The Complainant is BHP Billiton Innovation Pty Ltd of Melbourne, Australia represented by Griffith Hack Patent and Trade Mark Attorneys, Australia.
The Respondent is Cameron David Jackson of Kingston, New South Wales, Australia / PrivacyDotLink Customer 2415391 of Grand Cayman, Cayman Islands, Overseas Territory of the United Kingdom of Great Britain and Northern Ireland / PrivacyDotLink Customer 2463008 of Grand Cayman, Cayman Islands, Overseas Territory of the United Kingdom of Great Britain and Northern Ireland.
The Disputed Domain Names <bhpbillitonbabes.xyz> and <bhpbillitonpetroleum.xyz> are registered with Instra Corporation Pty Ltd, the disputed domain names <bhp-billiton.club> and <bhpbilliton.tech> are registered with Uniregistrar Corp (the “Registrars”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 5, 2016. On October 5, 2016, the Center transmitted by email to Instra Corporation Pty Ltd a request for registrar verification in connection with the Disputed Domain Names. On October 17, 2016, Instra Corporation Pty Ltd transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details regarding the Disputed Domain Names <bhpbillitonbabes.xyz> and <bhpbillitonpetroleum.xyz>. On October 18, 2016, the Center transmitted by email to Uniregistrar Corp a request for registrar verification in connection with the Disputed Domain Names <bhp-billiton.club> and <bhpbilliton.tech>. On the same day, Uniregistrar Corp transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details regarding the Disputed Domain Names <bhp-billiton.club> and <bhpbilliton.tech>.
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 October 19, 2016. In accordance with the Rules, paragraph 5, the due date for Response was November 8, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 9, 2016.
The Center appointed Nicholas Weston as the sole panelist in this matter on November 14, 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 language of this administrative proceeding is English, being the language of the registration agreement in each case.
Having regard to the remedy sought in the Complaint, and having regard to paragraph 10(b) of the Rules, the Panel must be satisfied that any orders made will address the appropriate Respondent.
Paragraph 1 of the Rules defines “Respondent” as “the holder of a domain name registration against which a complaint is initiated”. There are four Disputed Domain Names. Of these, the Respondent named as Cameron David Jackson is the current listed Registrant of the Disputed Domain Names <bhpbillitonbabes.xyz> and <bhpbillitonpetroleum.xyz> registered with Instra Corporation. The Complainant has also named and proceeded against a domain name registration privacy service listed as the respective registrant of Disputed Domain Name <bhp-billiton.club> and Disputed Domain Name <bhpbilliton.tech> in their WhoIs records prior to the filing of the Complaint.
The use of a privacy service for two of the Disputed Domain Names raises three issues for determination by the Panel. First, the Panel must identify the appropriate Respondent in each case. Second, the Panel must determine whether the mutual jurisdiction election is appropriate. Third, the Panel must determine whether the Center has adequately discharged its responsibility to contact the Respondent by reasonable means.
Taking into account the above questions as also set out in Accor and SoLuxury HMC v. Domains by Proxy, Inc. and Therese Kerr, WIPO Case No. D2009-0243, and in view that many UDRP panels in cases involving privacy or proxy services in which disclosure of an underlying registrant has occurred, appear to have found it appropriate to record in their issued decision both the name of the privacy or proxy registration service appearing in the WhoIs at the time the Complaint was filed, and of any disclosed underlying registrant, this Panel finds that in light of the record the named Respondent PrivacyDotLink Customer 2463008 as well as the disclosed underlying registrant Cameron David Jackson is the proper respondent in the case of Disputed Domain Name <bhpbilliton.tech> and, in the case of Disputed Domain Name <bhp-billiton.club> the proper Respondent is PrivacyDotLink Customer 2415391 along with the disclosed underlying registrant Cameron David Jackson (the “Respondent”) (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 4.9).
