WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
BHP Billiton Innovation Pty Ltd v. Coyaw
Case No. D2017-1746
1. The Parties
Complainant is BHP Billiton Innovation Pty Ltd of Melbourne, Victoria, Australia, represented by Griffith Hack, Melbourne, Victoria, Australia.
Respondent is Coyaw of Santiago, Chile.
2. The Domain Name and Registrar
The disputed domain name <bhpbillitonmail.com> (the "Disputed Domain Name") 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 September 12, 2017. On September 12, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On September 13, 2017, 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 September 18, 2017. In accordance with the Rules, paragraph 5, the due date for Response was October 8, 2017. The Respondent did not submit any response. Accordingly, the Center notified Respondent's default on October 10, 2017.
The Center appointed Douglas M. Isenberg as the sole panelist in this matter on October 20, 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
Complainant states that it is "the world's largest diversified resources group, employing more than 40,000 people in more than 100 operations in 25 countries"; that its "market capitalization as at 30 June 2015 was US$108 billion with revenue from continuing operations as US$44.6 billion"; and that it "controls numerous domain names containing the trade mark BHP BILLITON, including bhpbilliton.com, bhpbilliton.net, bhpbilliton.info, bhpbilliton.org, bhpbilliton.mobi and bhpbilliton.biz."
Complainant states, and provides evidence to support, that is "the owner of numerous trade mark registrations for the trade mark BHP BILLITON around the world," including the following:
- Australia Trademark Reg. No. 1,141,449 for BHP BILLITON (priority date October 18, 2006 and registered on August 18, 2008) for use in connection with inter alia, "industrial oils."
- United States of America Trademark Reg. No. 3,703,871 for BHP BILLITON (registered November 3, 2009) for use in connection with, inter alia, "industrial oils."
These trademarks are referred to respectively herein as the "BHP BILLITON Trademark."
The Disputed Domain Name was registered on September 6, 2017, and "Complainant is concerned that the Respondent intends to use the disputed domain name as a vehicle for fraudulent activities, such as sending fraudulent employment offers." In connection therewith, Complainant states that it "first became aware of the disputed domain name when it received an enquiry from a person who had received a fraudulent employment offer from the email address […]@bhpbillitonmail.com." Evidence of this enquiry was provided with the Complaint.
5. Parties' Contentions
Complainant contends, in relevant part, as follows:
- The Disputed Domain Name is confusingly similar to the BHP BILLITON Trademark because, inter alia, "consumers, upon viewing the disputed domain name, are highly likely to expect an association with BHP Billiton, especially in light of the similarity of the domain name with the BHP BILLITON trade mark"; and "[t]he inclusion of the descriptive term MAIL does not distinguish the domain name from the BHP BILLITON trade mark."
- Respondent has no rights or legitimate interests in respect of the Disputed Domain Name because, inter alia, "Respondent has not at any time been commonly known by the disputed domain name"; Complainant "is not aware of any trade marks in which the Respondent may have rights that are identical or similar to the disputed domain name"; and "Respondent is not making legitimate noncommercial or fair use of the disputed domain name."
- The Disputed Domain Name was registered and is being used in bad faith because, inter alia, "it may be inferred from the Respondent's registration of a domain name that is confusingly similar to BHP Billiton's well-known BHP BILLITON trade mark that the disputed domain name was registered in bad faith"; "Complainant first became aware of the disputed domain name when it received an enquiry from a person who had received a fraudulent employment offer from the email address […]@bhpbillitonmail.com"; "Complainant is concerned that the Respondent intends to use the disputed domain name as a vehicle for fraudulent activities, such as sending fraudulent employment offers"; the "passive use doctrine" applies given "the Respondent's conduct in registering a well-known trade mark and the Respondent's anticipated failure to provide evidence of any actual or contemplated good faith use."
Respondent did not reply to Complainant's contentions.
6. Discussion and Findings
Pursuant to the Policy, Complainant is required to prove the presence of each of the following three elements to obtain the relief it has requested: (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. Policy, paragraph 4(a).
A. Identical or Confusingly Similar
Based upon the trademark registrations cited by Complainant, it is apparent that Complainant has rights in and to the BHP BILLITON Trademark.
As to whether the Disputed Domain Name is identical or confusingly similar to the BHP BILLITON Trademark, the relevant comparison to be made is with the second-level portion of the Disputed Domain Name only (i.e., "bhpbillitonmail") because "[t]he applicable Top Level Domain ('TLD') in a domain name (e.g., '.com', '.club', '.nyc') is viewed as a standard registration requirement and as such is disregarded under the first element confusing similarity test." WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0"), section 1.11.1.
