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 Brent Rockefeller of Houston, Texas, United States of America ("United States"). 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 September 18, 2017. On September 18, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 19, 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 September 21, 2017. In accordance with the Rules, paragraph 5, the due date for Response was October 11, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on October 13, 2017.
The Center appointed Knud Wallberg as the sole panelist in this matter on October 20, 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 part of the BHP Billiton Group, which is a leading multinational producer of diversified resources including iron ore, coal, copper, uranium, and oil and gas. The Complainant holds registered rights in the BHP trademarks around the world, including United States trademark registration no. 3,685,364 registered on September 22, 2009, for services in international class 37. The Complainant also maintains a large portfolio of domain names that incorporate the BHP trademark.
The Respondent registered the disputed domain name on August 6, 2017. The disputed domain name currently resolves to a website that appears to promote the services of a company called "". 5. Parties' Contentions A. Complainant
The Complainant submits that the disputed domain name is confusingly similar to the Complainant's BHP mark. The additional letter "b" does not distinguish the domain name from the trademark BHP, as the dominant element of the domain name is the well-known trademark BHP. The Complainant further asserts that addition of the generic Top-Level Domain ("gTLD") ".energy" should be disregarded in assessing the confusing similarity of the disputed domain name to the Complainant's mark.
The Complainant submits that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant further submits that the Respondent has not been commonly known by the disputed domain name, and that the Respondent is not making a legitimate noncommercial or fair use of the disputed domain name.
The Complainant contends that the disputed domain name was registered and is being used in bad faith. The Complainant asserts that the BHP mark is well known, and that bad faith may be inferred from the registration of a domain name that is confusingly similar to a well-known trademark. In addition, the Complainant has performed a reverse WhoIs search that reveals that the Respondent holds registrations of a number of other ".energy" domain names that contain the well-known marks of other businesses that are active within the energy sector, which demonstrates that the Respondent has engaged in a pattern of fraudulent domain name registration. B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings
According to paragraph 15(a) of the Rules the Panel shall decide the Complaint in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.
Paragraph 4(a) of the Policy directs that a complainant must prove each of the following:
(i) that the domain name registered by the respondent is identical or confusingly similar to a trademark or service mark in which the complainant has rights;
(ii) that the respondent has no rights or legitimate interests in respect of the domain name; and
(iii) that the domain name has been registered and is being used in bad faith.
Paragraph 4(a) of the Policy states that the burden of proving that all these elements are present lies with the Complainant. At the same time, in accordance with paragraph 14(b) of the Rules, if a party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under, the Rules, or any request from the Panel, the Panel shall draw such inferences therefrom as it considers appropriate. A. Identical or Confusingly Similar
The Panel finds that the disputed domain name is confusingly similar to the Complainant's registered trademark BHP since it incorporates the said registration in full with the addition of the letter "b". The gTLD ".energy" does not dispel a finding of confusing similarity and may be disregarded under the first element confusing similarity test, see section 1.11 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0").
The Panel finds that the conditions of paragraph 4(a)(i) of the Policy are therefore fulfilled in relation to the disputed domain name. B. Rights or Legitimate Interests
It is clear from the facts of the case that the Complainant has not licensed or otherwise permitted the Respondent to use its trademark.
Given the circumstances of this case, and in particular the way that the Respondent has been and is using the disputed domain name, as set out under section 4 above, the Panel finds that the Complainant has established that the Respondent has no rights or legitimate interests in the disputed domain name. The Respondent has not produced, and indeed there is no other evidence of the types of circumstances set out in paragraph 4(c) of the Policy that might give rise to rights or legitimate interests in the disputed domain name on the part of the Respondent in these proceedings.
Consequently, the Panel finds that the conditions in paragraph 4(a)(ii) of the Policy are also fulfilled. C. Registered and Used in Bad Faith
Paragraph 4(a)(iii) of the Policy requires the Complainant to prove both registration and use of the disputed domain name in bad faith. Paragraph 4(b) of the Policy provides an example of circumstances which shall be evidence of registration and use in bad faith:
(i) circumstances indicating that the Respondent has registered or has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of the Respondent's documented out-of-pocket costs directly related to the domain name; or
(ii) the Respondent has registered the 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 the Respondent has engaged in a pattern of such conduct; or
(iii) the Respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of the Respondent's website or location or of a product or service on the Respondent's website or location.
Accordingly, for the Complainant to succeed, the Panel must be satisfied that the disputed domain name has been registered and is being used in bad faith.
Given the circumstances of the case and in particular the evidence on record of the intensive use of the Complainant's trademark BHP within the energy sector, and the lack of any explanation from the Respondent as to why it registered the disputed domain name, it is inconceivable to the Panel in the current circumstances that the Respondent registered the disputed domain name without prior knowledge of the Complainant and the Complainant's marks.
Further, based on the evidence provided by the Complainant of the Respondent's other domain name registrations, the Panel finds that the Respondent has been aware of the fact that the registration of the disputed domain name in a gTLD that reflects the area of business of the Complainant, namely ".energy", could attract Internet users in a manner that is likely to create confusion for such users (See section 1.11.2 of the WIPO Overview 3.0 and the UDRP decisions that is cited therein).
The Panel therefore finds that the disputed domain name was registered in bad faith.
Also, the Respondent is using the disputed domain name actively for a website which promotes the commercial services of a company called "". The Respondent thus intentionally attempts to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of its website. The Panel therefore finds that the Respondent is using the disputed domain name in bad faith.
Noting that the disputed domain name incorporates a registered and well-known trademark, that the disputed domain name is used misleadingly for commercial gain, and considering all the facts and evidence, the Panel therefore finds that the requirements of paragraph 4(a)(iii) and 4(b) of the Policy are also fulfilled in this case. 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.
Knud Wallberg
Sole Panelist
Date: November 6, 2017
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