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 Cameron David Jackson of Kingston, New South Wales, Australia, also known as Cameron Jackson of Norfolk Island, Norfolk, Australia.
The disputed domain names <bhpbillitonlimited.xyz> and <bhpbrazil.xyz> are registered with Instra Corporation Pty Ltd. (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 16, 2016. On June 16, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On June 18, 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.
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 June 22, 2016. In accordance with the Rules, paragraph 5, the due date for Response was July 12, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 13, 2016.
The Center appointed William A. Van Caenegem as the sole panelist in this matter on July 18, 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.
The Complainant belongs to the BHP Billiton Group, who owns numerous registered trade marks, inter alia, in Australia, BHP BILLITON No. 1141449 in classes 4, 6, 37, 40, 42; New Zealand, BHP BILLITON No. 764470 in classes 4, 6, 37, 40, 42; the United Kingdom of Great Britain and Northern Ireland, BHP BILLITON No. 2264607 in classes 1, 2, 4, 6, 7, 8, 9, 11, 14, 16, 17, 19, 21, 25, 35, 36, 37, 38, 39, 40, 41, 42; the European Union, BHP BILLITON No. 0986799 in classes 4, 6, 37, 40, 42; and the United States of America, BHP BILLITON No. 3703871 in classes 4, 6, 37, 40, 42. Also in Australia, BHP No. 1171453 in classes 1, 4, 6, 9, 19, 35, 37, 39, 40, 41, 42; BHP No. 362256 in class 37; BHP No. 330272 in class 7; BHP No. 406091 in class 42; BHP No. 842335 in classes 14, 37, 41; BHP No. 730190 in classes 1, 2, 8, 9, 11, 14, 16, 17, 19, 25, 35, 36, 37, 38, 39, 41, 42; and BHP No. 59146 in class 6. The earliest of these registrations date backs to 1931.
The disputed domain name <bhpbrazil.xyz> was registered on March 27, 2016, and <bhpbillitonlimited.xyz> was registered on June 7, 2016.
The Complainant is a wholly owned subsidiary of BHP Billiton Limited, part of the BHP Billiton Group (“BHP Billiton”). BHP Billiton is a mining and resources company with a turnover in recent years exceeding USD 50 billion. BHP Billiton is the owner of a number of domain names incorporating the trade mark BHP BILLITON, including <bhpbilliton.com>, <bhpbilliton.net>, <bhpbilliton.info>, <bhpbilliton.org>, <bhpbilliton.jobs>, <bhpbilliton.mobi> and <bhpbilliton.biz>. BHP Billiton is also the owner of numerous trade mark registrations for BHP and BHP BILLITON in various jurisdictions, as referred to above.
The Complainant asserts that the disputed domain name <bhpbrazil.xyz> points to a parking page, whereas <bhpbillitonlimited.xyz> points to an apparent online gambling site. The Respondent brought the disputed domain names to the Complainant’s attention on June 10, 2016. The Respondent did something similar three days after he registered another domain name, that being <bhp-billiton.xyz>.
According to the Complainant the disputed domain names are confusingly similar to the Complainant’s registered trade marks, which the Complainant contends are the world’s most well-known brands in diversified resources and mining. The Complainant contends that consumers viewing the disputed domain names are highly likely to expect an association with BHP Billiton, in particular in light of the similarity of the disputed domain names with the BHP and BHP BILLITON trade marks.
Further the Complainant contends that the Respondent has never been commonly known by the disputed domain names and that it is not aware of any trade marks in which the Respondent may have rights that are identical or similar to the disputed domain names. The Complainant also contends that the Respondent is not making legitimate noncommercial or fair use of the disputed domain names.
The Complainant asserts that it has a worldwide reputation and that its trade marks are well-known, and therefore bad faith may be inferred from the Respondent’s inclusion of them in confusingly similar domain names. The Respondent approached the Complainant on June 10, 2016 indicating that it owned the disputed domain names. The Complainant did not engage with the Respondent as, in line with previous dealings with him over the domain name <bhp-billiton.xyz> it was apparent that the Respondent registered the disputed domain names primarily with a view to selling them to the Complainant for a sum exceeding out of pocket expenses.
