WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
BHP Billiton Innovation Pty Ltd v. Domains By Proxy, LLC and BHP Online
Case No. DCO2012-0028
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 Respondents are Domains By Proxy, LLC of Scottsdale, Arizona, United States of America and BHP Online of Lakshadweep, India (jointly, hereinafter the “Respondent”).
2. The Domain Name and Registrar
The disputed domain name <bhponline.co> is registered with GoDaddy.com, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 3, 2012. On September 3, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 5, 2012, the Registrar 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 September 10, 2012 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 September 11, 2012.
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 on September 14, 2012. The Center noted that due to an administrative oversight it appeared that although Written Notice was sent to the two addresses provided by the Registrar verification and in the publicly available Internic WhoIs, the “Notification of Complaint and Commencement of Administrative Proceeding” dated September 14, 2012 was not successfully transmitted. The Center therefore renotified the Respondent of the Complaint on October 9, 2012. Thus the proceedings commenced on October 9, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was October 29, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 8, 2012.
The Center appointed Fabrizio Bedarida as the sole panelist in this matter on November 16, 2012. 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 diversified resources group, employing more than 40,000 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.
The Complainant operates a website that is accessible via various domain names including <bhpbilliton.com> and <bhp.com> (BHP Billiton's website). The Complainant controls numerous other domain names containing the letters “bhp” including <bhp.us> <bhp.mobi, <bhp.info>, <bhp.biz>, <bhpconnect.com>, <bhpcopper.com>, <bhpcoal.com>, <bhpstrategy.com>, <bhptechnology.com>, <bhptherealstory.com>, <bhpenvironment.com>, <bhpexploration.com>, <bhp.asia> and <bhp.tel>.
The Complainant is the owner of numerous trade mark registrations including marks consisting of the letters BHP. A selection of such registrations is set out here below.
Country Mark Reg. No. Classes Registration Date
Australia BHP 59146 6 December 31, 2009
Australia BHP 330272 7 March 16, 1979
Australia BHP 362256 3 July 3, 1981
Australia BHP 398095 4 October 7, 1983
Australia BHP 730190 1, 2, 8, 9, 11, 14, 16, 17, 19, March 19, 1997
25, 35, 36, 37, 38, 39, 41, 42
New Zealand BHP 265765 6 April 13, 1996
CTM BHP 002037562 14, 37 October 16, 2002
CTM BHP 001322312 35, 36, 38 November 7, 2000
CTM BHP 000056747 4, 6, 39, 42 August 19, 1998
Singapore BHP 9608794H 6 August 20, 1996
United States BHP 1367145 42 October 22, 1985
United States BHP 3685364 37 September 22, 2009
The disputed domain name <bhponline.co> was registered on August 11, 2012 and points to a website that mirrors the Complainant’s website at “www.bhpbilliton.com” adding a function allowing users to enter a user name and password, apparently on behalf of the Complainant, but without the Complainant’s authority or permission to do so.
5. Parties’ Contentions
The Complainant claims that:
1) The disputed domain name <bhponline.co> is confusingly similar to the Complainant’s extensive portfolio of BHP trade marks. The addition of the generic word “online” is not sufficient to distinguish the disputed domain name from the Complainant’s trademarks.
2) Consumers, upon viewing the Respondent’s domain name are highly likely to expect an association with the Complainant, in particular as the disputed domain name points to a website that mirrors the Complainant’s website.
3) The Respondent has not at any time been commonly known by the disputed domain name. Whilst the disputed domain name corresponds with the name of the registrant i.e. BHP Online, the Complainant argues that the Respondent has provided entirely fictitious name and address details. In support of this claim the Complainant asserts that a Google search for the Respondent did not reveal any entries for the Respondent.
Furthermore, the address supplied by the Respondent is incorrect. Firstly, the full address given by the Respondent does not exist. Secondly, Bubaneshwar is not located in Lakshadweep or vice versa. In fact, Bubaneshwar is located in Odisha close to the eastern coastal town of Puri. Lakshadweep is an island off the south western coast of India.
Accordingly, on the information available to the Complainant at the date of the amended Complaint, the Respondent cannot point to the fact that the domain name is registered in the name of BHP Online to support a contention that it has a right or legitimate interest in the disputed domain name.
4) The Respondent is not making legitimate noncommercial or fair use of the disputed domain name.
5) The Complainant referring to Zwack Unicum Rt. v. Erica J. Duna, WIPO Case No. D2000-0037 and The Nasdaq Stock Market v. Act One Internet Solutions, WIPO Case No. D2001-1492, in which it was held that bad faith registration may be inferred from the registration of a well known mark, asserts that similarly, it may be inferred from the Respondent’s registration of a domain name that is confusingly similar to the Complainant’s well known BHP mark that the disputed domain name was registered in bad faith.
