WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
BHP Billiton Innovation v. BHP / PrivacyProtect.org
Case No. D2011-0465
1. The Parties
The Complainant is BHP Billiton Innovation, Victoria, Australia, represented by Griffith Hack, Patent and Trade Mark Attorneys, Australia.
The Respondent is BHP, London, United Kingdom of Great Britain and Northern Ireland (the “United Kingdom”) / PrivacyProtect.org, Munsbach, Luxembourg.
2. The Domain Name and Registrar
The disputed domain name <bhp-plc.com> is registered with Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainRegistry.com.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 11, 2011. On March 11, 2011, the Center transmitted by email to Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainRegistry.com a request for registrar verification in connection with the disputed domain name. On March 13, 2011, Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainRegistry.com 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 March 16, 2011 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 March 18, 2011.
The Center verified that the amended Complaint together with the amended annexes 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 March 18, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was April 7, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent of its default on April 13, 2011.
The Center appointed Dennis A. Foster as the sole panelist in this matter on April 20, 2011. 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 is a large Australian-based international company that extracts natural resources and supplies them to customers on a worldwide basis. The Complainant owns valid trademark registrations for its BHP mark with many countries and continental authorities, including Australia (e.g., Registration No. 59146; issued December 9, 1931) and the European Community (e.g., Registration No. 002037562; issued October 18, 2002).
The disputed domain name, <bhp-plc.com>, is registered by the Respondent, and the date of registration is September 11, 2010. The Respondent uses the name to solicit the employment of Internet users, ostensibly on behalf of the Complainant, but without the Complainant’s authority or permission to do so.
5. Parties’ Contentions
Headquartered in Australia, with major offices in the United Kingdom, the Complainant is the world's largest diversified resources group, employing more than 40,000 people in more than 100 operations in 25 countries. Over the last four years, the Complainant’s revenues have averaged in excess of USD 50 Billion annually.
The Complainant owns numerous registrations across the globe for its BHP trademark. The BHP trademark is not only highly distinctive, but it has over the years become the world’s most well-known brand in diversified resources and the mining of such resources. Moreover, the Complainant has registered many domain names that incorporate the BHP mark, including <bhp.com>.
The disputed domain name, <bhp-plc.com>, is confusingly similar to the Complainant’s BHP trademark. The addition of the letters “plc” – an abbreviation for the term, public limited company, as used in the United Kingdom and Ireland – fails to distinguish adequately the disputed domain name from that mark. Reasonable Internet users will naturally associate the name with the Complainant’s business. Of course, the addition of the gTLD “.com” is of no moment in differentiating the disputed domain name from the Complainant’s mark.
The Respondent has no rights or legitimate interests in the disputed domain name. The Complainant did not authorize the Respondent to use the Complainant’s trademark in a domain name that points to the Complainant’s website, the use to which the Respondent is putting the disputed domain name.
Apparently, the Respondent uses the disputed domain name to send emails to Internet users that falsely suggest to such users that the Complainant considers them suitable for employment with the Complainant. Such use is neither a legitimate noncommercial nor fair use of the name.
Though “BHP” appears as part of the Respondent’s business name, there is no record that such a business actually exists, and certainly not at the address listed with the registrar of the disputed domain name. Moreover, the Complainant’s comprehensive search indicates that there is no company with that name (save the Complainant) registered in the United Kingdom. Therefore, there is no evidence that the Respondent is commonly known as the disputed domain name.
The disputed domain name was registered and is being used in bad faith. Due to the Complainant’s international fame, it can be inferred that the name’s registration and use have been made in bad faith.
