WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
BHP Billiton Innovation Pty Ltd. v. Jafam
Case No. D2018-0362
1. The Parties
The Complainant is BHP Billiton Innovation Pty Ltd. of Melbourne, Australia, represented by Griffith Hack Patent and Trade Mark Attorneys, Australia.
The Respondent is Jafam of Bar Sur, Aube, France.
2. The Domain Name and Registrar
The disputed domain name <usbhpbillitonusa.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 February 19, 2018. On February 19, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 20, 2018, 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 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 the Respondent of the Complaint, and the proceedings commenced on March 1, 2018. In accordance with the Rules, paragraph 5, the due date for Response was March 21, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 22, 2018.
The Center appointed C. K. Kwong as the sole panelist in this matter on April 3, 2018. 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 the owner of numerous trademarks consisting of or comprising the words BHP BILLITON. These registrations include the following trademark registrations:
(a) Australian Trademark Registration No. 1141449 for the mark BHP BILLITON in respect of certain goods and services under Classes 4, 6, 37, 40 and 42 and registered as of August 18, 2008;
(b) International Trademark Registration No. 986799 for the mark BHP BILLITON in respect of certain goods and services under Classes 4, 6, 37, 40 and 42 and registered as of November 16, 2006;
(c) United States of America (“United States”) Trademark Registration No. 3703871 for the mark BHP BILLITON in respect of certain goods and services under Classes 4, 6, 37, 40 and 42 and registered as of November 3, 2009.
The disputed domain name <usbhpbillitonusa.com> was registered on January 25, 2018.
Other than the particulars shown on the printout of the database search conducted by the Complainant in the WhoIs database (Annex 1 to the Complaint), there is no other evidence in the case file concerning the background of the Respondent and its business.
The disputed domain name resolves to an inactive website.
5. Parties’ Contentions
The Complainant has made the following contentions:
1. The Complainant is a wholly owned subsidiary of BHP Billiton Limited. BHP Billiton is listed on the Australian Securities Exchange. Its parallel company, BHP Billiton Plc is traded on the London Stock Exchange. These two entities operate as a combined group known as BHP Billiton.
2. BHP Billiton Group is one of the world’s largest diversified resources group, employing more 40,000 people in more than 100 operations in 25 countries.
3. BHP Billiton operates a website that is accessible via various domain names including <bhpbilliton.com>.
4. BHP Billiton is the owner of the numerous trademark registrations including those as set out in Section 4 above.
5. The disputed domain name does not resolve to an active website.
6. The Complainant became aware of the disputed domain name upon being notified that it was being used as a vehicle for employment fraud. Employment opportunities were offered in employment advertisements or in email communication inviting the applicant to respond to the email address “[…]@usbhpbillitonusa.com”. Once the applicant engages with the advertiser or email sender, further emails are sent which ultimately invite the applicant to make a payment.
7. The disputed domain name is confusingly similar to the BHP BILLITON trademark which is well-known. The additions “us” and “usa” are non-distinctive geographical identifiers.
8. The Respondent does not have any right or legitimate interest in the disputed domain name. The Respondent has not at any time been commonly known by the disputed domain name. It does not have rights in trademarks which are identical with or similar to the disputed domain name.
9. The Respondent is not making legitimate noncommercial or fair use of the disputed domain name.
10. The Respondent’s use of the disputed domain name to engage in recruitment fraud is evidence of bad faith registration and use.
11. To the extent that the Respondent’s conduct is considered “passive use”, it is in the present context, evidence of bad faith use.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
6.1 Notice of Proceedings
The contact particulars of the Respondent and the disputed domain name were fully set out in the WhoIs search results provided in Annex 1 to the Complaint. Such contact details also match those provided by the Registrar to the Center on February 20, 2018.
On March 1, 2018, the Center forwarded the Notification of Complaint and Commencement of Administrative Proceeding and the Written Notice to the Respondent in accordance with the contact details above by email and courier.
The Panel finds that the Complainant and the Center have duly communicated with the Respondent using the contact information which the Respondent has chosen to provide to the Registrar as reflected in the above contact details, their respective obligations of such communication have been discharged and the Respondent is bound accordingly.
The Panel is satisfied that the Center has discharged its responsibility under paragraph 2(a) of the Rules to employ reasonably available means calculated to achieve actual notice to the Respondent of the Complaint and that the failure of the Respondent to furnish a reply is not due to any omission or inadequate communication by the Center.
6.2 The Three Elements
In rendering its decision, the Panel must adjudicate the dispute in accordance with paragraph 15(a) of the Rules which provides that “[the] Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.” Paragraph 14(b) of the Rules further provides that, “if a Party, in the absence of exceptional circumstances, does not comply with any provisions of, or requirement under these Rules or any requests from the Panel, the Panel shall draw such inferences therefrom as it considers appropriate.” Paragraph 5(f) of the Rules further provides that, “[i]f a Respondent does not submit a response, in the absence of exceptional circumstances, the Panel shall decide the dispute based upon the complaint.”