As noted having regard to the Complainant’s submissions and the Registrant’s address as identified in the Registrar’s WhoIs at the time of the filing of the Complaint, it appears that the Complainant designated an appropriate mutual jurisidiction election, namely, “to the jurisidiction of the courts at the location of the Registrar in the cases of <bhpbillitonbabes.xyz> and <bhpbillitonpetroleum.xyz> as shown in the WhoIs records at the date of submitting this Complaint to the Center and the actual location of the Respondent (once it is revealed) in the case of <bhpbilliton.tech>and <bhp-billiton.club>.1 .
Finally, the Panel finds that appropriate notice of this proceeding has been given to the Respondent and that the Center has discharged its responsibility under paragraph 2(a) of the Rules. The words “calculated to achieve actual notice” in paragraph 2 of the Rules do not demand proof of service.
The Complainant is the intellectual property holding company for BHP Billiton Group, that, in turn, operates a diversified resources business employing more than 40,000 people in 25 countries with a turnover in 2014 of more than USD67B. The Complainant has registered the trademark BHP BILLITON and variations of it in many national jurisdictions since at least 2001. A sample of the registrations cited in evidence are set out below:
|
Country |
Trademark |
Registration No. |
Priority Date |
IC |
|
Australia |
BHP BILLITON |
1141449 |
October 18, 2006 |
4, 6, 37, 40, 42 |
|
New Zealand |
BHP BILLITON |
764470 |
October 18, 2006 |
4, 6, 37, 40, 42 |
|
United Kingdom of Great Britain and Northern Ireland |
BHP BILLITON |
2264607 |
March 19, 2001 |
1, 2, 4, 6, 7, 8, 9, 11, 14, 16, 17, 19, 21, 25, 35, 36, 37, 38, 39, 40, 41, 42 |
|
European Union |
BHP BILLITON |
0986799 |
November 16, 2006 |
4, 6, 37, 40, 42 |
|
United States of America |
BHP BILLITON |
3703871 |
October 18, 2006 |
4, 6, 37, 40, 42 |
The Complainant operates a website on the Internet located at <bhpbilliton.com> and owns a number of other domain names containing its mark BHP BILLITON including <bhpbilliton.net>, <bhpbilliton.info> and <bhpbilliton.org>.
The Disputed Domain Names were registered by the Respondent on the following dates:
<bhpbillitonbabes.xyz> on March 31, 2016
<bhpbillitonpetroleum.xyz> on March 27, 2016
<bhp-billiton.club> on July 21, 2016
<bhpbilliton.tech> on September 18, 2016
The Complainant cites its trademark registrations of the trademark BHP BILLITON in the United Kingdom of Great Britain and Northern Ireland (“U. K.”) and elsewhere as prima facie evidence of ownership.
The Complainant submits that the mark BHP BILLITON is well known and that its rights in that mark predate the registration of the Disputed Domain Names. It submits that the Disputed Domain Names are confusingly similar to its trademark, because the Disputed Domain Names incorporate in its entirety the BHP BILLITON trademark and that the confusing similarity is not removed by the addition of the word “babes”, “petroleum”, or a hyphen as applicable in each case.
The Complainant contends that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Names because the Respondent has no trademark rights in or license to use the Complainant’s trademark. The Complainant also contends that the Disputed Domain Names appear to resolve to parking pages which, it submits, is evidence that the Respondent has not demonstrated any attempt to make a legitimate use of the Disputed Domain Names.
Finally, the Complainant alleges, inter alia, that the registration and use of the Disputed Domain Name were, and currently are, in bad faith, contrary to paragraphs 4(a)(iii) and 4(b) of the Policy. The Complainant argues, “that bad faith registration may be inferred from the registration of a well-known mark” in using the Complainant’s BHP BILLITON mark within the Disputed Domain Names. The Complainant also contends that passive holding of a domain name permits an inference of registration and use in bad faith which in combination with evidence of hiding his identity behind a privacy service or proxy domain registrar, and writing to the Complainant to request the payment of a sum of money in excess of its out-of-pocket expenses to transfer some of the Disputed Domain names, and a pattern of similar bad faith conduct as determined in a number of previous UDRP Decisions do, considered cumulatively, make the Complainant’s case for bad faith registration and use.
The Respondent did not reply to the Complainant’s contentions.
