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 Mark John, Mark Co of Winchester, Virginia, United States of America ("United States"). 2. The Domain Name and Registrar
The disputed domain name is registered with eNom, Inc. (the "Registrar"). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on October 25, 2017. On October 25, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 25, 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 November 3, 2017. In accordance with the Rules, paragraph 5, the due date for Response was November 23, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on November 24, 2017.
The Center appointed James Bridgeman as the sole panelist in this matter on December 7, 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 producer of commodities, including iron ore, metallurgical coal, copper and uranium, and has substantial interests in conventional and unconventional oil and gas and energy coal. The Complainant's group of companies employs over 40,000 people in more than 100 operations in 25 countries across the world. The core group which was created by a merger concluded on June 29, 2001 is headquartered in Melbourne, Australia with offices in London and supporting offices around the world. The market capitalization as at June 30, 2015 was USD 108 billion with revenue from continuing operations at USD 44.6 billion.
The Complainant operates a website that is accessible via various domain names including and controls numerous domain names containing the trade mark BHP BILLITON, including , , , , and .
The Complainant is the owner of numerous registrations for the trade mark BHP BILLITON around the world in jurisdictions including
- Australian registered trade mark BHP BILLITON, registration number 1141449, registered for goods and services in classes 4, 6, 37, 40 and 42 on August 18, 2008 pursuant to an application for registration made on October 18, 2006;
- New Zealand registered trade mark BHP BILLITON, registration number 764470, registered for goods and services in classes 4 4, 6, 37, 40, 42 on June 12, 2008 pursuant to an application filed on March 5, 2007.
- United Kingdom registered trade mark BHP BILLITON, registration number 2264607, registered for goods and services in classes 1, 2, 4, 6, 7, 8, 9, 11, 14, 16,17, 19, 21, 25, 35, 36, 37, 38, 39, 40, 41, 42 on August 30, 2002 pursuant an application filed on March 19, 2001;
- International trade mark registration BHP BILLITON, registration number 0986799, registered for goods and services in classes 4, 6, 37, 40, 42, with an effective date of November 16, 2006, pursuant to an application filed on January 8, 2010, designating Switzerland, European Union, Japan, Republic of Korea, Mozambique, Norway, Russian Federation, Singapore and Ukraine;
- United States of America registered trade mark BHP BILLITON, registration number 3703871, registered for goods and services in international classes 4 4, 6, 37, 40, 42, registered on November 3, 2009 pursuant to an application filed on April 12, 2007;
- Canada registered trade mark BHP BILLITON, registration number TMA794995, registered for wares and services equivalent of international classes 4, 6, 37, 40 and 42, registered on April 7, 2011 pursuant to an application filed on March 12, 2007.
There is no information available about the Respondent except that which has been provided in the Complaint and the Registrar's WhoIs.
The disputed domain name was registered on August 7, 2017. On the date of this Complaint, the disputed domain name resolved to a parked website and the Complainant has adduced evidence that it has been used as an email address for allegedly fraudulent purposes as detailed below. 5. Parties' Contentions A. Complainant
The Complainant has provided evidence of its ownership of, and relies on its rights in, the abovementioned trade mark registrations and submits that the disputed domain name is confusingly similar to its BHP BILLITON trade mark.
It is submitted that the BHP BILLITON trade mark has over the years acquired a significant reputation in diversified resources and the mining of such resources and that consumers, upon viewing the disputed domain name, are highly likely to expect an association with the Complainant, especially in light of the similarity of the domain name and trade mark.
The Complainant argues that neither the inclusion of the non-distinctive word "limited", which is merely a company identifier, nor the addition of the generic TLD extension serves to distinguish the domain name from the Complainant's mark.
The Complainant further submits that the Respondent has no rights or legitimate interests in the disputed domain name, arguing that the Respondent has not at any time been commonly known by the disputed domain name; that the Complainant is not aware of any trade marks in which the Respondent may have rights that are identical or similar to the disputed domain name; and that the Respondent is not making any legitimate non-commercial or fair use of the disputed domain name.
