WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
BHP Billiton Innovation Pty Ltd v. xingxixin
Case No. D2015-0110
1. The Parties
The Complainant is BHP Billiton Innovation Pty Ltd of Melbourne, Australia, represented by Griffith Hack, Australia.
The Respondent is xingxixin of Hangzhou, China.
2. The Domain Name and Registrar
The disputed domain name <bhpbillitongroup.mobi> (the "Disputed Domain Name") is registered with Beijing Innovative Linkage Technology Ltd. dba dns.com.cn (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on January 23, 2015. On January 23, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On January 26, 2015, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
On January 26, 2015, the Center sent an email communication to the parties in both Chinese and English regarding the language of the proceeding. On the same day, the Complainant confirmed its request that English be the language of the proceeding. On January 29, 2015 and February 2, 2015, the Respondent requested that Chinese be the language of the proceeding.
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 February 2, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was February 22, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on February 23, 2015.
The Center appointed Kar Liang Soh as the sole panelist in this matter on February 27, 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
The Complainant is part of the BHP Billiton Group ("BHP Billiton"). BHP Billiton employs over 40,000 people in over 100 operations across 25 countries. BHP Billiton has substantial interests in oil and gas, and is among the world's largest producers of major commodities, including copper, aluminium, iron ore, nickel and silver. BHP Billiton had an estimated annual turnover of consistently above USD 50 billion from 2009 to 2013. In 2013 itself, the estimated annual turnover was USD 65.9 billion.
BHP Billiton comprises two listed companies, namely, BHP Billiton Ltd and BHP Billiton Plc, both of which are run by the same board of directors and management team. The Complainant is a wholly owned subsidiary of BHP Billiton Ltd and holds the intellectual property of BHP Billiton.
The Complainant owns trademark registrations for the trademark BHP BILLITON in various countries, including the following:
October 18, 2006
June 12, 2008
European Union (Community Trademark)
November 16, 2006
United States of America
November 3, 2009
BHP Billiton holds various domain names which incorporate the trademark BHP BILLITON, including <bhpbilliton.com>, <bhpbilliton.net>, <bhpbilliton.info>, <bhpbilliton.org>, <bhpbilliton.mobi> and <bhpbilliton.biz>. The corporate website of BHP Billiton is resolved from the domain name <bhpbilliton.com>.
Not much is known about the Respondent beyond the WhoIs record of the Disputed Domain Name. The name of the Respondent suggests that the Respondent is an individual. The address of the Respondent reflected in the WhoIs is incomplete as it does not identify any street name or building name.
The Disputed Domain Name was registered on January 9, 2011. As of January 23, 2015, the Disputed Domain Name resolved to a parking webpage which offered links to other websites, including some links with titles referencing the words "BHP Billiton", such as "BHP Billiton Share Price" and "Job Vacancies BHP Billiton". As the Disputed Domain Name had expired on January 9, 2015, pursuant to paragraph 220.127.116.11 of the ICANN Expired Domain Deletion Policy, the Registrar placed the Disputed Domain Name in "Lock" status so that the proceeding could continue as required under the UDRP.
5. Parties' Contentions
The Complainant contends that:
(a) The Disputed Domain Name is confusingly similar to the BHP BILLITON trademark. The BHP BILLITON trademark is a well-known brand for diversified resources. The assessment of confusing similarity remains unaffected by the addition of ".mobi" to the Disputed Domain Name, and given the similarity between the Disputed Domain Name and the BHP BILLITON trademark, consumers are likely to associate the Disputed Domain Name with the Complainant; and
(b) The Respondent has no rights or legitimate interests in respect of the Disputed Domain Name. The Respondent has not at any time been commonly known by the Disputed Domain Name. The Complainant is not aware of any trademarks which are identical or similar to the Disputed Domain Name in which the Respondent has rights; and
(c) The Disputed Domain Name was registered and is being used in bad faith. The Respondent's registration of a domain name which is confusingly similar to the Complainant's well-known BHP BILLITON trademark indicates that the registration was made in bad faith. The Respondent registered the Disputed Domain Name in order to prevent the Complainant from reflecting its trademark in a domain name that includes the generic descriptor "group", and has engaged in a pattern of such conduct for other well-known third party trademarks such as BARCLAYS, RBS GROUP, CHRYSLER, and CITI FINANCIAL.