Under paragraph 4(a) of the Policy, a complainant has the burden of proving the following:
(i) that the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) that the respondent has no rights or legitimate interests in respect of the domain name; and
(iii) that the domain name has been registered and is being used in bad faith.
The Complainant has produced sufficient evidence to demonstrate that it has registered trademark rights in the mark BHP BILLITON in the U.K. The propriety of a domain name registration may be questioned by comparing it to a trademark registered in any country (see Thaigem Global Marketing Limited v. Sanchai Aree, WIPO Case No. D2002-0358).
Turning to whether the Disputed Domain Names are identical or confusingly similar to the BHP BILLITON trademark, the Panel observes that the Disputed Domain Names comprise:
In the case of <bhpbillitonbabes.xyz> (a) an exact reproduction of the Complainant’s trademark BHP BILLITON followed by (b) the word “babes” followed by (c) the generic Top-Level Domain (“gTLD”) suffix “.xyz”.
In the case of <bhpbillitonpetroleum.xyz> (a) an exact reproduction of the Complainant’s trademark BHP BILLITON followed by (b) the word “petroleum” followed by (c) the gTLD suffix “.xyz”.
In the case of <bhp-billiton.club> (a) an exact reproduction of the Complainant’s trademark BHP BILLITON containing a hyphen followed by (b) the gTLD suffix “.club”.
In the case of <bhpbilliton.tech> (a) an exact reproduction of the Complainant’s trademark BHP BILLITON followed by (b) the gTLD suffix “.tech”.
It is well-established that the gTLD used as technical part of a domain name may be disregarded (see Hoffmann-La Roche Inc. v. Andrew Miller, WIPO Case No. D2008-1345). The relevant comparison to be made is with the second-level portion of each of the Disputed Domain Names, specifically: “bhpbillitonbabes”, “bhpbillitonpetroleum”, “bhp-billiton” and “bhpbilliton” respectively.
The Panel finds the Disputed Domain Names <bhpbillitonbabes.xyz> and <bhpbillitonpetroleum.xyz> are confusingly similar to the BHP BILLITON trademark. It is well-established that where a domain name incorporates a complainant’s trademark in its entirety, it is confusingly similar to that mark despite the addition of descriptive words such as, in this case, “babes” and “petroleum” (see Wal-Mart Stores, Inc. v. Kuchora, Kal, WIPO Case No. D2006-0033).
The Panel observes that the other two of the Disputed Domain Names <bhp-billiton.club> and <bhpbilliton.tech> are identical to the BHP BILLITON trademark. The hyphen in the former is of no importance.
The Complainant has established paragraph 4(a)(i) of the Policy.
Paragraph 4(c) of the Policy lists ways that a respondent may demonstrate rights or legitimate interests in a disputed domain name. The Policy also places the burden on the complainant to establish the absence of the respondent’s rights or legitimate interests in the disputed domain name. Because of the inherent difficulties in proving a negative, the consensus view is that the complainant need only put forward a prima facie case that the respondent lacks rights or legitimate interests. The burden of production then shifts to the respondent to rebut that prima facie case (see World Wrestling Federation Entertainment, Inc v. Ringside Collectibles, WIPO Case No. D2000-1306; WIPO Overview 2.0”, paragraph 2.1).
The Complainant contends that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Names because it has not granted any license, authorization or consent to the Respondent to use the trademark BHP BILLITON and there is no evidence of the Respondent’s use of, or demonstrable preparations to use, the Disputed Domain Names in connection with a bona fide offering of goods and services, noting that each of these resolve to a parking page.
This Panel accepts that the Complainant has made out a prima facie case that the Respondent lacks rights or legitimate interests in the Disputed Domain Names and, in the absence of a reply by the Respondent, the Panel finds for the Complainant on paragraph 4(a)(ii) of the Policy.
The third element of the Policy that a complainant must also demonstrate is that the disputed domain name has been registered and used in bad faith. Paragraph 4(b) of the Policy sets out certain circumstances to be construed as evidence of both.
