WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

BHP Billiton Innovation Pty Ltd v. WhoisGuard Protected / BHP India, BHP Billiton India Limited

Case No. D2018-0985

1. The Parties

Complainant is BHP Billiton Innovation Pty Ltd, Melbourne, Victoria, Australia, represented by Griffith Hack Patent and Trade Mark Attorneys, Australia.

Respondent is WhoisGuard Protected of Panama, / BHP India, BHP Billiton India Limited of Hyderabad, Telangana, India.

2. The Domain Name and Registrar

The disputed domain name <bhp-in.com> (the “Domain Name”) is registered with NameCheap, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 4, 2018. On May 4, 2018, the Center transmitted by email to the Registrar a request for registrant verification in connection with the disputed domain name. On May 4, 2018, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on May 8, 2018 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on May 9, 2018.

The Center verified that the Complaint together with the amended 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 May 9, 2018. In accordance with the Rules, paragraph 5, the due date for Response was May 29, 2018. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on June 4, 2018.

The Center appointed Ingrīda Kariņa-Bērziņa as the sole panelist in this matter on June 13, 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

Complainant asserted, and provided evidence in support of, the following facts, which the Panel finds established. Complainant is BHP Billiton Group, a natural resources group headquartered in Melbourne, Australia, and operating around the world under the BHP mark (the “Mark”). Complainant is the holder of numerous trademark registrations in various countries including Australia, China, India, and the United States for the letter combination BHP, some dating back many decades. In Australia, for instance, Complainant owns trademark registration 59146 for BHP in respect of goods in class 6, with a priority date of December 9, 1931. Of particular relevance for the current dispute are Complainant’s two registrations in India, namely:

(a) Indian trademark registration 667249 for the mark BHP in respect of goods in class 4 and registered as of 26 May 1995;

(b) Indian trademark registration 667250 for the mark BHP in respect of goods of class 6 and registered as of 26 May 1995.

Complainant controls numerous domains containing the BHP mark, including: <bhp.com>, <bhp.com.au>, <bhp.us>, <bhp.asia>, <bhp.info>, and <bhp.jobs>.

Respondent registered the disputed Domain Name <bhp-in.com> on April 7, 2018 using a privacy service. The Registrar confirmed that the Domain Name was registered in the name of “BHP India, BHP Billion India Limited,” indicating a mailing address in Hyderabad, India.

The disputed Domain Name does not resolve to an active web site.

5. Parties’ Contentions

A. Complainant

Complainant contends that the Domain Name is confusingly similar to the Mark, which is well-known in the field of diversified resources and mining. Consumers are highly likely to expect an association with BHP due to the similarity between the Domain Name and the Mark. The addition of a Top-Level Domain (“TLD”) does not affect this assessment, nor does the addition of the element “-in”, which is a descriptive geographic reference to India.

Complainant contents that Respondent has no rights or legitimate interests in respect of the Domain Name, since Respondent has not been commonly known by the Domain Name. Complainant is not aware of trademarks in which Respondent may have rights that are identical or similar to the Domain Name. Respondent is not making legitimate noncommercial or fair use of the Domain Name.

Third, Complainant states that the Domain Name has been registered and is being used in bad faith. Respondent enjoys a worldwide reputation in the Mark and relevant domain names. Respondent is a major global company with a market capitalization of USD108 billion and revenue of USD44.6 billion. From these circumstances, it can be inferred that BHP is a well-known mark, and Respondent’s actions in registering the Domain Name in the name of Complainant is therefore probative of bad faith.

Complainant provides evidence that the Domain Name and an email address derived from the Domain Name is listed in correspondence with the British Deputy Home Office in Chennai, India. In this correspondence, a party purporting to be a BHP official requests a United Kingdom tourist visa on behalf of another party alleged to be a BHP employee. Complainant states that neither party mentioned in the letter is affiliated with Complainant, and that the letter is fraudulent.

