WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
BHP Billiton Innovation Pty Ltd v. Cameron David Jackson
Case No. D2016-0345
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 David Jackson of Kingston, Norfolk Island, Australia.
2. The Domain Name and Registrar
The disputed domain name <bhp-billiton.xyz> (the "Disputed Domain Name") 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 February 22, 2016. On February 22, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On February 22, 2016, 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. The Registrar noted in its response to the Center's request for registrar verification that, prior to commencement of the proceeding, it had received from the Complainant's representative only Annexure 10 to the Complaint but had received neither the Complaint itself nor the other annexures – neither of which is required by the Rules and in any event, the Registrar receives a copy of the Complaint upon formal notification of the Complaint.
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").
On February 24, 2016, in accordance with the Rules, paragraphs 2 and 4, the Center sought to notify the Respondent of the Complaint by both email and courier. While there is no indication that the email containing the Center's notification document together with a copy of the Complaint did not reach the Respondent, the evidence before the Panel shows that the separate email containing annexes 1-9 and 11-14 (to which email and annexes the Center's notification document and the Complaint make reference) may have failed due to the size of the attachments. The case record also indicates that the courier mistakenly attempted delivery of the package including Written Notice of the Complaint at Kingston, a suburb of Canberra in Australia, instead of at Kingston, Norfolk Island, which was the registrar-confirmed destination. That resulted in the package being declared "non-deliverable" by the courier company, and the Respondent not receiving notice of the Complaint by that physical means. On March 16, 2016, the Center notified the Respondent that the Center had not received a Response; there is no indication that such notice did not reach the Respondent.
The Center appointed Philip N. Argy as the sole panelist in this matter on March 22, 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.
As stated by the panel in Darkside Productions Inc. v. Whois Guard Protected, WIPO Case No. D2008-0263,"It is essential to dispute resolution proceedings that fundamental due process requirements be met. Such requirements include that a respondent have notice of proceedings that may substantially affect its rights. The Policy and the Rules establish procedures intended to ensure that respondents are given adequate notice of proceedings commenced against them, and a reasonable opportunity to respond (see, e.g., Rules, paragraph 2(a))."
Against this background, the Panel proceeded to review the case file to ensure that the Respondent had received adequate notice of the Complaint. The Panel noted the above-mentioned delivery error due to the courier company's confusion regarding the location of the "Kingston" in the Respondent's registration particulars. Although there is no indication that the email containing the notification and the Complaint itself was not received by the Respondent, in the circumstances and in the interests of ensuring the utmost procedural fairness to the Respondent, the Panel on April 8, 2016 issued Administrative Panel Procedural Order No. 1 directing re-notification of the Complaint in accordance with paragraph 2 of the Rules so that the Panel could proceed to render its decision being satisfied of complete notification.
Subsequently, the case record indicates that emails of April 11, 2016, giving effect to the Panel's re-notification direction, were correctly addressed to the Respondent in accordance with paragraph 2(a) of the Rules, and that such emails to the Respondent were successfully transmitted. Of all email addresses used, the "email@example.com" address applied under paragraph 2(a)(ii)(B) proved unsuitable for delivery of the first set of annexures.
The Panel was subsequently provided with a courier statement to the effect that on April 21, 2016 the Respondent signed for delivery of a package which included the Written Notice referred to in paragraph 2(a)(i) of the Rules. The Panel was accordingly satisfied that the Respondent had categorically received written notice of the Complaint on April 21, 2016. Having determined in accordance with paragraphs 2(f)(iii), 4(f), 5(a) and 10(b) of the Rules that the proceedings commenced on April 21, 2016, Norfolk Island time, the Panel took such date as the basis for an extension of the Response due date to May 11, 2016.
By Administrative Panel Procedural Order No. 2 issued on May 9, 2016, the due date for a decision was extended accordingly. No Response having been filed by May 11, 2016, and all other administrative requirements having been satisfied, the Panel has proceeded to a determination on the merits.
