The Complainant is BHP Billiton Innovation Pty Ltd of Melbourne, Australia, represented by Griffith Hack Patent and Trade Mark Attorneys, Australia.
The Respondent is Billiton BHP of Hong Kong, China.
The disputed domain name <bhp-china.com> is registered with GoDaddy.com, LLC (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 3, 2018. On September 3, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 4, 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 September 12, 2018. In accordance with the Rules, paragraph 5, the due date for Response was October 2, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 4, 2018.
The Center appointed Joseph Simone as the sole panelist in this matter on October 19, 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.
The Complainant is a wholly-owned subsidiary of BHP Billiton Limited of BHP Group (“BHP”), a multinational mining, metals and petroleum public company headquartered in Melbourne, Australia. As of June 30, 2015, it had a market capitalization of USD 108 billion with revenue from continuing operations of USD 44.6 billion.
The Complainant’s parent company, BHP Billiton Limited, owns several trademarks for BHP around the world, including in Australia, China and the United States of America (“Unites States”). The earliest of these submitted into evidence for each country is set forth below:
− Australian Trademark Registration No. 59146, registered on December 9, 1931, in class 6;
− Chinese Trademark Registration No. 638536, registered on April 21, 1993, in class 6;
− United States Trademark Registration No. 1367145, registered on October 22, 1985, in class 42;
As a subsidiary of BHP Billiton Limited, the Complainant has standing to file this Complaint in accordance with section 1.4.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).
The disputed domain name was registered on June 14, 2018. It currently resolves to a website designed to appear as an official website of BHP.
The Complainant contends that the disputed domain name is identical or confusingly similar to the mark BHP in which it has rights. The Complainant submitted evidence of various trademark registrations for BHP. The Complainant also claims that the BHP trademark has become the world’s most well-known brand in diversified resources and the mining of such resources. Upon viewing the disputed domain name, consumers are highly likely to expect an association with BHP. The Complainant argues that the disputed domain name is confusingly similar to its trademark and the addition of the word “China” is a geographic identifier which does not distinguish the disputed domain name from the BHP trademark.
The Complainant argued that the Respondent has no rights or legitimate interests in respect of the disputed domain name on the following grounds.
(i) The Respondent has not at any time been commonly known by the disputed domain name and does not have any trademarks identical or similar to the disputed domain name that BHP is aware of.
(ii) The registration of the disputed domain name under the name “Billiton BHP” is a further attempt by the Respondent to fraudulently pass itself off as BHP and therefore should not be deemed to indicate that the Respondent has a legitimate interest in the disputed domain name or the name “Billiton BHP”.
(iii) The Respondent is not making legitimate noncommercial or fair use of the disputed domain name.
The Complainant submits that the Respondent acquired and is using the disputed domain name in bad faith. First, the Complainant submits that bad faith may be inferred from registration of a disputed domain name containing such a well-known trademark as BHP. Second, the website to which the disputed domain name resolves replicates many aspects of BHP’s official website, including text, photographs, trademarks, colours and layout, which the Complainant believes is an elaborate attempt at fraud and thereby submits evidence of similar UDRP cases involving fraudulent BHP websites. The Complainant further submits that by using the disputed domain name <bhp-china.com>, the Respondent has intentionally attempted to attract Internet users to an online location by creating a likelihood of confusion with the BHP trademark as to the source, sponsorship, affiliation or endorsement of the Respondent’s website and possible fraudulent investment schemes. Finally, the Complainant submits that registration of the disputed domain name under the name “Billiton BHP” is further evidence of bad faith.
The Respondent did not reply to the Complainant’s contentions.
Under the first element of the Policy, a complainant must prove that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights (paragraph 4(a)(i) of the Policy).
That is, the complainant must first demonstrate substantive rights in the trademark on which the complaint is based. The Panel is satisfied that the Complainant has adequately demonstrated its rights in the mark BHP by virtue of its trademark registrations and extensive reputation.
