WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

BHP Billiton Innovation Pty Ltd v. Du Biao

Case No. D2015-1025

1. The Parties

The Complainant is BHP Billiton Innovation Pty Ltd of Melbourne, Australia, represented by Griffith Hack, Australia.

The Respondent is Du Biao of Xin Xiang, Henan, China.

2. The Domain Name and Registrar

The disputed domain name <bhpbilliton.wang> is registered with Chengdu West Dimension Digital Technology Co., Ltd. (the "Registrar").

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on June 17, 2015. On June 17, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 19, 2015, 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.

On June 19, 2015, the Center transmitted an email to the parties in Chinese and English regarding the language of proceeding. On June 23, 2015, the Complainant submitted its request that English be the language of proceeding. On June 25, 2015, the Respondent sent an email to the Center in Chinese, indicating it does not understand English.

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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on June 25, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was July 15, 2015. On July 15, 2015, the Center received an email from the Respondent in Chinese. The Respondent did not submit any formal response. Accordingly, the Center notified the Respondent of proceeding of panel appointment on July 16, 2015.

The Center appointed Sok Ling MOI as the sole panelist in this matter on July 29, 2015. 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 part of the BHP Billiton Group, headquartered in Melbourne, Australia. The BHP Billiton Group is one of the largest diversified resources group in the world, with more than 100 operations in 25 countries.

The Complainant is the owner of numerous trade mark registrations for the trade mark BHP BILLITON worldwide, including the following:

The Complainant owns the domain names <bhpbilliton.info>, registered on September 18, 2001 and <bhpbilliton.biz>, registered on November 7, 2001, reflecting its trade mark BHP BILLITON. The BHP Billiton Group also controls the domain names <bhpbilliton.com>, <bhpbilliton.net>, <bhpbilliton.org>, <bhpbilliton.jobs> and <bhpbilliton.mobi>.

The disputed domain name <bhpbilliton.wang> was registered on June 3, 2015, long after the Complainant has registered the trade mark BHP BILLITON in Australia. Although the Complainant provided evidence showing that the disputed domain name resolved to a website containing links to certain business websites, as of the date of this decision, the disputed domain name does not resolve to any active website.

5. Parties' Contentions

A. Complainant

The BHP Billiton Group is the world's largest diversified resources group, employing more than 40,000 people in more than 100 operations in 25 countries. The BHP BILLITON trade mark has over the years become the world's most well known brand in diversified resources and the mining of such resources. The BHP Billiton Group owns numerous trade mark registrations for the trade mark BHP BILLITON worldwide. The BHP Billiton Group controls numerous domain names containing the trade mark BHP BILLITON and operates a website that is accessible via some of these domains.

A1. The disputed domain name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights:

The disputed domain name is identical with or confusingly similar to the Complainant's trade mark BHP BILLITON. Consumers, upon viewing the disputed domain name, are likely to associate it with the Complainant and the BHP Billiton Group.

The addition of a generic Top Level Domain ".wang" does not affect the assessment of similarity.

A2. The Respondent has no rights or legitimate interests in respect of the disputed domain name:

The Respondent has never been commonly known by the name "BHP Billiton". The Complainant is not aware of any trade marks in which the Respondent has rights that are identical with or similar to the disputed domain name.

The Respondent is not making legitimate noncommercial or fair use of the disputed domain name.

A3. The disputed domain name was registered and is being used in bad faith:

The Complainant and the BHP Billiton Group enjoy a worldwide reputation in their BHP BILLITON trade mark and domain names. It is highly unlikely that the Respondent was unaware of the Complainant and/or the BHP Billiton Group when it registered the disputed domain name. Previous UDRP panels have decided that bad faith registration may be inferred from the registration of a well-known mark.

The Respondent had registered the disputed domain name in order to prevent the Complainant from reflecting its trade mark in a domain name, using the generic descriptor ".wang" which is commonly understood to translate to "website" in Mandarin. The Respondent has engaged in a pattern of such cybersquatting conduct, supported by the reverse WhoIs search results showing that the majority of domain names registered in the name of the Respondent include well known third party trade marks such as COMMONWEALTH BANK OF AUSTRALIA, GOOGLE JUMP, GOOGLE MOBILITY, GOOGLE PHOTOS, THE HOME DEPOT and WHOLE FOODS.

For all of the above reasons, the Complainant requests the transfer of the disputed domain name.

