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 He Yanzhe of Shenzhen, Guangdong, China, self-represented. 2. The Domain Name and Registrar
The disputed domain name is registered with Chengdu West Dimension Digital Technology Co., Ltd. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 8, 2016. On March 8, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 9, 2016, 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 for the domain name , and disclosing registrant and contact information for a second domain name () which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on March 10, 2016 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an Amended Complaint on March 11, 2016 requesting to remove the second domain name from the present proceeding.
On March 11, 2016, the Center sent an email communication to the parties in both Chinese and English regarding the language of the proceeding. On March 15, 2016, the Complainant confirmed its request that English be the language of the proceeding. On March 24, 2016, subsequent to the requested period for Respondent to provide its comments, the Respondent confirmed his request that Chinese be the language of the proceeding.
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 the Respondent of the Complaint, and the proceedings commenced on March 23, 2016. In accordance with the Rules, paragraph 5, the due date for Response was April 16, 2016. The Response was filed with the Center on April 15, 2016.
The Center appointed Kimberley Chen Nobles as the sole panelist in this matter on April 22, 2016. 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. A. Language of Proceeding
Paragraph 11(a) of the Rules provides that the language of the proceeding shall be the language of the Registration Agreement unless otherwise specified in that agreement or agreed by the parties. The Rules also provide that the Panel has the authority to determine otherwise, having regard to the circumstances of the administrative proceeding. The Panel determines that the language of the processing should be English. The Complainant requested the proceeding be in English. Although the Respondent requested that the language of the proceedings be Chinese, the Respondent’s conduct suggests he understands English. The Respondent owns multiple domain names including English words and, at the time the Complaint was filed, the disputed domain name pointed to a website indicating in English and Mandarin that the domain name is for sale or rent. Additionally, in his response, the Respondent cites and includes as an annexure a UDRP panel decision written in English. 4. Factual Background
The Complainant is a leading diversified resources group incorporated in Australia. The Complainant promotes its services on websites at various domain names, including . It is the owner of multiple registrations for the mark BHP in Australia, Canada, China, the European Union, New Zealand, the United Kingdom of Great Britain and Northern Ireland, and the United States of America (United States), and for the mark BHP BILLITON in Australia, Canada, the European Union, New Zealand, and the United States. The Complainant has used the BHP trademark for decades. Of the trademark extracts or renewal certificates for the trademarks cited in the Amended Complaint, the earliest registration dates back to 1931 (Australian Reg. No. 59146). In addition to , the Complainant also owns several domain names comprised of its BHP and BHP BILLITON marks, including , , , , , and .
The Respondent owns some 27,000 domain names. In addition to the disputed domain name, the Respondent also owns and . The Respondent registered the disputed domain name in December 2015. At the time the Amended Complaint was filed, the disputed domain name resolved to a website advertising to the public that the disputed domain name was for sale or rent. Presently the disputed domain name does not resolve to a website. 5. Parties’ Contentions A. Complainant
The Complainant states that BHP Billiton Group is the largest diversified resources group, employing more than 40,000 people in more than 100 operations in 25 countries. The core of the Group is a dual listed company comprising BHP Billiton Limited and BHP Billiton Plc, which operate together as a combined group known as BHP Billiton. The Complainant, BHP Billiton Innovation Pty Ltd is a wholly owned subsidiary of BHP Billiton Limited, holding some of BHP Billiton’s intellectual property. The Complainant enjoys a worldwide reputation in its BHP BILLITON and BHP marks.
The disputed domain name is confusingly similar to the Complainant’s extensive portfolio of BHP marks. It is likely that consumers, upon viewing the disputed domain names, are highly likely to expect an association with BHP Billiton. The addition of the “.pw” country code Top-Level Domain (“ccTLD”) to a domain name does not affect the assessment that the domain name is confusingly similar to a particular trademark.
The Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent has not at any time been commonly known by the disputed domain name and owns no trademarks that are identical or similar to the disputed domain name. The Respondent is not making legitimate noncommercial or fair use of the disputed domain name. The Complainant has not authorized the Respondent to register the disputed domain name.
The Respondent has registered and is using the disputed domain name in bad faith. The Complainant enjoys a worldwide reputation and bath faith registration may be inferred from the registration of a well-known mark. The Respondent also used the disputed domain name in bad faith. At the time of filing the Amended Complaint, the disputed domain name pointed to a site offering the domain name for sale. The Complainant contends that when viewed in the context of the present set of circumstances, such use of the disputed domain name is evidence of bad faith. The Respondent has established a pattern of registering well-known third-party marks, including BHP, CANON and BETALOC, as domain names. The Respondent cannot establish actual or contemplated good faith use.