The Respondent did not reply to the Complainant's contentions in the Complaint, beyond briefly commenting on the language of the proceeding.
6. Discussion and Findings
6.1 Language of the Proceeding
As the language of the registration agreement is Chinese, the default language of the proceeding should be Chinese. However, the Panel is empowered under paragraph 11(a) of the Rules to determine otherwise having regard to the circumstances.
In the present instance, the Complainant has requested that English be adopted as the language of the proceeding. The Respondent replied to the request with an email conveying a preference for Chinese. The email consisted of an ungrammatical combination of five Chinese characters "语言请中文" (which literally means "language please Chinese"). The Respondent followed up subsequently with a similar comment claiming that he did not understand English and requesting that Chinese be used.
Having considered the circumstances, the Panel decides that English be adopted as the language of the proceeding. In making this decision, the Panel took account of the following factors:
(a) The Complaint has already been submitted in English;
(b) The Respondent has chosen not to participate substantively in the proceeding by not submitting a Response;
(c) No procedural benefit would be gained by insisting that the Complaint be translated into Chinese and resubmitted;
(d) Requiring translation of the Complaint into Chinese at this stage would lead to unnecessary delay in the proceeding;
(e) Online translation tools (such as Google Translate and Baidu Online Translation) are readily available. It would have required the Respondent little effort to get a fair idea of the content of the Complaint by using such tools. Even without machine translation, the Respondent could have referred to readily available Chinese translations of the Policy and obtained sufficient appreciation of the proceeding to respond with his contentions pertaining to paragraph 4(a) of the Policy;
(f) The Panel is bilingual, and would be able and ready to deal with a Response in Chinese. However, no Response was filed in the present instance; and
(g) In responding to the language request with broken Chinese, the Respondent has demonstrated a questionable proficiency in the written Chinese language.
In this proceeding, the Complainant has the burden of proof on the requirements of paragraph 4(a) of the Policy. Paragraph 4(a) lays down the requirements as follows:
(i) the Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and
(iii) the Disputed Domain Name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Complainant has shown that it owns registrations for the trademark BHP BILLITON in various jurisdictions such as Australia, the United States, and New Zealand. In view of these registrations, the Complainant clearly has rights in the trademark BHP BILLITON.
The Panel also finds the Disputed Domain Name <bhpbillitongroup.mobi> confusingly similar to the trademark BHP BILLITON, for the following reasons:
(a) the Disputed Domain Name incorporates the trademark BHP BILLITON in its entirety;
(b) the omission of a space between "bhp" and "billiton" in the Disputed Domain Name is insufficient to distinguish the Disputed Domain Name from the trademark BHP BILLITON (for example, see, The Ian Anderson Group of Companies Ltd v. Denny Hammerton & I Schembs, WIPO Case No. D2000-0475);
(c) the addition of a generic term such as "group" in the Disputed Domain Name is insufficient to distinguish the Disputed Domain Name from the trademark BHP BILLITON (for example, see, Converse, Inc. v. Feng Ye/Denny Liao, WIPO Case No. D2011-1405; and see Dixons Group Plc v. Mr. Abu Abdullaah, WIPO Case No. D2001-0843); and
(d) the addition of the generic Top-Level Domain (gTLD) ".mobi" as a suffix in the Disputed Domain Name does not affect the assessment of confusing similarity for the purposes of paragraph 4(a)(i) of the Policy (for example, see, Ice House America, LLC v. Ice Igloo, Inc., WIPO Case No. D2005-0649; and see Arthur Guinness Son & Co. (Dublin) Limited v. Dejan Macesic, WIPO Case No. D2000-1698).
As such, the Panel holds that the first limb of paragraph 4(a) of the Policy is established.
B. Rights or Legitimate Interests
It is the consensus of past panels that a complainant in a UDRP proceeding is only required to show a prima facie case that the respondent does not have rights or legitimate interests in the disputed domain name (for example, see, Gardens By The Bay v. Kevin Tay, WIPO Case No. D2014-0691; and see Accor v. Eren Atesmen, WIPO Case No. D2009-0701).
