Complainant is BHP Billiton Innovation Pty Ltd (BHP Billiton Innovation) of Melbourne, Australia, represented by Griffith Hack Patent and Trade Mark Attorneys, Australia.
Respondent is Registration Private of Scottsdale, Arizona, United States of America ("United States" or "US") / bhp jon of Melbourne, Australia. 2. The Domain Name and Registrar
The disputed domain name is registered with GoD, LLC (the "Registrar"). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on May 30, 2017. On May 30, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 31, 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 Complainant on June 2, 2017 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on June 6, 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 Respondent of the Complaint, and the proceedings commenced on June 6, 2017. In accordance with the Rules, paragraph 5, the due date for Response was June 26, 2017. Respondent did not submit any response. Accordingly, the Center notified Respondent's default on June 27, 2017.
The Center appointed Yijun Tian as the sole panelist in this matter on July 3, 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 A. Complainant
Complainant, BHP Billiton Innovation Pty Ltd (BHP Billiton Innovation), is a company incorporated in Melbourne, Australia. Complainant is one of the world's largest diversified resources group, employing more than 40,000 people in more than 100 operations in 25 countries. Its market capitalization as at 30 June 2015 was USD 108 billion with revenue from continuing operations as USD 44.6 billion.
Complainant has exclusive rights in the BHP marks. Complainant is the exclusive owner of numerous BHP trademarks worldwide, including in Chinese trade mark ((the Chinese Trademark registration number 717841), Australian trademark registered since December 9, 1931 (the Australian Trademark registration number 59146), and the United States trademark registered since October 22, 1985 (the US Trademark registration number 1,367,145) (Annex 7 to the Complaint). Complainant also owns and operates domain names which contain BHP mark in its entirety, such as , , , , , , , , , , , , , and . Some of them are also accessible in Chinese language (Annex 5 to the Complaint). B. Respondent
Respondent is bhp jon, apparently an individual residing in Melbourne, Australia. The disputed domain name was registered on April 19, 2017, currently resolving to a website providing products and services under Complainant's trademark and indicating that the website is the official website of Complainant. 5. Parties' Contentions A. Complainant
Complainant contends that the disputed domain name is confusingly similar to Complainant's BHP trademarks. The disputed domain name includes BHP mark in its entirety. The addition of the generic term "cn" at the end of the disputed domain name as well as the generic Top-Level Domain ("gTLD") ".net" are not sufficient to eliminate the confusing similarity.
Complainant contends that Respondent has no rights or legitimate interests in respect of the disputed domain name.
Complainant contends that the disputed domain name was registered and is being used in bad faith.
Complainant requests that the disputed domain name be transferred to it. B. Respondent
Respondent did not reply to Complainant's contentions. 6. Discussion and Findings
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that the disputed domain name should be cancelled or transferred:
(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.
On the basis of the evidence introduced by Complainant and in particular with regards to the content of the relevant provisions of the Policy, (paragraphs 4(a) - (c)), the Panel concludes as follows: A. Identical or Confusingly Similar
The Panel finds that Complainant has rights in the BHP marks acquired through registration. The BHP marks have been registered in China, Australia (since 1931) and the US (since 1985). The disputed domain name comprises the BHP mark in its entirety. The disputed domain name only differs from Complainant's trademarks by the suffix "cn" and the gTLD suffix ".net" to the BHP marks. This does not eliminate the confusing similarity between Complainant's registered trademarks and the disputed domain name. By contrast, it may increase the confusion because "cn" is a common abbreviation for "China". The contents of the website resolved by the disputed domain name are in Chinese. The website visitor may believe this is a website which is authorized by Complainant and targeting Chinese consumers. In relation to the gTLD suffix, the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0") further states:
"The applicable Top Level Domain ("TLD") in a domain name (e.g., ".com", ".club", ".nyc") is viewed as a standard registration requirement and as such is disregarded under the first element confusing similarity test." (WIPO Overview 3.0, paragraph 1.11).
Thus, the Panel finds that disregarding the "cn" suffix and the gTLD suffix ".net", the disputed domain name is confusingly similar to the BHP marks.
The Panel therefore holds that the Complainant fulfils the first condition of paragraph 4(a) of the Policy. B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides a list of circumstances any of which is sufficient to demonstrate that Respondent has rights or legitimate interests in the disputed domain name:
(i) before any notice to Respondent of the dispute, the use by Respondent 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) Respondent has been commonly known by the disputed domain name, even if Respondent has acquired no trademark or service mark rights; or
(iii) 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 Complainant's trademarks.
The overall burden of proof on this element rests with Complainant. However, it is well established by previous UDRP panel decisions that once a complainant establishes a prima facie case that a respondent lacks rights or legitimate interests in a domain name, the burden of production shifts to respondent to rebut complainant's contentions. If respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy. (Danzas Holding AG, DHL Operations B.V. v. Ma Shikai,WIPO Case No. D2008-0441; WIPO Overview 3.0, paragraph 2.1 and cases cited therein).
According to the Complaint, Complainant is the world's largest diversified resources group, employing more than 40,000 people in more than 100 operations in 25 countries. Complainant has rights in the BHP marks in China, in Australia since 1931 and in the US since 1985, which precede Respondent's registration of the disputed domain name (2017).