The Complainant requests that the disputed domain name be transferred to it. B. Respondent
The Respondent contends that the term “bhp” is a common and descriptive term, namely, the acronym for “brake horsepower”, a unit of measurement. Therefore, although the Complainant may be known by the BHP mark, it does not enjoy universal exclusive right to the term “bhp”. The Respondent should not be deprived of a domain name comprised of a generic term that the Respondent legally acquired through open and fair channels.
The Respondent did not register and is not using the disputed domain name in bad faith. The disputed domain name is comprised of a generic term. The Respondent’s ownership of many other additional domain names does not preclude him from having rights or legitimate interests in the disputed domain name.
The Complainant has not proven that any of the circumstances described in paragraph 4(b) of the Policy exists. In particular, the Respondent never contacted the Complainant or the Complainant’s competitors with an offer to sell, lease or transfer the disputed domain name for valuable consideration in excess of the Respondent’s costs for the domain name. The Respondent did not register the disputed domain name with the intent to prevent the Complainant from reflecting its mark in a corresponding domain name. The Respondent did not register the domain name in an attempt to disrupt the Complainant’s business. Finally, the Respondent does not use the disputed domain name in a way that would create confusion as to the Complainant’s source, sponsorship, affiliation or endorsement of the corresponding website or goods or services on such website.
Using a domain name in connection with domain name parking services in itself does not constitute bad faith use of a domain name, despite the fact that a registrant may derive revenue from the services. The disputed domain name did not resolve to a parked webpage referencing services similar to the Complainant’s and there was no likelihood of confusion. Additionally, use of a domain name that is comprised of a common and descriptive term, even if the purposes is to sell the domain name, does not constitute bad faith. 6. Discussion and Findings
The Policy provides for transfer or cancellation of the domain name if the Complainant establishes each of the following elements set out in Paragraph 4(a):
(i) The Respondent’s 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 domain name; and
(iii) The domain name has been registered and is being used in bad faith.
The Panel finds that the Complainant has met this burden. A. Identical or Confusingly Similar
The Complainant has rights in the BHP and BHP BILLITON service marks. The Complainant has established that it is the registered owner of various international trademark registrations for the BHP and BHP BILLITON marks, registered well before the registration of the disputed domain name. The Panel accepts that the Complainant’s marks are internationally well-known.
The Panel finds that the disputed domain name is identical to the Complainant’s marks. The “.pw” ccTLD extension being a technical part of the domain name does not affect the assessment of whether the disputed domain name is similar to the Complainant’s trademarks. B. Rights or Legitimate Interests
The Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name.
Under paragraph 4(c) of the Policy, a respondent may demonstrate rights or legitimate interests in the disputed domain name by showing any of the following circumstances, in particular but without limitation:
(i) The respondent’s use of, or demonstrable preparations to use, the disputed domain name or name corresponding to the disputed domain name in connection with a bona fide offering of goods or services before any notice to the respondent of the dispute; or
(ii) The respondent has been commonly known by the disputed domain name, even if the respondent has acquired no trademark or service mark rights; or
(iii) The respondent is making a legitimate non-commercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The Respondent has not established that he uses, or has made preparations to use, the disputed domain name or name corresponding to it in connection with a bona fide offering of goods or services. The Respondent has provided no evidence that he has been commonly known by the disputed domain name. The Complainant has stated that it has not authorized the Respondent to use the mark BHP and the Respondent does not contest this. Finally, the Respondent is not making a legitimate noncommercial or fair use of the disputed domain name. The evidence, including the Respondent’s own contentions, shows that the Respondent was using the disputed domain name in connection with a domain name parking service to generate revenue and to offer the disputed domain name for sale for commercial gain.
The Respondent claims that he is entitled to register and use the disputed domain name because “bhp” is a common and descriptive term, namely the acronym for brake horsepower. Although the Complainant is known by the mark BHP, the Respondent contends that he should not be deprived of the right to acquire the disputed domain name comprised of this common and descriptive term through open and fair channels. Although “bhp” may have another meaning apart from the Complainant’s trademark rights, the Respondent has nonetheless failed to establish rights or legitimate interests in the disputed domain name. The Respondent’s use of the disputed domain name in connection with a domain name parking service is not a legitimate use because the Respondent is not using the mark in any way connected with or related to the claimed descriptive meaning of the term “bhp”. See Compart AG v. C / Vertical Axis, Inc.,WIPO Case No. D2009-0462 (); Hurruyet Gazetecilik ve Maatbaacilik Anonim Sirketi v. Onuno L.L.C.,WIPO Case No. D2015-1504 ().