4. Factual Background
The following facts, taken from the Complaint, remain uncontested.
BHP Billiton Group is the world's largest diversified resources group, employing more than 40,000 people in more than 100 operations in 25 countries. The core of the Group is a dual-listed company comprising BHP Billiton Ltd and BHP Billiton Plc. Those two entities continue to exist as separate companies, but operate as a combined group known as BHP Billiton.
The Complainant is a wholly-owned subsidiary of BHP Billiton Limited, holding some of BHP Billiton's intellectual property. BHP Billiton is often simply referred to as "BHP". It operates a single website that is accessible by numerous domain names including <bhpbilliton.com>, a domain name registered to BHP Limited (which publicly accessible records in evidence before the Panel show to be the former name of BHP Billiton Limited). Also in evidence are a very large number of long standing trademark registrations that comprise or include the words "BHP Billiton". A number of those are in the name of the Complainant and others are in the current or former name of other entities in the Group. In particular, Australian trademark 1,141,449 for BHP BILLITON is registered in the name of the Complainant and covers a wide variety of goods and services within classes 4, 6, 37, 40 and 42 of the Nice Classification.
As at both the date of lodgement of the Complaint and the date that the Panel is writing this determination, the Disputed Domain Name pointed to a parking page. The Disputed Domain Name was brought to the Complainant's attention by the Respondent himself only three days after he registered it on February 16, 2016. However, he demanded $220 "out of pocket expenses" when those expenses were actually only $1, asserting to the Complainant that paying the "expenses" he demanded would be "far simpler" than commencing this proceeding.
5. Parties' Contentions
In relation to the first ground of the Policy the Complainant submits that the Disputed Domain Name is confusingly similar to its extensive portfolio of BHP BILLITON trademarks which, over many years, has become the world's most well-known brand in diversified resources and the mining of such resources. The Complainant submits that the addition of the generic Top-Level Domain ("gTLD") ".xyz" does not affect the assessment that a domain name is confusingly similar to a particular trademark.
In relation to the second ground the Complainant submits that the Respondent has not at any time been commonly known by the Disputed Domain Name. Furthermore, it is not aware of any trademarks in which the Respondent may have rights that are similar to the Disputed Domain Name. And thirdly it submits that the Respondent is not making a legitimate noncommercial or fair use of the Disputed Domain Name.
In relation to the third ground the Complainant notes that BHP Billiton enjoys a worldwide reputation and that its turnover in 2014 was in excess of USD 67.2 billion. It draws the Panel's attention to a number of prior cases in which was held that bad faith registration may be inferred from the registration of a well-known mark. The Panel agrees with that approach. Attention is also drawn to correspondence, adverted to in the factual recitation above, which makes plain that the Respondent registered the Disputed Domain Name primarily for the purpose of selling it to the Complainant for a consideration well in excess of the Respondent's out of pocket expenses. To the extent to which the Respondent's conduct in pointing the Disputed Domain Name to an empty parking website is considered passive holding, the Complainant refers to one of the first cases ever decided under the Policy, namely, Telstra Corp Ltd v. Nuclear Marshmallows, WIPO Case No. D2000-0003. Finally, the Complainant cites the Respondent's conduct in registering a well-known trademark, his anticipated failure to provide evidence of any actual or contemplated good faith use, and the pattern of similar bad faith conduct as found by a number of prior panels and referred to in section 6 below.
The Respondent did not reply to the Complainant's contentions despite having been given every opportunity to do so.
6. Discussion and Findings
As the Complainant bears the onus of proving each element of the Policy, the failure of the Respondent to reply to the Complaint cannot result in an automatic finding in favour of the Complainant. The Panel must make positive findings in favour of the Complainant on each of the grounds of the Policy on which it relies in order for the Complainant to succeed. The three grounds of the Policy which the Complainant must make out on the balance of probabilities are: that the Disputed Domain Name is identical or confusingly similar to a trademark in which it has rights, that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name and that the Disputed Domain Name was registered and is being used in bad faith.
