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 Bright, AK of Port Harcourt, Nigeria. 2. The Domain Name and Registrar
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 March 6, 2017. On March 6, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 7, 2017, the Registrar transmitted by email to the Center its verification response confirming that 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 Respondent of the Complaint, and the proceedings commenced on March 9, 2017. In accordance with the Rules, paragraph 5, the due date for Response was March 29, 2017. Respondent did not submit any response. Accordingly, the Center notified Respondent's default on March 30, 2017.
The Center appointed Lorenz Ehrler as the sole panelist in this matter on April 6, 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
Complainant is an affiliate of the BHP Billiton Group, a multinational mining, metals and petroleum company with its headquarters in Melbourne, Australia. BHP Billiton Group is one of the biggest mining groups worldwide. It employs about 40,000 people in 25 countries. The group's market capitalization is USD 108 billion.
The BHP Billiton Group owns a large trademark and domain name portfolio, the relevant distinctive part of which is BHP BILLITON. Many of these trademarks and domain names are held by Complainant. The trademarks are registered in many jurisdictions worldwide, in particular in Australia (trademark registration No. 1141449, registered on October 18, 2006), New Zealand (trademark registration No. 764470, registered on June 12, 2008), the United States of America (trademark registration No. 3703871, registered on November 3, 2009), Canada (trademark registration No. TMA794995, registered on April 7, 2011) and elsewhere under its international trademark (registration No. 986799, registered on November 16, 2011).
The disputed domain name was registered on January 30, 2017. The disputed domain name does not resolve to an active website. 5. Parties' Contentions A. Complainant
Complainant contends that the disputed domain name, , is confusingly similar to its BHP BILLITON trademarks and that "BHP Billiton" is a well-known brand in diversified resources and the mining of such resources.
Furthermore, Complainant states that Respondent has no rights or legitimate interests in the disputed domain name, having not at any time been commonly known by the disputed domain name, and that Respondent is not making any legitimate use of it.
Lastly, Complainant contends that Respondent has registered and "uses" the disputed domain name in bad faith, even though it does not resolve to any website. B. Respondent
Respondent did not reply to Complainant's contentions. 6. Discussion and Findings
According to paragraph 4(a) of the Policy, Complainant must prove that:
(i) The disputed domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights;
(ii) 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. A. Identical or Confusingly Similar
The trademarks put forward by Complainant demonstrate that Complainant has rights in relevant trademarks.
Under the UDRP, the requirement under paragraph 4(a) of the Policy requires the disputed domain name to be identical or confusingly similar to Complainant's trademarks. There is no requirement of similarity of goods and/or services under the first element.
The existence of confusing similarity within the meaning of paragraph 4(a) of the Policy is not in doubt in the present case, given that the main element in the disputed domain name, i.e.,"bhpbilliton", is identical with Complainant's trademark BHP BILLITON. Indeed, it is obvious that there is a high risk that Internet users, when confronted with the disputed domain name, would believe the disputed domain name belongs to or is associated with Complainant. The incorporation of a trademark in its entirety is typically sufficient to establish that a disputed domain name is identical or confusingly similar to a trademark. The other element of the disputed (second level) domain name, i.e.,the element "-jobs" is descriptive and not sufficient to avoid confusing similarity.
As far as the generic Top Level Domain ".com" is concerned, this element has a technical function and therefore is typically not taken into account when assessing the issue of identity or confusing similarity.
The Panel thus finds that the disputed domain name is confusingly similar with Complainant's trademark BHP BILLITON for the purposes of paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
Complainant contends that Respondent does not have any rights or legitimate interest in the disputed domain name, in particular that Respondent has not at any time been commonly known by the disputed domain name and that Respondent is not making legitimate use of said domain name. At least implicitly, Complainant has contested having granted Respondent any rights to use its trademarks.
There appears to be no connection between Complainant and Respondent to give rise to any authorization for Respondent to have registered the disputed domain name. Furthermore, by not submitting any response to the Complaint, Respondent failed to invoke any circumstance that might demonstrate, pursuant to paragraph 4(c) of the Policy, that it holds any rights or legitimate interests in the disputed domain name (Ahead Software AG v. Leduc Jean,WIPO Case No. D2004-0320; see also, Nintendo of America, Inc., v. Tasc, Inc. and Ken Lewis,WIPO Case No. D2000-1563 (finding that respondent's default, inducing the failure to provide such evidence, was sufficient to conclude that it had no rights or legitimate interests in the disputed domain names)).
The Panel finds that Complainant has made an unrebutted prima facie showing that Respondent does not have any rights or legitimate interests in the disputed domain name, and has therefore satisfied the requirements of paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
Paragraph 4(a)(iii) of the Policy provides that Complainant must, in addition to the matters set out above, demonstrate that the disputed domain name has been registered and is being used in bad faith.
The undisputed prima facie evidence establishes that Respondent is not affiliated with Complainant and has no license or other authorisation to use Complainant's trademark or name.
Complainant has shown convincingly that its trademark is well known, at least in countries with activities in the fields of mining, metals and petroleum, which is the case of Nigeria. It results from an independent Internet search led by the Panel that Port Harcourt, where Respondent appears to reside, is the very center of Nigeria's oil production industry. Respondent registered the disputed domain name well after Complainant's trademark was in use and became well known. The Panel finds that Respondent should have known about Complainant's trademark and business when registering the disputed domain name. It is highly improbable to the Panel that given the reputation of the BHP Billiton trademark, Respondent was unaware of it at the time of the registration of the disputed domain name.
This Panel further considers that the disputed domain name for itself is a strong indication that Respondent was aware of Complainant's trademark BHP BILLITON, as it seems more than unlikely that Respondent would have created – randomly – a distinctive sign that is identical in all relevant parts with Complainant's distinctive trademark, all the more that the terms "bhp" and "billiton" are neither generic nor dictionary terms (see, Motul v. Contact Privacy Inc. Customer 0138693539 / Konstantin Speranskii,WIPO Case No. D2016-2632).
Complainant rightly contends that the passive holding of a disputed domain name can constitute a factor in finding bad faith registration and use pursuant to paragraph 4(a)(iii). Previous UDRP panels indeed held that bad faith can be found where respondent makes no use of the disputed domain name, if there are no indications that respondent could have registered and used the disputed domain name for any legitimate purpose (Alitalia Linee Aeree Italiane S.p.A. v. Colour Digital,WIPO Case No. D2000-1260). Respondent has provided no evidence whatsoever of any actual or contemplated good faith registration or use by it of the disputed domain name.
Respondent has not submitted any evidence to rebut Complainant's claims and assertions regarding the passive holding of the disputed domain name.
On balance, the Panel finds that Complainant therefore has established registration and use of the disputed domain name 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 Complainant.
Lorenz Ehrler
Sole Panelist
Date: April 21, 2017
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