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 ND Invest LTD, Name Admin of Port Vila, Vanuatu.
The disputed domain name <bhpbillition.com> is registered with Basic Fusion, Inc.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 28, 2010. On April 28, 2010, the Center transmitted by email to Basic Fusion, Inc a request for registrar verification in connection with the disputed domain name. On April 29, 2010, Basic Fusion, Inc. 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on April 29, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was May 19, 2010. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on May 20, 2010.
The Center appointed John Katz QC as the sole panelist in this matter on May 26, 2010. 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.
The Group BHP Billiton is a true global corporate entity, known in most, if not all, jurisdictions worldwide. It employs over 37,000 people in more than 100 operations in 25 countries around the world. It is listed on a number of the world's major stock exchanges through its various corporate entities.
Although headquartered in Melbourne, Australia, it has corporate centres in London, Johannesburg and Houston.
The Group BHP Billiton is the result of the merger of two already large and internationally recognized corporate entities. BHP was a leading global natural resources company involving minerals, oil, gas and steel. It was an iconic and pioneering Australian company that grew to acquire an internationally respected presence and reputation. It can trace its history back to 1885.
Billiton was a premier mining company in the world involved in aluminum, nickel, base metals and coal amongst other commodities. Billiton can trace its roots back to 1860.
The Group BHP Billiton can claim to be a world leader in various commodities and is amongst the largest producers of commodities including metals, alloys and coal. It has nevertheless diversified well beyond these core commodities as the Complaint documents show. Annexure 5 to the Complaint gives but a snapshot of the enormity of the combined group operations.
The Complainant in this matter is BHP Billiton Innovation Pty Ltd. It is said in the Complaint document to be “a wholly owned subsidiary of BHP Billiton Limited, holding some of BHP Billiton's intellectual property”.
There are then set out several domain names registered in favour of BHP Billiton. A consideration of Annexure 7 to the Complaint shows in fact a number of different registrant names, including the Complainant.
So far as the registered trade marks are concerned those in New Zealand appear to be registered in the name of BHP LIMITED. The Australian marks are in the name of the Complainant and the United Kingdom of Great Britain and Northern Ireland marks appear to be in the name of Billiton Intellectual Property BV of the Netherlands.
Although it would have been preferable for this issue of ownership or licensed rights to be better explained, this Panel is prepared to draw the inference that in the BHP Billiton Group there are various inter-company licensing arrangements that exist which give the Complainant entitlement and ability to enforce the various rights that clearly do exist.
A not dissimilar approach was adopted by the Panel in NVT Birmingham, LLC a/b/a CBS 42 WIAT-TV v.ZJ, WIPO Case No. D2007-1079, although there it appears evidence of licensing arrangements was before the Panel.
The Complainant has put in much evidence of the operations of the BHP Billiton Group. That includes its combined mining, oil and gas, coal and other activities around the world. Its registered marks and domain names are also in evidence. That results in an immense build up of goodwill and associated intellectual property holding in part at least in favour of the Complainant.
The Respondent merely offers, via the disputed domain name, links to sponsored sites. The disputed domain name is confusingly similar to the BHP BILLITON trade mark.
There can be, on the Complainant's argument, a valid case made out that by virtue of its immense goodwill, the Respondent is merely taking advantage of that. The Respondent is not commonly known by the disputed domain name, and not making any legitimate, noncommercial or fair use of the disputed domain name. No other explanation for the Respondent's use of name can be imagined. The Complainant and others in the BHP Billiton Group are truly a global brand. Thus the public would assume, contrary to the fact, a link or association between the Complainant and BHP Billiton Group on the one hand and the Respondent on the other. The Respondent registered the disputed domain name primarily to disrupt the business of the Complainant, and with the aim to direct Internet traffic to it which was intended for the Complainant.
Because the Respondent has defaulted it has not put before the Panel any evidence.
As a result little is known of the activities of the Respondent. However, a search performed by the Panel at the website “www.bhpbillition.com” reveals it is accessible and the main screen shows that it defaults to a number of employment related websites. There is also a link to the well-known site “www.sedo.co.uk” which is a website offering domain names for sale. Linking to the Sedo website indicates that the domain name <bhpbillition.com> is for sale.
The Policy adopted by ICANN is directed towards resolving disputes concerning allegations of abuse of domain name registrations.
As part of the process, a complainant must provide evidence and submissions in support of its complaint. The expectation is that the complainant will provide such supporting evidence as is necessary to make out its case under all three heads in paragraph 4(a) of the Policy. The respondent is given full opportunity to respond. In this instance, the Respondent has defaulted.
Paragraph 4(a) of the Policy sets out three elements that must be established by a Complainant to merit a finding that a Respondent has engaged in abuse of domain name registration and to obtain relief. These elements are that:
(i) The respondent's domain name is identical or confusingly similar to a trade mark 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 respondent's domain name has been registered and is being used in bad faith.
Each of three elements must be established by a complainant to warrant relief.
As to the first ground, the disputed domain name must be shown to be identical or confusingly similar to trade marks in which the Complainant has rights.
The Complainant must establish that it has such rights either to common law or registered trade marks or service marks and that those rights are being abused by the Respondent.
