The Complainant is BHP Billiton Innovation Pty Ltd of Melbourne, Australia, represented by Griffith Hack Patent and Trade Mark Attorneys, Australia.
The Respondents are Whois Privacy Protection Service, Inc./ Demand Domains, Inc. of Washington, United States of America represented by an internal representative.
The disputed domain name <bhpbillito.com> and <bhpbillliton.com> are registered with eNom.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 27, 2010. On April 27, 2010, the Center transmitted by email to eNom a request for registrar verification in connection with the disputed domain names. On the same date, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on May 3, 2010 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 May 5, 2010. 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on May 5, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was May 25, 2010. The Response was filed with the Center on May 25, 2010.
The Center appointed John Katz QC as the sole panelist in this matter on June 3, 2010. 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 Group BHP Billiton is a true global corporate entity, known in most, if not all, jurisdictions worldwide. It employs over 37,000 people in more than 100 operations in 25 countries around the world. It is listed on a number of the world's major stock exchanges through its various corporate entities.
Although headquartered in Melbourne, Australia, it has corporate centres in London, Johannesburg and Houston.
The Group BHP Billiton is the result of the merger of two already large and internationally recognized corporate entities. BHP was a leading global natural resources company involving minerals, oil, gas and steel. It was an iconic and pioneering Australian company that grew to acquire an internationally respected presence and reputation. It can trace its history back to 1885.
Billiton was a premier mining company in the world involved in aluminum, nickel, base metals and coal amongst other commodities. Billiton can trace its roots back to 1865.
The Group BHP Billiton can claim to be a world leader in various commodities and is amongst the largest producer of commodities including metals, alloys and coal. It has nevertheless diversified well beyond these core commodities as the Complaint documents show. Annexures 3 and 4 to the Complaint give but a snapshot of the enormity of the combined group operations.
The Complainant in this matter is BHP Billiton Innovation Pty Ltd. It is said in the Complaint document to be “a wholly owned subsidiary of BHP Billiton Ltd, holding some of BHP Billiton's intellectual property”.
There are then set out several domain names registered in favour of BHP Billiton. A consideration of Annexure 5 shows in fact a number of different registrant names, including the Complainant.
So far as the registered trade marks are concerned those in New Zealand appear to be registered in the name of BHP Ltd. The Australian marks are in the name of the Complainant and the United Kingdom marks appear to be in the name of Billiton Intellectual Property BV of the Netherlands.
Although it would have been preferable for this issue of ownership or licensed rights to be better explained, this Panel is prepared to draw the inference that in the BHP Billiton Group there are various inter-company licensing arrangements that exist which give the Complainant entitlement and ability to enforce the various rights that clearly do exist.
A not dissimilar approach was adopted by the panel in NVT Birmingham, LLC a/b/a CBS 42 WIAT-TV v.ZJ ( WIPO Case No. D2007-1079, September 21, 2007), although there it appears evidence of licensing arrangements was before the panel.
The Complainant has put in much evidence of the operations of the BHP Billiton Group. That includes its combined mining, oil and gas, coal and other activities around the world. Its registered marks and domain names are also in evidence. That results in an immense build up of goodwill and associated intellectual property holding in part at least in favour of the Complainant.
There can be, on the Complainant's argument, a valid case made out that by virtue of its immense goodwill, the Respondent is merely taking advantage of that. No other explanation for the Respondent's use of disputed domain name can be imagined. The Complainant and others in the BHP Billiton Group are truly a global brand. Thus the public would assume, contrary to the fact, a link or association between the Complainant and BHP Billiton Group on the one hand and Respondent on the other.
In this instance the Respondent has filed a Response and the Response has been taken into account by the Panel when considering this decision.
In this domain name dispute it appears the Complainant sent to the Respondent no letter before action complaining of the registration and seeking a resolution outside the UDRP process.