Respondent’s use of the Domain Name in connection with an attempt to fraudulently obtain a United Kingdom visa is further evidence of bad faith use of the Domain Name. Respondent has sent a letter, using fraudulent company information and incorrect addresses, signed by a party who is not a BHP employee and requesting a visa for a purported BHP employee who is not actually employed by BHP, thereby demonstrating bad faith. Finally, Respondent’s conduct in registering the Domain Name may be considered “passive use” probative of bad faith under the standard set out in (Telstra Corporation Limited v. Nuclear Marshmellows, WIPO Case No. D2000-0003).

B. Respondent

Respondent did not reply to Complainant’s contentions.

6. Discussion and Findings

Given the facts in the case file and Respondent’s failure to file a Response, the Panel accepts as true the contentions in the Complaint.

Nevertheless, Complainant must still establish, to the Panel’s satisfaction, that it is entitled to a transfer of the Domain Name by establishing each of the following elements under paragraph 4(a) of the UDRP, namely:

(i) That the Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

(ii) That Respondent has no rights or legitimate interests in respect of the Domain Name; and

(iii) That Respondent registered and is using the Domain Name in bad faith.

A. Identical or Confusingly Similar

Complainant has provided evidence demonstrating its rights in the Mark through various trademark registrations around the world and as a result of the goodwill and reputation acquired through its use of the Mark over many years.

Under previous UDRP cases, it has long been established that the TLD “.com” is not to be taken into account when assessing the issue of identity and confusing similarity. Therefore, the relevant part of the Domain Name to compare with the trademark rights is “bhp-in”.

The term “bhp-in” differs from the Mark only by the addition of the letters “-in”. In the view of the Panel, “-in” is a geographical term indicating India, which does not detract from the confusing similarity of the Domain Name to the Mark (see, for example, BHP Billiton Innovation Pty Ltd v. Oloyi, WIPO Case No. D2017-0284). Taking into account the above, the Panel holds that the Domain Name is confusingly similar to Complainant’s BHP trademark.

The Panel finds that Complainant has satisfied paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

Complainant sets out a prima facie case that Respondent could have no rights or legitimate interests in respect of the Domain Name, since there is no evidence that Respondent is commonly known by the Domain Name, there is no evidence that Respondent has any trademark rights that are identical or similar to the Domain Name, nor is there evidence that Respondent is making legitimate use of the Domain Name.

Indeed, the Domain Name has been used in connection with fraudulent correspondence to obtain a United Kingdom visa. The copied letter and email appended as annexes to the Complaint are unauthorized by the Complainant, yet the letterhead is clearly designed to indicate a connection with Complainant by using Complainant’s company name and an approximation of its logo, the Domain Name and an email address derived therefrom, along with statements alleging affiliation with Complainant.

Respondent has not use the Domain Name in connection with a bona fide offering of goods and services, nor is there any suggestion that it has ever been known by the Domain Name. In the view of the Panel, stating a domain name in fraudulent correspondence cannot give rise to rights or legitimate interests in respect of the Domain Name. Respondent has failed to respond to the Complaint and therefore has not in any way countered the prima facie case set out by Respondent.

The Panel finds that Respondent has no rights or legitimate interests in respect of the Domain Name, and that Complainant has satisfied paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

The Domain Name comprises the Mark together with “-in”. The registration of the Domain Name has been effected in the name of “BHP India, BHP Billion India Limited” and the Domain Name and the name of the Complainant feature prominently in fraudulent correspondence with United Kingdom authorities. In the view of the Panel, such circumstances, taken together, indicate that the Respondent has deliberately chosen the Domain Name for the purpose of attempting to assume the identity of a BHP official to secure a United Kingdom visa. Such conduct leads to a legitimate presumption that Respondent has attempted to improperly derive gain from using the Domain Name.

Such conduct is in clear breach of the Policy. Further, under these circumstances, established UDRP case law holds that the use of a privacy service, in connection with false contact information, supports a finding of bad faith.

The Panel is satisfied that the Domain Name <bhp-in.com> was registered and is being used in bad faith, and that paragraph 4(a)(iii) of the Policy has been satisfied.

7. Decision

For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name, <bhp-in.com> be transferred to Complainant.

Ingrīda Kariņa-Bērziņa
Sole Panelist
Date: June 27, 2018