WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
BHP Billiton Innovation Pty Ltd. v. Peter Gregory
Case No. DNAME2009-00001
1. The Parties
The Complainant is BHP Billiton Innovation Pty Ltd. of Melbourne, Australia, represented by Griffith Hack of Australia.
The Respondent is Peter Gregory of Perth, Australia, represented by IP Strategies International of Australia.
2. The Registration and Registrar
The disputed domain name <bhpbilliton.name> is registered with Intercosmos Media Group d/b/a directNIC.com.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 3, 2009. On April 6, 2009 the Center transmitted by email to Intercosmos Media Group d/b/a directNIC.com a request for registrar verification in connection with the disputed domain name. On April 6, 2009 and April 8, 2009 Intercosmos Media Group d/b/a directNIC.com transmitted by email to the Center its verification responses confirming that the Respondent is listed as the registrant and providing the contact details. The Center verified that the Complaint satisfied the formal requirements of the .NAME Eligibility Requirements Dispute Resolution Policy (the “ERDRP”), the Rules for the Eligibility Requirements Dispute Resolution Policy (the “ERDRP Rules”), and the WIPO Supplemental Rules for Eligibility Requirements Dispute Resolution Policy (the “Supplemental ERDRP Rules”).
In accordance with the ERDRP Rules, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on April 28, 2009. In accordance with the Rules, paragraph 5, the due date for Response was May 18, 2009. The Response was received by the Center on May 17, 2009.
The Center appointed Andrew Frederick Christie as the sole panelist in this matter on June 3, 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.
After receiving a copy of the Complaint from the Complainant, but before formal Notification of Commencement of Proceeding by the Center, the Respondent sent to the Center, copying the Complainant, a number of emails offering explanation for certain actions by the Respondent, and proposing a means for resolving the dispute. These emails elicited a number of communications by the representative of the Complainant to the Center in response. After formal Notification of Commencement of Proceeding, the Respondent sent further emails to the Center. Prior to submission of a formal Response, the Respondent's representative communicated with the Center stating that the Respondent's pre- and post-Notification communications and the Complainant's responses thereto, should not form part of the record of evidence in the case, because they relate to efforts to settle the dispute. In response, the Center stated that it is for the Panel, once appointed, to determine whether such communications are to be admitted into the record of evidence and, if so, whether additional procedural steps are required. Given the concessions contained in the Response, as described below, it is not necessary for this Panel to determine whether or not any of these communications should be formally admitted into the record of evidence.
4. Factual Background
The Complainant is a wholly-owned subsidiary of BHP Billiton Limited, holding some of BHP Billliton Limited's intellectual property. BHP Billiton Limited forms one part of the BHP Billiton Group, which resulted from the DLC merger of BHP Limited (now BHP Billiton Limited) and Billiton Plc (now BHP Billiton Plc). The BHP Billiton Group is the world's largest diversified resources group, employing approximately 37,000 people in more than 100 operations in 25 countries. BHP Billiton Group is the owner of numerous trademark registrations worldwide for BHP, BILLITON and BHP BILLITON.
The Respondent registered the disputed domain name as a Personal Name registration on January 24, 2009. The following day, the Respondent sent an email to BHP Billiton Group, part of which stated: “… I secured the domain name bhpbilliton.name and would offer to transfer it to you for say A$5,000. Of course it did not cost this, but in these hard times entrepreneurial activity deserves a modest reward”. The disputed domain name at one time resolved to a website containing sponsored links.
5. Parties' Contentions
A. Complainant
The Complainant contends that the disputed domain name does not meet the Eligibility Requirements for a Personal Name registration, because the name corresponding to the registered name: (i) is not the registrant's legal name; (ii) is not the name of a fictional character in which the registrant has trademark or service mark rights; and (iii) is not the name by which the registrant has been commonly known. In support of the contention that the corresponding name is not the Respondent's legal name, the Complainant provided evidence of a WHOIS search for the name of the registrant of the disputed domain name. The result of that search shows that the registrant is “Peter Gregory”, not “bhpbilliton”. In support of the contention that the corresponding name is not the name of a fictional character in which the Respondent has trademark or service mark rights, the Complainant provided evidence of a search of the Australian Trade Marks database conducted on March 30, 2009 for all pending and registered trade marks in the name of persons or entities containing the words “Peter” and “Gregory”. The result of that search shows that the Respondent does not own any applications or registrations in Australia for a mark consisting of or containing the words BHP BILLITON. In support of the contention that the Respondent has not been commonly known by the corresponding name, the Complainant provided evidence of a search of the Internet conducted on March 30, 2009 using the Google search engine for pages containing “Peter Gregory” and “Western Australia”. The result of that search shows that none of the persons named “Peter Gregory” are commonly known as “bhpbilliton”.