The Complainant also alleges that the disputed domain name was registered and is being used in bad faith, arguing that the Complainant enjoys a worldwide reputation in its BHP BILLITON trade mark and therefore bad faith registration may be inferred from the registration of a well-known trade mark. In support of this submission the Complainant cites the decisions of the panels in Zwack Unicum Rt. v. Erica J. Duna,WIPO Case No. D2000-0037 and The Nasdaq Stock Market v. Act One Internet Solutions,WIPO Case No. D2001-1492. Similarly, the Complainant submits that it may be inferred from the Respondent's registration of a domain name that is confusingly similar to the Complainant's well-known BHP BILLITON trade mark that the disputed domain name was registered in bad faith.
The Complainant states that it first became aware of the disputed domain name when it received an enquiry from a person who had received a fraudulent employment offer from the email address hr-office@. A copy of this enquiry and the fraudulent employment offer is attached as an annex to the Complaint. Consequently the Complainant is concerned that the Respondent intends to use the disputed domain name as a vehicle for fraudulent activities, including sending further fraudulent employment offers. The Complainant states that it has encountered a large volume of fraudulent activities stemming from domain names and email addresses featuring the BHP BILLITON trade mark in recent times.
To the extent that the Respondent's conduct in registering the disputed domain name is considered "passive use", at least in respect of the domain name not being used as an active website address, the Complainant submits that this, in itself, viewed in the context of the present set of circumstances, is evidence of bad faith use. In this regard, reference is made to Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003.
In determining bad faith use, the Complainant submits that the Panel may take into account the Respondent's conduct in registering a well-known trade mark, the Respondent's anticipated failure to provide evidence of any actual or contemplated good faith use, and the Respondent's use of the disputed domain name as an email address associated with fraudulent activities.
The Complainant requests that this Panel make a determination on the merits of the Complainant's case and direct that the disputed domain name be transferred to the Complainant. B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings
Paragraph 4(a) of the Policy requires the Complainant to establish that:
(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
The Complainant has adduced convincing evidence of its ownership of, and rights in, the BHP BILLITON trade mark through its above-mentioned trade mark registrations and the reputation and goodwill which it has acquired through international use of the mark in connection with the goods and services it provides in its extensive commodities business.
Having compared both, this Panel agrees with the Complainant's submissions that the disputed domain name is confusingly similar to the Complainant's BHP BILLITON trade mark. The initial and dominant elements of the disputed domain name are identical to the Complainant's mark. The additional elements "limited" and the generic TLD ".com" extension do not contribute in any way to distinguishing the disputed domain name and mark.
In the circumstances, the Complainant has succeeded in the first element of the test as set out in paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
The Complainant has made out a prima facie case that the Respondent has no rights or legitimate interest in the disputed domain name arguing that that the Respondent has not at any time been commonly known by the disputed domain name; that the Complainant is not aware of any trade marks in which the Respondent may have rights that are identical or similar to the disputed domain name; and that the Respondent is not making any legitimate non-commercial or fair use of the disputed domain name.
In such circumstances the burden of production shifts to the Respondent who has failed to discharge the burden of production.
The Complainant has therefore also succeeded in the second element of the test as set out in paragraph 4(a)(ii) of the Policy C. Registered and Used in Bad Faith
Given the reputation of the Complainant and its trade mark, the distinctive nature of the Complainant's trade mark and the similarity of the disputed domain name and mark, this Panel finds that on the balance of probabilities the disputed domain name was registered with the Complainant's mark in mind.
While the Respondent has not established a website to which the disputed domain name resolves, this does not amount to passive holding of the domain name because, on the evidence adduced by the Complainant, the disputed domain name is being used as an email address.
The Complainant has adduced evidence that the disputed domain name is being used as an email address to send fraudulent offers of employment purporting to come from the Complainant. The Respondent has not refuted this allegation and so based on the submissions and evidence on the record, this Panel finds that on the balance of probabilities the disputed domain name was registered and is being used in bad faith.
The Complainant has therefore succeeded in the third and final element of the test as set out in paragraph 4(iii) of the Policy and is entitled to the reliefs sought. 7. Decision
For the foregoing reasons, in accordance with paragraphs 4(a) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name, be transferred to the Complainant.
James Bridgeman
Sole Panelist
Date: December 14, 2017
Full & Egal Universal Law Academy