WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
BHP Billiton Innovation Pty Ltd v. Cameron Jackson
Case No. D2015-2214
1. The Parties
The Complainant is BHP Billiton Innovation Pty Ltd of Melbourne, Victoria, Australia, represented by Griffith Hack Patent and Trade Mark Attorneys, Australia.
The Respondent is Cameron Jackson of Vaucluse, Sydney, Australia.
2. The Domain Name and Registrar
The disputed domain name <bhpbilliton.site> is registered with Instra Corporation Pty Ltd. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 7, 2015. On December 7, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 7, 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.
In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on December 15, 2015. The copy of the Complaint notification addressed to the Respondent at the physical address provided in the WhoIs for the disputed domain name could not be delivered because the address and telephone number provided were incorrect. In accordance with the Rules, paragraph 5, the due date for Response was January 4, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 7, 2016.
The Center appointed Desmond J. Ryan as the sole panelist in this matter on January 18, 2016. 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 a member of the BHP Billiton group of companies. It includes BHP Billiton Limited and BHP Billiton Plc which are listed respectively on the Australian and London Stock Exchanges. The BHP Billiton Group is the world’s largest diversified resources group. According to the Complainant the group employs more than 40,000 people in over 100 operations in 25 countries. The Complainant is the holder of the intellectual property of the group including registrations of the trademark BHP BILLITON in international classes 4, 6, 37, 40 and 42 in Australia, New Zealand, the United Kingdom of Great Britain and Northern Ireland, the European Union, the United States of America and Canada. Its name, its trademarks and its activities are extensively promoted and reported in the Australian media and in the financial media of other countries.
The Respondent is an individual apparently resident in Australia. Over the period 2005 to 2015 he has been the Respondent in at least seven domain name disputes, all of which involved domain names which included well-known trademarks and resulted in transfer of the disputed domain names to the respective complainants. Two of these cases concerned domain names incorporating the Complainant’s BHP BILLITON trademark, see BHP Billiton Innovation Pty Ltd, BMA Alliance Coal Operations Pty Ltd v. Cameron Jackson, WIPO Case No. D2008-1338 and BHP Billiton Innovation Pty Ltd v. Cameron Jackson, WIPO Case No. D2015-1782.
The disputed domain name was registered on November 29, 2015. At the time of filing the Complaint the disputed domain name resolved to a parking page.
The Complainant became aware of the registration of the disputed domain name on November 30, 2015 when the Complainant’s attorneys received an email from the Respondent. At that time the Complaint by the Complainant against the Respondent in respect of the domain name <bhpbilliton.club> was pending. That matter has since been resolved by the decision in BHP Billiton Innovation Pty Ltd v. Cameron Jackson, supra. The email read as follows:
“Subject: BHP Domains
Hi Simon and Jurgen
I also have registered
Please let me know if you want this domain name.
I can organize transfer
The transfer can be done in 24 hours.
Let me know
In subsequent correspondence on the same day the Respondent offered to transfer the disputed domain name on payment of his “administration outgoings” for the disputed domain name. The Complainant declined that offer and again sought the authorization code and advised the Respondent that if he continued to insist on reimbursement of his costs or any payment the Complainant would proceed with a UDRP complaint.
5. Parties’ Contentions
The Complainant’s contentions are as follows:
- The disputed domain name is confusingly similar to the BHP BILLITON trademark which has become one of the world’s most well-known trademarks in the field of mining and diversified resources and consequently consumers are highly likely to expect that the disputed domain name indicates an association with the Complainant. In the Complainant’s submission the addition of the generic Top-Level Domain (“gTLD”) “.site”, does not affect the assessment of confusing similarity.
- The Respondent has no right or legitimate interest in the disputed domain name; it has not been commonly known by the disputed domain name and the Respondent is not making legitimate noncommercial or fair use of the disputed domain name.