The Complainant contends that it is eligible to have the disputed domain name transferred to it as a Defensive Registration pursuant to the ERDRP, paragraph 5(f)(i)(C), because it meets the eligibility requirements for a Phase I and a Phase II Defensive Registration. In support of its contention that it meets the eligibility requirements for a Phase I and a Phase II Defensive Registration, the Complainant provided evidence that it is the owner of an Australian Trade Mark Registration No. 1141449 for the mark BHP BILLITON, filed on October 18, 2006 and registered on August 18, 2008.
B. Respondent
The Respondent, through his formal Response, expressly admitted many of the allegations contained in the Complaint, and did not seek to refute any of them. The Response requested this Panel to grant the remedy sought by the Complainant “because the requested transfer will achieve the outcome the Respondent intended when it applied for the Registered Name in his capacity as shareholder of the Complainant's parent company”.
6. Discussion and Findings
The Respondent registered the disputed domain name as a Personal Name registration. The Complainant brought this Complaint under paragraph 4(a)(i) of the ERDRP, on the grounds that the registration does not satisfy the Eligibility Requirements for a Personal Name registration.
Pursuant to the ERDRP paragraph 4(b), the Complainant must prove that:
(i) the name corresponding to the Registered Name is not the Respondent's legal name;
(ii) the name corresponding to the Registered Name is not the name of a fictional character in which the Respondent has trademark or service mark rights; and
(iii) the Respondent as an individual has not been commonly known by the name corresponding to the Registered Name.
In the event that the Complainant succeeds in showing that the registration does not satisfy the Eligibility Requirements, ERDRP paragraph 4(b) provides that the Panel shall exercise the remedies set forth in ERDRP paragraph 5(f)(i). The remedies available under this paragraph are: (A) cancellation of the registration; (B) transfer of the registration to the Complainant; and (C) cancellation of the registration and subsequent registration by the Complainant of the name as a blocking Defensive Registration.
The Complainant has requested the third of these remedies, i.e., a Defensive Registration. According to ERDRP paragraph 5(f)(i)(c), the Complainant is entitled to this remedy “provided that upon cancellation […] the complainant pays Defensive Registration fees, meets the Common Defensive Registration Eligibility Requirements and otherwise meets the requirements for a Defensive Registration”.
A. Respondent's Legal Name
The Respondent expressly admits that his legal name is not “bhpbilliton”. Accordingly, this Panel finds that the Respondent does not satisfy this eligibility requirement.
B. Fictional Character in Which the Respondent has Trademark or Service Mark Rights
The Respondent expressly admits that “bhpbilliton” is not the name of a fictional character in which he has trademark or service mark rights. Accordingly, this Panel finds that the Respondent does not satisfy this eligibility requirement.
C. Name by which the Respondent is Commonly Known
The Respondent expressly admits that “bhpbilliton” is not a name by which he is commonly known. Accordingly, this Panel finds that the Respondent does not satisfy this eligibility requirement.
D. Complainant's Eligibility for the Registered Name as a Defensive Registration
The Complainant relies on its Australian Trade Mark Registration No. 1141449 for the mark BHP BILLITON to demonstrate its entitlement to the remedy of Defensive Registration under ERDRP paragraph 5(f)(i)(C). This trademark was registered on August 18, 2008. The Complainant acknowledges that paragraph 2(b)(i) of the .NAME Registration Restrictions states that a Phase I Defensive Registration may only be made for a string that is identical to the textual elements of a valid and enforceable trademark or service mark registration having national effect that issued prior to April 16, 2001 (emphasis added). The Complainant notes, however, that there have been at least four decisions under the ERDRP (NAF Claim No. 1227395; NAF Claim No. 566611; NAF Claim No. 566644; NAF Claim No. 1222537) in which panels have found that the successful complainant satisfied the Phase I Defensive Registration Eligibility Requirements, and awarded the remedy of a Defensive Registration, despite the fact that the complainant's trademark issued after April 16, 2001. The Complainant contends that these cases show that it is eligible to hold a Phase I Defensive Registration for the disputed domain name, despite the fact that its BHP BILLITON trademark was registered after April 16, 2001.
In none of the four decisions referred to by the Complainant did the panel discuss the question of what was the relevance of the successful complainant's trademark being issued after April 16, 2001. In fact, none of those panels even referred to this element of the paragraph 2(b) requirements for a Phase I Defensive Registration. Thus, it is not possible to know what was the reason, if any, which led the panel to conclude that the requirements of paragraph 2(b) of the Registration Restrictions were satisfied in those cases. In all but one of these cases (the exception being NAF Claim No. 1227395), express mention is made of the fact that the complainant's trademark was registered before the respondent registered the disputed domain name. It may be, therefore, that these panels interpreted the Registration Restrictions paragraph 2(b) requirement that the trademark was registered before April 16, 2001 as being limited to the situation where a Defensive Registration is being sought before any domain name has been registered, and that when the situation is that the Defensive Registration is being sought as a result of a successful challenge under the ERDRP, this requirement must be translated into a requirement that the trademark was registered before the domain name was registered. However, given that none of the decisions discuss the point, it is impossible to know if this was the reasoning of those panels.
