The Complainant is BHP Billiton Innovation Pty Ltd of Melbourne, Australia, represented by Griffith Hack Patent and Trade Mark Attorneys, Australia.
The Respondent is Jean Webb of Newark, United States of America (“United States”). 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 November 13, 2018. On November 13, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 14, 2018, 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 15, 2018. In accordance with the Rules, paragraph 5, the due date for Response was December 5, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 6, 2018.
The Center appointed Charles Gielen as the sole panelist in this matter on December 18, 2018. 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 contends that it owns the intellectual property rights of a group of companies (referred to as the “BHP Billiton Group”) having diverse operations but all doing business by reference to the trade mark BHP BILLITON and that it is the proprietor of an international portfolio of registrations for this trade mark which is registered, among others, as a United Kingdom trade mark under No. 00002264607, registered on August 30, 2002, as a Australian trade mark under No. 1141449, registered from October 18, 2006,and as a United States trademark under No. 3703871, registered on November 3, 2009, all at minimum registered for goods and services in classes 4, 6, 37, 40 and 42.
The disputed domain name was created on October 31, 2018 and does not resolve to a website. 5. Parties’ Contentions A. Complainant
The Complainant belongs to the BHP Billiton Group which is the world's largest diversified resources group, employing more than 40,000 people in more than 100 operations in 25 countries. The BHP Billiton Group is headquartered in Melbourne with major offices in London and supporting offices around the world. The BHP Billiton Group operates a website that is accessible via various domain names including . Its market capitalization as at August 24, 2017 was USD 67.5 billion with revenue from continuing operations of USD 38,285 million.
The Complainant contends that the disputed domain name is confusingly similar to the Complainant’s trade mark BHP BILLITON. The disputed domain name contains a misspelling of this trade mark, namely “bhpblliiton”. This one letter discrepancy in the disputed domain name, will not dispel the likelihood that consumers will be confused and therefore will not affect the assessment that a domain name is confusingly similar to a particular trade mark.
Furthermore, the Complainant contends that the Respondent does not have any rights or legitimate interests in the disputed domain name, because the Respondent has not at any time been commonly known by the disputed domain name. Also, the Complainant is not aware of any trade marks in which the Respondent may have rights that are identical with or similar to the disputed domain name. The Respondent is not making legitimate noncommercial or fair use of the disputed domain name. Finally, the Respondent shows a pattern of conduct of registering domain names that are misspellings of well-known trade marks, such as , and , which are similar to the domain names , and , which are associated with the trade marks AMERICAN IRON, CE SOLUTIONS and SERVISFIRST BANK.
Finally, the Complainant argues that the Respondent registered and is using the disputed domain name in bad faith. Among others, the following reasons are given. The BHP Billiton Group to which the Complainant belongs, enjoys a worldwide reputation in its BHP BILLITON trade mark and relevant domain names. Bad faith registration may be inferred from the registration of a well-known mark as a domain name. Also, the Respondent has established a pattern of registering domain names that are confusingly similar to the trade marks of various traders. It can be inferred from this ongoing behavior that the Respondent frequently engages in the registration of domain names, including the disputed domain name, in bad faith. As far as bad faith use is concerned, the Respondent makes so called passive use of the disputed domain name and the Complainant submits that this, in itself, viewed in the context of the present set of circumstances, is evidence of bad faith use. These circumstances are that it concerns registration of a well-known trade mark as a domain name and that the Respondent failed to provide evidence of any actual or contemplated good faith use. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
The Panel is of the opinion that the Complainant’s contentions are reasoned and that the disputed domain name should be transferred to the Complainant pursuant to the Policy. A. Identical or Confusingly Similar
The Complainant proves that it has rights in the trade mark BHP BILLITON based on a number of registrations in the world. The term “bhpblliiton” is very similar to the trade mark BHP BILLITON and should be considered as a clear misspelling of that mark. The only difference is in fact that the first letter “i” in the term “blliiton” in the disputed domain name has been moved so that instead of sitting between the “b” and the first “l”, the term “billiton” is misspelt and the first “i’ sits between the second letter “l” and the second letter “i”. The Panel considers this as a typical example of typosquatting. So, the Panel finds that the term “bhpblliiton” is confusingly similar to the trade mark of the Complainant. The added suffix “.com” does not change the finding that the disputed domain name is confusingly similar, since the suffix “.com” is understood to be a technical requirement. In making the comparison between the trade mark and the disputed domain name, the generic Top-Level Domain (“gTLD”) “.com” is disregarded. The Panel is of the opinion that applying these principles to this case, the disputed domain name is confusingly similar to the trade marks.
Therefore, the requirement under paragraph 4(a)(i) of the Policy is met. B. Rights or Legitimate Interests
The Panel is of the opinion that the Complainant made out a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. The disputed domain name was registered long after the Complainant started to use the trade mark BHP BILLITON. The Panel is convinced that the term “bhpblliiton” in the disputed domain name has no other meaning except to refer to the Complainant and its businesses. Furthermore, the Respondent did not give evidence that it was known by the disputed domain name or that it was authorized by the Complainant to use the trade mark BHP BILLITON in any way, or that it is using the disputed domain name in connection with a legitimate offering of goods or services. Finally, the Respondent has not come forward claiming any rights or legitimate interests and the Panel does not find so in the present record.
In view of the aforementioned, the Panel is of the opinion that the requirement of paragraph 4(a)(ii) of the Policy is met. C. Registered and Used in Bad Faith
The Panel is of the opinion that the disputed domain name was registered and is being used in bad faith.
The main reasons for this conclusion are as follows. The trade mark BHP BILLITON was publicly used long before the Respondent registered the disputed domain name. This trade mark is well-known internationally. There can be no doubt that it was the intention of the Respondent to choose a domain name that contains an intentional misspelling of the trade mark. Furthermore, the Complainant provides evidence that the Respondent has established a pattern of registering several domain names that are confusingly similar to the well-known trade marks of various other companies. Finally, the Respondent did not submit any evidence of actual or contemplated good-faith use. These circumstances cause this Panel to decide that the passive holding of the disputed domain name is bad faith use.
Accordingly, the requirement of paragraph 4(a)(iii) of the Policy is met. 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.
Charles Gielen
Sole Panelist
Date: December 23, 2018
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