WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

BHP Billiton Innovation Pty Ltd v. zhong tian, lixia

Case No. DME2015-0009

1. The Parties

The Complainant is BHP Billiton Innovation Pty Ltd of Melbourne, Victoria, Australia, represented by Griffith Hack Patent and Trade Mark Attorneys, Australia.

The Respondents are zhong tian and lixia of Taizhou, Jiangsu, China.

2. The Domain Names and Registrars

The disputed domain name <bhpbilliton.cc> is registered with Hangzhou AiMing Network Co., LTD. The disputed domain name <bhpbilliton.me> is registered with PDR Ltd. d/b/a PublicDomainRegistry.com. The disputed domain names are hereinafter referred to as the “Disputed Domain Names”.

3. Procedural History

The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on September 21, 2015. On September 21, 2015, the Center transmitted by email to PDR Ltd. d/b/a PublicDomainRegistry.com a request for registrar verification in connection with the Disputed Domain Name <bhpbilliton.me>. On September 22, 2015, PDR Ltd. d/b/a PublicDomainRegistry.com transmitted by email to the Center its verification response confirming that the Respondent zhong tian is listed as the registrant and providing the contact details. PDR Ltd. d/b/a PublicDomainRegistry.com confirmed that the language of the Registration Agreement of the disputed domain name <bhpbilliton.me> was in English.

On September 22, 2015, the Complainant requested to add the Disputed Domain Name <bhpbilliton.cc> to the proceeding. On September 22, 2015, the Center transmitted by email to Hangzhou AiMing Network Co., LTD a request for registrar verification in connection with the Disputed Domain Name <bhpbilliton.cc>. On the same day, Hangzhou AiMing Network Co., LTD transmitted by email to the Center its verification response confirming that the Respondent lixia is listed as the registrant and providing the contact details. Hangzhou AiMing Network Co., LTD confirmed that the language of the Registration Agreement of the disputed domain name <bhpbilliton.cc> was in Chinese.

In response to a notification by the Center regarding the registrant information and consolidation, the Complainant filed an amended Complaint in English including a consolidation request regarding multiple registrants on September 25, 2015.

On September 24, 2015, the Center sent an email communication to the parties in both Chinese and English regarding the language of the proceeding of the Disputed Domain Name <bhpbilliton.cc>. On September 25, 2015, the Complainant submitted a request that English be the language of the proceeding. The Respondents did not comment on the language of the proceeding by the specified due date. On September 29, 2015, the Respondent zhong tian requested a model Response in Chinese.

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 Respondents of the Complaint in Chinese and English, and the proceeding commenced on September 30, 2015. In accordance with the Rules, paragraph 5, the due date for Response was October 20, 2015. The Response was filed by zhong tian with the Center on October 20, 2015 regarding the Disputed Domain Name <bhpbilliton.me>.

The Center appointed Peter J. Dernbach as the sole panelist in this matter on October 26, 2015. 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, a company incorporated in Australia, is a wholly owned subsidiary of BHP Billiton Limited. BHP Billiton Group is the world’s largest diversified resources group, employing more than 40,000 people in more than 100 operations in 25 countries. The core of the Group is a dual listed company comprising BHP Billiton Limited and BHP Billiton Plc. The two entities continue to exist as separate companies, but operate as a combined group known as BHP Billiton.

BHP Billiton is the owner of numerous trademark registrations for the trademark BHP BILLITON in Australia, New Zealand, the United Kingdom of Great Britain and Northern Ireland (“United Kingdom”), the European Union, the United States of America and Canada. The trademark is protected in China through the Madrid Protocol.

BHP Billiton owns via various domain names including <bhpbilliton.com>, <bhpbilliton.net>, <bhpbilliton.info>, <bhpbilliton.org>, <bhpbilliton.jobs>, <bhpbilliton.mobi> and <bhpbilliton.biz>.

According to the WhoIs data and the Registrars’ verification responses, the Respondents are zhong tian for <bhpbilliton.me>, and lixia for <bhpbilliton.cc>. The Disputed Domain Names registered by the Respondents are as follows:

<bhpbilliton.me>: registered on August 30, 2015; expiring on August 30, 2016.

<bhpbilliton.cc>: registered on September 3, 2015; expiring on September 4, 2016.

