WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
BHP Billiton Innovation Pty Ltd (BHP Billiton Innovation) v. WHOIS Privacy Protection Service Inc. / Gabriel Herbert
Case No. D2014-1120
1. The Parties
Complainant is BHP Billiton Innovation Pty Ltd (BHP Billiton Innovation) of Melbourne, Victoria, Australia, represented by Griffith Hack, Australia.
Respondent is WHOIS Privacy Protection Service Inc. of Kirkland, Washington, United States of America (the "USA") / Gabriel Herbert of Calgary, Alberta, Canada.
2. The Domain Name and Registrar
The disputed domain name <bhpbilliton-petroleum.com> (the "Domain Name") is registered with eNom (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on June 30, 2014. On June 30, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On July 1, 2014, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on July 4, 2014 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. On the same date the Center requested confirmation and the resubmission of an Annex from Complainant. Complainant filed an amended Complaint on July 8, 2014 together with the resubmission of the Annex.
The Center verified that the Complaint together with 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 Respondent of the Complaint, and the proceedings commenced on July 11, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was July 31, 2014. Respondent did not submit any response. Accordingly, the Center notified Respondent's default on August 1, 2014.
The Center appointed Dinant T. L. Oosterbaan as the sole panelist in this matter on August 6, 2014. 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
Complainant is part of BHP Billiton Group ("BHP Billiton"), the world's largest resources and mining group, employing over 40.000 people in more than 25 countries.
According to the evidence submitted by Complainant, Complainant has a large number of trademark registrations for BHP BILLITON.
Complainant is the owner of the following trademarks, among others:
- Australian trademark BHP BILLITON 1141449, registered from October 18, 2006;
- United States trademark BHP BILLITON 3703871, registration date November 3, 2009:
- Canadian trademark BHP BILLITON TMA794995, registered on April 7, 2011.
In addition, BHP Billiton operates a website that is accessible via multiple domain names containing the BHP BILLITON name and mark, in particular under "www.bhpbilliton.com".
The Domain Name <bhpbilliton-petroleum.com> was registered on May 5, 2014.
The trademark registrations of Complainant were issued prior to the registration of the Domain Name.
5. Parties' Contentions
Complainant submits that the Domain Name is confusingly similar to its BHP BILLITON trademarks as it contains the well-known BHP BILLITON trademark in its entirety. The addition of the word "petroleum" is not sufficient to distinguish the Domain Name from the BHP BILLITON trademark.
According to Complainant, Respondent has no rights or legitimate interests in respect of the Domain Name. Respondent is not commonly known by the Domain Name and has not acquired any trademark or service mark rights in the name or trademark. Internet users are directed to a holding page. According to Complainant, Respondent is using the Domain Name as part of what Complainant suspects is an elaborate recruitment fraud. Complainant has submitted evidence that a number of prospective job seekers have contacted Complainant for verification; the verification requests outline the alleged recruitment fraud.
According to Complainant, Respondent is not making a legitimate noncommercial or fair use of the Domain Name.
Complainant submits that Respondent has registered and is using the Domain Name in bad faith as Respondent no doubt had knowledge of the well-known trademark of Complainant. In addition, Complainant suspects that Respondent is using the Domain Name in an elaborate attempt at recruitment fraud, which constitutes bad faith registration and use of the Domain Name.
Respondent did not reply to Complainant's contentions.
6. Discussion and Findings
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable".
Paragraph 4(a) of the Policy requires that Complainant proves each of the following three elements to obtain an order that the Domain Name should be transferred or cancelled:
(i) the Domain Name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) 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.
The Panel is satisfied that the registrant of record for the Domain Name is Respondent and will therefore proceed to analyze whether the three elements of paragraph 4(a) of the Policy are satisfied by Complainant in this proceeding.
A. Identical or Confusingly Similar
Pursuant to paragraph 4(a)(i) of the Policy, Complainant must first of all establish rights in a trademark or service mark and secondly that the Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights.
Complainant has established that it is the owner of numerous trademark registrations for BHP BILLITON. The Panel notes that Complainant's registrations predate the creation date of the Domain Name.
The Domain Name <bhpbilliton-petroleum.com> incorporates the entirety of the BHP BILLITON trademark as its distinctive element. Many UDRP decisions have found that a disputed domain name is confusingly similar to a complainant's trademark where the disputed domain name incorporates the complainant's trademark in its entirety. The addition of the common, descriptive and non-distinctive element "petroleum", linked with a hyphen to the trademark, is insufficient to avoid a finding of confusing similarity.
The Panel finds that Complainant has proven that the Domain Name is confusingly similar to Complainant's trademark.
B. Rights or Legitimate Interests
In the opinion of the Panel, Complainant has made a prima facie case that Respondent lacks rights or legitimate interests in the Domain Name. Respondent is not commonly known by the Domain Name nor has it acquired trademark rights. Complainant has not licensed or otherwise permitted Respondent to use any of its trademarks or to register the Domain Name incorporating its marks. Respondent is not making a legitimate noncommercial or fair use of the Domain Name without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark of Complainant. Based on the evidence provided by Complainant, Respondent only uses the Domain Name in order to direct Internet users to a holding page which cannot be considered a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the Domain Name. In addition, Complainant provided evidence that Respondent is using the Domain Name as part of what Complainant suspects is an elaborate recruitment fraud, which also cannot be considered a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the Domain Name. Respondent did not submit any response.
Under these circumstances, the Panel finds that Respondent has no rights or legitimate interests in the Domain Name.
C. Registered and Used in Bad Faith
The Panel finds that the Domain Name has been registered and is being used in bad faith. The trademarks of Complainant have been in existence for a long time. Respondent knew or should have known that the Domain Name included Complainant's well-known BHP BILLITON trademark.
The Panel notes that the website at the Domain Name is currently a holding page. However, passive holding of the website does not prevent the Panel from finding registration and use in bad faith. The Panel further notes that Respondent undeveloped use of the website at the Domain Name which incorporates Complainant's trademark in its entirety indicates that Respondent possibly registered the Domain Name with the intention to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the trademark of Complainant as to the source, sponsorship, affiliation, or endorsement of its website or location or of a service on its website or location, as per paragraph 4(b)(iv) of the Policy. Furthermore, the Panel accepts Complainant's undisputed submission that bad faith registration and use of the Domain Name is further indicated by the fact that there is suspicion of Respondent using the Domain Name in an elaborate attempt at recruitment fraud.
The Panel finds that Complainant has proven 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 <bhpbilliton-petroleum.com> be transferred to Complainant.
Dinant T. L. Oosterbaan
Date: August 11, 2014