WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
BHP Billiton Innovation Pty Ltd v. Femi Gam
Case No. D2018-2649
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 (“United States”).
2. The Domain Name and Registrar
The disputed domain name <bhpbiiliton.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 November 20, 2018. On November 20, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 21, 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 November 26, 2018. In accordance with the Rules, paragraph 5, the due date for Response was December 16, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 17, 2018.
The Center appointed Miguel B. O’Farrell as the sole panelist in this matter on January 4, 2019. 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, BHP Billiton Innovation Pty Ltd, is a company incorporated in Australia and a wholly owned subsidiary of BHP Billiton Limited, holding some of BHP Billiton’s intellectual property.
The core of the BHP Billiton Group is a dual listed company comprising BHP Billiton Limited and BHP Billiton Plc. The two entities exist as separate companies, but operate as a combined group known as BHP Billiton.
BHP Billiton is claimed to be the largest diversified resources group, employing more than 40,000 people in over 100 operations in 25 countries.
The Complainant holds numerous trademark registrations in many countries for the trademark BHP BILLITON, including the ones mentioned below.
United States: trademark registration BHP BILLITON No. 3703871, registered November 3, 2009, in classes 4, 6, 37, 40, and 42;
Canada: trademark registration PHB BILLITON No. TMA794995, registered April 7, 2011 for Wares and Services Equivalent of Classes 4, 6, 37, 40, and 42;
New Zealand: trademark registration PHB BILLITON No. 764470, registered June 12, 2008, in classes 4, 6, 37, 40, and 42;
European Union: trademark registration BHP BILLITON No. 986799, registered November 16, 2006, in classes 4, 6, 37, 40, and 42;
Australia: trademark registration BHP BILLITON No. 1141449, registered August 18, 2008, in classes 4, 6, 37, 40, and 42;
United Kingdom: trademark registration BHP BILLITON No. 2264607, registered August 30, 2002, in classes 1, 2, 4, 6, 7, 8, 9, 11, 14, 16, 17, 19, 21, 25, 35, 36, 37, 38, 39, 40, 41, and 42.
BHP Billiton controls several domain names containing the trademark BHP BILLITON, including <bhpbilliton.com>, <bhpbilliton.net>, <bhpbilliton.info> and many others.
The disputed domain name <bhpbiiliton.com> was created on November 3, 2018, and currently does not resolve to any active website.
5. Parties’ Contentions
The Complainant submits that the disputed domain name <bhpbiiliton.com> is confusingly similar to the Complainant’s extensive portfolio of BHP BILLITON trademarks, which over the years became the world’s most well-known brand in diversified resources and the mining of such resources.
The Respondent has no rights or legitimate interests in respect of the disputed domain name, which it has registered and uses in bad faith.
BHP Billiton enjoys a worldwide reputation in its BHP BILLITON trademark and relevant domain names, with a market capitalization of USD 108 billion and revenue from continuing operations as USD 44.6 billion.
To the extent that the Respondent’s conduct is considered “passive use” of the disputed domain name, it is submitted that this in itself, viewed in the context of the present circumstances, is evidence of bad faith use.
The Respondent has also registered domain names such as <banknfamerica.com>, <exxonmobilcepu-jobs.com>, and <maybankb.com>, similar to the legitimate famous domain names and trademarks <bankofamerica.com>, <exxonmobil.com>, and <maybank.com> which further confirms bad faith on the part of the Respondent.
In a previous UDRP case (BHP Billiton Innovation Pty Ltd v. Femi Gam, WIPO Case No. D2017-1152) brought by the Complainant against the Respondent, it was ordered that the domain name <bhpbillitoncareer.com> be transferred to the Complainant.
In the event that the Respondent were to consent to the transfer of the disputed domain name, the Complainant requests the Panel to nevertheless issue a decision on the merits and order the transfer of the disputed domain name to the Complainant.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the disputed domain name, the Complainant must prove each of the following, namely that:
(i) The disputed domain name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
(ii) The Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) The disputed domain name was registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Panel is satisfied that the Complainant has established that it has rights in the trademark BHP BILLITON.
