The Complainant is BHP Billiton Innovation Pty Ltd, Melbourne Victoria, Australia, represented by Griffith Hack Patent and Trade Mark Attorneys, Australia.
The Respondents are Pluto Domain Services Private Limited, Jogeshwari (W), Mumbai, Maharashtra, India / Whois Privacy Protection Services, c/- whois-privacy-net, Madhya Pradesh, India.
The disputed domain name <bhpbillton.com> is registered with Lead Networks Domains Pvt. Ltd.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 16, 2008. On December 16, 2008, the Center transmitted by email to Lead Networks Domains Pvt. Ltd. a request for registrar verification in connection with the disputed domain name. On December 19, 2008, Lead Networks Domains Pvt. Ltd. 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 December 23, 2008 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 by e-mail on December 29, 2008 and in hardcopy on January 6, 2009. The Center verified that 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 January 7, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was January 27, 2009. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on January 30, 2009.
The Center appointed Teruo Doi as the sole panelist in this matter on February 24, 2009. 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 facts stated in the Complaint are as follows:
4.1 BHP Billiton Group is the world's largest diversified resources Group, employing approximately 37,000 people in more than 100 operations in 25 countries. The core of the Group is a dual listed company 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.
4.2 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. In the following, the Group will simply be referred to as BHP Billiton.
4.3 BHP Billiton is headquartered in Melbourne with major offices in London and supporting offices around the world. BHP Billiton operates a website at “www.bhpbilliton.com” (“BHP Billiton's website”). BHP Billiton's company profile printed from its website (Annexure 3 to the amended Complaint), and BHP Billiton's Business Review 2008 (Annexure 4).
4.4 BHP Billiton's average annual turnover between 2001 and 2005 exceeded US$22 billion. In 2007 and 2008, BHP Billiton generated turnover of US$47.5 billion and US$59.5 billion respectively.
4.5 Trademark registrations on which the Complainant's claim is based are recorded in the names of BHP Billiton Innovation Pty Ltd, Billiton Intellectual Property BV, and BHP Limited. BHP Billiton Innovation Pty Ltd is a wholly owned subsidiary of BHP Billiton Limited, holding some of BHP Billiton's intellectual property. Billiton Intellectual Property BV is a wholly owned subsidiary of BHP Billiton Plc. BHP Limited is the former name of BHP Billiton Limited. A print out from the database of the Australian Securities and Investments Commission for the company BHP Limited is attached to the Amended Complaint (Annexure 5).
4.6 BHP Billiton is the registrant of numerous domain names, including the following:
WHOIS print-outs for some of these domain names are attached to the Amended Complaint (Annexure 6).
4.7 BHP Billiton is the owner of numerous trademarks worldwide for marks consisting of and containing the words BHP BILLITON. The Complaint includes a table listing trademark registrations of the words “BHP BILLITON” in New Zealand, United Kingdom and Australia indicating Registration numbers and respective classes:
New Zealand: Mark “BHP BILLITON”
United Kingdom: Mark “BHP BILLITON”
Registration No. 2264602 Classes: 1, 2, 4, 6, 7, 8, 9, 11, 14, 16, 17, 19, 21, 25, 35, 36, 37, 38, 39, 40, 41 and 42
Australia: Mark “BHP BILLITON”
Registration No. 1141449 Classes: 4, 6, 37, 40 and 42
Print-outs of those marks from the databases of the Trade Mark Offices in Australia, New Zealand and the United Kingdom are attached to the Amended Complaint (Annexure 7).
4.8 The disputed domain name resolves to a website containing sponsored links. Attached to the amended Complaint is a screen shot of the page that appeared on November 13, 2008 in response to a request for the website related to the disputed domain name (Annexure 8).
