WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

BHP Billiton Innovation Pty Ltd v. Above.com Domains Privacy and Transure Enterprise Ltd

Case No. D2013-1777

1. The Parties

The Respondents are Above.com Domains Privacy of Beaumaris, Victoria, Australia and Transure Enterprise Ltd of Tortola, British Virgin Islands, Overseas Territory of the United Kingdom of Great Britain and Northern Ireland (collectively, “the Respondent”).

2. The Domain Name and Registrar

The disputed domain name <bhpilliton.com> is registered with Above.com, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 16, 2013. On the same day, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 17, 2013, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information which differed from the named Respondent and contact information in the Complaint.

The Center sent an email communication to the Complainant on October 24, 2013 providing the registrant and contact information disclosed by the Registrar and invited the Complainant to amend the Complaint. The Complainant filed an amended Complaint on October 28, 2013.

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 paragraphs 2(a) and 4(a) of the Rules, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on October 31, 2013. On November 7, 2013, the Respondent was re-notified of the Complaint due to a potential transmission error of the original notification. Accordingly, the new Response due date was November 27, 2013, in accordance with paragraph 5(a) of the Rules.

The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 28, 2013.

The Center appointed Nicolas Ulmer as the sole panelist in this matter on December 5, 2013. 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 paragraph 7 of the Rules.

4. Factual Background

The Complainant is a wholly-owned subsidiary of BHP Billiton Ltd, a large publicly-held corporation headquartered in Melbourne, Australia. The BHP Billiton Group is, according to the Complaint, the world’s largest diversified resources group. The Complainant is the holder of numerous trademarks for BHP BILLITON including in Australia, the United Kingdom, North America and the European Union registered as early as August 30, 2002.

The disputed domain name was first registered on August 30, 2013.

5. Parties’ Contentions

A. Complainant

The Complainant alleges that the BHP BILLITON trademark and name has become a well-known worldwide brand in diversified resources and mining. The disputed domain name, the Complainant alleges, is an obvious attempt to trade on a confusion with the Complainant’s trademarks and is essentially identical to such trademarks but for the removal of the letter “B” from the word Billiton. The Complainant alleges that the Respondent is not known by the disputed domain name and that it is not aware of any trademarks similar to the disputed name in which the Respondent has any rights. The Complainant then submits that it is therefore evident that the Respondent has registered the disputed domain name in bad faith and that this can be inferred from the registration of a domain name that is confusingly similar to such a well-known trademark, citing 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 support. The Complainant furthermore points to the fact that the website to which the disputed domain name resolves features advertisements for mining reports and employment opportunities in the mining industry as evidence of bad faith registration and use.

The Complainant also states that it suspects that the Respondent is using the website to which the disputed domain name resolves for “phishing activities or other questionable conduct”.

The Complaint attaches a list of 121 UDRP WIPO domain name cases in which one or both of the Respondents was a respondent and states that 119 of these decisions favoured the complainant’s position. The Complainant accordingly submits that the Respondent Transure Enterprises Ltd’s bad faith registration and use may also be inferred from its past conduct.

The Complainant requests that the disputed domain name be transferred to it and further specifically requests that in the event the Respondent should consent to the transfer of the disputed domain name, the Panel nevertheless issue a decision on the merits.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

A. Identical or Confusingly Similar

The disputed domain name is identical to the Complainant’s trademark, but for the suppression of the “b” before “Billiton”; the three initial letters “bhp” begin both the disputed domain name and the trademarks, and there is evidence that the Complainant’s Group is often referred to as BHP (which itself devolves from former names of the lead Group Company: “BHP Limited” and “Broken Hill Proprietary Company Limited”). The disputed domain name is, on its face, confusingly similar to the Complainant’s trademarks. Accordingly, this first element of the Policy is demonstrated and proven by the Complainant.

B. Rights or Legitimate Interests

The Respondent does not appear to be known by the disputed domain name, and the Complainant has affirmed that it knows of no basis on which the Respondent could have a right or legitimate interest in the disputed domain name, establishing a prima facie case. In the absence of any contrary evidence and any reply from the Respondent, the Complainant’s prima facie case is accepted by the Panel and the second element is proven.

C. Registered and Used in Bad Faith

The Respondent’s registration of a domain name confusingly similar to one of the best known trademarks in the worldwide mining industry was not serendipitous and can only have been in bad faith. Bad faith use is also evident from the use of the disputed domain name in connection with sponsored links related to possible jobs in the mining industry. The only reasonable conclusion is that the Respondent intentionally attempted to attract, for commercial gain, Internet users to the website at the disputed domain name by creating a likelihood of confusion with the Complainant’s mark. The evidence of numerous prior UDRP decisions against the Respondent is further evidence of bad faith. It is not necessary to discuss the Complainant’s undeveloped allegations of “phishing”; the third element of the Policy is proven.

The Panel is conscious of the Complainant’s specific request that, even should the Respondent consent to the transfer of the disputed domain name, the Panel proceed to a decision on the merits. This issue is procedurally moot, as to the Panel’s knowledge there was no such consent; however, the Panel does note that had it been faced with such a consent it would, given the evidence of so many UDRP decsions against the Respondent here, have nevertheless proceeded to a decision on the merits. See, Sanofi-Aventis v. Standard Tactics LLC, WIPO Case No. D2007-1909; Matthias Vriens v. Texas International Property Associates – NA NA, WIPO Case No. D2009-0312.

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 <bhpilliton.com> be transferred to the Complainant.

Nicolas Ulmer
Sole Panelist
Date: December 12, 2013