WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
BHP Billiton Innovation Pty Ltd v. George William
Case No. D2016-2562
1. The Parties
1.1 The Complainant is BHP Billiton Innovation Pty Ltd of Melbourne, Australia, represented by Griffith Hack Patent and Trade Mark Attorneys, Australia (the “Complainant”).
1.2. The Respondent is George William of Piotrkow Trybunalski, Poland (the “Respondent”).
2. The Domain Name and Registrar
2.1 The disputed domain name <usbhpbilliton.com> (the “Disputed Domain Name”) is registered with PDR Ltd. d/b/a PublicDomainRegistry.com (the “Registrar”).
3. Procedural History
3.1 The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 18, 2016. On December 19, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On December 20, 2016, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the Respondent’s contact details.
3.2 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”).
3.3 In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on December 22, 2016. In accordance with the Rules, paragraph 5, the due date for Response was January 11, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 13, 2017.
3.4 The Center appointed Ike Ehiribe as the sole panelist in this matter on January 24, 2017. 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
4.1 The Complainant in this administrative proceeding is BHP Billiton Innovation Pty Ltd, a company incorporated in Australia. The Complainant is one of the world’s largest diversified resources group employing more than 40,000 people in more than 100 operations in 25 countries. The Complainant is said to have a market capitalization of USD 108 billion with revenue from continuing operations at USD 44.6 billion as at June 30, 2015. The core of the group is said to be a dual listed company comprising of BHP Billiton Limited and BHP Billiton Plc. The Complainant is a wholly owned subsidiary of BHP Billiton Limited, holding some of BHP Billiton’s intellectual property. The Complainant has its headquarters in Melbourne, with major offices in London and supporting offices around the world. The Complainant is said to own a website that is accessible via various domain names including <bhpbilliton.com>. The Complainant is said to control numerous domain names containing the trademark BHP BILLITON, including <bhpbilliton.com>, <bhpbilliton.net>, <bhpbilliton.info>, <bhpbilliton.org>, <bhpbilliton.mobi>, and <bhpbilliton.biz>. The Complainant is also said to be the owner of numerous trademark registrations for the trademark BHP BILLITON in jurisdictions such as Australia, New Zealand, the United Kingdom of Great Britain and Northern Ireland (“UK”), the European Union, the United States of America (“USA”) and Canada, as listed under paragraph 5.1, below
4.2 The Respondent is a certain Mr. George William. The Respondent is recorded as having created the Disputed Domain Name <usbhpbilliton.com> on December 12, 2016, and there is no active website to which the Disputed Domain Name resolves.
5. Parties’ Contentions
5.1 The Complainant has further adduced evidence to show that it owns the following trademark registrations for the trademark BHP BILLITON in the jurisdictions below as follows:
1) Australia Trademark Registration No. 1141449 in classes 4, 6, 37, 40, and 42 (August 18, 2008);
2) New Zealand Trademark Registration No. 764470 in classes 4, 6, 37, 40, and 42 (June 12, 2008);
3) UK Trademark Registration No. 2264607 in classes 1, 2, 4, 6, 7, 8, 9, 11, 14, 16, 17, 19, 21, 25, 35, 36, 37, 38, 39, 40, 41, and 42 (August 30, 2002);
4) European Union Trademark Registration No. 0986799 in classes 4, 6, 37, 40 and 42 (November 16, 2006);
5) USA Trademark Registration No. 3703871 in classes 4, 6, 37, 40 and 42 (November 3, 2009);
6) Canada Trademark Registration No. TMA794995 for Wares and Services the equivalent of classes 4, 6, 37, 40, 41, 42, and 45 (April 7, 2011).
5.2 The Complainant states that it became aware of the Disputed Domain Name upon being notified by a potential victim of the Respondent who may have been affected by what the Complainant suspects is an elaborate recruitment fraud. The Complainant describes the recruitment fraud as consisting of a scheme whereby employment opportunities are offered in employment advertisements or in email communications inviting applicants to respond and once an applicant engages with the advertiser further emails are sent which invite an applicant to make a payment. The Complainant relies on an email received from such a potential victim on December 16, 2016 and annexed to the Complaint, seeking confirmation as to whether there was a real job opening as allegedly advertised by the Respondent. The Complainant however observes that the Disputed Domain Name did not resolve to an active website as at the date of the Complaint.
5.3 The Complainant therefore contends that the Disputed Domain Name <usbhpbilliton.com> is confusingly similar to the Complainant’s extensive portfolio of BHP BILLITON trademarks. It is further submitted that considering that the Complainant’s BHP BILLITON trademark has become the world’s most well-known brand in diversified resources and the mining of such resources, consumers upon viewing the Respondent’s Disputed Domain Name are likely to assume an association with the Complainant’s BHP BILLITON trademark, in light of the similarity of the Disputed Domain Name with the Complainant’s trademarks. The Complainant also contends that the addition of the non-distinctive term “us” and the generic Top-Level Domain (“gTLD”) “.com” to the Disputed Domain Name does not prevent a confusing similarity.
5.4 The Complainant submits that the Respondent has no rights or legitimate interests in the Disputed Domain Name since the Respondent has never been commonly known by the Disputed Domain Name and neither does the Complainant know of any trademarks in which the Respondent has rights that may be identical or similar to the Disputed Domain Name. The Complainant further submits that the Respondent is not making a legitimate noncommercial or fair use of the Disputed Domain Name.