On the basis of the facts stated above, the Complainant requests the Administrative Panel to issue a decision that the Domain Name, <bhpbillton.com>, be transferred to the Complainant, in accordance with paragraph 4(b)(i) of the Policy, on the following grounds:
The domain name at issue, <bhpbillton.com>, is confusingly similar to BHP Billiton's extensive portfolio of BHP BILLITON trademarks. The BHP BILLITON trademark is not only highly distinctive but it has over the years become the world's most well known brand in diversified resources. It follows that the non-distinctive alteration (the exclusion of the letter “i”) is insufficient to distance the disputed domain name from BHP Billiton's highly distinctive trademark BHP BILLITON in order to avoid likelihood of confusion.
Quite clearly, the disputed domain name represents mere misspelling of BHP Billiton's BHP BILLITON trademark. Reference is made to the following decisions which have found that misspellings of a complainant's trademarks satisfy the requirement under paragraph 4(a)(i) of the Policy (Annexure 9 to the amended Complaint).
It is well settled that the addition of the gTLD does not affect the assessment that a domain name is confusingly similar to a particular trademark.
The Respondents have no connection with BHP Billiton. In particular, the Respondents have not been licensed or authorized by BHP Billiton to use the disputed domain name.
The disputed domain name is not the name of the Respondents. Furthermore, the domain name is not similar to or in any way connected with the name under which the Respondents hold the domain name registration. Reference is made to the WHOIS extract (Annexure 1 to the amended Complaint) for the disputed domain name evidencing that Whois Privacy Protection Services Ravi Singh is listed as the holder of the disputed domain name and email correspondence from WIPO evidencing that Pluto Domain Services Private Limited is the actual Registrant.
The Respondents have not at any time been commonly known by the disputed domain name. Furthermore, BHP Billiton is not aware of any trademarks in which the Respondents may have rights that are identical or similar to the disputed domain name.
Furthermore, the Respondents are not making a legitimate non-commercial or fair use of the disputed domain name. Reference is made to the print-outs attached showing that the Respondents have merely set up a website containing sponsored links (Annexure 8 to the amended Complaint).
For the reasons stated above, the Respondents have no legitimate rights or interests in the disputed domain name.
The Complainant submits that, BHP Billiton enjoys a world wide reputation in its BHP Billiton mark. The Complaint indicates that BHP Billiton generated turnover of US$47,5 billion and US$59,5 billion in 2007 and 2008 respectively. Reference is also made to Zwack Unicum Rt. v. Erica J. Duna ( WIPO Case No. D2000-0037) and The Nasdaq Stock Maraket v. NSDAQ.COM, NASDQ.COM and NASAQ.COM ( WIPO Case No. D2001-1492) attached (Annexure 10), in which it was held that bad faith registration may be inferred from the registration of a well known mark. Similarly, it may be inferred from the Respondents' registration of a domain name confusingly similar to BHP Billiton's well known BHP BILLITON mark that the disputed domain name was registered in bad faith.
Under paragraph 4 (b) (iii) of the Policy, the Respondents have registered the disputed domain name primarily for the purpose of disrupting the business of BHP Billiton. The disputed domain name is an obvious misspelling of BHP Billiton's BHP BILLITON trademark as well as of its well known domain name <bhpbilliton.com>. The Respondents registered the domain name with the primary aim of diverting Internet traffic intended for BHP Billiton to the Respondents' website containing sponsored links. It therefore follows that the disputed domain name was obtained with the intention of disrupting the Complainant's business. Reference is made to Expedia, Inc. v. European Travel Network ( WIPO Case No. D2000-0137) in which it was held that registration of a domain name with the purpose of diverting potential customers of the Complainant to the Respondent's website leads to the disruption of the business of a competitor.
The Respondents have, by using the disputed domain name and pursuant to paragraph 4(b) (iv) of the Policy, intentionally attempted to attract, for commercial gain, Internet users to the Respondents' website, by creating a likelihood of confusion with the Complainant's trademark.
It is highly unlikely that the Respondents were not aware of the Complainant's BHP BILLITON trademark in view of the fact that BHP Billiton is the world's largest resources Group. The choice of the Respondents' domain name, namely an obvious misspelling of the BHP BILLITON trademark, is in itself evidence of the Respondents' knowledge of BHP Billiton's trademark rights ands its business.