Such letters before action are common in domain name dispute cases but are not mandatory. Nor is there anything in the Rules that requires a letter before action to be sent. Whilst they are to be encouraged as, occasionally, a quick and inexpensive means of reaching a solution, it is never guaranteed. Moreover, complainants often view with scepticism responses by some respondents or defendants.
In this case, the Respondent is critical of the Complainant for making no prior contact. It says, had it been approached, it would have agreed to a transfer of the disputed domain name without the necessity or recourse to the UDRP.
After the Complaint was filed and served and the Respondent learned of the Complainant's concerns, it says, for the first time, it thereupon offered “to quickly and amicably resolve the current dispute, offering immediate and free transfer of the <bhpbillito.com> and <bhpbillliton.com> domains”.
The Complainant replied rejecting what the Respondent describes as its “generous offer of transfer of the domain[s]”.
The offer of transfer without any finding of bad faith registration and use is again repeated in the Respondent's response. The Respondent invites the Panel to find no bad faith.
This Panel returns to this issue in Section 6C below.
The Complainant nevertheless requires a determination and refers to and relies upon the decision in Sanofi-Aventis v. Standard Tactic LLC, WIPO Case No. D2007-1909).
The Complainant, for the reasons set out below, is entitled to a determination. However it does not necessarily follow that a determination will be favourable to the Complainant or accede to the Respondent's submission that in the circumstances there should be no finding of bad faith.
Each case must be decided on its merits but guided by whatever is the relevant history.
The Policy adopted by ICANN is directed towards resolving disputes concerning allegations of abuse of domain name registrations.
As part of the process, a Complainant must provide evidence and submissions in support of its Complaint. The expectation is that the Complainant will provide such supporting evidence as is necessary to make out its case under all three heads in paragraph 4(a) of the Policy. The Respondent is given full opportunity to respond. In this instance, the Respondent has responded.
Paragraph 4(a) of the Policy sets out three elements that must be established by a Complainant to merit a finding that a Respondent has engaged in abuse of domain name registration and to obtain relief. These elements are that:
(i) The Respondent's domain name is identical or confusingly similar to a trade mark 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 Respondent's domain name has been registered and is being used in bad faith.
Each of three elements must be established by a Complainant to warrant relief.
As to the first ground, the disputed domain names must be shown to be identical or confusingly similar to trade marks in which the Complainant has rights.
The Complainant must establish that it has such rights either to common law or registered trade marks or service marks and that those rights are being abused by the respondent.
Aside from what would undoubtedly be its internationally known name and reputation, the Complainant has a number of registered trade marks in Australia, the United Kingdom and New Zealand. BHP Billiton Group is the registered proprietor or user of various domain names as are set out in Annexure 5 to the Complaint.
The sheer number and variety of these, including a number of different spellings, with or without a hyphen, show a concerted effort to populate the worldwide web with various domain names to ensure public interest is captured and directed accordingly.
Some of these domain names are registered in the name of the Complainant. It would appear as if the registered trade marks in New Zealand at least are registered in the name of BHP Limited as proprietor. The United Kingdom trade mark in evidence is in the name of Billiton Intellectual Property BV of the Netherlands. The Australian mark BHP Billiton in evidence is in the name of the Complainant.
For the reasons earlier set out this Panel is prepared to assume that the present Complainant does indeed itself have rights in respect of these marks whether registered or not and that these rights subsist either directly or indirectly through various corporate entities in the BHP Billiton Group in favour of and are enforceable by the Complainant. Thus, the Complainant has rights in respect of both registered trade marks and at common law and has an entitlement to protect its trading name BHP Billiton or any name that is confusingly similar.
The disputed domain names are <bhpbillito.com> and <bhpbillliton.com>. It can be seen, on a careful examination, that the disputed domain names contain just one missing or additional letter in them. Given the additional letter is an “l” and appears in close proximity to two other “i's”, two “l's” and a “t” it takes more than just a casual glance to detect the additional “l”. It could easily be overlooked. So also for the other domain name which simply omits the terminal “n” in billiton.
