WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
BHP Billiton Innovation Pty Ltd (BHP Billiton Innovation) v. Zhu Xumei
Case No. DCO2014-0014
1. The Parties
The Complainant is BHP Billiton Innovation Pty Ltd (BHP Billiton Innovation) of Melbourne, Victoria, Australia, represented by Griffith Hack, Australia.
The Respondent is Zhu Xumei of Huzhou, Zhejiang, China.
2. The Domain Name and Registrar
The disputed domain name <bhpbilliton.com.co> 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 July 14, 2014. On July 14, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 14, 2014, 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on July 23, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was August 12, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 13, 2014.
The Center appointed Antonio Millé as the sole panelist in this matter on August 21, 2014. 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
As per the Complainant’s allegations, the Complainant, BHP Billiton Innovation Pty Ltd, is “a wholly owned subsidiary of BHP Billiton Limited, holding some of BHP Billiton’s intellectual property”. In turn, BHP Billiton Limited is said to be a corporation that together with BHP Billiton Plc. “operates as a combined group known as BHP Billiton” being one of the world’s largest diversified resources group, employing more than 40,000 people in more than 100 operations in 25 countries”.
With the copies annexed to the Complaint, the Complainant proved that it is the owner of BHP BILLITON trademark registrations in Australia No.1141449, registered on October 18, 2006); New Zealand (No. 764470, registered on June 12, 2008); the European Union (No. 0986799, registered November 16, 2006) the United States of America (No. 3703871, registered November 3, 2009) and Canada (No. TMA794995, registered April 7, 2011). The Complainant also proved that it owns trademark rights in the United Kingdom of Great Britain and Northern Ireland (the “UK”) by Billiton Intellectual Property BV (No. 2264607, registered August 30, 2002.
The Registrar confirmed to the Center that the disputed domain name was registered by the Respondent on February 16, 2014.
A little more than two months after the disputed domain name’s registration, an individual named “T. Zhu” offered to transfer the disputed domain name for USD 1,000 to a member of the Complainant’s group.
The disputed domain name resolves to a so-called “parking page” containing sponsored links.
The Respondents is an individual based in China, named Zhu Xumei. Through limited factual research on the Center’s website, the Panel verified that the Respondent appears to have been a respondent in four other previous cases involving well-known trademarks as domain names in ccTLDs (three in “.mx” – México and one in “.co” - Colombia) and that in all the cases the transfer of the domain name to the trademark owner was ordered.
C. The Disputed Domain Name
The disputed domain name <bhpbilliton.com.co> was registered on February 16, 2014.
5. Parties’ Contentions
The Complainant made the following submissions in the Complaint:
a) The disputed domain name is confusingly similar to the well-known trademark owned by the Complainant, in a way that consumers will be highly likely induced to expect an association between the domain name and BHP BILLITON trademark, confusion that is not reduced by the addition of the ccTLD “.co”.
b) The Respondent has no rights or legitimate interests in the disputed domain name and has not been commonly known by the disputed domain name. The Complainant is not aware of any trademark identical or similar to the disputed domain name in which the Respondent may have rights. The Respondent is not making any legitimate noncommercial or fair use of the disputed domain name.
c) Bad faith registration may be inferred from the registration of a well-known trademark as a domain name. The email message provided as evidence by the Complainant, shows that the Respondent registered the disputed domain name primarily for the purpose of selling it to the Complainant. By using the disputed domain name the Respondent also intentionally attempted to attract Internet users by creating a likelihood of confusion with the Complainant’s BHP BILLITON trade mark “as to the source, sponsorship, affiliation or endorsement of the Registrant’s website” to a website containing sponsored links. The use of the disputed domain name in this manner constitutes bad faith use.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
The Panel finds that the Complainant has used and registered its trademark in different countries and for a long period of time, the first trademark registration date predates the date of registration of the disputed domain name.
The relevant part of the disputed domain name wholly incorporates the Complainant’s trademark, and the addition of the country code Top-Level Domain extension (“ccTLD”) corresponding to Colombia does not make any difference to eliminate the confusing similarity, as per the doctrine consistently held by UDRP panels.
The Panel therefore finds that the disputed domain name is confusingly similar to the Complainant’s BHP BILLITON trademark and holds that the Complainant fulfills the first condition of paragraph 4(a) of the Policy.
