WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

BHP Billiton Innovation Pty Ltd v. Femi Gam

Case No. D2018-2443

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 Femi Gam of Portland, Oregon, United States of America.

2. The Domain Name and Registrar

The disputed domain name <bhpbiliiton.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 October 26, 2018. On October 26, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 27, 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 October 31, 2018. In accordance with the Rules, paragraph 5, the due date for Response was November 20, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 21, 2018.

The Center appointed Benoit Van Asbroeck as the sole panelist in this matter on November 26, 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

BHP Billiton Group is one of the world’s largest diversified resources group. The core of the Group is a dual listed company comprising BHP Billiton Limited and BHP Billiton Plc. The Complainant, BHP Billiton Innovation is a wholly owned subsidiary of BHP Billiton Limited, holding some of BHP Billiton’s intellectual property.

The Complainant is the owner of the trademark containing or comprising BHP BILLITON across many countries and, possesses a numerous trademark registrations, some of them dating back to 1997. These registrations include:

- United States trademark with registration No. 3703871, registered on November 3, 2009 in International Classes 4, 6, 37, 40, and 42;

- United States trademark with registration No. 5461406, registered on May 8, 2018 in International Classes 4, 6, and 40;

- Canadian trademark with registration No. TMA794995, registered on April 7, 2011 in International Classes 4, 6, 37, 40, 42, and 45;

- New Zealand trademark with registration No. 764470, registered on June 12, 2008 in International Classes 4, 6, 37, 40, and 42;

- United Kingdom trademark with registration No. UK00002264607, registered on August 30, 2002 in International Classes 1, 2, 4, 6, 7, 8, 9, 11, 14, 16, 17, 19, 21, 25, 35, 36, 37, 38, 39, 40, 41, and 42;

- Australian trademark with registration No. 986799, registered on November 16, 2006 in International Classes 4, 6, 37, 40, and 42;

- Australian trademark with registration No. 730190, registered on March 19, 1997 in International Classes 1,2, 8, 9, 11, 14, 16, 17, 19, 25, 35, 36, 37, 38, 39, 41, and 42;

- International trademark with registration No. 0986799, registered on November 16, 2006 in International Classes 4, 6, 37, 40, and 42.

Additionally, the Complainant is also the registrant of numerous domain names including BHP BILLITON trademark, <bhpbilliton.com>, <bhpbilliton.net>, <bhpbilliton.info>, <bhpbilliton.org>, etc.

The disputed domain name <bhpbiliiton.com> was registered on October 1, 2018, well after the Complainant secured rights to the trademarks. The disputed domain name does not point to an active website. The Complainant was notified of an instance involving fraudulent email correspondence being sent from an email address based on the disputed domain name and offering work opportunities.

5. Parties’ Contentions

A. Complainant

The Complainant contends that each of the three elements specified in paragraph 4(a) of the Policy are satisfied in the present case, as follows:

(a) The disputed domain name is confusingly similar to a trademark or service mark in which the Complainant has rights.

The Complainant contends that the disputed domain name is confusingly similar to the registered trademarks in which the Complainant has rights. It represents that the disputed domain name reproduces the term “bhp billiton” in its entirety except for one letter discrepancy, to become <bhpbiliiton.com>. According to the Complainant this simple misspelling does not significantly affect the appearance of the disputed domain name which is confusingly similar to the Complainant’s trademark.

(b) The Respondent has no rights or legitimate interests in respect of the disputed domain name.

The Complainant asserts that it has rights in BHP BILLITON and that the Respondent has no rights or legitimate interests in respect of the disputed domain name.

The Respondent is and was not commonly known by the disputed domain name. There is further no indication of any trademarks in which the Respondent may have rights that are identical or similar to the disputed domain name.

Furthermore, the Respondent does not appear to have used the disputed domain name for any legitimate noncommercial purpose.

The Complainant alleges finally that the Respondent has engaged in a pattern of registering numerous domain names which are identical or very similar to the trademarks of other companies.

(c) The disputed domain name was registered and is being used in bad faith.

The Complainant argues that the registration of a domain name that is confusingly similar to a well-known trademark as BHP BILLITON is itself evidence of bad faith registration (see Zwack Unicum Rt. v. Erica J. Duna, WIPO Case No. D2000-0037 and The Nasdaq Stock Market, Inc. v NSDAQ.COM, NASDQ.COM and NASAQ.COM, WIPO Case No. D2001-1492).

In addition, the Complainant points out that the Respondents pattern of behaviour with registering domain names that are identical or similar to trademarks of wellknown companies also indicates registration of the disputed domain name in bad faith.

The Complainant further contends that the fact that the Respondent is using the disputed domain name 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 name. By incorporating the disputed domain name into the email-address to commit fraudulent actions impersonating a representative of the Complainant who is responsible for human resources, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the Respondent, by creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website.

Additionally, the Complainant refers to a previously rendered UDRP decision involving the same Parties in respect of the domain name <bhpbillitoncareer> and where bad faith was found (see BHP Billiton Innovation Pty Ltd v. Femi Gam, WIPO Case No. D2017-1152).