5.5 On the question of bad faith use the Complainant refers to two previous decisions in Zwack Unicum Rt. v. Erica J. Duna, WIPO Case No. D2000-0037 and The Nasdaq Stock Market, Inc. v. NSDAQ.COM, NASDQ.COM and NASAQ.COM, WIPO Case No. D2001-1492 to assert that bad faith registration may be inferred from the registration of a well–known trademark. Secondly, it is argued that the fact that the Respondent is using the Disputed Domain Name to engage in what the Complainant describes as an elaborate attempt at recruitment fraud is further evidence of bad faith registration and bad faith use of the Disputed Domain Name. Thirdly, it is submitted that as the Respondent has intentionally attempted to attract Internet users to an online location by creating a likelihood of confusion with the Complainant’s BHP BILLITON trademark as to source, sponsorship affiliation or endorsement of the Respondent’s website this is further evidence of bad faith registration and use.
5.7 The Respondent did not reply to the Complainant’s contentions. Therefore, in accordance with paragraphs 14(a) and (b) of the Rules, the Panel shall draw such inferences as it considers appropriate from the Respondent’s failure to reply to the Complainant’s contentions.
6. Discussion and Findings
6.1 Under paragraph 4(a) of the Policy, to succeed in this proceeding the Complainant must prove that: (i) the Disputed Domain Name is identical or confusingly similar to the trademark or service mark in which the Complainant has rights; (ii) the Respondent has no rights or legitimate interest in respect of the Disputed Domain Name; and (iii) the Disputed Domain Name has been registered and is being used in bad faith.
6.2 As expressly stated in the Policy, the Complainant must establish each of these three elements to succeed under the Policy.
A. Identical or Confusingly Similar
6.3 Clearly the Complainant is the owner of numerous registered trademarks as is shown in the documents annexed to the Complaint. The Panel finds without any hesitation that the Disputed Domain Name <usbhpbilliton.com> is confusingly similar to the Complainant’s well-known BHP BILLITON trademarks and domain names. The Disputed Domain Name wholly incorporates the Complainant’s trademark and the mere addition of the term “us” and the gTLD “.com” does absolutely nothing to prevent a finding of confusing similarity. The Panel in this regard relies on Bayerische Motoren Werke AG v. bmwcar.com, WIPO Case No. D2002-0615, which postulates that it is sufficient to establish the requirement of confusing similarity under the Policy where a disputed domain name wholly incorporates a complainant’s trademark.
6.4 The Panel therefore finds that the Complainant has established that the Disputed Domain Name is confusingly similar or identical to the Complainant’s trademark.
B. Rights or Legitimate Interests
6.5 The Panel equally finds that the Respondent has failed to provide any evidence to establish that it has any rights or legitimate interests in the Disputed Domain Name within the ambit of paragraph 4(c) of the Policy. As the Complainant contends, the Respondent has never been commonly known by the Disputed Domain Name and is not making a legitimate noncommercial or fair use of the Disputed Domain Name. As held in previous UDRP decisions the burden of production lies on the Respondent to establish the existence of any rights or legitimate interests in the Disputed Domain Name where a prima facie case has been established by the Complainant. See Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455. Considering the activity, with which the Respondent and the Disputed Domain Name has been involved — namely, suspected fraudulent recruitment schemes — such conduct or activity cannot be described as a bona fide offering of goods and services or a legitimate noncommercial or fair use of the Disputed Domain Name as postulated in the decision in Oki Data Americas Inc. v. ASD, Inc., WIPO Case No. D2001-0903.
6.6 In the circumstances the Panel is satisfied that the Complainant has established that the Respondent does not possess any rights or legitimate interests in the Disputed Domain Name as stipulated in paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
6.7 Turning to the question of bad faith registration and use, the Panel finds that the Respondent undoubtedly registered the Disputed Domain Name in bad faith and has continued to engage in bad faith use. Without any doubt, it is clear that the Respondent must have known of the worldwide reputation of the Complainant’s trademarks before electing to create the Disputed Domain Name as recently as December 2016. The Complainant in this regard relies on two previous UDRP decisions, namely Zwack Unicum Rt. v. Erica J.Duna, supra and The Nasdaq Stock Market, Inc. v. NSDAQ.COM, NASDQ.COM and NASAQ.COM,supra, to assert that bad faith registration can be inferred from the registration of a well-known trademark. Secondly, the Respondent has used the Disputed Domain Name to engage in what the Complainant alleged to be an elaborate attempt at recruitment fraud is further evidence of bad faith registration and use of the Disputed Domain Name. Thirdly, the Complainant contends that the Respondent has intentionally attempted to attract Internet users to an online location by creating a likelihood of confusion with the Complainant’s trademark as to source, sponsorship, affiliation or endorsement by using the Disputed Domain Name. For instance as explained above the Respondent is using the Disputed Domain Name to lure unsuspecting job seekers in what the Complainant suspects is a desire to commit fraud. Accordingly, the Panel finds such activity to be further evidence of bad faith use. Fourthly, as indicated in paragraph 5.7 above, the Panel has drawn adverse inferences from the failure of the Respondent to respond to the contentions of the Complainant in this proceeding.
6.8 The Panel is therefore equally satisfied that the Respondent registered the Disputed Domain Name in bad faith and continued to engage in bad faith use.
7.1 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 <usbhpbilliton.com> be transferred to the Complainant forthwith.
Date: February 6, 2017