- The Respondent’s registration of the disputed domain name in bad faith can be inferred from the fact that the Complainant’s trademark is so well and widely known. In support of that proposition the Complainant cites, inter alia, Zwack Unicum Rt. v. Erica J. Duna, WIPO Case No. D2000-0037.
- The Respondent’s use of the disputed domain name to point only to a parking page constitutes passive use in the sense that was found in Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003. Taking into account also the Respondent’s pattern of conduct in registering domain names incorporating well-known trademarks of the Complainant and others, such use is in bad faith.
The Complainant requests that, notwithstanding the Respondent’s conditional offer to transfer the disputed domain name, the matter should proceed to a decision on the merits. In support of its request the Complainant cites the decision in Sanofi-aventis v. Standard Tactics LLC, WIPO Case No. D2007-1909. The Panel accedes to that request and proceeds accordingly.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
The Complainant has clearly demonstrated registered trademark rights in the trademark BHP BILLITON. The disputed domain name comprises the Complainant’s trademark with the addition of the gTLD “.site”. As noted by the learned panel in WIPO Case No. D2015-1782, cited above, the addition of the gTLD does not carry any distinguishing weight.
The Panel therefore finds that the disputed domain name is substantially identical to the trademark BHP BILLITON in which the Complainant has rights.
B. Rights or Legitimate Interests
The Complainant has established a strong prima facie case that the Respondent lacks any right or legitimate interest in the disputed domain name. The record in the prior UDRP cases cited above clearly indicates that at the time of registering the disputed domain name, the Respondent was well aware of the Complainant and of its well-known trademarks. Additionally, the Respondent appears to be an Australian resident, and accordingly it is almost inconceivable that he would not have been aware of the Complainant’s rights. The Respondent’s use of the disputed domain name to point to a parking page cannot in those circumstances be regarded as a legitimate noncommercial use or a use in the bona fide offering of goods or services. There is no other apparent basis upon which the Respondent can claim any right or legitimate interest in the disputed domain name. The Respondent has had the opportunity to rebut the Complainant’s case in this respect and has failed to do so.
The Panel therefore finds that the Respondent has no rights or legitimate interests in the disputed domain name.
C. Registered and Used in Bad Faith
As noted in section 6B above the Respondent must have been fully aware of the Complainant’s rights when he registered the disputed domain name and he must have also have been aware of the Complainant’s objection to his doing so, having already been the subject of the Complaint in WIPO Case No. D2008-1338, cited above. Accordingly, the Complainant could not have given the representation required by paragraph 2.2 of the Registrar’s Registration Agreement which requires that:
“2. Your Obligations
You agree that:
2 You have and will satisfy yourself that the use (whether directly or indirectly) of the Domain Name will not infringe the legal rights (including, without limitation, the intellectual property rights) of any third party.”
Further, since the copy of the Complaint notification sent by the Center to the physical address given for the Respondent in the WhoIs for the disputed domain name was found to be an incorrect address, and the telephone number given was also found to be incorrect, it appears likely that the Respondent has deliberately given false contact information.
The Panel therefore finds that the disputed domain name was registered in bad faith.
The only apparent use which has been made of the disputed domain name has been to direct it to a holding page. That use, however, is equivalent to passive holding of the disputed domain name which, in the light of the other bad faith indicators, was found in Telstra Corporation Limited v. Nuclear Marshmallows, supra, to constitute use in bad faith. Further, the Respondent’s offer to transfer the disputed domain name on the condition of the payment of his “administration outgoings” is ambiguous and does not clearly constitute an offer for sale of the disputed domain name for his “documented out-of-pocket costs directly related to the domain name”. As noted by the learned panelist in Insurance Australia Group Limited v. Cameron Jackson, WIPO Case No. D2008-0872:
“These facts establish the inference …. that the Respondent registered the domain name with the Complainant in mind and with the hope of capitalizing on the reputation of the Complainant in some way.”
The Panel therefore finds that the disputed domain name was 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 disputed domain name <bhpbilliton.site> be transferred to the Complainant.
Desmond J. Ryan AM
Date: January 28, 2016