6) The fact that the website to which the disputed domain name points mirrors the Complianant’s website is evidence of bad faith registration and use of the disputed domain name.
7) By using the disputed domain name, the Respondent has intentionally attempted to attract Internet users to the Respondent’s website by creating a likelihood of confusion with the Complainant’s BHP trademark as to the source, sponsorship, affiliation or endorsement of the Respondent’s website.
8) By using the disputed domain name as a URL, users are directed to a website that mirrors the Complainant’s website. As such users are likely to conclude, contrary to the fact, that they have accessed the Complainant’s website.
9) The Respondent’s website, whilst mirroring the Complainant’s website, contains additional functionality allowing users to enter a user name and password. It is suspected that this functionality is used by the Respondent for the purposes of phishing or other questionable conduct.
The Complainant requests that the Panel issue a decision that the disputed domain name <bhponline.co> be transferred to the Complainant.
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, <bhponline.co>, the 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
The Complainant has established that it has rights in the BHP trademark and has stated that the disputed domain name is confusingly similar to it.
In order to substantiate this claim, the Complainant has argued that BHP is the only distinctive part of the disputed domain name and that the addition of the generic term “online” to the BHP trademark does not avoid the confusing similarity between the disputed domain name and the Complainant’s mark.
This Panel agrees with the Complainant’s contention that BHP is the only distinctive part. Moreover, it is now well established by many previous UDRP decisions that the addition of a generic term to a trademark is generally not sufficient to avoid confusing similarity. In this sense see BHP Billiton Innovation Pty Ltd. v. PrivacyProtect.org / Sam Webs, WIPO Case No. D2012-1101 where the finding was “The disputed domain name includes the Complainant’s trademarks in their entirety together with the generic word “online”. This additional generic term however fails to dispel the connection between the disputed domain name and the trademarks”.
Accordingly, the Panel finds that the Complainant has satisfied paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
This Panel finds that here, the Respondent has no connection or affiliation with the Complainant, which has not licensed or otherwise authorized the Respondent to use or register any domain name incorporating the Complainant’s trademark. The Respondent does not appear to make any legitimate use of the disputed domain name for non commercial activities. In addition, the Respondent does not appear to be commonly known by the name “BHP” or by a similar name. In fact, although the Respondent’s name is indicated as BHP Online, the Complainant has provided the proceeding with enough elements to infer that the Respondent, when registering the disputed domain name, provided fictitious name and address details. Consequently, the Respondent cannot be considered as having legitimate concurrent rights to the disputed domain name on the basis that its indicated name is BHP Online. Finally, the Respondent has not alleged any facts to justify any rights or legitimate interests in the disputed domain name. Indeed, the Respondent has not replied to the Complaint, proving or at least alleging in any other way any rights or legitimate interests in the disputed domain name, as well, the Respondent has not denied any of the Complainant’s claims.
Accordingly, the Panel finds that the Complainant has satisfied paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
The Complainant has provided sufficient evidence that the Respondent is using the disputed domain name to direct Internet users to a website that mirrors the Complainant’s website. The only practical difference between the Complainant’s website and that of the Respondent appears to be the addition of a function which induces users to enter a user name and password. Considering that the Respondent’s website is mirroring the Complainant’s website with the sole difference described above, it is suspected that the Respondent has registered and is using the disputed domain name and the corresponding website for the purposes of phishing activities.
The Panel finds that this use of the disputed domain name constitutes bad faith use. Besides, the Panel notes that the above described use of the disputed domain name confirms that the Respondent knew of the Complainant’s trademarks, products and services when registering the disputed domain name and intentionally intended to create an association with the Complainant and its business.
Finally, the fact that the Respondent provided incorrect information when registering the disputed domain name (both Respondent’s name and address appear to be fictitious) gives definitive evidence that the Respondent acted in bad faith also when registering the disputed domain name.
Indeed, it appears that the Respondent in order to conceal its identity, not only made use of a privacy service, but provided fictitious or at least incomplete information also to such service.
This Panel finds that the Respondent’s use of a privacy service in combination with the provision of fictitious name and address details constitute a factor indicating bad faith. In this regard see also WIPO Consensus view: “Although use of a privacy or proxy registration service is not in and of itself an indication of bad faith, the manner in which such service is used can in certain circumstances constitute a factor indicating bad faith. For example, registrant use of a privacy service in combination with provision of incomplete contact information to such service or a continued concealment of the "true" or "underlying" registrant (possibly including that registrant's actual date of acquisition) upon the institution of a UDRP proceeding may be evidence of bad faith”.
Accordingly, the Panel finds on the basis of the evidence presented that the Respondent has registered and is using the disputed domain name in bad faith. Therefore, the Complainant has satisfied paragraph 4(a)(iii) of the Policy.
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 <bhponline.co> be transferred to the Complainant.
Date: November 23, 2012