Finally the Complainant contends that pointing to an empty website is in the circumstances the kind of passive use that indicates bad faith, as is pointing to an apparent gambling website.
The Respondent did not reply to the Complainant’s contentions.
It is not apparent from the material before the Panel whether the Complainant itself is the owner of the registered trade marks relevant to this matter. The Panel notes that at least one registration indicates the Complainant as the owner. Moreover, the Complainant and BHP Billiton, its parent company and sole owner, can be dealt with as a single entity for the purpose of these proceedings.
The disputed domain names are not identical to the trade marks of the Complainant. However, both disputed domain names incorporate in their entirety trade marks that are registered by the Complainant. The trade marks BHP and BHP BILLITON of the Complainant are entirely distinctive marks in the mining and resources sector with a world-wide reputation. The combination with the generic terms “limited” in <bhpbillitonlimited.xyz> and “Brazil” in <bhpbrazil.xyz> does not do anything to detract from the confusing similarity or suggestion that the disputed domain names are legitimately connected with the Complainant’s business. No such connection in fact exists.
Therefore the Panel holds that the disputed domain names are confusingly similar to the registered trade marks of the Complainant.
The Respondent did not reply to the Complainant’s contentions, although he had been previously in correspondence with the Complainant relating to the disputed domain names. The Respondent is not known by the disputed domain names nor is he authorized by the Complainant to register or use its trade marks in any way. The disputed domain name <bhpbrazil.xyz> points to a parking page, a form of passive holding which does not typically vest rights or constitute evidence of legitimate interests. The disputed domain name <bhpbillitonlimited.xyz> points to an apparent online gambling site, and in this case as well the nature of the website is not in any way compatible with a claim of a bona fide offering of goods or services or any other rights or legitimate interests.
Therefore the Panel holds that the Respondent has no rights or legitimate interests in the disputed domain names.
The Complainant’s trade marks BHP and BHP BILLITON are highly distinctive and widely known and recognized in the mining and resources sector, certainly in Australia but also around the world in many other jurisdictions. It is in any case apparent from the record that the Respondent entered into correspondence with the Complainant, that he was fully aware of the latter’s business and goodwill vested in its trade marks. There is nothing before the Panel that indicates that the Respondent has some legitimate reason or claim to register the disputed domain names without authorization from the Complainant. It appears that the Respondent registered the disputed domain names while the UDRP dispute for the <bhp-billiton.xyz> was still pending. The Respondent approached the Complainant indicating that it owned the disputed domain names, after the conclusion of the proceeding involving <bhp-billiton.xyz>, in which the panel ordered transfer of the said domain name to the Complainant. See BHP Billiton Innovation Pty Ltd v. Cameron David Jackson, WIPO Case No. D2016-0345.
Given this backdrop, the approach made by the Respondent to the Complainant relating to the disputed domain names indicates bad faith. The Respondent chose to register two domain names which include the Complainant’s trade marks with knowledge of the Complainant’s marks while a dispute was pending between the Parties as to another similar domain name. Further, the Panel notes that the Respondent sought to obtain remuneration for that domain name and finds that the Respondent likely hoped to do the same in this case. It is apparent on the material before the Panel that the Respondent registered the disputed domain names to which he had no legitimate claim likely for the purpose of selling them to the Complainant for a profit.
The Respondent’s use of <bhpbillitonlimited.xyz> for a gambling site further evidences the Respondent’s bad faith intent to seek finance benefit under the Complainant’s trade marks. In the present circumstances the Respondent’s lack of active use of <bhpbrazil.xyz>does not prevent a bad faith finding under the Policy.
Therefore the Panel holds that the disputed domain names were registered and used in bad faith.
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 names, <bhpbillitonlimited.xyz> and <bhpbrazil.xyz>, be transferred to the Complainant.
WiIliam A. Van Caenegem
Sole Panelist
Date: August 1, 2016.