WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
BHP Billiton Innovation Pty Ltd v. Registration Private, Domains By Proxy, LLC / Jorge Kurion
Case No. D2018-2763
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 Registration Private, Domains By Proxy, LLC of Scottsdale, Arizona, United States of America / Jorge Kurion of Indonesia.
2. The Domain Name and Registrar
The disputed domain name, <bhpbillitoncoin.com> (the “Domain Name”), is registered with GoDaddy.com, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 3, 2018. On December 3, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On December 4, 2018, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on December 5, 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 December 7, 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 December 12, 2018. In accordance with the Rules, paragraph 5, the due date for Response was January 1, 2019. On December 12, 2018, the Center received an informal communication from the Respondent. The Respondent did not submit any formal response. Accordingly, the Center notified the Parties of the commencement of the Panel appointment process on January 2, 2019.
The Center appointed Tony Willoughby as the sole panelist in this matter on January 14, 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.
The invitation to the Complainant to file an amended Complaint stemmed from the fact that Jorge Kurion, the second-named Respondent, had made use of a privacy service. His identity was only disclosed in response to the Center’s request for Registrar verification. For the purposes of this decision the Panel treats Jorge Kurion, the beneficial owner of the Domain Name registration, as the Respondent.
4. Factual Background
The Complainant is an intellectual property holding company within the multi-billion dollar BHP Billiton industrial conglomerate with headquarters in Melbourne, Australia.
The Complainant is the registered proprietor of numerous trade mark registrations of or including the name “BHP Billiton”, one of which being United Kingdom trade mark registration No. 02264607 BHP BILLITON, registered August 30, 2002 (application filed March 19, 2001) in multiple classes for a wide range of goods and services.
The Domain Name was registered on November 22, 2018 and connected to a website promoting a crypto currency called “BHP BILLITONCOIN”, which is said to be akin to Bitcoin. The Domain Name is currently connected to a parking page operated by the Registrar.
5. Parties’ Contentions
The Complainant contends that the Domain Name is confusingly similar to its BHP BILLITON trade mark, that the Respondent has no rights or legitimate interests in respect of the Domain Name and that the Domain Name has been registered and is being used in bad faith.
The Complainant asserts that the “use of the term BHP BILLITONCOIN on the website is fraudulent and is intended to mislead consumers into investing in a fraudulent cryptocurrency by presenting a false association with the Complainant”.
The Respondent did not reply to the Complainant’s contentions, but on December 12, 2018 sent to the Center an email in the following terms: “I have purchased domain bhpbillitcoin.com from Godaddy Now Godaddy is put my domain in dispute and told me to ask you regarding this. I don’t what is the matter and what you are expecting from me let me know..”. The Center responded appropriately to the Respondent, but nothing further was heard from him.
6. Discussion and Findings
According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the Domain Name, the Complainant must prove each of the following, namely that:
(i) The 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 Domain Name; and
(iii) The Domain Name has been registered and is being used in bad faith.
B. Identical or Confusingly Similar
As is evident, the Domain Name at the second level comprises in large part the Complainant’s BHP BILLITON trade mark. The Panel finds that the Domain Name is confusingly similar to a trade mark in which the Complainant has rights.
C. Rights or Legitimate Interests
The Complainant’s trade mark is a made-up combination of terms. It is not a dictionary word, nor does it feature any descriptive element. It is unique to the Complainant. On the face of the case file the Respondent has no obvious association with the name “BHP Billitoncoin” save for his original use of it on the website connected to the Domain Name. The Complainant has produced evidence to show that that use (to promote a crypto-currency), which has now ceased, was likely to have been a fraudulent use intended to defraud visitors to the site.
The Panel is satisfied that the Complainant has made out a prima facie case calling for an answer from the Respondent, but the Respondent has not provided any answer.
In the absence of an answer from the Respondent and the Panel being unable to think of any reason why the Respondent might be said to have any rights or legitimate interests in respect of the Domain Name, the Panel finds that the Respondent has no such rights or legitimate interests.
D. Registered and Used in Bad Faith
The Respondent clearly registered the Domain Name with a view to making a commercial use of it and clearly, in the view of the Panel, did so intending to associate himself falsely with the Complainant. While the current use is to connect the Domain Name to a parking page operated by the Registrar, the Panel is in no doubt that for as long as the Domain Name remains in the hands of the Respondent it represents an unjustifiable threat hanging over the head of the Complainant and, as such, a continuing use in bad faith. Furthermore, the apparent, and unrebutted, use of the Domain Name to promote a fraudulent crypto currency scheme also supports a finding of registration and use in bad faith. The Panel is satisfied that the Domain Name has been registered and is being used in bad faith within the meaning of paragraph 4(b)(iv) 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 Domain Name, <bhpbillitoncoin.com>, be transferred to the Complainant.
Date: January 19, 2019