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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

BHP Billiton Innovation Pty Ltd v. Domains By Proxy LLC / Abiola Akinloye

Case No. D2015-1771

1. The Parties

The Complainant is BHP Billiton Innovation Pty Ltd of Melbourne, Victoria, Australia, represented by Griffith Hack Patent and Trade Mark Attorneys, Australia.

The Respondents are Abiola Akinloye of Melbourne, Victoria, Australia and Domains By Proxy LLC, Domains By Proxy LLC of Scottsdale, Arizona.

2. The Domain Name and Registrar

The disputed domain name <bhpbllliton.com> is registered with GoDaddy.com, LLC (the “Registrar”)

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 6, 2015. On October 6, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 6, 2015, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on October 22, 2015 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 October 26, 2015.

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 October 26, 2015. In accordance with the Rules, paragraph 5, the due date for Response was November 15, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 16, 2015.

The Center appointed Douglas Clark as the sole panelist in this matter on November 25, 2015. 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 and its group of companies is a large diversified resources group. The Complainant is the registered proprietor of the trademark BHP BILLITON in various countries, including Australia, in numerous classes. Its registrations in Australia include registration no. 1141449 in Classes 4, 6, 37, 40 and 42 registered on October 18, 2006. The Complainant is also the registrant of the domain name <bhpbilliton.com>.

The disputed domain name <bhpbllliton.com> was registered on November 21, 2014. The disputed domain name currently auto-forwards to the Complainant’s official website at “www.bhpbilliton.com”.

5. Parties’ Contentions

A. Complainant

Identical or confusingly similar

The Complainant argues that the disputed domain name <bhpbllliton.com> is a misspelling of the BHP BILLITON mark. It is therefore confusingly similar to the Complainant’s registered trademark.

No rights or legitimate interests

The Complainant submits that the Respondent has not been known by the disputed domain name and has never sought or obtained any trademark registrations for BHP BILLITON. Further, it is not making legitimate noncommercial fair use of the disputed domain name.

Registered and used in bad faith

The Complainant submits that there is no doubt that before registration of the disputed domain name the Respondent knew of the Complainant’s rights in the BHP BILLITON trademark. The website under the disputed domain name is pointed to the Complainant’s official website. This may have been done to lend legitimacy to the disputed domain name. In any event, by not using the disputed domain name, the Respondent is effectively passively holding the disputed domain name.

As such, the Complainant alleged registration and use of the disputed domain name was in bad faith.

B. Respondent

The Respondent did not respond to the Complainant’s contentions.

6. Discussion and Findings

A. Identical or Confusingly Similar

The disputed domain name <bhpbllliton.com> is almost identical to the registered trademark BHP BILLITON. The only differences are that the first “i” has been changed to an “l” and the generic Top-Level Domain (“gTLD”) “.com”. The disputed domain name is confusingly similar to the registered trademark BHP BILLITON.

The first part of paragraph 4(a) of the Policy is therefore satisfied.

B. Rights or Legitimate Interests

The Respondent has not responded to the Complaint to assert any rights or legitimate interests. Paragraph 2.1 of the WIPO Overview of WIPO Panel views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”) provides:

“While the overall burden of proof rests with the complainant, panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is often primarily within the knowledge of the respondent. Therefore a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, the burden of production shifts to the respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such appropriate allegations or evidence, a complainant is generally deemed to have satisfied paragraph 4(a)(ii) of the UDRP.”

The Complainant has made out a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name. None of the circumstances in paragraph 4(c) of the Policy, which sets out how a respondent can prove its rights or legitimate interests, are present in this case.

The second part of paragraph 4(a) of the Policy is therefore satisfied.

C. Registered and Used in Bad Faith

The Panel has no hesitation in finding that the disputed domain name <bhpbllliton.com> was registered in bad faith and is being used in bad faith.

BHP BILLITON constitutes a distinctive trademark and the disputed domain name is very unlikely to have been registered by the Respondent without any knowledge on its part of the Complainant’s trademark, especially since (1) the disputed domain name re-directs to the Complainant’s official website; (2) the disputed domain name contains a misspelling of Complainant’s trademark, and (3) the Complainant’s trademark was registered in Australia well before the registration of the disputed domain name. These factors all lead to a conclusion that the disputed domain name being registered in bad faith.

In addition, as stated by the Complainant, the Respondent is not making any legitimate noncommercial or fair use of the disputed domain name <bhpbllliton.com>.

While the disputed domain name does not appear to have been used other than to point to the Complainant’s website, this does not prevent a finding of bad faith. As the Complainant argues, this could have been done to give some appearance of legitimacy to the disputed domain name. Having examined all the circumstances of the case the Panel finds that the Respondent registered and is using the disputed domain name in bad faith (see paragraph 3.2 of the WIPO Overview 2.0).

The third part of paragraph 4(a) of the Policy is therefore satisfied.

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 <bhpbllliton.com> be transferred to the Complainant.

Douglas Clark
Sole Panelist
Date: December 4, 2015

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