Finally, the Complainant asserts that the passive use doctrine applies given the Respondent’s anticipated failure to provide evidence of any actual or contemplated good faith use (see Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003).

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

A. Identical or Confusingly Similar

The Complainant is required to establish the two following elements: (1) that it has trademark rights, and, if so, (2) that the disputed domain name is identical or confusingly similar to its trademark(s).

First of all, this Panel finds that the Complainant has clearly evidenced that it has registered trademark rights in BHP BILLITON.

Secondly, the disputed domain name differs from the Complainant’s trademark BHP BILLITON merely by the misspelling of the letter “l” and the letter “i”. In the view of the Panel, the mentioned misspelling does not influence the similar overall impression of the disputed domain name and the trademark as there are only minor differences in the appearance. This conduct is commonly referred to as “typosquatting” and creates virtually identical and/or confusingly similar domain names to the trademarks of complainants.

On the basis of the foregoing findings, and according to paragraph 4(a)(i) of the Policy, this Panel finds and concludes that the disputed domain name is confusingly similar to the Complainant’s BHP BILLITON trademark.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy lists circumstances, in particular but without limitation, which, if found by the Panel to be proved, demonstrate the Respondent’s rights or legitimate interests in the disputed domain name for the purposes of paragraph 4(a)(ii) of the Policy. Paragraph 4(c) of the Policy reads:

“When you receive a complaint, you should refer to paragraph 5 of the Rules of Procedure in determining how your response should be prepared. Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):

(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or

(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.”

This Panel finds that there is no evidence that the Respondent has any rights or legitimate interests in the disputed domain name.

It is a well-established view of the UDRP panels, with which this Panel agrees, that a prima facie case advanced by the complainant is generally sufficient for the complainant to satisfy the requirements under paragraph 4(a)(ii) of the Policy, provided that the respondent does not submit any evidence to the contrary (AGUAS DE CABREIROA, S.A.U. v. Hello Domain, WIPO Case No. D2014-2087; Spigen Korea Co., Ltd., Spigen Inc. v. Domain Admin, Whois Privacy Corp., WIPO Case No. D2016-0145; HubSpot, Inc. v. WhoisGuard Protected, WhoisGuard, Inc. / Steve Johnson, WIPO Case No. D2016‑1338).

In the present case, taking into consideration the default of the Respondent, this Panel finds that the Complainant has submitted a sufficient prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name, in view of the circumstances of this case, including the following factors:

- there is no evidence that the Respondent has commonly been known by the disputed domain name;

- there is no evidence that legitimate noncommercial or faire use of the disputed domain name has taken place; and

- there is no evidence that the Respondent has been authorized or licensed to use the disputed domain name by the Complainant.

In fact, the evidence shows that the disputed domain name has been used as part of the email address [...@bhpbiliiton.com]. From this email address the Respondent sends fraudulent emails to third parties in which he is impersonating an employee, who is responsible for human resources within the BHP Billiton Group which the Complainant belongs to.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy identifies, in particular but without limitation, four circumstances which, if found by this Panel to be present, shall be evidence of the registration and use of a domain name in bad faith. Paragraph 4(b) of the Policy reads:

“For the purposes of paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:

(i) circumstances indicating that you have registered or you have 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 your documented out-of-pocket costs directly related to the domain name; or

(ii) you have 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 you have engaged in a pattern of such conduct; or

(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location.”

Each of the four circumstances in paragraph 4(b) of the Policy, if found, would be an instance of “registration and use of a domain name in bad faith”.

The Complainant submits that it is well-settled that bad faith can be found where a domain name is so obviously connected with a well known trademark that its very use by someone with no connection to the trademark suggests opportunistic bad faith. The Panel endorses that view. Given the reputation of the BHP BILLITON trademark, registration in bad faith can be inferred. In the absence of contrary evidence, the Panel finds that the Respondent knew of or should have known of the Complainant’s trademark and services at the time the Respondent registered the disputed domain name given the fame of the Complainant.

Moreover, the Respondent’s engagement in pattern of bad faith registration and use of domain names indicates also for the Panel that the disputed domain name has been registered in bad faith. There is ample authority in the previously decided cases that apatternofabusive behaviour following registration in bad faith is by itself indicative of bad faith (see Citigroup, Inc v. Party Night Inc. aka Peter Carrington, WIPO Case No. D2003-0480 and Match.com, L.P. v. Amjad Kausar, WIPO Case No. D2003-0510). This Panel particularly agrees with the Complainant that bad faith can further be inferred from a previously filed UDRP complainant by the Complainant against the Respondent.

According to the Complainant and evidence submitted, the Respondent is using the disputed domain name as an email exchange server for the purpose of misleading third parties by offering fictitious employment opportunities. In the Panel’s view, the aforementioned constitutes clear evidence of bad faith behaviour of the Respondent.

Furthermore the Panel notes that the disputed domain name does not revolve to an active website at the time of the Decision.

In light of the above, this Panel finds that the disputed domain name was registered and is being used by the Respondent in bad faith under the Policy.

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 disputed domain name <bhpbiliiton.com> be transferred to the Complainant.

Benoit Van Asbroeck
Sole Panelist
Date: December 10, 2018