WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
BHP Billiton Innovation Pty Ltd v. Geosum
Case No. D2015-1272
1. The Parties
Complainant is BHP Billiton Innovation Pty Ltd of Melbourne, Victoria, Australia, represented by Griffith Hack, Australia.
Respondent is Geosum of Madrid, Spain.
2. The Domain Name and Registrar
The disputed domain name <bhpbilliton.website> 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 July 23, 2015. On July 23, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 24, 2015, the Registrar transmitted by email to the Center its verification response confirming that 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 Respondent of the Complaint, and the proceedings commenced on July 29, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was August 18, 2015. Respondent did not submit any response. Accordingly, the Center notified Respondent's default on August 19, 2015.
The Center appointed Jeffrey D. Steinhardt as sole panelist in this matter on August 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
Complainant owns several registrations worldwide of its mark BHP BILLITON including, for example, Australia trademark number 1141449 registered August 18, 2008 in classes 4, 6, 37, 40 and 42; United States of America Trademark Registration No. 3703871 registered November 3, 2009 (priority date October 18, 2006) in classes 6, 37, 40 and 42; and United Kingdom of Great Britain and Northern Ireland Trade Mark Number UK00002264607 registered August 30, 2002 (in classes too numerous to merit listing here).
The disputed domain name was registered June 25, 2015 and does not currently route to an active website.
5. Parties' Contentions
Complainant avers that it is the world's largest diversified resources group, and that on July 17, 2015 Complainant avers that Complainant's attorney sent a cease and desist letter to Respondent requesting transfer of the disputed domain name, along with other assurances related to Respondent's use of Complainant's BHP BILLITON marks.1 In response, Complainant avers that it received from Respondent an email in Spanish stating that the disputed domain name was a new commercial mark intended for use by its company, Geosum International, for goods and services different than Complainant's. Respondent's reply offered sale of the disputed domain name to Complainant for Respondent's alleged costs of developing the mark and registration: EUR 8,657.
Summarizing its legal contentions, Complainant alleges that (1) the disputed domain name is confusingly similar to Complainant's trademark, (2) Respondent has no rights or legitimate interests in the disputed domain name, and (3) the disputed domain name was registered and is being used in bad faith, all in violation of the Policy. On the above grounds, Complainant requests transfer of the disputed domain name.
Respondent did not reply to Complainant's contentions.
6. Discussion and Findings
The Panel must render its Decision on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable. Rules, paragraph 15(a). Complainant must establish each element of paragraph 4(a) of the Policy:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights;
(ii) 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.
Complainant must establish these elements even if Respondent does not submit a Response. E.g., The Vanguard Group, Inc. v. Lorna Kang, WIPO Case No. D2002-1064. In the absence of a Response, the Panel may also accept as true the reasonable factual allegations in the Complaint. E.g., ThyssenKrupp USA, Inc. v. Richard Giardini, WIPO Case No. D2001-1425 (citing Talk City, Inc. v. Michael Robertson, WIPO Case No. D2000-0009).
A. Identical or Confusingly Similar
The Panel agrees with Complainant that the disputed domain name is identical to Complainant's BHP BILLITON trademark.
UDRP panels have commonly disregarded the generic Top-Level Domain ("gTLD") suffix in evaluating identity or confusing similarity. E.g., VAT Holding AG v. Vat.com, WIPO Case No. D2000-0607. Some UDRP panels considering the new gTLDs (such as the ".website" suffix in this proceeding) have maintained this practice, looking only to the Second-Level Domain. E.g., NVIDIA Corporation v. Giovanni Laporta, Yoyo.email Ltd., WIPO Case No. D2014-0770.
Other panels have examined the new gTLD suffix along with the Second-Level Domain to make findings of identity or confusing similarity. See, e.g., Hultafors Group AB v. my domain limited, WIPO Case No. D2014-0597 (citing Canyon Bicycles GmbH v. Domains By Proxy, LLC / Rob van Eck, WIPO Case No. D2014-0206 (both cases in which the suffix bore some obvious relation to the marks)).