B. Respondent

The Respondent did not file a formal response by the due date, although it did on July 15, 2015 rebut the Complainant's contentions in an email.

In the email, the Respondent expressed regret about the filing of the Complaint and submitted that its registration of the disputed domain name was without bad faith but was done subconsciously and randomly. The Respondent highlighted that it had neither attempted to sell the disputed domain name to anyone, nor used it for commercial purposes. The Respondent claimed that it was not aware that "BHP BILLITON" was a trade mark when it registered the disputed domain name. The Respondent further pointed out that it was neither a business partner nor competitor of the Complainant. As such, its registration of the disputed domain name does not fall under any of the scenarios set out in paragraph 4(b) of the Policy.

The Respondent went further to submit that although it had not acquired any trade mark registration for "BHP BILLITON", the disputed domain name was of no value until the Respondent's registration, after which it enjoyed a certain level of recognition. Accordingly, the Respondent has legitimate interests in the disputed domain name. The Respondent submitted that it enjoys right of priority by virtue of its earlier registration.

6. Discussion and Findings

6.1. Language of the Proceeding

Pursuant to paragraph 11(a) of the Rules, unless otherwise agreed by the parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding.

Paragraph 10(b) and (c) of the Rules requires the Panel to ensure that the proceeding takes place with due expedition and that the parties are treated fairly and given a fair opportunity to present their respective case.

The language of the Registration Agreement for the disputed domain name is Chinese. From the evidence on record, no agreement appears to have been entered into between the Complainant and the Respondent regarding the language issue. The Complainant filed its Complaint in English and has requested that English be the language of the proceeding for the following reasons:

(a) Whilst the Respondent claims to be located in China, the contact details provided may be false.

(b) A reverse WhoIs search conducted on June 15, 2015 using the registrant name "Du Biao" shows that a large portion of the domain names owned by the Respondent contain known third party trade marks, such as COMMONWEALTH BANK OF AUSTRALIA, GOOGLE JUMP, GOOGLE MOBILITY, GOOGLE PHOTOS, THE HOME DEPOT and WHOLE FOODS. This suggests that the Respondent understands English.

(c) To require the Complainant to translate the Complaint would unfairly disadvantage the Complainant.

On the record, the Respondent appears to be a Chinese individual and is thus presumably not a native English speaker, but the Panel finds persuasive evidence in the present proceeding to suggest that the Respondent has sufficient knowledge of English. In particular, the Panel notes that:

(a) the disputed domain name <bhpbilliton.wang> is registered in Latin characters, rather than Chinese script;

(b) the Respondent has registered other domain names consisting of Latin characters, for example <commonwealthbankofaustralia.org>, <googlejump.org>, <googlemobility.net>, <googlephotos.top>, <thehomedepot.in> and <wholefoods.wang>, based on the reverse WhoIs lookup information provided by the Complainant;

(c) the Center has notified the Respondent of the proceeding in both Chinese and English;

(d) The Respondent has been given the opportunity to present its case in this proceeding and to respond to the issue of the language of the proceeding but has chosen not to do so; and

(e) the Center informed the Respondent that it would accept a Response in either English or Chinese.

Considering the above circumstances, the Panel finds the choice of English as the language of the present proceeding is fair to both parties and is not prejudicial to either one of the parties in his or her ability to articulate the arguments for this case.

The Panel has taken into consideration the fact that to require the Complaint and all supporting documents to be re-filed in Chinese would in the circumstances of this case cause an unnecessary cost burden to the Complainant and unfairly disadvantage the Complainant. The proceeding would be unnecessarily delayed.

Having considered all the matters above, the Panel determines under paragraph 11(a) of the Rules that (i) it shall accept the Complaint and all supporting materials as filed in English; and (ii) English shall be the language of the proceeding and the decision will be rendered in English.

6.2 Discussion and Findings

Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following three elements to obtain an order for the disputed domain name to be cancelled or transferred:

(i) the disputed domain name registered by the Respondent is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights;

(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and

(iii) the disputed domain name has been registered and is being used in bad faith.

On the basis of the evidence introduced by the Complainant, the Panel concludes as follows:

A. Identical or Confusingly Similar

The Panel accepts that the Complainant has rights in BHP BILLITON by virtue of its use and registration worldwide of the same as a trade mark. The disputed domain name incorporates the Complainant's trade mark BHP BILLITON in its entirety. The addition of the generic Top-Level Domain ".wang" does not serve to distinguish the disputed domain name from the Complainant's trade mark, and should generally be disregarded for the purpose of the similarity assessment.