The mere fact that a term identical to the domain name exists as a generic term does not itself give rise to any rights or legitimate interest in the name on the part of a respondent who uses it in ways not tied to the generic meaning of that term. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 2.2.
The Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name. C. Registered and Used in Bad Faith
The Panel finds that the Respondent registered and is using the disputed domain name in bad faith.
Paragraph 4(b) of the Policy states that any of the following circumstances, in particular, but without limitation, shall be evidence of the registration and use of a domain name 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 the Respondent’s web site or other on-line location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of such web site or location or of a product or service on such web site or location.
The Panel finds that the Respondent was likely aware of the Complainant and its trademarks at the time of registration of the disputed domain name. BHP Billiton Group is well-known throughout the world as are the BHP and BHP BILLITON service marks. The BHP and BHP BILLITON service marks have been in use in commerce for decades prior to the registration of the disputed domain name. Additionally, the Complainant owns many trademark registrations around the globe, including in China, where the Respondent is located. Although the Respondent may not be under an obligation to conduct an exhaustive trademark search before acquiring a domain name, a simple Internet search for BHP would have yielded many obvious references to the Complainant and the Complainant’s use of BHP as its service mark. The Panel finds it very unlikely that the Respondent was not aware of the Complainant and its interests in the BHP mark. Bad faith can be inferred from the Respondent’s registration of a domain name incorporating a well-known mark of which the Registrant must have been aware, without any evident right to do so. See Hurruyet, supra; AXA S.A. v. P.A. van der Wees,WIPO Case No. D2009-0206 (); BHP Billiton Innovation v. Ravindra Bala,WIPO Case No. D2008-1059 (). Therefore, the Panel finds that the Respondent registered the disputed domain name in bad faith.
Although the Respondent contends that the Complainant has not established any of the circumstances identified in paragraph 4(b) and listed above, this list is not an exhaustive list of all circumstances that could establish bad faith. Additionally, though as the Respondent argues, domain name parking in anticipation of deriving revenue may be considered a legitimate form of business, additional factors may support a finding of bad faith under the circumstances.
The Panel finds that given the totality of the circumstances in this case, the Respondent has acted in bad faith. The Complainant has been using the BHP marks for decades and has obtained many trademark registrations around the world long before the Respondent registered the disputed domain name. Given that the disputed domain name is identical to the Complainant’s extensively used and well-known service mark, the Panel finds that the Respondent must have been aware that Internet users may reasonably believe that the disputed domain name and resolving website would be owned, controlled, established or otherwise associated with the Complainant. See AXA S.A. v. P.A. van der Wees,WIPO Case No. D2009-0206 (). Moreover, the Respondent’s holding of the disputed domain name prevents the Complainant from reflecting the BHP mark under the “.pw” ccTLD. id. The Respondent is holding at least two other domain names that are comprised of, in part, other well-known third-party marks (CANON and BETALOC).
The Respondent claims that the disputed domain name comprises a common and descriptive term, but the fact remains that it also comprises the Complainant’s internationally well-known service mark. The Respondent was undoubtedly aware of the Complainant’s interests in the BHP mark.
What is more, the Panel finds that the Respondent’s attempt to put in place a framework to support a claim that it had rights or legitimate interests in the disputed domain name because “bhp” is a common descriptive term despite the Respondent’s failure to make use of, or preparations for use of, the disputed domain name in connection with that common meaning to be pretextual and insufficient to support the Respondent’s claims of good faith. See Cerulean Studios, LLC v. Hexuan Cai,WIPO Case No. D2013-0902 ().
Offers to sell to the public at large a domain name that is identical or confusingly similar to a third-party mark may constitute bad faith within the meaning of paragraph 4(a)(iii). BHP Billiton Innovation v. Ravindra Bala,WIPO Case No. D2008-1059 (). The disputed domain name resolved to a website offering it for sale at the time the Amended Complaint was filed. Given that it is virtually impossible that the Respondent was not aware of the Complainant and its mark, the Panel concludes that the Respondent holds the disputed domain name for the purpose of reselling it at a profit to the Complainant or one of its competitors.
In light of the above and in the absence of any circumstances that indicate that the Respondent has legitimate interests in using the disputed domain for its purported generic meaning, the Panel finds that the Complainant has met its burden under paragraph 4(a)(iii). 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.
Kimberley Chen Nobles
Sole Panelist
Date: May 11, 2016
Full & Egal Universal Law Academy