WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
BHP Billiton Innovation Pty Ltd v. Victor
Case No. D2016-2443
1. The Parties
Complainant is BHP Billiton Innovation Pty Ltd of Melbourne, Victoria, Australia, represented by Griffith Hack Patent and Trade Mark Attorneys, Australia.
Respondent is Victor of Buena Park, California, United States of America (“United States”).
2. The Domain Name and Registrar
The disputed domain name <bhpbillitonus.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 December 2, 2016. On the same day, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 3, 2016, 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 and 4, the Center formally notified Respondent of the Complaint, and the proceedings commenced on December 14, 2016. In accordance with the Rules, paragraph 5, the due date for Response was January 3, 2017. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on January 4, 2017.
The Center appointed Bernhard Meyer as the sole panelist in this matter on January 12, 2017. The Panel finds that it was properly constituted. The Panel 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, BHP Billiton Innovation Pty Ltd, is a subsidiary of BHP Billiton Ltd, and a core part of the listed company BHP Billiton, seated in Melbourne, Australia. BHP Billiton was created on June 29, 2001 following the DLC merger of BHP Ltd (now BHP Billiton Ltd) and Billiton Plc (now BHP Billiton Plc) and today constitutes one of the world’s largest diversified resources companies.
The trademark BHP BILLITON is registered in a list of countries, including Australia, New Zealand, the European Union, the United States, and Canada. Complainant is the owner of these registrations.
The BHP Billiton group and its affiliates, according to the WhoIs database, are registrants of the following domain names: <bhpbilliton.com>, <bhpbilliton.net>, <bhpbillton.info>, <bhpbilliton.org>, <bhpbilliton.mobi> and <bhpbilliton.biz>, all of which were registered between 2001 and 2006.
The disputed domain name was registered on November 15, 2016 and resolves to a website with the following text: “This Account has been suspended. Contact your hosting provider for more information.”
5. Parties’ Contentions
Complainant contends that the disputed domain name <bhpbillitonus.com> is confusingly similar to its holding company’s trademark BHP BILLITON. Complainant contends that, moreover, Respondent has no rights or legitimate interests in the use of the disputed domain name and that Respondent has registered and is using the respective domain name in bad faith.
Specifically, Complainant claims that the formative “us”, added to its trademark in the disputed domain name, is a non-distinctive feature. Having no connection to Complainant, Respondent created a likelihood of confusion between Complainant’s trademark and its domain name in order to divert potential victims to Respondent’s website, which serves as an “elaborate recruitment fraud”. Due to the confusing similarity of the domain name and the trademark, potential victims may mistakenly assume that the offered job services are made in the name of Complainant. Complainant asserts that Respondent attempted to attain financial gains through its fraudulent behavior.
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
Under paragraph 4(a) of the Policy, Complainant, not withstanding Respondent’s default, must establish that:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; that
(ii) Respondent has no rights or legitimate interest with respect to the domain name; and that
(iii) the domain name was registered and has been used in bad faith.
The Panel reviews these elements in the following.
A. Identical or Confusingly Similar
The disputed domain name <bhpbillitonus.com> contains the trademark BHP BILLITON in its entirety. Consistent with previous panel findings, the Panel holds that a generic or geographic term, like “us”, which is added to an otherwise distinctive trademark, does not suffice to prevent a domain name from being confusingly similar to that trademark. See Allianz, Compañía de Seguros y Reaseguros S.A. v. John Michael, WIPO Case No. D2009-0942.
Thus, the Panel finds that the Complaint satisfies the requirements of paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
Complainant asserts that Respondent lacks rights or legitimate interests in the use of the disputed domain name. Complainant further alleges that Respondent engaged in fraudulent behavior, and Respondent decided to remain silent vis-à-vis these accusations.
The consensus view of panels with regard to cases where respondents are in default is that the burden of proof, originally with the complainant, shifts to the respondents. See for instance Belupo d.d. v. WACHEM d.o.o., WIPO Case No. D2004-0110. Given Complainant’s denial of any connection with Respondent and the lack of any rights or legitimate interest of Respondent to use Complainant’s intellectual property, given further the absence of any evidence in favor of Respondent, the Panel finds that the conditions under paragraph 4(a)(ii) of the Policy are fulfilled.
C. Registered and Used in Bad Faith
A complainant in a proceeding must support its assertions with evidence. In cases where supporting evidence is not available or accessible, the consensus view is that the asserting party needs to establish that it is more likely than not that the claimed facts are true. See Madonna Ciccone, p/k/a Madonna v. Dan Parisi and “Madonna.com”, WIPO Case No. D2000-0847.
Solid proof of a fraud has not been submitted to the Panel. However, Complainant forwarded to the Panel an email writing from an individual, requesting verification of Respondent’s identity and asking if Respondent’s job offer was genuine. The document, available to the Panel, and specifically the time sequence of the registration of the disputed domain name (November 15, 2016), the email request for clarification (dated December 2, 2016) and the immediate action by Complainant (on December 2, 2016) without any follow-up reaction by Respondent, support Complainant’s allegations of Respondent’s acting in bad faith. That an Internet user requested information from Complainant regarding Respondent’s identity cannot be understood otherwise than that Respondent created a confusion between its domain name and the well-known trademark BHP BILLITON. Due to the trademark’s wide recognition, Respondent must also have been aware that Internet traffic is diverted to its website following registration of the domain name. Again, in light of the silence of Respondent in this proceeding, it is hard to conclude otherwise than that Respondent intentionally attempted to attract Internet users to its website, by creating a likelihood of confusion with the trademark BHP BILLITON.
Under the Policy and according to the longstanding practice of UDRP panels, these circumstances indicate bad faith in registration and in the use of a domain name. See Ladbroke Group Plc v. Sonoma International LDC, WIPO Case No. D2002-0131; F. Hoffmann-La Roche AG v. PrivacyProtect.org, Domain Admin and Mark Sergijenko, WIPO Case No. D2007-1854.
Thus, the Panel concludes, that the disputed domain name was registered and used in bad faith. Accordingly, the prerequisites of paragraph 4(a)(iii) of the Policy 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 <bhpbillitonus.com> be transferred to Complainant.
Date: January 24, 2017