The respective Registrars confirmed that the Registration Agreement is in English for <bhpbilliton.me> and Chinese for <bhpbilliton.cc>.

5. Parties’ Contentions

A. Complainant

The Complainant requests the Disputed Domain Names be transferred to the Complainant based on the following grounds:

(i) The Disputed Domain Names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights.

The Complainant is the owner of BHP BILLITON trademarks, which are well known worldwide. The Disputed Domain Names <bhpbilliton.me > and <bhpbilliton.cc> are confusingly similar and nearly identical to the Complainant’s BHP BILLITON trademark since they reproduce the BHP BILLITON trademark in its entirety, with the mere addition of a country code Top-Level Domain (“ccTLD”) such as “.me” and “.cc”, which do not cause the Disputed Domain Names to be distinguishable from the Complainant’s trademarks.

(ii) The Respondents have no rights or legitimate interests in respect of the Disputed Domain Names.

The Respondents have not been commonly known by the Disputed Domain Names. Furthermore, the Complainant is not aware of any trademarks in which the Respondents may have rights that are identical or similar to the Disputed Domain Names. The Respondents are not making legitimate noncommercial or fair use of the Disputed Domain Names.

(iii) The Disputed Domain Names have been registered and are being used in bad faith.

The Complainant enjoys a worldwide reputation in its BHP BILLITON trademark and relevant domain names, and it has been established that bad faith registration may be inferred from the registration of a well-known mark. Therefore, the Respondents’ registration of the Disputed Domain Names that are confusingly similar to the Complainant’s well-known BHP BILLITON trademark constitutes bad faith registration.

The Respondents registered the Disputed Domain Names in order to prevent the Complainant from reflecting its trademark in ccTLD “.me” and “.cc”. The Disputed Domain Names point to a website containing sponsored links so it is used for commercial gain. The Respondents are doing so clearly with the intention of creating a likelihood of confusion with the Complainant’s well-known BHP BILLITON mark.

B. Respondents

The Respondent zhong tian, replied to the Center in connection with the Dispute Domain Name <bhpbilliton.me> as follows:

(i) The Disputed Domain Names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights.

The Complainant is not the owner of the BHP BILLITON trademark and therefore is not eligible to serve as the Complainant.

(ii) The Respondents have no rights or legitimate interests in respect of the Disputed Domain Names.

Based on trademark registration data, the Complainant is not the owner of the BHP BILLITON trademark used in the Disputed Domain Name.

(iii) The Disputed Domain Names have been registered and are being used in bad faith.

The Respondent acquired the Disputed Domain Name in good faith, does not use it in bad faith, and the Disputed Domain Name does not serve any commercial purpose for the trademark owner. The Disputed Domain Name has its own identity, and does not adversely affect the trademark owner, and does not cause any commercial loss.

The linked website on the Disputed Domain Name is a default DNS settings. The Respondent did not do this on purpose. The Respondent has registered the Disputed Domain Name for less than one month, and the Disputed Domain Name does not link to the competitors of the trademark owner, or has not been used in bad faith for commercial gain.

6. Preliminary Procedural Issues

A. Complaint against multiple Disputed Domain Names

Paragraph 3(c) of the Rules provides that “the complaint may relate to more than one domain name, provided that the domain names are registered by the same domain-name holder”.

In addition, consolidation may be permitted in the case of complaints brought (whether or not filed by multiple complainants) against more than one respondent, where (i) the domain names or the websites to which they resolve are subject to common control; and (ii)the consolidation would be fair and equitable to all parties. (WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 4.16).

The Complainant filed the Complaint against two Disputed Domain Names. Hence, the Panel has to review the facts and determine whether filing of the Complaint complies with the Policy and the Rules.

The Disputed Domain Names <bhpbilliton.me>, and <bhpnilliton.cc> are registered by zhong tian and lixia respectively. The names of the Registrants appear to be different, but based on the contact information provided by their respective Registrars, these two registrants share the same postal address, email address, and phone number. The Panel thus has sufficient evidence to infer from this information that these two Registrants are either in fact the same domain-name holder, or the Disputed Domain Names are under common control. Therefore, the Panel finds that the Complaint against the two Disputed Domain Names is in compliance with the Policy and the Rules and will consolidate these two Disputed Domain Names in the same proceeding. Accordingly, the Respondent zhong tian and the Respondent lixia are hereinafter referred to as the “Respondent”.