As it happens, the issue of whether the fact that the Complainant's trademark was registered after April 16, 2001 precludes the entitlement of the remedy of a Defensive Registration following a successful action under the ERDRP does not arise for consideration. This is because the Complainant is misconceived in thinking that it must satisfy the eligibility requirements of a Phase I Defensive Registration to be entitled to the remedy of a Defensive Registration following a successful action under the ERDRP. Close consideration of the language of ERDRP paragraph 5(f)(i)(C) shows that meeting the Phase I Defensive Registration Eligibility Requirements is not essential. Rather, what ERDRP paragraph 5(f)(i)(C) requires (in addition to paying the Defensive Registration fees) is that the complainant meets the “Common Defensive Registration Eligibility Requirements and otherwise meets the requirements for a Defensive Registration” (emphases added). That is to say, a successful complainant under the ERDRP will be entitled to the remedy of a Defensive Registration if three requirements are met: (1) the defensive registration fees are paid; (2) the Common Defensive Registration Eligibility Requirements are satisfied; and (3) either the Phase I or the Phase II Defensive Registration Eligibility Requirements are satisfied. The fact that ERDRP paragraph 5(f)(i)(C) uses the phrase “a Defensive Registration” (singular), not “Defensive Registrations” (plural), makes it clear that it is sufficient if the complainant satisfies the requirements for one of the two types of Defensive Registration. Thus, it will be enough if the Complainant can satisfy the requirements for a Phase II Defensive Registration, even if it can't satisfy the requirements for a Phase I Defensive Registration.
The Common Defensive Registration Eligibility Requirements are different from the Phase I and the Phase II Defensive Registration Eligibility Requirements. The Common Defensive Eligibility Registration Requirements are set out in paragraph 2(d) of the Registration Restrictions, as follows: (i) registration is permitted in one of three levels; (ii) multiple persons or entities may obtain identical or overlapping defensive registrations; (iii) the defensive registrant must provide certain contact information; and (iv) a defensive registration will not be granted if it conflicts with a then-existing personal name registration or other reserved word. None of these requirements relate to the defensive registrant having a trademark registration, let alone having a trademark registration that issued before a particular date.
While the Phase I Defensive Registration Eligibility Requirements do require a trademark registration (and, in particular, one issued before April 16, 2001), the Phase II Defensive Registration Eligibility Requirements do not. The Phase II Defensive Registration Eligibility Requirements are modest in the extreme. According to paragraph 2(c) of the Registration Restrictions: “Phase II Defensive Registrations may be requested by any entity for any string or combination of strings”. It is extremely difficult to conceive of an applicant that isn't an entity, and to conceive of a name that isn't composed of a string or combination of strings. Thus, the Phase II Defensive Registration Eligibility Requirements in practice impose no meaningful requirements at all.
In this case, the Complainant is an entity (a company), and the disputed name consists of a string (<bhpbilliton>). Thus, the Complainant satisfies the Phase II Defensive Registration Eligibility Requirements. It follows from all of the above reasoning that the Complainant in this case is entitled to the remedy of a Defensive Registration, following cancellation of the disputed domain name, so long as: (a) it pays the Defensive Registration fees, (b) the registration sought is in one of the three identified levels of Defensive Registration, (c) the required contact information is provided, and (d) the disputed domain name does not conflict with any other Personal Name Registration or other reserved word or string. (Whether or not these requirements are satisfied is a matter for the relevant domain name registrar to determine, following the issuing of this decision.)
7. Decision
This Panel finds that the Complainant has proven each of the three elements in paragraph 4(b) of the ERDRP in relation to the disputed domain name <bhpbilliton.name>. Therefore, in accordance with paragraph 5(f) of the ERDRP and paragraph 15 of the ERDRP Rules, and in accordance with the request of the Complainant contained in the Complaint, the Panel orders that the Respondent's registration of <bhpbilliton.name> be cancelled, and that <bhpbilliton.name> be registered as a Defensive Registration in the name of the Complainant subject to the Complainant paying the Defensive Registration fees and the registrar being satisfied that the Complainant meets the Common Defensive Registration Eligibility Requirements.
Andrew Frederick Christie
Sole Panelist
Dated: June 18, 2009