The disputed domain name was registered for the purpose of disrupting the Complainant’s business, as Internet users are led to believe falsely that they have entered into employment contracts with the Complainant. Furthermore, the Respondent’s bad faith in these dealings is exemplified by its attempt to hide its identity behind a privacy protection service.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
In order for the Complainant to obtain a transfer of the disputed domain name, <bhp-plc.com>, Policy paragraphs 4(a)(i) – (iii) require that the Complainant must demonstrate to the Panel that:
- The disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
- The Respondent has no rights or legitimate interests in respect of the disputed domain name; and
- The disputed domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
By furnishing the Panel with clear evidence (Annex 6 to the Complaint) that it owns valid trademark registrations in Australia and with the European Community, the Complainant has demonstrated its possession of rights in the BHP mark in satisfaction of Policy paragraph 4(a)(i). See, Sensis Pty Ltd., Telstra Corporation Limited v. Yellow Page Marketing B.V, WIPO Case No. D2011-0057 (“It is undisputed that the Complainants have rights in the YELLOW PAGES mark that is registered in Australia.”); and Skype Limited v. Roeshar LLC c/o Erik Mannon, NAF Claim No. 1234547 (“The Panel finds that Complainant has sufficiently established rights in the SKYPE mark under Policy [paragraph] 4(a)(i) because it holds a registration of the mark with the Australian trademark authority and the USPTO.”).
Upon observation, the Panel sees that the disputed domain name, <bhp-plc.com>, while not identical to the BHP mark, bears an obvious similarity to the same. Since the Complainant is a company, the addition of the acronym, “plc” (which commonly stands for the designation, “public limited company”), only reinforces a presumptive connection between the Complainant and the disputed domain name and thereby engenders confusion in the minds of reasonable Internet users regarding the association between the name and the Complainant’s trademark. Moreover, the additional hyphen and gTLD “.com” found in the disputed domain name furnish no relevant basis for distinction. Thus, the Panel determines that the disputed domain name is confusingly similar to said mark. See The Royal Bank of Scotland Group plc v. Reynold n/a c/o Reynold A Rios, NAF Claim No. 1286785 (where the panel found the disputed domain name, <rbs-plc.com>, to be confusingly similar to the complainant’s RBS mark); Cadbury Limited v. Marketing Total S.A., WIPO Case No. D2007-0854 (“…the addition of the word “plc” to the trademark CADBURY very likely means that Internet users are misled to assume that the website is associated with the Complainant. The disputed domain name [<cadburyplc.com>] is therefore to be considered confusingly similar to the trademark CADBURY.”); Fort Knox National Company v. Ekaterina Phillipova, WIPO Case No. D2004-0281 (in finding <true-pay.com> confusingly similar to the TRUEPAY mark, the panel stated, “…including a hyphen between the words true and pay does not make a sufficient difference between the domain name and the Complainant’s trademark.”); and DHL Operations B.V. v. ZLEX, WIPO Case No. D2007-1612 (“The suffix “.com” is irrelevant…since it is a technical requirement of the domain name system.”)
Accordingly, the Panel finds that the Complainant has satisfied the requirements of Policy paragraph 4(a)(i).
B. Rights or Legitimate Interests
The Panel concludes that the Complainant has made a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name by establishing rights in the BHP trademark and asserting that no permission was granted the Respondent to use that mark in a domain name. Therefore, the Respondent must put forth convincing evidence to rebut the Complainant’s case. See, Telex Communications, Inc. v. Jinzheng Net; NAF Case No. 833071 (“Once Complainant makes a prima facie case in support of its allegations, the burden then shifts to Respondent to show it does have rights or legitimate interests pursuant to Policy [paragraph] 4(a)(ii).”); and Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270.
Backed by its submissions in this case (Annex 7 to the Complaint), the Complainant contends that the Respondent is using the disputed domain name to solicit from Internet users interest in employment with the Complainant, without the Complainant’s permission to do so. Thereafter, according to the Complaint (Annex 8), the Respondent may issue said users phony employment contracts that purport to be on behalf of the Complainant. Because the Respondent has failed to file a Response, the Panel will accept these contentions, as well as other reasonable contentions made by the Complainant, as true. See, for example, Randstad General Partner (U.S.), LLC v. Domains For Sale For You, WIPO Case No. D2000-0051 (“Because Respondent has failed to submit an answer to the Complaint in a timely fashion, and because the allegations of the Complaint, taken on their face, engender no substantial doubt, the Panel accepts as true all allegations set forth in the Complaint.”); and Talk City, Inc. v. Michael Robertson, WIPO Case No. D2000-0009.
