The Complainant is BHP Billiton Innovation Pty Ltd of Melbourne, Australia, represented by Griffith Hack Patent and Trade Mark Attorneys, Australia.
The Respondent is Amy Stafford, Monument, Colorado, Chesterbrook, Pennsylvania, United States of America (“United States”).
The disputed domain names <us-bhpbilliton.com> and <usbhpbillitons.com> are registered respectively with 1&1 Internet AG and Tucows Inc. (the “Registrars”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 24, 2017. On January 24, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On January 25, 2017, 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 Complainant filed an amended Complaint on January 31, 2017.
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 February 2, 2017. In accordance with the Rules, paragraph 5, the due date for Response was February 22, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 23, 2017.
The Center appointed Torsten Bettinger as the sole panelist in this matter on March 10, 2017. 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.
BHP Billiton Group is a worldwide known diversified resources group, employing more than 40,000 people in more than 100 operations in 25 countries. The core of the Group is a dual-listed company (DLC) comprising BHP Billiton Limited and BHP Billiton Plc. The two entities continue to exist as separate companies, but operate as a combined group known as BHP Billiton.
BHP Billiton was created through the DLC merger of BHP Limited (now BHP Billiton Limited) and Billiton Plc (now BHP Billiton Plc), which was concluded on June 29, 2001. The Complainant, BHP Billiton Innovation is a wholly owned subsidiary of BHP Billiton Limited, holding some of BHP Billiton’s intellectual property.
BHP Billiton is headquartered in Melbourne with major offices in London and supporting offices around the world. BHP Billiton operates a website that is accessible via various domain names including <bhpbilliton.com>.
BHP Billiton is the owner of numerous trademarks worldwide for the trademark BHP BILLITON including the following:
|
Country |
Mark |
Registration No. |
Classes |
|
Australia |
BHP BILLITON |
1141449 |
4, 6, 37, 40, 42 |
|
New Zealand |
BHP BILLITON |
764470 |
4, 6, 37, 40, 42 |
|
United Kingdom |
BHP BILLITON |
2264607 |
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 |
4, 6, 37, 40, 42 |
|
United States of America |
BHP BILLITON |
3703871 |
4, 6, 37, 40, 42 |
|
Canada |
BHP BILLITON |
TMA794995 |
Wares and Services Equivalent of Classes 4, 6, 37, 40, 42 |
BHP Billiton controls numerous domain names containing the trademark BHP BILLITON, including <bhpbilliton.com>, <bhpbilliton.net>, <bhpbilliton.info>, <bhpbilliton.org>, <bhpbilliton.mobi> and <bhpbilliton.biz>.
The Respondent registered the domain names <us-bhpbilliton.com> and <usbhpbillitons.com> on January 18, 2017. The Respondent used the disputed domain name <usbhpbillitons.com> for a pay-per-click (“PPC”) parking website. The disputed domain name <us-bhpbillitons.com> appears to have been inactive since its registration.
The Complainant submits that the disputed domain names are confusingly similar to its trademarks BHP BILLITON, that the Respondent has no rights or legitimate interests in the disputed domain names and that the Respondent has registered and is using the disputed domain names in bad faith.
With regard to the confusing similarity between the Complainant’s trademark and the disputed domain names, the Complainant argues that the disputed domain names incorporate its well-known trademark BHP BILLITON in its entirety and that the addition of the generic Top-Level Domain (“gTLD”) “.com” and the geographical identifier “us” is irrelevant in considering whether the disputed domain names are confusingly similar to the Complainant’s trademark.
With regard to the Respondent having no rights or legitimate interests in the disputed domain names, the Complainant submitted that (1) the Respondent has not at any time been commonly known by the disputed domain names, (2) it is not aware of any trademarks in which the Respondent may have rights that are identical or similar to the disputed domain names and (3) that the Respondent is not making a legitimate noncommercial or fair use of the disputed domain names.
With regard to the disputed domain name having been registered and being used in bad faith, the Complainant submits that the bad faith registration may be inferred from the Respondent’s registration of the disputed domain names that are confusingly similar to its well-known BHP BILLITON trademarks and from the fact that the Respondent engages in what the Complainant suspects is an attempt at recruitment fraud.
The Complainant further argues that, by using the disputed domain name <usbhpbillitons.com> for a PPC parking website, the Respondent has intentionally attempted to attract Internet users to an online location by creating a likelihood of confusion with the Complainant’s BHP BILLITON trademark as to the source, sponsorship, affiliation or endorsement of the Respondent’s website. To the extent that the Respondent registered the disputed domain names both with a hyphen and without hyphen, the Complainant argues that the mere passive holding of the disputed domain names by the Respondent constitutes bad faith registration and use for the purposes of the Policy.
The Respondent did not reply to the Complainant’s contentions.
The disputed domain names <us-bhpbilliton.com> and <usbhpbillitons.com> are confusingly similar to the Complainant’s BHP BILLITON trademarks.
It is well established that the test of identity or confusing similarity under the Policy is confined to a comparison of the disputed domain name and the trademark alone, independent of the products for which the domain name is used or other marketing and use factors usually considered in trademark infringement cases. See Arthur Guinness Son & Co. (Dublin) Limited v. Dejan Macesic, WIPO Case No. D2000-1698 (<guiness.com>); Ansell Healthcare Products Inc. v. Australian Therapeutics Supplies Pty, Ltd., WIPO Case No. D2001-0110 (<ansellcondoms.com>); Dixons Group Plc v. Mr. Abu Abdullaah, WIPO Case No. D2001-0843 (<dixons-online.net>); AT&T Corp. v. Amjad Kausar, WIPO Case No. D2003-0327 (attinternet.com); British American Tobacco (Brands), Inc. v. NABR, WIPO Case No. D2001-1480 (<kool.com>); Britannia Building Society v. Britannia Fraud Prevention, WIPO Case No. D2001-0505 (<britanniabuildingsociety.org>).
