WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
BHP Billiton Innovation Pty Ltd v. Oloyi
Case No. D2017-0284
1. The Parties
The Complainant is BHP Billiton Innovation Pty Ltd of Melbourne, Victoria, Australia, represented by Griffith Hack Patent and Trade Mark Attorneys, Australia.
The Respondent is Oloyi of Ha Noi, Viet Nam.
2. The Domain Name and Registrar
The disputed domain name <bhpbillitonusa.com> (the "Domain Name") is registered with PDR Ltd. d/b/a PublicDomainRegistry.com (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on February 14, 2017. On February 14, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On February 15, 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 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on February 24, 2017. In accordance with the Rules, paragraph 5, the due date for Response was March 16, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on March 20, 2017.
The Center appointed Ian Lowe as the sole panelist in this matter on March 28, 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.
4. Factual Background
BHP Billiton Group is one of the world's largest diversified resources group, employing more than 40,000 people in more than 100 operations in 25 countries. The core of the Group ("BHP") is a dual listed company comprising BHP Billiton Ltd and BHP Billiton Plc, whose merger was concluded on June 29, 2001. The Complainant is a wholly-owned subsidiary of BHP, holding some of the Group's intellectual property. BHP's market capitalization as at June 30, 2015 was USD 108 billion.
BHP is the owner of numerous trademark registrations for the trademark BHP BILLITON (the "Mark") around the world, including United States of America trademark number 3703871 registered on November 3, 2009, Australia trademark registration number 1141449, registered from October 18, 2006 and International trademark number 986799, registered on November 16, 2006 designating a number of territories including the European Union.
The Domain Name was registered on February 6, 2017. At the date of the filing of the Complaint the Domain Name did not resolve to any webpage. The Complainant became aware of the Domain Name when an email was sent to BHP via its website stating that the informant had been sent a job offer from an email address at the Domain Name from someone purporting to be the Head of Human Resources at the Complainant offering him a job with BHP that he thought may be fake.
5. Parties' Contentions
The Complainant contends that the Domain Name is confusingly similar to the Mark, that the Respondent has no rights or legitimate interests in respect of the Domain Name and that the Respondent registered and is using the Domain Name in bad faith within the meaning of paragraph 4(b)(iv) of the Policy.
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the Domain Name the Complainant must prove that:
(i) the Domain Name 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.
A. Identical or Confusingly Similar
The Complainant has uncontested rights in the Mark, both by virtue of its various trademark registrations around the world and as a result of the goodwill and reputation acquired through its use of the Mark over many years. Ignoring the generic Top-Level Domain ("gTLD") ".com", the Domain Name comprises the entirety of the Mark together only with the geographical term "usa". In the view of the Panel, this does not detract from the confusing similarity of the Domain Name to the Mark. Accordingly, the Panel finds that the Domain Name is confusingly similar to a trademark in which the Complainant has rights.
B. Rights or Legitimate Interests
The Complainant has made out a strong prima facie case that the Respondent could have no rights or legitimate interests in respect of the Domain Name. Although there is no evidence that the Respondent has used the Domain Name for an active website, the Respondent has used the Domain Name for an email account from which it has sent unauthorized job offers in the name of BHP. The email annexed to the Complaint invited the recipient to contact what purported to be a United States of America lawyer to arrange visa and other formalities. The Complainant contends that this has most likely been in furtherance of what has become a commonplace fraud whereby applicants for jobs are deceived into making payments in respect of job offers that have no genuine connection with the purported employer.
The Respondent has not used the Domain Name in connection with a bona fide offering of goods or services and there is no suggestion that it has ever been known by the Domain Name. The Respondent has chosen not to respond to the Complainant or to take any steps to counter the prima facie case established by the Complainant. Using a domain name for an email account from which to send spurious, unauthorized job offers cannot, in the Panel's view, give rise to rights or legitimate interests in respect of the domain name.
Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name.
C. Registered and Used in Bad Faith
In view of the very distinctive nature of the Domain Name, comprising as it does the Mark, together only with the word "usa", there can be no doubt that the Respondent had the Complainant and its rights in the Mark in mind when it registered the Domain Name. In light of the use to which the Respondent has put the Domain Name, the Respondent appears, in the view of the Panel, to be using the Domain Name to deceive Internet users into believing that the Domain Name is associated with, or authorized by, the Complainant. The inference from the email making the false job offer is that it would have led to a demand for payment for spurious services in connection with the job offer, supporting the evidence of use of the Domain Name for an email account to send fraudulent emails impersonating BHP and leading to a legitimate presumption that the Respondent is deriving commercial gain from using the Domain Name in this way.
The Panel considers that this amounts to paradigm bad faith registration and use within the meaning of paragraph 4(a) of the Policy. In the circumstances, the Panel finds that the Domain Name has been registered and is being used in bad faith.
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 <bhpbillitonusa.com> be transferred to the Complainant.
Date: April 4, 2017