B. Rights or Legitimate Interests
Under paragraph 4(c) of the Policy, rights or legitimate interests in a domain name may be demonstrated by showing that:
(i) before any notice of the dispute, the respondent used, or demonstrably prepared to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services;
(ii) the respondent has been commonly known by the domain name, even if no trademark or service mark rights have been acquired; or
(iii) the respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain or to misleadingly divert customers or to tarnish the trademark at issue.
In the present case, the Respondent has not answered to the Complaint and therefore, it has not given any basis to a right or legitimate interest in respect of the use of the trademark BHP BILLITON in the disputed domain name. The use of the disputed domain name to convey the consumers to a “parking page”1 and the evident possibility of confusion for those consumers has been alleged by the Complainant and supported by convincing evidence.
Furthermore, the Panel has taken into consideration a) the complete difference between the Respondent’s name (and/or pseudonym) and the disputed domain name; b) that the Respondent does not appear to be using the disputed domain name in connection with a bona fide offering of goods or services; c) that there is no evidence that the Respondent is commonly known by a denomination similar to the disputed domain name; and d) that all the factual circumstances suggest that the Respondent is making a commercial use of the disputed domain name, with the intent for commercial gain by means of misleadingly diverting consumers.
It is well established that, the Complainant must show a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name, after which the burden of production shifts to the Respondent (see, e.g., Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455). The absence of rights or legitimate interests is established if a complainant makes out a prima facie case and the respondent files no response (see Accor v. Eren Atesmen, WIPO Case No. D2009-0701 citing De Agostini S.p.A. v. Marco Cialone, WIPO Case No. DTV2002-0005). Previous panel decisions in cases were no sign of rights or legitimate interests in the domain name was apparent, and the respondent did not make any attempt to rebut the prima facie case made by the complainant, have stated that the panel will decide the dispute on the basis of the complainant’s undisputed contentions of facts. Although the respondent’s default does not automatically result in a decision in favour of the complainant, the panel may draw negative inferences from the same (see Unilever N.V. v. Kentech, WIPO Case No. D2005-1021).
On this basis, the Panel finds that the Respondent failed to produce any evidence to establish rights or legitimate interests in the disputed domain name.
Therefore, the Panel finds that the second requirement of paragraph 4(a) of the Policy is met.
C. Registered and Used in Bad Faith
The Complainant based the Complaint on this point on the existence of the circumstances set out in paragraph 4(b) of the Policy regarding the registration and use of the disputed domain name in bad faith.
The disputed domain name was registered by the Respondent long after the Complainant’s trademarks were registered in different countries.
The registration and use of a well-known trademark as domain name seems to the Panel a typical expression of the conduct of those that “intentionally attempted to attract, for commercial gain, Internet users to a web site 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 this web site or location or of a product or service on such web site or location” (Policy, paragraph 4(b)(iv)). This conviction is reinforced by the fact alleged by the Complainant, not refuted by the Respondent and verified by the Panel that, Internet users entering the disputed domain name as address in a browser access a parking website displaying sponsored links.
In these circumstances, and considering that the Respondent did not provide any legitimate reason that could drive the Respondent into registering and using <bhpbilliton.com.co>, the Panel cannot find any justification for such registration and use of the disputed domain name that clearly and univocally evokes the Complainant’s trademark.
The Panel considers that the Respondent is also “engaged in a pattern of conduct” that constitutes “evidence of the registration and use of a domain name in bad faith”.
The Panel confirmed the existence of a number of similar cases in which the Respondent registered different domain names under the ccTLD extensions, reflecting prestigious international trademarks of third parties, for the purpose of selling them (see Avid Dating Life Inc. v. Zhu Xumei, WIPO Case No. DCO2014-0006; QVC, Inc. v. Zhu Xumei, WIPO Case No. DMX2013-0014 among others).
The Respondent’s offer for sale of the disputed domain name combined with its pattern of illicit behaviour, “so-called cyber-squatting”, is a further indication of registration and use in bad faith (see, e.g., Det Berlingske Officin A/S v. BWI Domain Manager, WIPO Case No. D2007-1717).
Based on the above, the Panel finds that the Complainant has met the third requirement under paragraph 4(a) 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 disputed domain name <bhpbilliton.com.co> be transferred to the Complainant.
Date: August 26, 1014
1 The Panel verified that this “parking page” publicized itself as a “marketplace (that) connects buyers and sellers, making it simple for individuals and companies to acquire the domain names they need for their success and online presence”.