In the absence of a Response, the Panel will assess the Respondent’s actions and status with respect to paragraph 4(c) of the Policy, which provides three avenues by which the Respondent might establish its rights or legitimate interests in the disputed domain name, to determine whether the Complainant’s prima facie case is rebutted by other evidence found in the record. Considering the requirements set forth in paragraphs 4(c)(i) and (iii), the Panel finds that those requirements are not satisfied in this case, because the Respondent’s issuance of unauthorized and illegitimate employment contracts constitute neither “a bona fide offering of goods or services” nor “a legitimate noncommercial or fair use” of the disputed domain name.
Regarding paragraph 4(c)(ii) of the Policy, a portion of the Respondent’s name, “BHP”, appearing as a registrant of the disputed domain name, provides the Panel with potential support for the proposition that the Respondent operates a business that is commonly known as the disputed domain name, <bhp-plc.com>. The Complainant asserts, and has provided the Panel with some evidence (Annex 1 of the Complaint), that no business is conducted by the Respondent under the name, “BHP”, but proving a negative as such is exceedingly difficult. However, given the prima facie case made by the Complainant, it is up to the Respondent to demonstrate by submission of hard evidence that, prior to disputed domain name registration, its business was commonly known by the name listed as registrant. See, Michael Smith Custom Clothiers, Inc. d/b/a The Custom Shop d/b/a Myshirtmaker.com v. Custom Shirt Shop c/o Jim Nice, NAF Claim No. 1109402 (“…ICANN panels have held, and this Panel agrees, that in order to have rights or legitimate interests under the ‘commonly known’ provision of the Policy a respondent must be commonly known by the domain name prior to registration of the domain name in issue.”); Banco Espírito Santo S.A. v. Bancovic, WIPO Case No. D2004-0890 (“It is not sufficient for the Respondent to merely assert that he or she has been commonly known by the domain name in order to show a legitimate interest. The Respondent must produce evidence in order to show that he or she has been ‘commonly known’ by the domain name.”); and Red Bull GmbH v. Harold Gutch, WIPO Case No. D2000-0766. Since the Respondent has submitted no evidence of any kind, the Panel concludes that the Respondent has failed to establish that, by virtue of its business name, it is commonly known by the disputed domain name per paragraph 4(c)(ii) of the Policy.
Accordingly, the Panel finds that Complainant’s prima facie case prevails, so that the Complainant has satisfied the requirements of Policy paragraph 4(a)(ii).
C. Registered and Used in Bad Faith
In paragraph 4(b), the Policy sets forth four circumstances that the Panel may consider in reaching a determination as to whether the disputed domain name was registered and is being used in bad faith. However, those circumstances are not meant to be exhaustive of the circumstances that might give rise to a determination of bad faith. See, Media General Communications, Inc. v. Rarenames, WebReg, WIPO Case No. D2006-0964 (“However, the list of instances of bad faith in Policy, paragraph 4(b) is explicitly non-exclusive.”); and Advanta Corp. v. St. Kitts Registry, NAF Claim No. 1068741 (“The Panel finds that the factors listed under Policy [paragraph] 4(b) are not the exclusive examples of evidence of bad faith registration and use).
In this case, the Complainant has asserted, and provided uncontested evidence, that the Respondent uses the disputed domain name to lure unsuspecting Internet users into bogus contracts of employment with the Complainant. The Panel finds that such deceptive and illegitimate use of the disputed domain name by the Respondent constitutes an obvious example of bad faith use. Moreover, since registration of the disputed domain name occurred only months ago, the Panel concludes that the Respondent must have intended such bad faith use when the name was registered. Thus, the Panel is convinced that the disputed domain name was also registered in bad faith.
Accordingly, the Panel finds that the Complainant has satisfied the requirements of Policy paragraph 4(a)(iii).
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name, <bhp-plc.com>, be transferred to the Complainant.
Dennis A. Foster
Dated: May 4, 2011