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 (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 27, 2017. On March 27, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 28, 2017, 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 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 21, 2017.
The Center appointed Peter J. Dernbach as the sole panelist in this matter on April 28, 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 affiliate of a global diversified resources group BHP Billiton, which is headquartered in Melbourne, Australia, with major offices in London, United Kingdom of Great Britain and Northern Ireland (the "United Kingdom") and supporting offices around the world. The Complainant has produced registration information of several trademarks, inter alia: BHP BILLITON, Australia trademark, Registration No. 1141449, registered on October 18, 2006; BHP BILLITON, International trademark, Registration No. 986799, registered on November 16, 2006; BHP BILLITON, United States trademark, Registration No. 3703871, registered on November 3, 2009.
According to the WhoIs data and the Registrar's verification response, the Respondent is Bright, AK. The Disputed Domain Name was registered on March 21, 2017. The Disputed Domain Names does not resolve to an active website. 5. Parties' Contentions A. Complainant
The Complainant requests that the Disputed Domain Name be transferred to the Complainant based on the following grounds:
(i) The Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.
The Disputed Domain Name is confusingly similar to the Complainant's BHP BILLITON trademark. The Disputed Domain Name integrates the BHP BILLITON trademark in its entirety. The generic Top-Level Domain ("gTLD") ".com" does not affect the assessment that a domain name is confusingly similar to a particular trade mark. The non-distinctive addition "job" to the Disputed Domain Name cannot change the fact that the Disputed Domain Name is confusingly similar with the BHP BILLITON trademarks.
(ii) The Respondent has no rights or legitimate interests in respect of the Disputed Domain Name.
The Respondent has not at any time 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. Also, the Respondent is not making legitimate noncommercial or fair use of the Disputed Domain Name.
(iii) The Disputed Domain Name has been registered and is being used in bad faith.
The Respondent's registration of a domain name that is confusingly similar to the Complainant's well-known BHP BILLITON trademark constitutes bad faith. Also, the Disputed Domain Name was registered shortly after the Complainant filed a URDP complaint against the related domain name , also registered by the Respondent. Thus, the Disputed Domain Name was registered in bad faith.
The Respondent's "passive use" of the Disputed Domain Name is evidence of bad faith use in light of the present set of circumstances. Accordingly, the Disputed Domain Name is being used in bad faith. B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings A. Identical or Confusingly Similar
Paragraph 4(a)(i) of the Policy provides that "[a domain-name holder] is required to submit to a mandatory administrative proceeding in the event that [a complainant] asserts to the applicable [administrative-dispute-resolution service provider], in compliance with the Rules of Procedure, that (i) [the disputed domain name] is identical or confusingly similar to a trademark or service mark in which the complainant has rights[.]"
The Complainant has established that it is the owner of the BHP BILLITON trademark.
The Disputed Domain Name, , incorporates the BHP BILLITON trademark in its entirety with the combination of a hyphen, a term "job", and the gTLD ".com". The addition of a hyphen as well as a term "job" and the gTLD ".com" does not sufficiently distinguish the Disputed Domain Name from the Complainant's BHP BILLITON trademark. The distinctive part of the Disputed Domain Name is the "bhpbilliton" element, which contains the Complainant's trademark in its entirety.
The Panel concludes that the Disputed Domain Name is confusingly similar to the Complainant's BHP BILLITON trademark. The condition of paragraph 4(a)(i) of the Policy has been fulfilled. B. Rights or Legitimate Interests
Paragraph 4(a)(ii) of the Policy provides that "[a domain-name holder] is required to submit to a mandatory administrative proceeding in the event that [a complainant] asserts to the applicable
[administrative-dispute-resolution service provider], in compliance with the Rules of Procedure, that […] (ii) [the respondent has] no rights or legitimate interests in respect of the [disputed] domain name[.]"
Paragraph 4(c) of the Policy sets out the following circumstances "[which], in particular but without limitation, if found by the Panel, shall demonstrate [the respondent's] rights or legitimate interests to the [disputed] domain name for the purposes of paragraph 4(a)(ii) [of the Policy]:
(i) before any notice to [the respondent] of the dispute, [the respondent's] use of, or demonstrable 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; or
(ii) [the respondent] (as an individual, business, or other organization) [has] been commonly known by the [disputed] domain name, even if [the respondent has] acquired no trademark or service mark rights; or
(iii) [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 or service mark at issue."
The Complainant has established it is the owner of the BHP BILLITON trademark and confirmed that it has no connection or affiliation with the Respondent. The Complainant also states that it is not aware of any trademarks in which the Respondent may have rights that are identical or similar to the Disputed Domain Name.
The Panel finds that the Complainant has made out a prima facie case that the Respondent lacks rights or legitimate interests in the Disputed Domain Name. The burden of production thus shifts to the Respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the Disputed Domain Name.
The Respondent did not submit any evidence or allegation to show that it has rights or legitimate interests as demonstrated in paragraph 4(c) of the Policy in respect of the Disputed Domain Name. The Respondent did not disclose any relationship with the Complainant. Therefore, the Respondent cannot claim that it has rights or legitimate interests in the Disputed Domain Name.
According to the record in the WhoIs database, there is no evidence showing that the Disputed Domain Name has any connection with the Respondent's name or the Respondent is otherwise commonly known by the Disputed Domain Name.
Also, the Respondent did not submit any evidence or allegation to show 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.
Based on the above, the Panel finds that the condition of paragraph 4(a)(ii) of the Policy has been fulfilled. C. Registered and Used in Bad Faith
Paragraph 4(a)(iii) of the Policy provides that "[a domain-name holder] is required to submit to a mandatory administrative proceeding in the event that [a complainant] asserts to the applicable [administrative-dispute-resolution service providers], in compliance with the Rules of Procedure, that […] (iii) [the respondent's] domain name has been registered and is being used in bad faith".
The Complainant's BHP BILLITON trademark has been registered in many jurisdictions and the BHP BILLITON trademark is the distinctive part of the Disputed Domain Name. No allegation or evidence suggests that the Respondent selected the BHP BILLITON trademark as used in the Disputed Domain Name for any reason other than the reputation of the Complainant's trademark. Therefore, the Panel confirms that the Disputed Domain Name was registered in bad faith.
The Disputed Domain Name is currently inactive and does not redirect to any website. However, the fact that the Respondent passively holds the inactive Disputed Domain Name does not prevent the Panel from a finding of use in bad faith. The Panel must still examine all the circumstances of the case to determine whether the Respondent is acting in bad faith. (Paragraph 3.2 of WIPO Overview 2.0). The Panel looks into the present case in its entirety and finds that the Respondent previously registered another domain name, , that entirely incorporates the Complainant's BHP BILLITON trademark as the distinctive part and has been determined to be transferred to the Complainant in another UDRP proceeding (BHP Billiton Innovation Pty Ltd v. Bright, AK,WIPO Case No. D2017-0451). It is highly possible that the Respondent passively holds the Disputed Domain Name for some future active use in a way that would be competitive with or otherwise detrimental to the Complainant. (Jupiters Limited v. Aaron Hall,WIPO Case No. D2000-0574). According to the foregoing cumulative facts, the Panel finds that the Respondent's passive holding of the Disputed Domain Name that is currently inactive constitutes use in bad faith.
As the Disputed Domain Name has been registered and is being used in bad faith, the condition of paragraph 4(a)(iii) of the Policy has been fulfilled. 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.
Peter J. Dernbach
Sole Panelist
Date: May 12, 2017
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