Moreover, it would be very easy for a person, particularly one not fully conversant with the exact and correct spelling, to assume the additional “l” or the missing “n” were part of the name or simply make a mistake when typing in what is intended to be the correct name.
There is a considerable body of case law in relation to what constitutes the same or identical mark in trade mark jurisprudence.
The Panel notes in passing that in the European Court decision of LTJ Diffusion SA v. Sardas Vertdaubet SR [2003] FSR 34 the court considered what constituted use of an identical mark. It held that a mark used by a Respondent is identical with a Complainant's mark if the former “reproduced without any modification or addition of all the elements constituting the trade mark or, where, viewed as a whole, it contains differences so insignificant that they go unnoticed by an average consumer”.
The Panel considers this statement helpful when applying the test of the first element to the facts of the present Complaint. If one looks at the disputed domain names from the viewpoint of whether or not when viewed as a whole they contain differences so insignificant that they go unnoticed by the average Internet user, it must follow that the disputed domain names incorporate the virtually identical mark to that for which the Complainant has protection in each case.
However, even if that was not so there can be absolutely no quarrel with the argument that the disputed domain names are confusingly similar. This must especially be so where the differences are of such a minor nature that to the average Internet user they would go unnoticed or at best would simply, if noticed, be dismissed as inconsequential.
The Panel accordingly finds that paragraph 4(a)(i) of the Policy is made out.
As to the second ground, that there are no rights or legitimate interests possessed by the Respondent, the Respondent does not put forward in evidence any business or trading operation known as or by reference to any of the trade marks in suit thereby justifying a proprietory right to the marks.
Under paragraph 4(a)(ii) a Respondent can justify its registration of the disputed domain name on certain grounds some of which are set out in paragraph 4(c) of the Policy. Such grounds resolve broadly to own name use, bona fide use, or legitimate non commercial or fair use.
Although the Respondent does not specifically address in its Response the issue of rights or legitimate interests, it is nevertheless required to be dealt with by the Panel as it is one of the requirements under the Policy.
All that is said in the Response that is arguably relevant on this point is that:
“[d.] Respondent does use WhoIs Privacy Protection Service, Inc., which is a bona fide and legitimate service available to domain registrants to provide them with privacy on the web and cloak the domain registrant's identity from unsolicited communications, such as internet spam; however, Respondent's use [sic] this privacy service is not indicative of any illicit purpose.”
That notwithstanding the Respondent does not give any indication as to the reason for or purpose behind the registration of the two disputed domain names that have already been found by this Panel to bear a striking similarity to the various marks belonging to the Complainant or in respect of which the Complainant has rights. The Response set out in [d.] above is, with respect to the Respondent, a non-sequitur.
The Panel accordingly finds that paragraph 4(a)(ii) of the Policy is made out.
As to the third ground, this requires that the domain name be registered and used in bad faith. As has previously been said in other panel' decisions together with earlier decisions of this Panel, both elements must be made out. Accordingly, both registration and use in bad faith have to be established by the Complainant.
In Section 6A, identical or confusingly similar, this Panel has discussed the very close similarity between the Complainant's various marks and the disputed domain names. The difference in spelling is so slight as to be bordering on the imperceptible.
It is easy to assume that any person seeing the disputed domain names could be mistaken. So simple is the error that can be made that this Panel draws the inference that the error is a deliberate attempt by the Respondent to trade on imperfect recollections or carelessness by an inquirer when using a keyboard. This type of activity by a cyber squatting respondent can be termed typo squatting. That is adopting a slight and often imperceptible typographical variation to a well known mark, chosen and used by a cyber squatter deliberately on the understanding that an Internet user may not realize or appreciate the typographical error.
Whether or not the Respondent is using the disputed domain names for the purposes of diverting traffic, receiving revenue on a click per view or pass through basis, is unclear. Annexure 7 to the Complaint shows screens from the two urls. They say “this domain may be for sale”. They appear to host sponsored links to other websites. This Panel is prepared to draw the inference that there must be a commercial purpose to the Respondent's activities and its registration of the disputed domain names as no other legitimate purpose can be discerned.