In this case, the disputed domain names incorporate the Complainant’s trademark in its entirety. The addition of the letters “us” does anything to dispel the confusing similarity caused by the use of the Complainant’s mark in the disputed domain names as “us” is a well-known abbreviation for the United States of America. In numerous cases, it has been held that a domain name that wholly incorporates a registered mark is sufficient to establish confusing similarity for purposes of the Policy despite the addition of descriptive word or geographic elements to such marks. (See ITT Corporation and ITT Manufacturing Enterprises LLC v. VALUE-DOMAIN COM, VALUE DOMAIN, WIPO Case No. D2012-0529 (<ittindia.com>); Natura Cosmeticos S/A and Industria e Comercio de Cosmeticos Natura Ltda. v. N/A, WIPO Case No. D2008–1128 (<naturaportugal.com>); M.E.G. Gottlieb Diaderma-Haus GMBH & Co. v. Mina Asaro, WIPO Case No. D2011-0056 (<aryalayausa.com>).
Furthermore, it has also been long established in the previous UDRP decisions that the gTLD “.com” is not to be taken into account when assessing issue of identity and confusing similarity.
For the foregoing reasons, the Panel concludes that the disputed domain names are confusingly similar to the Complainant’s marks BHP BILLITON in which the Complainant has exclusive rights.
A Respondent may establish its rights or legitimate interests in the domain name, among other circumstances, by showing any of the following elements:
“(i) before any notice to you [Respondent] of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
“(ii) you [Respondent] (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
“(iii) you [Respondent] are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.”
Because the Respondent did not file a Response, there is no evidence showing that the Respondent is a licensee of, or otherwise affiliated with the Complainant, and has been authorized by the Complainant to use its BHP BILLITON trademark.
There is also no evidence that the Respondent has been commonly known by the disputed domain names, or has made a bona fide use of the disputed domain names, or that it has, for any other reason, rights or legitimate interests in the disputed domain names. It is well-established that operating a PPC parking page using a distinctive trademark in a domain name does not establish rights or legitimate interests.
Accordingly, this Panel finds that the Respondent has no rights or legitimate interests in the disputed domain names.
The Panel is satisfied that the Complainant’s BHP Billiton marks are well-known around the world, including in the United States where the Respondent is located. The registration and use of the Complainant’s BHP BILLITON marks significantly predate the registration of the disputed domain names, which reproduce the mark in its entirety. It is therefore clear to the Panel that the Respondent was aware of the Complainant’s trademark at the time of registration of the disputed domain names. (See Microsoft Corp. v. Cedric Thompson, WIPO Case No. D2004-1097; Yahoo!, Inc. v. Ashby, WIPO Case No. D2000-0241).
The Panel notes that the Complainant did not provide the Panel with any evidence that the Respondent has actively used the disputed domain name <us-bhpbillitons.com>. However, UDRP panels have long recognized that the passive holding of a domain name by a registrant may constitute “use” for the purposes of the Policy (See paragraph 3.2, WIPO Overview 2.0).
As set out in the Telstra case (Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003), which is widely-adopted among UDRP panels, factors leading to the conclusion that a respondent’s passive holding of a domain name may constitute bad faith use for purposes of paragraph 4(a)(iii) of the Policy include:
“(i) the complainant’s mark is widely known and enjoys a strong reputation,
(ii) the respondent has provided no evidence of any actual or contemplated good faith use of the domain name,
(iii) the respondent has attempted to conceal his or her true identity,
(iv) the respondent has provided false or misleading contact details, and
(v) there is no conceivable good faith use to which the respondent could put the domain name that would not infringe the complainant’s trademark.”
The Complainant’s mark is long-established and widely known, especially in the Respondent’s location. There is no evidence of any actual or contemplated good faith use of the disputed domain names. Given that the Complainant’s BHP Billiton mark is solely connected with the Complainant’s brand, the disputed domain name is not susceptible to use in a generic sense. These circumstances demonstrate the fulfillment of the Telstra criteria. The Panel thus concludes that the registration and use of the disputed domain name <us-bhpbillitons.com> were in bad faith for purposes of the Policy.
The Complainant provided evidence that the disputed domain name <usbhpbillitons.com> was used for a PPC parking website incorporating links to a wide range of products and services having no connection to the Complainant or reference to any goods or services offered by the Complainant.
It is well established that where a domain name is used to generate revenue in respect of “click through” traffic, and that traffic has been attracted because of the association of the domain name with a complainant, such use amounts to use in bad faith (See, e.g., The Uder Company Pty Ltd and Stay In Bed Milk & Bread Pty Ltd (trading as Aussie Farmers Direct) v. PrivacyProtect.org, Domain Admin, ID # 10760, WIPO Case No. D2012-0924 and the cases cited therein). The fact that the PPC links shown on the parking page may have been automatically generated by a software program, is of no relevance as the domain name holder is ultimately responsible for the content shown on its website.
In addition, as the Complainant’s BHP BILLITON trademark is well-known and solely connected with the Complainant’s brand, the passive holding of the disputed domain names also constitutes bad faith registration and use for the purposes 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 <us-bhpbilliton.com> and <usbhpbillitons.com> be transferred to the Complainant.
Torsten Bettinger
Sole Panelist
Date: March 24, 2017