Aside from what would undoubtedly be its internationally known name and reputation, there are a number of registered trade marks in Australia, the United Kingdom and New Zealand. It would appear as if the registered trade marks in New Zealand at least are registered in the name of BHP Limited as proprietor. The United Kingdom trade mark in evidence is in the name of Billiton Intellectual Property BV of the Netherlands. The Australian mark BHP Billiton in evidence is in the name of the Complainant.
BHP Billiton is the registered proprietor or user of various domain names as are set out in Annexure 7 to the Complaint. The sheer number and variety of these, including a number of different spellings, with or without a hyphen, show a concerted effort to populate the worldwide web with various domain names to ensure public interest is captured and directed accordingly. Some of these domain names are registered in the name of the Complainant.
For the reasons set out earlier this Panel is prepared to assume that the present claimant does indeed itself have rights in respect of these marks whether registered or not and that these rights subsist either directly or indirectly through various corporate entities in the BHP Billiton Group in favour of and are enforceable by the Complainant. Thus, the Complainant has rights in respect of both registered trade marks and at common law and has an entitlement to protect its trading name BHP Billiton or any name that is confusingly similar.
The disputed domain name is <bhpbillition.com>. It can be seen, on a careful examination, that the disputed domain name contains just one additional letter in it. Given the additional letter is an “i” and appears in close proximity to two other “i's”, two “l's” and a “t” it takes more than just a casual glance to detect the additional and superfluous “i”. It could easily be overlooked.
Moreover, it would be very easy for a person, particularly one not fully conversant with the exact and correct spelling, to assume the additional “i” was part of the name or simply make a mistake when typing in what is intended to be the correct name.
There is a considerable body of case law in relation to what constitutes the same or identical mark in trade mark jurisprudence.
The Panel notes in passing that in the European Court decision of LTJ Diffusion SA v Sardas Vertdaubet SR [2003] FSR 34 the court considered what constituted use of an identical mark. It held that a mark used by a respondent is identical with a complainant's mark if the former “reproduced without any modification or addition all the elements constituting the trade mark or, where, viewed as a whole, it contains differences so insignificant that they go unnoticed by an average consumer”.
The Panel considers this statement equally applicable to the facts of the present Complaint. If one looks at the disputed domain name as a whole against the Complainant's marks, and it contains differences so insignificant that they go unnoticed by the average Internet user, it must follow that the disputed domain name incorporates the virtually identical mark to that for which the Complainant has protection in each case.
However, even if that was not so, there can be absolutely no quarrel with the argument that the disputed domain name is confusingly similar. This must especially be so where the differences are of such a minor nature that to most Internet users they would go unnoticed or at best would simply, if noticed, be dismissed as inconsequential.
The Panel accordingly finds that paragraph 4(a)(i) of the Policy is made out.
As to the second ground, that there are no rights or legitimate interests possessed by the Respondent, the Respondent does not put forward in evidence any business or trading operation known as or by reference to any of the trade marks in suit thereby justifying a proprietory right to the mark.
Under paragraph 4(a)(ii) a Respondent can justify its registration of the disputed domain name on certain grounds some of which are set out in paragraph 4(c) of the Policy. Such grounds resolve broadly to own name use, bona fide use, or legitimate noncommercial or fair use.
Even though the Respondent has defaulted, it is not sufficient simply to assume from that that the Respondent has no legitimate rights or can claim none.
There is no evidence of any rights or legitimate interest that the Respondent may have and it is inherently unlikely it would have any.
The Panel accordingly finds that paragraph 4(a)(ii) of the Policy is made out.
As to the third ground, this requires that the name be registered and used in bad faith. As has previously been said in other panelists' decisions together with earlier decisions of this Panel, both elements must be made out. Accordingly, both registration and use in bad faith have to be established by the Complainant.
In section 6A, identical or confusingly similar, this Panel has discussed the very close similarity between the Complainant's various marks and the disputed domain name. The difference in spelling is so slight as to be bordering on the imperceptible.
It is easy to assume that any person seeing the disputed domain name could be mistaken. So simple is the error that can be made that this Panel draws the inference that the error is a deliberate attempt by the Respondent to trade on imperfect recollections or carelessness by an inquirer when using a keyboard.
This type of activity by a cyber-squatting respondent can be termed typo-squatting. That is adopting a slight and often imperceptible typographical variation to a well-known mark, chosen and used by a cyber-squatter deliberately on the understanding that an Internet user may not realize or appreciate the typographical error.
Whether or not the Respondent is using the disputed domain name for the purposes of diverting traffic, receiving revenue on a pay-per-click or pass-through basis, is unclear. However, this Panel is prepared to draw the inference that there must be a commercial purpose to the Respondent's activities and its registration of the disputed domain name as no other legitimate purpose can be discerned.
However, perhaps the most telling feature against the Respondent is its involvement in numerous other domain name registrations. It would appear that it carries on business registering a variety of domain names which are then used either for blocking or for sale.
The website “www.whois.domaintools.com” discloses that the Respondent apparently owns in excess of 3,800 other domain names. The ineluctable inference therefore is that this Respondent has registered and is using the disputed domain name in bad faith.
The Panel accordingly finds that paragraph 4(a)(iii) of the Policy is made out.
For all 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 <bhpbillition.com> be transferred to the Complainant.
John Katz QC
Sole Panelist
Dated: June 9, 2010