The Complainant is BHP Billiton Innovation Pty Ltd (BHP Billiton Innovation) of Melbourne, Australia, represented by Griffith Hack Patent and Trade Mark Attorneys, Australia.
The Respondent is Resel of Moscow, Russian Federation. 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 April 27, 2017. On April 27, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 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 May 9, 2017. In accordance with the Rules, paragraph 5, the due date for Response was May 29, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 30, 2017.
The Center appointed George R. F. Souter as the sole panelist in this matter on June 19, 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 diversified resources group, employing circa 40,000 people in 25 countries, with a revenue from its operations of USD 44.6 billion as at June 30, 2015.
The Complainant has registered its trademark BHP BILLITON widely throughout the world, and details of such registrations have been supplied to the Panel. These include United States of America trademark with registration number 3703871 registered on November 3, 2009 and International Trademark with registration number 0986799, registered on November 16, 2006.
The disputed domain name was registered on March 29, 2017 and it is not currently being used in connection with a website. 5. Parties’ Contentions A. Complainant
The Complainant alleges that the disputed domain name is confusingly similar to its BHP BILLITON trademark, merely adding a third “l” to the word BILLITON, and the descriptive or non-distinctive element “us” plus the generic Top-Level Domain (“gTLD”) indicator “.com” to its BHP BILLITON trademark.
The Complainant alleges that the Respondent lacks rights or legitimate interests in the disputed domain name, in particular that the Respondent is not generally known by the disputed domain name, and lacks rights or legitimate interests in the disputed domain name.
The Complainant states that it became aware of the disputed domain name upon being notified that the disputed domain name may be being used in malicious email campaigns, and alleges that the disputed domain name was registered in bad faith, and the passive holding of the disputed domain name constitutes use of the disputed domain name in bad faith. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
Paragraph 4(a) of the Policy lists three elements that the Complainant must prove to merit a finding that the disputed domain name be transferred to the Complainant:
(i) the disputed domain name 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. A. Identical or Confusingly Similar
It is well established in decisions under the UDRP that gTLD indicators (e.g., “.com”, “.info”, “.net”, “.org”) may typically be considered irrelevant in assessing confusing similarity between a trademark and a disputed domain name. The Panel agrees with this view and considers the gTLD indicator “.com” to be irrelevant in the present case.
In the Panel’s opinion, the mere addition of a third “l” to the BILLITON element of the Complainant’s trademark is not sufficient to evade a finding of confusing similarity. Further, it is well-established in prior decisions under the UDRP that the mere addition of a descriptive or non-distinctive element to a trademark in which the Complainant has rights is not sufficient to avoid a finding of confusing similarity. In the context of the Complainant’s business, the element “us” is clearly descriptive or non-distinctive, and the Panel, accordingly, finds that the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
It is the consensus view of UDRP panels, with which the Panel agrees, that a prima facie case advanced by the complainant will generally be sufficient for the complainant to be deemed to have satisfied the requirement of paragraph 4(a)(ii) of the Policy, provided the respondent does not come forward with evidence demonstrating rights or legitimate interests in the disputed domain name and the complainant has presented a sufficient prima facie case to succeed under paragraph 4(a)(ii) of the Policy.
The Panel regards the submissions put forward by the Complainant as sufficient to be regarded as a prima facie case, and the Respondent did not take the opportunity to advance any claim of rights or legitimate interests in the disputed domain name to rebut this prima facie case.
Accordingly, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
The Panel is of the view that the finding that a respondent has no rights or legitimate interests in a disputed domain name may lead, in appropriate circumstances, to a finding that a disputed domain name was registered in bad faith. The Panel regards the circumstances of the present case, in which the only differences between the Complainant’s trademark and the disputed domain name are so trivial as not to evade a finding of confusing similarity, as sufficient to justify a finding that the disputed domain name has been registered in bad faith. The Panel, accordingly, finds that the disputed domain name was registered in bad faith.
From the earliest days of the operation of the Policy, panels have consistently found that a respondent cannot in all circumstances merely shelter behind a passive holding of a disputed domain name to defeat an allegation of use in bad faith. In this connection, the Panel agrees with the panel’s reasoning in Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003, and in the circumstances of the present case, can find no plausible alternative reason for the adoption of the disputed domain name than as a deliberate attempt to illegitimately benefit from the reputation of the Complainant’s BHP BILLITON trademark, thus giving rise to a legitimate concern by the Complainant as to the Respondent’s holding of the disputed domain name, particularly, in the circumstances of the present case, where the Complainant has been made aware that the disputed domain name may be used in connection with malicious email campaigns. The Panel, accordingly, finds that the disputed domain name is being used in bad faith, and that the Complainant has satisfied the dual requirements of paragraph 4(a)(iii) of the Policy. 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.
George R. F. Souter
Sole Panelist
Date: July 3, 2017
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