Omitting the new gTLD suffix, the Panel finds that the disputed domain name in this proceeding is identical to Complainant's mark.
The Panel concludes that the first element of Policy paragraph 4(a) is fulfilled.
B. Rights or Legitimate Interests
The Panel also concludes that Respondent has no rights or legitimate interests in the disputed domain name.
Paragraph 4(c) of the Policy contains a non-exhaustive list of circumstances that may demonstrate when a respondent has rights or legitimate interests in the use of a domain name. The list includes:
(i) the use of the domain name in connection with a bona fide offering of goods or services;
(ii) being commonly known by the domain name; or
(iii) the making of a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers.
A complainant must show a prima facie case that a respondent lacks rights or legitimate interests. See, e.g., Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455. The absence of rights or legitimate interests is typically established if a complainant makes out a prima facie case and the respondent enters no response. Id., (citing De Agostini S.p.A. v. Marco Cialone, WIPO Case No. DTV2002-0005).
Complainant alleges that Respondent's use does not fulfill the latter two circumstances listed above and that Respondent has no trademark rights that would permit it to use the trademark in a domain name. In the absence of a Response, the Panel accepts these factual allegations as true. Since the disputed domain name routes to an inactive website, the Panel further concludes that there is no bona fide use.
The Panel finds that Complainant has established a prima facie case. Refraining from submitting a formal response, Respondent has brought to the Panel's attention no circumstances from which the Panel could infer that Respondent has rights or legitimate interests in making use of the disputed domain name.
The Panel rules therefore that Complainant has established the second element of paragraph 4(a) of the Policy.
C. Registered and Used in Bad Faith
The Panel finds that the third element of paragraph 4(a) of the Policy, bad faith registration and bad faith use, is also established.
Using a domain name to intentionally attract Internet users, for commercial gain, by creating a likelihood of confusion, may be evidence of bad faith registration and use. Policy, paragraph 4(b)(iv). See, e.g., L'Oréal, Biotherm, Lancôme Parfums et Beauté & Cie v. Unasi, Inc, WIPO Case No. D2005-0623. UDRP panels may draw inferences about bad faith registration or use in light of the circumstances, such as whether the trademarks in question are well-known, whether there is no response to the complaint, and other circumstances. See, e.g., Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003.
Given the widespread use and fame of Complainant's BHP BILLITON mark, the Panel infers that Respondent had actual knowledge of Complainant's mark; the mark had been registered and widely used for many years when Respondent registered the disputed domain name. The Panel also infers from Respondent's reply to the cease and desist letter that Respondent did so intending to attract for commercial gain Internet users to its company's website, by creating a likelihood of confusion with Complainant's marks. Under the circumstances, therefore, the Panel concludes that Respondent registered the disputed domain name in bad faith.
Complainant has also provided proof that Respondent declined to transfer the disputed domain name to Complainant for Respondent's costs in making and maintaining the registration. Respondent's July 18, 2015 email to Complainant's attorney is described above. The Panel finds such description and the annexes to be credible evidence, upon which Respondent has declined to comment.
The sum of EUR 8,657 clearly would exceed Respondent's out-of- pocket expenses for registering. The Panel finds bad faith on the basis that Respondent "registered . . . [the disputed] domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark . . . for valuable consideration in excess of [Respondent's] documented out-of-pocket costs directly related to the [disputed] domain name." Policy paragraph 4(b)(i). Respondent's choice to refrain from filing a Response to this proceeding is cumulative evidence of bad faith.
The requirements of Policy paragraph 4(a)(iii) are fulfilled.
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 <bhpbilliton.website> be transferred to Complainant.
Jeffrey D. Steinhardt
Date: September 7, 2015
1 The demand letter and Respondent's alleged reply are annexed to the Complaint.