It may be inferred from the Respondents' conduct in registering a domain name consisting of a misspelling of BHP Billiton's well known trademark that the Respondents were aware of that trade mark. This creates a presumption that the disputed domain name was registered in bad faith. In this regard, reference is made to Autosales Incorporated, dba Summit Racing Equipment v. Domain Active PTY Ltd ( WIPO Case No. D2004-0459).
The Respondents are engaging in “typo squatting”. It is well settled that the practice of “typo squatting” in itself constitutes bad faith registration and use.
For the reasons stated above the Complainant submits that the disputed domain name was registered and is being used in bad faith in accordance with paragraph 4(a)(iii) of the Policy.
The Respondents did not reply to the Complainant's contentions.
Paragraph 4(a) of the Policy requires the Complainant to prove that each of the following
elements is present:
(i) The domain name registered by the Respondent is identical or confusingly similar to a trademark 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 domain name has been registered and is being used in bad faith.
The Panel notes that the Respondents have failed to respond to the Complaint within
the stipulated time and, and, as such, do not contest the facts asserted by the
Complainant in the Complaint.
The disputed domain name, <bhpbillton.com>, registered and used by the Respondents is identical or confusingly similar to the Complainant's BHP BILLITON trademarks that have been in use by BHP Billiton in its extensive business operations throughout the world.
The Complaint includes a list of “BHP BILLITON” trademarks registered in New Zealand, United Kingdom and Australia for various classes (See, Annexure 7). In addition to the use of BHP BILLITON as trademarks, BHP Billiton operates a website at “www.bhpbilliton.com” indicating the same letters of alphabet that consist of the Complainant's “BHP BILLITON” trademark. BHP Billiton is the registrant of numerous domain names consisting of the word “bhpbilliton” or “bhp-billiton” (See, Annexure 6). The Complainant's trademark consisting of “BHP” and “BILLITON” combined is inherently distinctive, each having no particular meaning, and has become well-known throughout the world as representing BHP Billiton's business operations. When compared with the Complainant's BHP BILLITON trademark, the disputed domain name <bhpbillton.com> lacks the letter “i” between “bill” and “ton”. This omission of the letter “i” does not make the disputed domain name dissimilar to the Complainant's trademark.
In view of the distinctive quality and the renown of the Complainant's “BHP
BILLITON” trademark, the Panel finds that the disputed domain name registered by the Respondents is confusingly similar to the Complainant's trademark.
WIPO Overview of WIPO Panel Views on Selected UDRP Questions states as follows:
“Consensus view: 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, respondent carries the burden of demonstrating rights or legitimate interests in the domain name. If the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the UDRP.”
The Complainant has made a prima facie showing of Respondents' lack of rights or legitimate interests to the disputed domain name. The Respondents have not submitted a response and have thus not rebutted the Complainant's contentions.
Having reviewed the case file, the Panel considers that the Respondents have no rights or legitimate interests in respect of the domain name in accordance with paragraph 4(c) of the Policy, because there is no evidence to show that the Respondents have ever used the domain name or a name corresponding to them in connection with a bona fide offering of goods or services. The Respondents are not commonly known by the domain name, and the Respondents are not making a legitimate non-commercial or fair use of the domain name.
The Panel notes that the website with the disputed domain name is used for sponsored links. Previous UDRP panels have found that such use in the type of circumstances as in this matter cannot constitute legitimate use.
The Panel finds that the second limb of the Policy has been established.
In view of the distinctive quality of the Complainant's BHP BILLITON trademark and the wide recognition of such trademark the Panel considers it more likely than not that the Respondents registered the domain name with full knowledge of the Complainant and its trademark. The Panel finds that the disputed domain name was registered and used in bad faith in line with paragraph 4(b(iv) of the Policy.
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 name <bhpbilltons.com> be transferred to the Complainant.
Dated: March 9, 2009