name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
The Panel accepts that the Complainant has established that it has rights in its trademark BHP BILLITON. The Complainant has registered rights in its trademark. The Panel is unable to find that the Complainant has in addition Common Law Rights. Although no doubt companies within the BHP Billiton group have made extensive use of that trademark in connection with their businesses, the Complainant has not provided any evidence that it has traded under the trademark BHP BILLITON nor that the use by the other companies in the BHP Billiton group was under a licence from the Complainant.
The Panel also accepts the Complainant’s submission that the Disputed Domain Name is confusingly similar to its trademark BHP BILLITON. BHP BILLITON is the dominant part of the Disputed Domain Name and, as noted in the decisions cited by the Complainant, it is well established that the addition of a gTLD or a descriptive element such as “us” is not sufficient to avoid confusing similarity.
The Panel accordingly finds that the Disputed Domain Name is confusingly similar to the Complainant’s trademark BHP BILLITON, in which the Complainant has rights, and that element 4(a)(i) of the Policy is satisfied. B. Rights or Legitimate Interests
The Panel accepts that the Respondent has no rights or legitimate interests in the Disputed Domain Name. In particular, the Panel accepts that the Complainant has not authorized or licensed the Respondent to use its trademark and that the Respondent is not affiliated to the Complainant.
It is a reasonable inference that the Respondent was aware of the existence of the Complainant when it registered the Disputed Domain Name. This is because the Complainant’s trademark is widely known and has been registered inter alia in the Respondent’s home territory, the United States since 2009. There is no evidence that use of the Disputed Domain Name has taken place, which could be described as legitimate noncommercial or fair use, without intent for commercial gain to misleadingly divert consumers. There is no evidence that the Respondent has used or prepared to use the Disputed Domain Name before this dispute arose and nor is there any evidence that the Respondent was commonly known by the Disputed Domain Name and so those two gateways are denied to the Respondent.
The Panel accordingly finds that the Respondent has no rights or legitimate interests in the Disputed Domain Name and that element 4(a)(ii) of the Policy has been satisfied. C. Registered and Used in Bad Faith
The Panel accepts the submissions of the Complainant on this aspect and finds that the Disputed Domain Name has been registered and is being used in bad faith.
The Complainant asserts that its trademark has been used in domain names by third parties as a vehicle to commit employment fraud and suspects that the Respondent registered the Disputed Domain Name also for such activities. The Panel accepts, on the balance of probabilities that the Respondent was well aware of what the Panel accepts is among well-known trademarks when it registered the Disputed Domain Name. The Disputed Domain Name is currently passively held, and given the nature of the Disputed Domain Name, the Panel cannot conceive of any use by the Respondent that would be legitimate under the circumstances.
The Panel finds that the Respondent has registered and is using the Disputed Domain Name in bad faith and the element 4(a)(iii) of the Policy has been satisfied. 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.
Michael D. Cover
Sole Panelist
Date: March 13, 2017
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