WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
BHP Billiton Innovation Pty Ltd v. Hudo Designs
Case No. D2018-0513
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 Hudo Designs of Lagos, Nigeria.
2. The Domain Names and Registrar
The disputed domain names <bhpbillintonpetroleum.com> and <bhpbilliton-career.com> (the “Disputed Domain Names”) are 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 March 7, 2018. On March 7, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Names. On March 8, 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.
In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on March 13, 2018. In accordance with the Rules, paragraph 5, the due date for Response was April 2, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 3, 2018.
The Center appointed Anders Janson as the sole panelist in this matter on April 12, 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 asserted, and provided evidence in support of, the following facts, which the Panel finds established.
BHP Billiton Group (the “Group”) 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 Group’s headquarter is located in Melbourne with major offices in London and supporting offices around the world.
The core of the Group is a dual listed company comprising BHP Billiton Limited and BHP Billiton Plc. The two entities continue to exist as separate companies, but operate as a combined group known as “BHP Billiton”. BHP Billiton was created through the DLC merger of BHP Limited (now BHP Billiton Limited) and Billiton Plc (now BHP Billiton Plc), which was concluded on June 29, 2001. The Complainant, BHP Billiton Innovation is a wholly owned subsidiary of BHP Billiton Limited, holding some of BHP Billiton’s intellectual property.
BHP Billiton operates a website that is accessible via various domain names including <bhpbilliton.com>. BHP Billiton controls numerous domain names containing the trademark BHP BILLITON, including <bhpbilliton.com>, <bhpbilliton.net>, <bhpbilliton.info>, <bhpbilliton.org>, <bhpbilliton.mobi> and <bhpbilliton.biz>.
BHP Billiton is the owner of numerous trademark registrations for the trademark BHP BILLITON around the world. For instance BHP Billiton has trademark registrations in Australia (trademark no. 1141449, registered on October 18, 2006), New Zealand (trademark no. 764470, registered on June 18, 2008), the United Kingdom of Great Britain and Northern Ireland (trademark no. UK00002264607, registered on August 30, 2002), the United States of America (“USA”) (trademark no. 3703871, registered on November 3, 2009) and Canada (trademark no. TMA794995, registered on April 7, 2011).
The Respondent registered the Disputed Domain Names <bhpbillintonpetroleum.com> on July 19, 2017, and <bhpbilliton-career.com> on October 28, 2017.
The Respondent has been sending emails from the addresses “[…]@bhpbilintonpetroleum.com” and “[…]@bhpbillintonpetroleum.com” purporting to be the company “BHP Billiton Petroleum US” and “BHP Billiton Petroleum (Deepwater) Inc” offering jobs in the USA to the recipients of the emails.
The Disputed Domain Names do not point to active websites.
5. Parties’ Contentions
The Complainant contends that the Disputed Domain Names are confusingly similar to the BHP BILLITON trademarks in which the Complainant has rights. The BHP BILLITON trademark has over the years become the world’s most well-known brand in diversified resources and the mining of such resources. Upon viewing the Respondent’s domain names, consumers are highly likely to expect an association with BHP Billiton, especially in light of the similarity of the Disputed Domain Names with the BHP BILLITON trademark, notwithstanding the non-distinctive addition “petroleum” and the insertion of a letter “n” in the word “billiton” in the Diputed Domain Name <bhpbillintonpetroleum.com>, and the addition of the non-distinctive term “career” in the Disputed Domain Name <bhpbilliton-career.com>. It is contended that the addition of a Top-Level Domain (“TLD”) such as “.com” does not affect the assessment that a domain name is confusingly similar to a particular trademark.
The Complainant further contends that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Names. The Respondent has not at any time been commonly known by the Disputed Domain Names and the Complainant is not aware of any trademarks in which the Respondent may have rights that are identical or similar to the Disputed Domain Names. Furthermore, the Respondent is not making a legitimate noncommercial or fair use of the Disputed Domain Names.