Once a prima facie case is made out by the Complainant, the burden of production shifts to the Respondent to provide appropriate allegations and evidence demonstrating the Respondent's rights or legitimate interests in the Disputed Domain Name (for example, see, Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455).
The Panel is satisfied that the Complainant has made out a prima facie case on the evidence that the Respondent does not have rights or legitimate interests in the Disputed Domain Name. In particular, the Respondent's name is "xingxixin" and clearly bears no resemblance to the Disputed Domain Name. There is no evidence suggesting that the Respondent has rights in any trademarks which are identical or similar to the Disputed Domain Name. There is no evidence suggesting that the Respondent has made use of the Disputed Domain Name for a bona fide offering of goods or services. There is also no evidence indicating that the Respondent is otherwise commonly known by the Disputed Domain Name.
Further, the Disputed Domain Name expired on January 9, 2015 and there is no evidence that the Respondent has taken any action or displayed any interest to renew the same.
Given that no Response was filed and the above circumstances, the Complainant's assertions remain unchallenged by the Respondent. As such, the Panel holds that the second limb of paragraph 4(a) of the Policy is established.
C. Registered and Used in Bad Faith
Paragraph 4(b)(ii) of the Policy describes a situation of bad faith registration and use:
"you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct."
It has been held by past UDRP panels that a respondent engages in a pattern of such conduct within the meaning of paragraph 4(b)(ii) of the Policy if the respondent has previously registered several domain names which are similar to trademarks (for example, see, Playboy Enterprises International, Inc. v. Tom Baert, WIPO Case No. D2007-0968).
The Complainant's evidence includes a reverse WhoIs report associating the Respondent's email address with <chryslergroup.mobi>, <barclaysgroup.mobi> and <rbsgroup.mobi> among a host of other ".mobi" domain names. Past UDRP panels have determined that CHRYSLER, BARCLAYS, and RBS GROUP, are trademarks owned by third parties to this proceeding (e.g., DaimlerChrysler Corporation v. Web4COMM SRL ROMANIA, WIPO Case No. DRO2006-0003; BARCLAYS BANK PLC v. PrivacyProtect.org, Sanjay Jha, WIPO Case No. D2011-1014; The Royal Bank of Scotland Group plc v. State Layers, WIPO Case No. D2012-0115).
The Respondent, by registering the Disputed Domain Name, has prevented the Complainant from reflecting the trademark BHP BILLITON in combination with the word "group" in a corresponding domain name. The Panel is satisfied on the evidence herein that the Respondent has engaged in a pattern of conduct of registering domain names combining a third party trademark and the generic descriptor "group" under the ".mobi" gTLD within the meaning of paragraph 4(b)(ii) of the Policy.
Additionally, paragraph 4(b)(iv) of the Policy states:
"by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location"
The Disputed Domain Name resolved to what is clearly a parking webpage as of January 23, 2015 and contains several links to third party webpages. Such parking webpages are likely associated with commercial gain in the form of "pay-per-click" services, although no direct evidence as such exists in the proceedings. However, the Panel notes that the webpage contains a header statement in Chinese exhorting visitors to the webpage to contact the Registrar for renewal fees and to purchase. This statement leaves no doubt to the Panel that the Disputed Domain Name is being used for commercial gain arising from the sale of the Disputed Domain Name by creating a likelihood of confusion with the Complainant's trademark BHP BILLITON. The Panel therefore finds that bad faith registration and use within the meaning of paragraph 4(b)(iv) has also been established on the facts.
As a final observation, the Panel notes that the registration of the Disputed Domain Name expired on January 9, 2015, some two weeks before the Complaint was filed. But for the Complaint, the Disputed Domain Name would have been removed from the Registry earlier. The continual registration and use of the Disputed Domain Name by the Respondent going forward would be contrary to the registration agreement and clearly unreasonable and wrong in the circumstances.
In the circumstances, the Panel holds that the third limb of paragraph 4(a) of the Policy is also established.
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 <bhpbillitongroup.mobi> be transferred to the Complainant.
Kar Liang Soh
Date: March 27, 2015