The failure of the Respondent to respond does not automatically result in a favourable decision to the Complainant, which is specifically required under paragraph 4(a) of the Policy to establish each of the three elements as provided therein. See The Vanguard Group, Inc. v. Lorna Kang, WIPO Case No. D2002-1064 and Berlitz Investment Corp. v. Stefan Tinculescu, WIPO Case No. D2003-0465.
The said three elements are considered below.
A. Identical or Confusingly Similar
On the evidence available, the Panel has no hesitation in finding that the Complainant has rights in the trademark BHP BILLITON by reason of its trademark registrations as recited in Section 4 above.
Furthermore, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s trademark BHP BILLITON.
The disputed domain name <usbhpbillitonusa.com> embodies the Complainant’s trademark in its entirety. The mere addition of the two letters “us” as a prefix and the three letters “usa” as a suffix, both of them being an abbreviation for United States or United States of America, to the trademark BHP BILLITON are not sufficient to distinguish the disputed domain name from the Complainant’s trademark. See Dell Computer Corporation v. MTO C.A. and Diabetes Education Long Life, WIPO Case No. D2002-0363 and Playboy Enterprises International, Inc. v. ZeynelDemirtas, WIPO Case No. D2007-0768.
It is also well established practice to disregard the generic Top-Level Domain (“gTLD”) part of a domain name, such as “.com”, when assessing whether a domain name is identical or confusingly similar to the mark in issue. Société Anonyme des Eaux Minerales d’Evian and Societe des Eaux de Volvic v. Beroca Holdings B.V.I. Limited, WIPO Case No. D2008-0416.
After removing the said prefix “us” and suffix “usa” from the disputed domain name and the gTLD, only the mark BHP BILLITON is left in its entirety. The disputed domain name and the Complainant’s trademark are identical or substantially identical.
Accordingly, the Panel finds that the first element of paragraph 4(a) of the Policy is established.
B. Rights or Legitimate Interests
The Complainant needs to establish a prima facie case showing that the Respondent has no rights or legitimate interests in respect of the disputed domain name. See Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455. Once such prima facie case is made, the burden will shift to the Respondent to produce evidence demonstrating that it has rights or legitimate interests in the disputed domain name.
In the present case, the Complainant has asserted registration and use of the registered trademark BHP BILLITON well before the Respondent’s registration of the disputed domain name <usbhpbillitonusa.com> on January 25, 2018.
There is no explanation on the record as to why it was necessary for the Respondent to adopt the word “bhpbilliton” in its domain name.
There is no evidence before the Panel to suggest that the Respondent is commonly known as “usbhpbillitonusa.com”.
There is also no evidence available to demonstrate any legitimate noncommercial or fair use of the disputed domain name by the Respondent. On the contrary, the Respondent’s use of the disputed domain name in connection with a fraudulent email scheme is consistent with an absence of any rights or legitimate interests in the disputed domain name.
The Panel is satisfied that the Respondent has no rights or legitimate interests in the disputed domain name.
C. Registered and Used in Bad Faith
Given the Complainant’s serious allegations of employment fraud using the email address embodying the disputed domain name as well as registration of its said BHP BILLITON trademark and the use of that mark for many years long before the registration of the disputed domain name in 2018, there is a strong case for the Respondent to come forward to defend itself. Unfortunately, the Respondent has not come forward with any defence on its choice of embodying the trademark BHP BILLITON in its entirety as part of the disputed domain name <usbhpbillitonusa.com>.
The choice of the unique trademark BHP BILLITON in its entirety as part of the disputed domain name with the additions of the prefix “us” and suffix “usa” aforesaid without any explanation, the prior extensive use and the registration of the Complainant’s mark worldwide as well as the use of the mark as the corporate name of the Complainant’s holding or parent companies on the Australian and London Stock Exchanges supports the conclusion that the Respondent must be aware of the existence of the Complainant and its trademark BHP BILLITON at the time of the registration and use of the disputed domain name. It cannot be a mere coincidence. The said prefix and suffix, both being abbreviation for United States, also serve to suggest and give recipients of emails like the one shown in annex 9 to the Complaint, the impression that the operator of the website to which the disputed domain name resolves (if any) and the email address using such domain name, as a connection with the United States where the user of the email address operates or the purported job opportunities relate.
The Panel notes that the disputed domain name resolves to an inactive website. The consensus view of previous UDRP panels is that passive holding in itself does not preclude a finding of bad faith.
Based on the available record, the Panel cannot conceive of any use by the Respondent of the disputed domain name that would not be a bad faith use. Some degree of deception or confusion would seem to be inevitable in any use by the Respondent of the disputed domain name. The use of the terms “bhp” and “billiton” in the disputed domain name is likely to create confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of the Respondent’s website or of a product or service offered on the websites or online locations where the disputed domain name leads to. In fact, the disputed domain name has been so used in connection with a fraudulent email scheme to solicit job applications from unsuspecting Internet users.
The Panel finds that the disputed domain name has been registered and used in bad faith under paragraph 4(a)(iii) 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 <usbhpbillitonusa.com> be transferred to the Complainant.
C. K. Kwong
Date: April 17, 2018