WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
BHP Billiton Innovation Pty Ltd v. Privacy Protect, LLC / Joel Zorrilla, Intag
Case No. D2018-1500
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 Privacy Protect, LLC of Burlington, Massachusetts, United States of America ("United States") / Joel Zorrilla of Chico, California, United States.
2. The Domain Name and Registrar
The disputed domain name <bhpecuador.com> is registered with Launchpad.com Inc. (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on July 5, 2018. On July 5, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 5, 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 the Complainant on July 12, 2018 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on July 12, 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 the Respondent of the Complaint, and the proceedings commenced on July 18, 2018. In accordance with the Rules, paragraph 5, the due date for Response was August 7, 2018. The Respondent did not submit any response by August 7, 2018. Accordingly, the Center notified the Respondent's default on August 8, 2018. On August 9, 2018, the Respondent sent an email communication to the Center regarding the dispute.
The Center appointed Steven A. Maier as the sole panelist in this matter on August 21, 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 a company incorporated in Australia. It is a subsidiary of BHP Billiton Limited which, together with its associated company BHP Billiton PLC, forms the BHP Billiton Group (the "BHP Group"). The Complainant manages intellectual property on behalf of the BHP Group.
The BHP Group is a mining and diversified resources group which is active in numerous regions throughout the world. Its activities include copper mining operations in Ecuador.
The BHP Group is the owner of numerous registrations for the trademark BHP in various territories worldwide. These registrations include, for example:
- Australia trademark number 730190 for the word mark BHP, registered on October 31, 1997 in a total of 17 classes of goods and services.
- Ecuador trademark number I-3417-97 for the mark BHP, registered on October 20, 1997 in Class 6.
The disputed domain name was registered on June 2, 2018. The disputed domain name has resolved to a website at "www.bhpecuador.com" which is headed "BHP ECUADOR" and "Why BHP Should Leave" and sets out arguments why BHP should leave the Intag region of Ecuador.
5. Parties' Contentions
The Complainant states that the BHP Group is the world's largest diversified resources concern, employing more than 40,000 individuals in 25 countries. It states that its market capitalization as of June 30, 2015 was USD 108 billion, with an operating revenue of USD 44.6 billion. In addition to numerous registrations for the trademark BHP, it controls domain names including <bhp.com>, <bhp.us> and <bhp.asia> and operates a website at "www.bhp.com".
The Complainant submits that the disputed domain name is identical or confusingly similar to the trademark BHP. It contends in particular that the addition of the geographical term "ecuador" is not effective to distinguish the disputed domain name from the trademark BHP.
The Complainant submits that the Respondent has no rights or legitimate interests in respect of the disputed domain name. It states that the Respondent has not commonly been known by the disputed domain name, that it has no independent trademark rights corresponding to the disputed domain name, and that it is not making bona fide commercial use of the disputed domain name.
Insofar as the Respondent uses the disputed domain name to discuss the BHP Group's activities in Ecuador, the Complainant argues that this does not amount to legitimate noncommercial or fair use of the disputed domain name. First, the Complainant submits that the Respondent uses a domain name which comprises the BHP Group's well-known trademark together with a descriptive term, such that Internet users will inevitably expect the disputed domain name to be operated by the BHP Group. Furthermore, the Complainant states the Respondent's website incorporates the name "BHP ECUADOR", does not include any disclaimer to the effect that it is not affiliated with the BHP Group, and also links to social media accounts on Facebook, Instagram and Twitter which use the name "BHP ECUADOR". Secondly, the Complainant contends that the Respondent's website does not relate exclusively to the BHP Group's activities in Ecuador, but also discusses mining operations in that region generally and mentions other mining companies.
The Complainant submits that the disputed domain name was registered and is being used in bad faith. It reiterates in this regard its submissions referred to above, and contends in particular that the disputed domain name would be the obvious choice for the Complainant itself to provide information about its operations in Ecuador.
The Respondent did not formally reply to the Complainant's contentions. However, in its email to the Center the Respondent stated that it had been unaware of the date for its submission of a Response and that it is a small NGO with a tiny budget and cannot afford lawyers to defend its case.
6. Discussion and Findings
In order to succeed in the Complaint, the Complainant is required to show that all three of the elements set out under paragraph 4(a) of the Policy are present. Those elements are:
(i) that the disputed domain name is 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 name; and
(iii) that the disputed domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Complainant has established that the BHP Group is the owner of trademark registrations for the mark BHP in numerous territories. The Panel further accepts that, by virtue of the BHP Group's commercial operations worldwide, its trademark BHP is widely known. The disputed domain name comprises the term "bhp" together with the term "ecuador". In the view of the Panel, the addition of this geographical identifier is insufficient to distinguish the disputed domain name from trademark BHP and the Panel therefore finds that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.
B. Rights or Legitimate Interests and C. Registered and Used in Bad Faith
It is appropriate in this case to consider the second and third elements under paragraph 4(a) of the Policy together.
In the view of the Panel, the Respondent is using the disputed domain name for the purposes of a genuine, noncommercial, website that criticizes the BHP Group's mining activities in Ecuador. However, the Respondent has chosen for this purpose a domain name which, in the view of the Panel, is inherently misleading and will inevitably suggest to Internet users that it is operated or authorized by the Complainant. It is not relevant that Internet users may appreciate the true nature of the Respondent's website upon reaching that website, because they will unfairly have been attracted to that website in the first place by the misleading nature of the disputed domain name. The Panel therefore finds that the disputed domain name "creates an impermissible risk of user confusion through impersonation" as described in section 2.6.2 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0"). The Panel finds in the circumstances that the Respondent has no rights or legitimate interests in respect of the disputed domain name, and that the disputed domain name was registered and has been used in bad faith.
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 <bhpecuador.com> be transferred to the Complainant.
Steven A. Maier
Date: September 3, 2018