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 OneandOne Private Registration, 1&1 Internet Inc of Chesterbrook, Pennsylvania, United States of America (“United States”) / Mark Tarce, Mark Tarce Furniture of Ashmore, Queensland, Australia. 2. The Domain Name and Registrar
The disputed domain name is registered with 1&1 Internet SE (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 27, 2017. On February 27, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 4, 2017, and March 24, 2017, 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 March 27, 2017, 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 March 31, 2017.
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 March 31, 2017. In accordance with the Rules, paragraph 5, the due date for Response was April 20, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 23, 2017.
The Center appointed Simon Minahan as the sole panelist in this matter on May 8, 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 a large mining corporation based in Australia with a market capitalization as at June 30, 2015 of USD 108 billion with revenue from continuing operations that year of USD 44.6 billion. The Complainant controls numerous domain names containing the trade mark BHP BILLITON, including , , , and .
The Complainant is the owner of numerous trade mark registrations for the trade mark BHP BILLITON in jurisdictions around the world, including registrations in Australia, New Zealand, the United Kingdom of Great Britain and Northern Ireland, the European Union, the United States and Canada. See, e.g., Australian Trade Mark Number 1141449 BHP BILLITON, registered on April 29, 2008.
The disputed domain name was registered on February 15, 2017. At the date of filing of the Complaint, the disputed domain name was not associated with an active website. 5. Parties’ Contentions A. Complainant
The Complainant submits that the disputed domain name is confusingly similar to BHP Billiton’s extensive portfolio of BHP BILLITON trade marks which is contends are well known worldwide. It further contends that consumers, upon viewing the disputed domain name, are highly likely to expect an association with the Complainant, and that the presence of the generic Top-Level Domain (“gTLD”) identifier does not distinguish the disputed domain from the said trade marks for the purposes of assessing the Complaint.
It was also submitted that the Respondent had no rights or legitimate interests in the disputed domain name because:
a) the Respondent has not at any time been commonly known by the disputed domain name;
b) the Complainant is not aware of any trade marks in which the Respondent may have rights that are identical or similar to the disputed domain name:
c) the Respondent is not making legitimate noncommercial or fair use of the disputed domain name.
Thirdly it was submitted by the Complainant that the the disputed domain name was registered and is being used in bad faith, despite “passive use”, because the fame of the BHP BILLITON mark infers that the Respondent applied for it with knowledge of the Complainant’s interest and knowing that the Respondent had no such interest. Reference was made in support of these contentions to 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, in which it was held that bad faith registration may be inferred from the registration of a well−known mark, and to Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003 for the proposition that registration of a domain name including a well-known mark is evidence of bad faith in the absence of the Respondent providing any evidence of good faith use or a legitimate interest.
Finally the Complainant requested that the Panel should issue a decision on the merits regardless of any possible consent by the Respondent to transfer the disputed domain name, citing Sanofi-aventis v. Standard Tactics LLC,WIPO Case No. D2007-1909, in support. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
To warrant transfer of the disputed domain name, the Complainant must prove, pursuant to paragraph 4(a) of the Policy that:
(i) the disputed domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
In accordance with paragraph 14 of the Rules, in the absence of a Response the Panel shall proceed to a decision on the Complaint. A. Identical or Confusingly Similar
The Panel considers the disputed domain name to be confusingly similar to the BHP BILLITON trade marks. The transposition of the letters “i” and “l” seeks to maintain clear visual similarity with the BHP BILLITON trademarks and the Panel finds that the difference thereby created is not such as would plainly distinguish the disputed domain name from the Complainant’s marks – indeed it is calculated to do the opposite.
Further the Panel notes, as has been found so routinely as to preclude the need to recite authority, the gTLD suffix is generally of no account in considering this question. Effective reproduction of a whole mark in a domain name, even with banal variations or additions is to be taken as per se establishing confusing similarity, even if not being identical under the Policy, e.g.:
Sanofi−Aventis v. Direct Response Marketing aka DRM,WIPO Case No. D2005-0661;
Sanofi−aventis v. Elizabeth Riegel and Andrew Riegel,WIPO Case No.D2005-1045;
Telstra Corporation Ltd v. Peter Lombardo, Marino Sussich and Ray Landers,WIPO Case No. D2000-1511;
PepsiCo Inc. v. Pepsi SRL (a/k/a P.E.P.S.I.) and EMS COMPUTER INDUSTRY,WIPO Case No. D2003−0696;
PepsiCo Inc v. Diabetes Home care, Inc. and DHC services,WIPO Case No. D2001-0174;
Sony Kabushiki Kaisha (also trading as Sony Corporation) v. Kil Inja,WIPO Case No. D2000-1409;
America Online, Inc. v. Chris Hoffman,WIPO Case No. D2001-1184;
Pfizer Inc. v. United Pharmacy Ltd,WIPO Case No. D2001-0446;
Wal-Mart Stores, Inc. v. Lars Stork,WIPO Case No. D2000-0628;
America Online, Inc. v. Dolphin@Heart,WIPO Case No. D2000-0713;
Wal-Mart Stores, Inc. v. Yongsoo Hwang, NO-WALMART; NO-WALMART.COM,WIPO Case No. D2000−0838; and
AltaVista Company v. S.M.A., Inc.,WIPO Case No. D2000-0927. B. Rights or Legitimate Interests
The Complainant’s contentions set out in Section 5.A above, as well as the absence of any evidence of entitlement for the Respondent to use the BHP BILLITON trade mark, are sufficient to make out a prima facie case for the Complainant, and, under 4(a)(ii) of the Policy, once the Complainant has made out such prima facie case, the burden of production shifts to the Respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the disputed domain name, see Do The Hustle, LLC v. Tropic Web,WIPO Case No. D2000-0624; Time Out Group Ltd. v. Marc Jacobson,WIPO Case No. D2001-0317.
There being no evidence or submission from the Respondent, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name. C. Registered and Used in Bad Faith
The Panel finds that the Respondent registered and has used the disputed domain name in bad faith.
The Panel considers that:
- the highly confusing nature of the disputed domain name compared to the Complainant’s trademark, given the findings of its widely-known and long-established trade marks; and
- the Complainant’s worldwide reputation and its numerous recorded trade mark and domain name registrations; and
-the Respondent’s passing holding of the disputed domain name,
make it difficult to conceive of any legitimate use of the disputed domain name by the Respondent. Indeed the Respondent has offered no explanation and the Panel can think of no plausible explanation as to why the Respondent selected the disputed domain name other than to trade on the goodwill of the Complainant’s well known BHP BILLITON marks.See e.g.: Missoni S.p.A. v. T.N.T. TerrificNTerry Inc.,WIPO Case No. DWS2008-0003. 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.
Simon Minahan
Sole Panelist
Date: June 1, 2017
Full & Egal Universal Law Academy