Having considered the Complainant's submissions, the extensive evidence filed in support of those submissions, and the earlier decisions adverse to the Respondent in respect of his registration of domain names embodying the BHP BILLITON trademark, the Panel makes findings as follows:
A. Identical or Confusingly Similar
The Disputed Domain Name comprises the Complainant's registered trademark BHP BILLITON with a hyphen in place of the space and followed by the gTLD ".xyz". It is in all material respects identical to or, at best for the Respondent, confusingly similar to, the BHP BILLITON trademark registered in the name of the Complainant, and the Panel so finds.
B. Rights or Legitimate Interests
In the absence of a Response, and in light of the previous findings against the Respondent in the two recent decisions referred to in section 6C below, it is self-evident that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name. He asserts none, and the Complainant has not authorised him to use its trademark.
The Panel also finds the Complainant's contentions recited in section 5A above to be persuasive and firmly based on the substantial evidence before the Panel.
The Panel comfortably finds that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name.
C. Registered and Used in Bad Faith
As at the date of registration of the Disputed Domain Name, the Respondent had been the subject of very recent adverse decisions in two other proceedings under the Policy, namely, BHP Billiton Innovation Pty Ltd v. Cameron Jackson, WIPO Case No. D2015-1782, in respect of the domain name <bhpbilliton.club>, and BHP Billiton Innovation Pty Ltd v. Cameron Jackson, WIPO Case No. D2015-2214 in respect of the domain name <bhpbilliton.site>. In both cases he was found to have no rights or legitimate interests in the BHP BILLITON trademarks and was in each case found to have registered and to be using the domain names there in issue in bad faith. That context makes it plain beyond doubt that the Respondent's registration of the Disputed Domain Name within days of learning of the second decision was a flagrant taunt to the Complainant – a metaphorical thumbing of his nose in the face of the Complainant after his two losses in the previous proceedings. He is on any objective view a serial cybersquatter. The Respondent's conduct is a complete abuse of the domain name system and, regrettably, an almost inevitable consequence of the release of new gTLDs without adequate protection for trademark owners.
Trademark owners should not have to file defensive registrations to protect their trademarks in every new gTLD that comes on stream. In the Panel's respectful view, ICANN must take stronger action to preclude, without an administrative panel decision in favour of the applicant, registration of any domain name in a new gTLD that is the same as any domain name in any existing gTLD registered to a trademark owner other than that applicant. This proceeding is an example of the total waste of time and money incurred by the Complainant due to the Respondent's unmeritorious and clearly mischievous conduct. If the Panel had the power to do so it would order the Respondent to pay the Complainant's costs on an indemnity basis. The limited administrative remedies available under the Policy are inadequate to deal with serial cybersquatters such as the Respondent. That deficiency represents an ongoing injustice to trademark owners worldwide. The Panel respectfully invites the Complainant to draw to ICANN's attention this decision and the other two decisions in proceedings brought by the Complainant against the Respondent in 2015.
If the Complainant and its affiliates are not to be plagued by the Respondent's registration of further domain names using the BHP Billiton Group's vast array of trademarks, its next step could be to obtain injunctive relief from the Federal Court of Australia to restrain the Respondent from reflecting any of the Complainant's trademarks in a domain name anywhere in the world. In the Panel's view there is more than ample evidence to support such an order.
For all of the reasons given by the Complainant and recited in section 5A above the Panel finds that direction of the Disputed Domain Name to a parking page constitutes use of the Disputed Domain Name in bad faith within the meaning of the Policy.
Limited though the Panel's remedial powers may be, it can and has no hesitation in finding formally that the Respondent registered and is using the Disputed Domain Name 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 <bhp-billiton.xyz> be transferred to the Complainant.
Philip N. Argy
Date: June 10, 2016