A complainant must then demonstrate that the disputed domain name is identical or confusingly similar to the trademark. Per section 1.7 of WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), the test for whether the domain name is identical or confusingly similar to the trademark is a relatively straightforward comparison. A domain name incorporating the entirety or dominant feature of the relevant mark will normally satisfy the threshold (Britannia Building Society v. Britannia Fraud Prevention, WIPO Case No. D2001-0505; V&S Vin & Sprit AB v. Ooar Supplies, WIPO Case No.D2004-0962).
When comparing the domain name with the trademark, the Top-Level Domain “.com” may be disregarded (section 1.11 of WIPO Overview 3.0; F. Hoffmann-La Roche AG v. Domain Admin/xcite, WIPO Case No. DCC2007-0003).
In this case, the disputed domain name <bhp-china.com> entirely incorporates the trademark BHP with the addition of the geographical term “China”. It is a well-established principle from prior decisions under the Policy that the addition of a geographical term to a trademark does not prevent a finding of confusing similarity under the first element (section 1.8 of WIPO Overview 3.0; BHP Billiton Innovation Pty Ltd v. Oloyi, WIPO Case No. D2017-0284).
Therefore, the Panel is satisfied the disputed domain name is confusingly similar to the Complainant’s mark and the first requirement of the UDRP is satisfied.
A complainant must then demonstrate that the respondent should be considered as having no rights or legitimate interests in respect of the disputed domain name that is the subject of the complaint (paragraph 4(a)(ii) of the Policy).
Paragraph 4(c) of the Policy sets out a non-exhaustive list of circumstances which, if found by the panel, will demonstrate a respondent’s rights or legitimate interests in the disputed domain name. The Panel accepts the Complainant’s submissions that the Respondent is not commonly known by the disputed domain name and that the use of the name “Billiton BHP” to register the disputed domain name is an attempt at fraud. Indeed, a company search in Hong Kong where the Respondent is apparently located returns no results for an entity called “Billiton BHP”. Furthermore, the use of the disputed domain name to imitate a real BHP website by copying many aspects of BHP’s official website is clearly not a bona fide or legitimate use within the meaning of paragraph 4(c) of the Policy.
As the Complainant has made out a prima facie case that the Respondent has no rights or legitimate interests, the burden of production shifts to the Respondent (section 2.1 of WIPO Overview 3.0). As the Respondent did not submit a response, it has failed to present any evidence to establish rights or legitimate interests, and given the above analysis, the Panel concludes it has none.
The second requirement of the UDRP is therefore satisfied.
A complainant must prove that the disputed domain name was registered and is being used in bad faith (paragraph 4(a)(iii) of the Policy).
In assessing bad faith, one relevant factor is whether the Respondent “knew or should have known” of the Complainant’s trademark rights, which is a strong inference for bad faith (Volkswagen AG v. Jan-Iver Levsen, WIPO Case No. D2015-0069; Yahoo! Inc. v. Yahoo-Asian Company Limited, WIPO Case No. D2001-0051). The fame of the Complainant and its trademark is obvious from the results of a web search against “BHP” using Google, for which at least the first two pages of results all relate to the Complainant. A Wikipedia page for “BHP” states the company was ranked as the world’s largest mining company in 2017. Given the Complainant’s significant reputation and the registration of the disputed domain name in the name of a fake BHP entity, the Respondent was clearly aware of the Complainant’s rights when it acquired the disputed domain name.
Furthermore, by using the disputed domain name <bhp-china.com> to imitate an official BHP website in Chinese language, there is a real risk that Internet users will be deceived into believing the website is a legitimate Chinese-language version of the BHP website and that the Respondent will exploit this confusion to engage in a fraudulent investment scheme. This clearly falls within the scope of paragraph 4(b)(iv) of the Policy, which states that bad faith will be found where the Respondent intentionally attempts to attract users to its website by relying on consumer confusion as to the source or affiliation of the website for commercial gain.
Therefore, the Panel concludes that the disputed domain name was 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 name <bhp-china.com> be transferred to the Complainant.
Joseph Simone
Sole Panelist
Date: October 31, 2018