WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
BHP Billiton Innovation Pty Ltd. v. Domain Admin, c/o Legal Consulting & Incorporations / WhoIs Foundation
Case No. D2014-2060
1. The Parties
The Complainant is BHP Billiton Innovation Pty Ltd. of Melbourne, Victoria, Australia, represented by Griffith Hack, Australia.
The Respondent is Domain Admin, c/o Legal Consulting & Incorporations / WhoIs Foundation of Ramon Panama, Panama, represented by Willenken Wilson Loh & Delgado, LLP, United States of America.
2. The Domain Name and Registrar
The disputed domain name <mailbhpbilliton.com> 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 November 24, 2014. On November 24, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 25, 2014, 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 November 28, 2014 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 December 1, 2014.
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, and the proceedings commenced on December 2, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was December 22, 2014. The Response was filed with the Center on December 22, 2014.
The Center appointed Yong Li as the sole panelist in this matter on January 19, 2015. 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 a world’s largest diversified resources group. The core of the Group is a dual listed company comprising BHP Billiton Limited and BHP Billiton Plc. The Complainant is a wholly owned subsidiary of BHP Billiton Limited, holding some of BHP Billiton’s intellectual property. BHP Billiton owns many trademark registrations for BHP BILLITON. The Complainant has provided copies of several of its trademark registrations in Annex 7 to the Complaint. These trademarks include:
- BHP BILLITON in Australia, Reg. No. 1141449.
- BHP BILLITON in New Zealand, Reg. No. 76470.
- BHP BILLITON in United Kingdom of Great Britain and Northern Ireland, Reg. No. 2264607.
- BHP BILLITON in European Union, Reg. No. 0986799.
- BHP BILLITON in United States of America, Reg. No. 3703871.
- BHP BILLITON in Canada, Reg. No. TMA794995.
BHP Billiton also controls numerous domain names containing the trademark BHP BILLITON.
The disputed domain name <mailbhpbilliton.com> was registered by the Respondent on November 22, 2014.
5. Parties’ Contentions
The Complainant asserts that the disputed domain name is confusingly similar to BHP Billiton’s extensive portfolio of BHP Billiton trademark. The BHP BILLITON trademark has over the years become the world’s most well-known brand in diversified resources and the mining of such resources.
The Complainant asserts that the Respondent does not have any rights or legitimate interests in the disputed domain name because the Respondent has not at any time been commonly know by the disputed domain name, BHP Billiton is not aware of any trademark in which the Respondent may have rights that are identical or similar to the disputed domain name, and the Respondent is not making legitimate noncommercial or fair use of the disputed domain name.
The Complainant asserts that the Respondent registered and is using the disputed domain name in bad faith for the reasons below： (a) BHP Billiton enjoys a worldwide reputation in its trademark. Bad faith registration may be inferred from the registration of a well-known mark. Similarly, it may be inferred from the Respondent’s registration of a domain name that is confusingly similar to BHP BILLITON’s well-known trademark that the disputed domain name was registered in bad faith; (b) The Respondent registered the disputed domain name in order to prevent the Complainant from reflecting its trademark in a domain name that includes a desirable descriptive term, namely “mail”; (c) The Respondent registered the disputed domain name in order to attract users to its website for commercial gain by creating a likelihood of confusing with the Complainant’s mark.
Besides the above, the Complainant requests that in the event that the Respondent consents to the transfer of the disputed domain name following the filing of the Complaint, the Panel nevertheless issue a decision on the merits.
The Complainant requests that the Panel issue a decision that the disputed domain name be transferred to the Complainant.
The Respondent stipulates in the Response that it is willing to voluntarily transfer the disputed domain name to the Complainant without admitting fault or liability.
6. Discussion and Findings
There is no dispute in this case between the Complainant and the Respondent whether the disputed domain name <mailbhpbilliton.com> should be transferred to the Complainant from the Respondent. The Panel is ready to make a decision to transfer in accordance with the Complainant’s request and the Respondent’s stipulation made in the Response. The Panel notes that the Complainant requests a decision on the merits but the Respondent requests that the disputed domain name be transferred to the Complainant without further findings of fact or liability. The question raised here is whether a unilateral consent to transfer justifies an order to transfer the disputed domain name without any finding that the three elements of paragraph 4(a) are met.
There are a number of previous UDRP decisions which are similar to this case. Previous UDRP panels of those cases have granted the relief requested by the Complainant on the basis of the Respondent’s consent without reviewing the facts supporting the claim (see Williams-Sonoma, Inc. v. EZ-Port, WIPO Case No. D2000-0207; Slumberland France v. Chadia Acohuri, WIPO Case No. D2000-0195).
In The Cartoon Network LP, LLLP v. Mike Morgan, WIPO Case No. D2005-1132, the panel held: “this Panel considers that a genuine unilateral consent to transfer by the Respondent provides a basis for an immediate order for transfer without consideration of the paragraph 4(a) elements. Where the Complainant has sought transfer of a disputed domain name, and the Respondent consents to transfer, then pursuant to paragraph 10 of the Rules the Panel can proceed immediately to make an order for transfer. This is clearly the most expeditious course (see Williams-Sonoma, Inc. v. EZ-Port, WIPO Case No. D2000-0207).”
The Panel shares the view of the panel in the case The Cartoon Network LP, LLLP v. Mike Morgan, Supra. The Panel finds that there is a genuine unilateral consent to transfer the domain name <mailbhpbilliton.com> by the Respondent. Following the reasoning in the case The Cartoon Network LP, LLLP v. Mike Morgan, Supra the panel orders an immediate transfer pursuant to paragraph 10 of the Rules (see alsoTokyu Corporation v. WA-Virtual Stock Ltd, Virtual Stock House LTD, Andrew Waggins, WIPO Case No. D2008-1408).
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 <mailbhpbilliton.com> be transferred to the Complainant.
Date: February 2, 2015