However, perhaps the most telling feature against the Respondent is its involvement in numerous other domain names. It would appear that it carries on business registering a variety of domain names which are then used either for blocking or for sale.
The Respondent contended by its Response that as it had earlier offered and repeated the offer to transfer the two disputed domain names without fee there should be no finding of bad faith.
The basis upon which this is submitted is set out in the emails attached to the Response. It is necessary to quote from the first email from the Respondent of May 6, 2010. There it is said:
“As we have informed you in the past, Demand Domains has a policy against registering domains that are in derogation of legitimate rights holders, and takes strict measures to avoid registering domains that might conflict with a third party. When it assumed registrations of these Domains, Demand Domains was not aware that it had registered domains that might conflict with your client's purported trademark rights.”
The email goes on to note:
“In the past, Demand Domains has offered to address your client's concerns without their need to pursue the UDRP process, only to have this offer rebuffed. In the present case, instead of contacting us, you and your client have again chosen to spend considerable time, effort and expense in pursuing a UDRP proceeding, when you are no doubt aware that Demand Domains has indicated its willingness to address your client's concerns in the past.”
To this email the Complainant, by its attorneys responded on May 17, 2010. It made the following points:
- It rejected the claims the Respondent did not know of the Complainant's reputation.
- It referred to another decision involving the same Complainant and Respondent, BHP Billiton Innovation Pty Ltd. v. Demand Domains Inc., WIPO Case No. D2009-1068, over the disputed domain name <bhpmining.com>.
- A direct approach to the Respondent was precluded by the privacy protection service the Respondent hides behind, masking the true or real identity of the owner of the disputed domain name.
In this email the Complainant's attorneys did however offer to resolve the Complaint on terms then set out which included financial compensation for the costs incurred by the Complainant.
By email of May 19, 2010 the Respondent simply repeated its offer to transfer the disputed domain names without cost. It again denied registration in bad faith and repeated that it “takes precautions against such things”.
It is against this background that the issue must be resolved whether the registration of the disputed domain names was in bad faith and continues (“used”) in bad faith.
There is no doubt in this Panel's mind that the registration was in bad faith and continued to be so. The evidence of this includes the previous Complaint decided in relation to <bhpmining.com>.
It would be quite extraordinary that the Respondent would not have been aware of the enormous reputation and concomitant goodwill generated by the Complainant and the BHP Billiton Group as a whole.
But the crucial point must be that the two disputed domain names each contain just one typographical alteration to BHP Billiton. As the combined name BHP Billiton is a manufactured or devised word with no separate meaning that is either descriptive, geographic or generic (save perhaps the acronym BHP), it is simply beggaring credulity for the Respondent to contend, as it does, that it “does not knowingly or intentionally register domains that conflict with third party rights”. Indeed the concession in the email of May 7, 2010 that the Respondent has “indicated its willingness to address your client's concerns in the past” (possibly a reference to the decision involving <bhpmining.com>) abundantly demonstrates that the claims of lack of bad faith simply do not withstand scrutiny.
The only question is whether the disputed domain names are “being used” in bad faith. That phrase connotes ongoing activity but it is well established in a number of decisions that even passive cyber squatting will constitute use.
Further, a web check by this Panel done for the purposes of this decision shows the disputed domain names still to be active and with sponsored links not associated with the Complainant.
The Complainant is entitled to pursue its Complaint and have a decision on the merits. The overwhelming evidence leads to the conclusion that this Respondent simply has sought to stay just one step ahead and only offer a without cost transfer at the last minute following either a letter before action or, as here, initiation of the UDRP procedure.
The Panel accordingly finds that paragraph 4(a)(iii) of the Policy is made out.
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain names <bhpbillito.com> and <bhpbillliton.com> be transferred to the Complainant.
John Katz QC
Sole Panelist
Dated: June 17, 2010