Finally, the Complainant contends that the Disputed Domain Names were registered and are being used in bad faith. The Disputed Domain Names are so similar to the Complainants well-known trademark that it must be presumed the registration was done in bad faith. The Complainant has been informed that the disputed domain name <bhpbillintonpetroleum.com> has been used as vehicle for employment fraud. Emails have emanated from the email address “[…]@bhpbillintonpetroleum.com”, purporting to offer employment with BHP Billiton in USA, as well as a fraudulent letter printed on fake BHP Billiton letterhead, purporting to offer employment, and listing the related email address “[…]@bhpbilllintonpetroleum.com” as the contact email address. The fact that the Respondent is using one of the Disputed Domain Names, <bhpbillintonpetroleum.com>, to engage in what seems to be an elaborate attempt at employment fraud, is evidence of bad faith registration and use of the Disputed Domain Names. The Complainant has also contended that the Respondent has engaged in a pattern of registering domain names featuring well-known trademarks and that this further confirms bad faith from the Respondent.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Given the facts in the case file and the Respondent’s failure to file a Response, the Panel accepts as true the contentions of the Complainant. The Respondent’s default does not however automatically lead to a transfer of the Disputed Domain Names.
The Complainant must still establish, to the Panel’s satisfaction, that it is entitled to a transfer of the Disputed Domain Names under the Policy. According to paragraph 4(a) of the Policy the Complainant must then establish each of the following elements:
(i) That the Disputed Domain Names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) That the Respondent has no rights or legitimate interests in respect of the Disputed Domain Names; and
(iii) That the Disputed Domain Names have been registered and are being used in bad faith.
A. Identical or Confusingly Similar
The Panel has already accepted that the Complainant has rights to the trademark BHP BILLITON.
It has been long established under previous UDRP cases that the TLD “.com” is not to be taken into account when assessing the issue of identity and confusing similarity. Therefore, the relevant parts of the Disputed Domain Names to compare the trademark to are “bhpbillintonpetroleum” and “bhpbilliton-career”.
With regards to the term “bhpbillintonpetroleum” it is only differentiated from the trademark by the addition of the letter “n” and of the word “petroleum”. The addition of the letter, seems an obvious misspelling of the Complainant’s trademark BHP BILLITON, and is without legal significance since it does not exclude confusing similarity. Neither the addition of the non-distinctive word petroleum excludes confusing similarity. With regards to the term “bhpbilliton-career”, similarly, the addition of the hyphen and the non-distinctive word “career” does not exclude confusing similarity to the trademark.
The Panel therefore finds that the Disputed Domain Names <bhpbillintonpetroleum.com> and <bhpbilliton-career.com> are confusingly similar to the Complainant’s BHP BILLITON trademarks.
B. Rights or Legitimate Interests
The Respondent may establish its rights or legitimate interests in the Disputed Domain Names, among other circumstances, by showing any of the following elements:
“(i) before any notice to the Respondent of the dispute, the Respondents use of, or demonstrable preparations to use, the Disputed Domain Names or a name corresponding to the Disputed Domain Names in connection with a bona fide offering of goods or services; or
“(ii) the Respondent have been commonly known by the Disputed Domain Names, even if the Respondent has acquired no trademark or service mark rights; or
“(iii) the Respondent is making a legitimate noncommercial or fair use of the Disputed Domain Names, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.”
In this case, since the Respondent did not file a Response, there is no evidence showing that the Respondent is a licensee of, or otherwise affiliated with the Complainant, and has been authorized by the Complainant to use its BHP BILLITON trademarks. Neither has any evidence been produced to support that the Respondent has been commonly known by the Disputed Domain Names, or has made a bona fide use of, the Disputed Domain Names, or that it has, for any other reason, rights or legitimate interests in the Disputed Domain Names.
Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in the Disputed Domain Names.
C. Registered and Used in Bad Faith
The Panel is satisfied that the Complainant’s BHP Billiton trademarks are well-known around the world. The registration and use of the Complainant’s BHP BILLITON trademarks significantly predate the registration of the Disputed Domain Names.
The Respondent has used the Disputed Domain Names to send out fraudulent emails purporting to be the company “BHP Billiton Petroleum (Deepwater) Inc” and offering jobs to the recipients of the emails. “Phishing”, as this type of fraud is known as, is an email scam targeting many businesses worldwide. The remitters are generally trying to obtain personal and/or bank information. They may also be trying to extract money for processing job applications or costs related to “work permits” or “visa working papers”.
The Panel thus concludes that the registration and use of the Disputed Domain Names constitutes bad faith within the meaning of 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 Names, <bhpbillintonpetroleum.com> and <bhpbilliton-career.com> be transferred to the Complainant.
Date: April 26, 2018