Moreover, Respondent is not an authorized dealer of BHP-branded products or services and moreover claiming its BHP on its website (e.g. it has an introduction of BHP Company on its website). Complainant has therefore established a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name and thereby shifts the burden to Respondent to produce evidence to rebut this presumption (The Argento Wine Company Limited v. Argento Beijing Trading Company, WIPO Case No. D2009-0610; Do The Hustle, LLC v. Tropic Web,WIPO Case No. D2000-0624; Croatia Airlines d.d. v. Modern Empire Internet Ltd.,WIPO Case No. D2003-0455).
Based on the following reasons the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name:
(a) There has been no evidence adduced to show that Respondent is using the disputed domain name in connection with a bona fide offering of goods or services. Respondent has not provided evidence of a legitimate use of the disputed domain name or reasons to justify the choice of the term "BHP" in the disputed domain name and in its business operation. There has been no evidence to show that Complainant has licensed or otherwise permitted Respondent to use the BHP marks or to apply for or use any domain name incorporating the BHP mark and Respondent has, through the use of a confusingly similar domain name and its webpage contents, created a likelihood of confusion with the BHP marks. Noting also that apparently the website implies that it is the official website of Complainant, potential partners and end users are led to believe that the website at the disputed domain name is either Complainant's site in China or a site of an official authorized partner of Complainant, which it is not;
(b) There has been no evidence adduced to show that Respondent has been commonly known by the disputed domain name. There has been no evidence adduced to show that Respondent has any registered trademark rights with respect to the disputed domain name. Respondent registered the disputed domain name on April 19, 2017, long after the BHP marks became internationally known. The disputed domain name is confusingly similar to Complainant's BHP marks.
(c) There has been no evidence adduced to show that Respondent is making a legitimate noncommercial or fair use of the disputed domain name. By contrast, according to the information provided by Complainant, Respondent was in actuality advertising, offering and selling purported BHP products or services at the website "www.".
The Panel finds that Respondent has failed to produce any evidence to establish rights or legitimate interests in the disputed domain name. The Panel therefore holds that the Complaint fulfils the second condition of paragraph 4(a) of the Policy. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets out four circumstances which, without limitation, shall be evidence of the registration and use of the disputed domain name in bad faith, namely:
(i) circumstances indicating that Respondent has registered or acquired the disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to Complainant who is the owner of the trademark or service mark or to a competitor of Complainant, for valuable consideration in excess of Respondent's documented out-of-pocket costs directly related to the disputed domain name; or
(ii) Respondent has registered the disputed domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that Respondent has engaged in a pattern of such conduct; or
(iii) Respondent has registered the disputed domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the disputed domain name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent's website or other online location, by creating a likelihood of confusion with Complainant's mark as to the source, sponsorship, affiliation, or endorsement of Respondent's website or location or of a product or service on the website or location.
The Panel concludes that the circumstances referred to in paragraph 4(b)(iv) of the Policy are applicable to the present case and upon the evidence of these circumstances and other relevant circumstances, it is adequate to conclude that Respondent has registered and used the disputed domain name in bad faith.
The Panel finds that Complainant has a widespread reputation in the BHP marks with regard to its products and services. Complainant is the world's largest diversified resources group, employing more than 40,000 people in more than 100 operations in 25 countries. Its market capitalization as of June 30, 2015 was USD 108 billion with revenue from continuing operations as USD 44.6 billion. Complainant has rights in the BHP marks in Australia (since 1931) and internationally. It is not conceivable that Respondent would not have been aware of Complainant's trademark rights at the time of the registration of the disputed domain name (in 2017) particularly given that Respondent has used Complainant's marks and the website at the disputed domain name is designed to appear as Complainant's website.
Thus, the Panel concludes that the disputed domain name was registered in bad faith.
Complainant also has adduced evidence to show that by using the confusingly similar disputed domain name, Respondent has "intentionally attempted to attract, for commercial gain, Internet users to Respondent's websites or other online location". To establish an "intention for commercial gain" for the purpose of this Policy, evidence is required to indicate that it is "more likely than not" that intention existed (The Argento Wine Company Limited v. Argento Beijing Trading Company, supra).
Given the widespread reputation of the BHP marks, the confusingly similar domain name, as well as the affiliation statement on the website mentioned above, the Panel finds that the public is likely to be confused into thinking that the disputed domain name has a connection with Complainant, contrary to fact. There is a strong likelihood of confusion as to the source, sponsorship, affiliation or endorsement of Respondent's website. In other words, Respondent has, through the use of a confusingly similar domain name and webpage contents, created a likelihood of confusion with the BHP marks. Noting also the implication on the website that it is the official website of Complainant, potential partners and end users are led to believe that the website at the disputed domain name is either Complainant's site or a site of an official authorized partner of Complainant, which it is not. The Panel therefore concludes that the disputed domain name is being used by Respondent in bad faith.
In summary, Respondent, by choosing to register and use a domain name which is confusingly similar to Complainant's trademark, intended to ride on the goodwill of Complainant's trademark in an attempt to exploit, for commercial gain, Internet users destined for Complainant. In the absence of evidence to the contrary and rebuttal from Respondent, the choice of the disputed domain name and the conduct of Respondent as far as the website to which the disputed domain name resolves is indicative of registration and use of the disputed domain name in bad faith.
The Panel therefore holds that the Complaint fulfils the third condition of paragraph 4(a) of the Policy. 7. Decision
For all 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.
Yijun Tian
Sole Panelist
Dated: July 26, 2017
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