Here, the Disputed Domain Name contains either the BHP BILLITON Trademark in its entirety (absent the space that appears in the trademark, which cannot be reproduced in a domain name and is therefore irrelevant) plus the word "mail." As stated in WIPO Overview 3.0, section 1.7, "in cases where a domain name incorporates the entirety of a trademark, or where at least a dominant feature of the relevant mark is recognizable in the domain name, the domain name will normally be considered confusingly similar to that mark for purposes of UDRP standing." Further, previous panels have found that a domain name containing a complainant's trademark plus the word "mail" is confusingly similar to the trademark. See, e.g., Accor v. Domains By Proxy / David West, WIPO Case No. D2017-1409 ("[t]he disputed domain name comprises the Complainant's trademark ACCOR combined with the generic term 'mail', which does not eliminate the confusing similarity with the trademark ACCOR"); and Wingstop Restaurants Inc. v. Domains By Proxy, LLC / Johnson Millner / Matthew Alvarez, WIPO Case No. D2016-1004 ("[t]he addition of the descriptive term 'mail'[…] does not distinguish the disputed domain name [ ] from Complainant's WINGSTOP mark").
Accordingly, the Panel finds that Complainant has proven the first element of the Policy.
B. Rights or Legitimate Interests
Complainant has argued that Respondent has no rights or legitimate interests in respect of the Disputed Domain Names because, inter alia, "Respondent has not at any time been commonly known by the disputed domain name"; Complainant "is not aware of any trade marks in which the Respondent may have rights that are identical or similar to the disputed domain name"; and "Respondent is not making legitimate noncommercial or fair use of the disputed domain name."
WIPO Overview 3.0, section 2.1, states: "While the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the often impossible task of 'proving a negative', requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element."
The Panel finds that Complainant has established its prima facie case and without any evidence from Respondent to the contrary, the Panel is satisfied that Complainant has satisfied the second element of the Policy.
C. Registered and Used in Bad Faith
Whether a domain name is registered and used in bad faith for purposes of the Policy may be determined by evaluating four (non-exhaustive) factors set forth in the Policy: (i) circumstances indicating that the registrant has registered or the registrant has acquired the 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 or service mark or to a competitor of that complainant, for valuable consideration in excess of the registrant's documented out-of-pocket costs directly related to the domain name; or (ii) the registrant has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the registrant has engaged in a pattern of such conduct; or (iii) the registrant has registered the domain name primarily for the purpose of disrupting the business of a competitor; or (iv) by using the domain name, the registrant has intentionally attempted to attract, for commercial gain, Internet users to the registrant's website or other online location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of the registrant's website or location or of a product or service on the registrant's website or location. Policy, paragraph 4(b).
Although Complainant does not allege which, if any, of the above factors establishes bad faith here, "the scenarios enumerated in UDRP paragraph 4(b) are non-exhaustive." WIPO Overview 3.0, section 3.1.3. Complainant has alleged that bad faith exists under the "passive holding" doctrine, which panels routinely have found can establish bad faith. Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003.
"While panelists will look at the totality of the circumstances in each case, factors that have been considered relevant in applying the passive holding doctrine include: (i) the degree of distinctiveness or reputation of the complainant's mark, (ii) the failure of the respondent to submit a response or to provide any evidence of actual or contemplated good-faith use, (iii) the respondent's concealing its identity or use of false contact details (noted to be in breach of its registration agreement), and (iv) the implausibility of any good faith use to which the domain name may be put." WIPO Overview 3.0, section 3.3. Here, given the apparently widespread reputation that Complainant enjoys in the BHP BILLITON Trademark and Respondent's failure to submit a response or to provide any evidence of actual or contemplated good-faith use, application of the passive holding doctrine is appropriate, as previous panels have concluded under similar circumstances also involving the BHP BILLITON Trademark. See, e.g., BHP Billiton Innovation Pty Ltd v. Amy Stafford, WIPO Case No. D2017-0130; and BHP Billiton Innovation Pty Ltd v. Domains By Proxy LLC / Douglass Johnson, WIPO Case No. D2016-0364.
The last case cited in the preceding paragraph is especially applicable here, as the panel there said: "The findings above would be sufficient for the Panel to find bad faith use and registration, but the Panel further concludes that the use of an email address associated with the disputed domain name, to send a phishing email for the purposes of dishonest activity is in itself evidence that the disputed domain name was registered and is being used in bad faith." This Panel agrees.
Accordingly, the Panel finds that Complainant has proven the third element of the Policy.
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 <bhpbillitonmail.com> be transferred to the Complainant.
Douglas M. Isenberg
Date: November 2, 2017