The standing test for confusing similarity involves a reasoned but relatively straightforward comparison between the trademark and the disputed domain name to determine whether the domain name is confusingly similar to the trademark. The test involves a side-by-side comparison of the domain name and the textual components of the relevant trademark to assess whether the mark is recognizable within the domain name. In this case, despite the misspelling of the word “billiton” in the disputed domain name <bhpbiiliton.com>, it clearly is almost identical and therefore confusingly similar to the trademark BHP BILLINGTON.
For the purposes of assessing identity or confusing similarity under paragraph 4(a)(i) of the Policy, it is permissible for the Panel to ignore the generic Top-Level Domain (“gTLD”) as it is viewed as a standard registration requirement (Section 1.11.1 of WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”)).
The Panel finds that the disputed domain name is confusingly to the trademark BHP BILLINGTON in which the Complainant has rights and that the requirements of paragraph 4(a)(i) of the Policy therefore are fulfilled.
B. Rights or Legitimate Interests
Pursuant to paragraph 4(c) of the Policy, a respondent may establish rights to or legitimate interests in a domain name by demonstrating any of the following:
(i) before any notice to it of the dispute, the respondent’s 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) the respondent has been commonly known by the domain name, even if it has acquired no trade mark or service mark rights; or
(iii) the respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain, to misleadingly divert consumers.
Although the Policy addresses ways in which a respondent may demonstrate rights or legitimate interests in a disputed domain name, it is well established, as it is put in section 2.1 of WIPO Overview 3.0, that a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests in the domain name. Once such prima facie case is made, the burden of production shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element.
The Complainant sustains that the Respondent has not at any time been commonly known by the disputed domain name. Further, the Complainant is not aware of any trademark rights in which the Respondent may have rights that are identical with or similar to the disputed domain name.
As sustained by the Complainant, there is no evidence in the present case that the Respondent has been commonly known by the disputed domain name, enabling it to establish rights or legitimate interests in the disputed domain name <bhpbiiliton.com>. The name of the Respondent is Femi Gam which does not resemble the disputed domain name in any manner.
Likewise, and as further discussed under section C below, it does not seem that the Respondent is making any legitimate non-commercial or fair use of the disputed domain name, but rather has registered it for the purpose of deriving unfair monitory advantage by confusing Internet users and leading them to believe that the disputed domain name is related to the Complainant.
The Respondent has failed to even allege and much less prove any of the circumstances mentioned above or any other to justify any rights or legitimate interests in the disputed domain name.
Therefore, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name.
C. Registered and Used in Bad Faith
The Panel is satisfied that the Respondent must have been aware of the Complainant’s trademark BHP BILLITON and the trade name “BHP Billiton” when it registered the disputed domain name <bhpbiiliton.com> on November 3, 2018.
This is not the first time in which the Respondent has registered a domain name in violation of the Complainant’s rights in the trademark BHP BILLITON (See BHP Billiton Innovation Pty Ltd v. Femi Ga, supra).
As proved by the evidence produced by the Complainant, the Respondent has also registered several domain names in the past with slight misspellings of third party famous trademarks and domain names.
In other words, the present case is not the first time in which the Respondent has incurred in the so called activity of “cybersquatting”.
The fact that there is a clear absence of rights or legitimate interests coupled with no explanation for the Respondent’s choice of the disputed domain name is also a significant factor to consider that the disputed domain name was registered in bad faith (as stated in section 3.2.1 of WIPO Overview 3.0).
In view of the overall circumstances of this case, the Respondent’s so called “passive holding” of the disputed domain name does not prevent a finding of bad faith. Particularly, in the light of the distinctiveness of the Complainant’s mark, the failure of the Respondent to submit a response and to provide any evidence of actual or contemplated good-faith use and, above all, the implausibility of any good faith use to which the disputed domain name may be put. (See section 3.3 of WIPO Overview 3.0 and Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003).
Clearly, considering the nature of the disputed domain name, the Respondent has registered the disputed domain name intentionally to create a likelihood of confusion with the Complainant’s widely used mark as to the relation between the disputed domain name and the Complainant’s trademark. This amounts to bad faith under the Policy (See section 3.2.1 of WIPO Overview 3.0).
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 <bhpbiiliton.com> be transferred to the Complainant.
Miguel B. O’Farrell
Date: January 14, 2019