The evidence that the Respondent registered and has used the Disputed Domain Names in bad faith is overwhelming. The Respondent has already been the subject of adverse decisions in a number of previous proceedings brought under the Policy by the same Complainant, namely, BHP Billiton Innovation Pty Ltd v. Cameron David Jackson, WIPO Case No. D2016-0345 in respect of the domain name <bhp-billiton.xyz>; BHP Billiton Innovation Pty Ltd v. Cameron Jackson, WIPO Case No. D2015-1782, in respect of the domain name <bhpbilliton.club>, BHP Billiton Innovation Pty Ltd v. Cameron Jackson, WIPO Case No. D2015-2214 in respect of the domain name <bhpbilliton.site> and a bit further back BHP Billiton Innovation Pty Ltd, BMA Alliance Coal Operations Pty Ltd v. Cameron Jackson, WIPO Case No. D2008-1338 in respect of the following domain names: <auriasdiamonds.info>, <bhpinnovation.biz>, <bhpinnovation.info>, <bhpinnovation.net>, <bhpinnovation.org>, <bhplimited.biz>, <bhplimited.info>, <bmacoal.info>, <ekatidiamondmine.biz>, <ekatidiamondmine.net>, <ekatidiamondmine.org>, <temco-alloys.biz>, <temco-alloys.info>, <temco-alloys.net>, <temco-alloys.org>.
The improbability of the Respondent having no recollection of any of these decisions make it inconceivable that he might have registered the Disputed Domain Names without knowing of the trademark BHP BILLITON (BHP Billiton Innovation Pty Ltd v. Cameron Jackson, WIPO Case No. D2015-1782 (“one of the best known trademarks in Australia at least”); BHP Billiton Innovation Pty Ltd v. Cameron Jackson, WIPO Case No. D2015-2214 (“the Respondent was well aware of the Complainant and of its well-known trademarks”). This Panel finds the Respondent has obviously registered the Disputed Domain Names with the Complainant in mind.
Indeed, the Respondent has been the subject of a numerous complaints under the Policy, concerning his registration of a variety of well-known trademarks of others, including: Pfizer Inc. v. Cameron Jackson, WIPO Case No. D2005-0909 <pfizeraustralia.info>, Alstom v. Cameron Jackson, WIPO Case No. D2007-1022 <alstom-belgium.info>, <alstom-china.info>, <alstom-europe.info>, <alstom-fiji.info>, <alstom-france.info>, <alstom-global.info>, <alstom-honduras.info>, <alstom-newzealand.info>, <alstom-perth.info>, <alstoms.info>, <alstom-switzerland.info>; Chocoladefabriken Lindt & Sprüngli AG v. Cameron Jackson, WIPO Case No. D2007-1290 <lindtchocolates.biz>, <lindtchocolates.info>, <lindttruffles.info>; and Tommy Bahama Group, Inc. v. Cameron Jackson, WIPO Case No. D2015-0090 <tommybahamagroup.com>; International Organization for Standardization ISO v. Cameron Jackson, WIPO Case No. D2007-0700 <iso15022.biz>, <iso15022.info> and <iso15022.net>, Insurance Australia Group Limited v. Cameron Jackson, WIPO Case No. D2008-0872 <nrma.mobi>; Monster Energy Company v. Cameron Jackson, WIPO Case No. D2016-1868 <monsterenergy.lol> and <monsterenergy.online>; Comerica Bank v. Cameron David Jackson aka Cameron Jackson, WIPO Case No. D2016-1678 <comericabanking.xyz>, <comericabanktower.xyz>, <comericainc.xyz>, <comericasecurities.xyz>, and <comericawebbanking.xyz>, The American Automobile Association, Inc. v. Cameron Jackson / PrivacyDotLink Customer 2440314, WIPO Case No. D2016-1671 <aaaclub.xyz> and <theamericanautomobileassociation.xyz>. The Respondent is, on any view, a serial cybersquatter.