Consequently, the Panel finds that the disputed domain name is identical with the Complainant's trade mark.

Accordingly, the Complainant has satisfied the requirements of the first element under paragraph 4(a) of the Policy.

B. Rights or Legitimate Interests

Under paragraph 4(a)(ii) of the Policy, the Complainant bears the burden of establishing that the Respondent lacks rights or legitimate interests in the disputed domain name. However, once the Complainant makes a prima facie showing under paragraph 4(a)(ii), the burden shifts to the Respondent to establish its rights or legitimate interests in the disputed domain name by demonstrating any of the following, without limitation, under paragraph 4(c) of the Policy:

(i) before any notice to it of the dispute, the Respondent's use of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bonafide offering of goods or services; or

(ii) the Respondent has been commonly known by the disputed domain name, even if it has acquired no trade mark or service mark rights; or

(iii) the Respondent is making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.

(See Taylor Wimpey PLC, Taylor Wimpey Holdings Limited v. honghao internet foshan co, ltd, WIPO Case No. D2013-0974.)

The Panel is satisfied that the Complainant has made out a prima facie caseshowing that the Respondent lacks rights or legitimate interests in the disputed domain name. In the Panel's opinion, the evidence furnished by the Complainant, discussed in section 5 above, is sufficiently evocative of cybersquatting to require the Respondent to come forward with evidence to rebut the presumption.

The Respondent attempted to rebut the Complainant's contentions by claiming that the disputed domain name was of no value until the Respondent's registration, and therefore it rightfully enjoyed legitimate interests in the disputed domain name. Noting that the Respondent has registered a Domain Name incorporating the trademark and company name of one of the largest diversified groups in the world, the Panel is not able to follow the logic of the Respondent's argument, and finds instead that the Respondent has failed to establish its rights or legitimate interests in the disputed domain name.

Accordingly, the Complainant has satisfied the requirements of the second element under paragraph 4(a) of the Policy.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy sets out four circumstances which, without limitation, shall be evidence of the registration and use of the disputed domain name in bad faith, namely:

(i) circumstances indicating that the Respondent has registered or acquired the disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registrations to the Complainant who is the owner of the trade mark or service mark or to a competitor of the Complainant, for valuable consideration in excess of the Respondent's documented out-of-pocket costs directly related to the disputed domain name; or

(ii) the Respondent has registered the disputed domain name in order to prevent the owner of the trade mark or service mark from reflecting the mark in a corresponding domain name, provided that the Respondent has engaged in a pattern of such conduct; or

(iii) the Respondent has registered the disputed domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the disputed domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the Respondent's websites or other on-line location, by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of the Respondent's websites or location or of a product.

The Panel notes that as of the date of this decision, the disputed domain name does not resolve to any active website, and there is no evidence that the Respondent has attempted to sell the disputed domain name or to contact the Complainant. Nevertheless, the consensus view of previous UDRP panels is that passive holding in itself does not preclude a finding of bad faith. The panel must examine all the circumstances of the case to determine whether the respondent is acting in bad faith (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition, paragraph 3.2).

The Complainant and its trade mark BHP BILLITON enjoy a worldwide reputation. A cursory Internet search would have disclosed the BHP BILLITON trade mark and its extensive use by the Complainant. Thus a presumption arises that the Respondent was aware of the Complainant's BHP BILLITON trade marks and related domain names when it registered the disputed domain name. In the circumstances of this case, the Panel finds the Respondent's denial of knowledge of the Complainant and its trade mark, unconvincing.

The Respondent has also failed to provide any evidence of bona fide use of the disputed domain name. Furthermore, efforts to contact the Respondent at the physical address provided to the Registrar failed which suggests that the Respondent had provided false contact details. The Panel is satisfied that there is prima facie proof that the Respondent is engaged in a pattern of cybersquatting.

The Panel finds that the circumstances referred to in paragraph 4(b)(ii) of the Policy are applicable to the present case and taking into account all other relevant circumstances, it is adequate to conclude that the Respondent has registered and used the disputed domain name in bad faith.

Accordingly, the Complainant has satisfied the requirements of the third element under paragraph 4(a) of the Policy.

7. Decision

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 name <bhpbilliton.wang> be transferred to the Complainant.

Sok Ling Moi
Sole Panelist
Date: August 14, 2015