Moreover, the Panel draws an adverse inference from this serial cybersquatter the Respondent’s use of a privacy shield. In the circumstances, it seems reasonable to infer that the main purpose for which the Respondent has used a privacy service is to cause the Complainant difficulty in identifying whether or not there are other domain names registered by the same Respondent (see Medco Health Solutions, Inc. v. Whois Privacy Protection Service, Inc., WIPO Case No. D2004-0453; CCM IP S.A. v. Traverito Traverito, WIPO Case No. D2007-0542; Sermo, Inc. v. CatalystMD, LLC, WIPO Case No. D2008-0647).
Further, a gap of ten years between the registration of a complainant’s trademarks and a respondent’s registration of a disputed domain name (containing the trademark) can indicate bad faith (see Asian World of Martial Arts Inc. v. Texas International Property Associates, WIPO Case No. D2007-1415). In this case, the Respondent registered the Disputed Domain Names more than fourteen years after the Complainant established trademark rights in the BHP BILLITON mark.
The consensus view in paragraph 3.2 of WIPO Overview 2.0 is that UDRP panels may draw inferences about whether a domain name was used in bad faith given the circumstances surrounding registration. In this case, no response to the Complaint has been filed, the Respondent knew or should have known about the Complainant’s well-known trademark when he made identical use of that mark in the Disputed Domain Names, they resolve to parking pages, the circumstances of registering in a relatively new gTLD shortly after losing other proceedigns brought under the Policy involving the same trademark, and the requests for money in excess of out-of-pockets are cumulatively and overwhelmingly suggestive of cybersquatting. The litany of calculated, bad faith behaviour sustained over a long period of time, the weight of the numerous UDRP decisions against him, the sheer number of specific findings that he engaged in a pattern of bad faith conduct and the fact that this serial cybersquatter has not placed any explanation before this Panel as to his bad faith conduct can lead to no other conclusion.
This Panel finds that the Respondent has taken the Complainant’s trademark BHP BILLITON and incorporated it into the Disputed Domain Names without the Complainant’s consent or authorization, for the very purpose of capitalizing on the reputation of the trademark in bad faith.
This Panel concurs with the panel’s decision in BHP Billiton Innovation Pty Ltd v. Cameron David Jackson, WIPO Case No. D2016-0345 (“The limited administrative remedies available under the Policy are inadequate to deal with serial cybersquatters such as the Respondent. That deficiency represents an ongoing injustice to trademark owners worldwide”). While paragraph 4(b)(ii) of the Policy does sanction repeat offenses as grounds by themselves for a transfer order, the Policy does not, in this Panel’s view, adequately deal with mischiefs by the same person that include the repeated registration of a domain name without any reasonable grounds, a repetition of behaviour in a new gTLD that has already been rejected by a panel, disregard for the Policy’s practices and rulings, and persistent attempts to abuse, ignore or circumvent the Policy’s processes. In this Panelist’s view, there is no scope under the Policy, as it stands, to extend its accepted principles to curb, in a meaningful way, the future behavior of a serial cybersquatter; a complainant’s only options are to litigate or, alternatively, to bring yet another proceeding under the Policy. To deal with pest behavior, in this Panelist’s view, ICANN could do worse than to adopt an approach akin to the regime imposed by Vexatious Proceedings legislation seen in Australia which system could take priority over the Policy in circumstances such as those found in this case. In many cases the same Panelist could make determinations under both regimes and, if not, the more onerous obligations imposed by a regime directed at serial cybersquatters could readily coexist with the Policy. In this Panel’s view, the wastage of resources, harassment, detriment and annoyance of trademark owners that the future conduct of a serial cybersquatter can cause is currently remediable by the administrative equivalent of a flogging with a piece of wet lettuce.
The Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(iii) of the Policy.
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 <bhpbillitonbabes.xyz>, <bhp-billiton.club>, <bhpbillitonpetroleum.xyz> and <bhpbilliton.tech> be transferred to the Complainant.
Nicholas Weston
Sole Panelist
Date: November 21, 2016
1 In general, having regard to the definition of “mutual jurisdiction” in the Rules, it would either be that of the registrant’s address as identified in the Registrar’s WhoIs at the time of the filing of the complaint with the provider or the principal office of the Registrar, see Research In Motion Limited v. Privacy Locked LLC/Nat Collicot, WIPO Case No. D2009-0320.