B. Language of the Proceeding

Paragraph 11(a) of the Rules provides that “[u]nless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding”.

The Rules allow the Panel to determine the language of the proceeding having regard to all the circumstances. In particular, it is established practice to take paragraphs 10(b) and (c) of the Rules into consideration for the purpose of determining the language of the proceeding. In other words, it is important to ensure fairness to the parties and the maintenance of an inexpensive and expeditious avenue for resolving domain name disputes. (Whirlpool Corporation, Whirlpool Properties, Inc. v. Hui’erpu (HK) electrical applicance co. ltd., WIPO Case No. D2008-0293). The language finally decided by the Panel for the proceeding should not be prejudicial to either one of the parties in his or her abilities to articulate the arguments for the case. (Groupe Auchan v. xmxzl, WIPO Case No. DCC2006-0004). WIPO Overview 2.0 further states: “in certain situations, where the respondent can apparently understand the language of the complaint (or having been given a fair chance to object has not done so), and the complainant would be unfairly disadvantaged by being forced to translate, the WIPO Center as a provider may accept the language of the complaint, even if it is different from the language of the registration agreement”. (See paragraph 4.3 of WIPO Overview 2.0).

The Registration Agreement is in English for < bhpbilliton.me> and Chinese for < bhpbilliton.cc>. Therefore, the language of the administrative proceeding should generally be either English or Chinese according to paragraph 11(a) of the Rules. The Complainant has requested that the language of the proceeding be English, and the Respondent did not comment on the language of the proceeding except for requesting a Model Response in Chinese. For the following reasons, the Panel decides that the language of the proceeding shall be English.

(1) With respect to the Disputed Domain Name <bhpbilliton.me>, the Registration Agreement is in English, the Complaint was filed in English and therefore English is the appropriate language of the proceeding.

(2) With respect to the Disputed Domain Name <bhpbilliton.cc>, the website to which the Disputed Domain Name resolves to or previously resolved to contain English, which suggests that the website is designed to attract Internet users from around the world rather than only Chinese users (Dolce & Gabbana S.r.l. v. Shuangzhi Lee, WIPO Case No. D2013-1103).

(3) The Panel finds that the Complainant is not in a position to conduct the proceeding in Chinese without additional expense and delay due to the need for translation of the Complaint into Chinese.

(4) The Center’s communication to the Respondent uses both English and Chinese and has given the Respondent an opportunity to object to the Complainant’s request. The Respondent did not reject the Complainant’s request or have any opinions on the language of the proceeding in its reply to the Center.

(5) After considering that the Complainant would not be unfairly disadvantaged, the Panel accepts the Response that was submitted in Chinese, and will not require it to be translated into English, in order to ensure that the administrative proceeding take place with due expedition.

7. Discussion and Findings

A. Identical or Confusingly Similar

Paragraph 4(a)(i) of the Policy provides that “[a domain-name holder] is required to submit to a mandatory administrative proceeding in the event that [a complainant] asserts to the applicable [administrative-dispute-resolution service provider], in compliance with the Rules of Procedure, that (i) [the disputed domain name] is identical or confusingly similar to a trademark or service mark in which the complainant has rights[.]”

The Respondent contends that the Complainant is not the owner of the BHP BILLITON trademark so the Complainant does not have the right to the trademark. However, in most circumstances, according to paragraph 1.6 of the WIPO Overview 2.0, a licensee of a trademark or a related company such as a subsidiary or parent to the registered holder of a trademark is considered to have rights in a trademark under the UDRP. The Panel, in considering the right of the Complainant to bring forward its current Complaint, has taken into account a number of issues. The Panel acknowledges and agrees with the Complainant that in previous instances, past UDRP panels have permitted parties with beneficial rights to a trademark to assert their claims. Additionally, the fact that the Complainant operates under the “Bhp Billiton” name, as a subsidiary of BHP Billiton Limited, is persuasive to the Panel as well. As a result of these facts, the Panel finds that the Complainant has a sufficient basis to rely on rights in the BHP BILLITON mark for the purposes of this Complaint. (Komatsu Deutschland GmbH v. Ali Osman / ANS, WIPO Case No. D2009-0107).

The Panel has therefore concludes that the Complainant has rights in the BHP BILLITON trademark for purposes of the Policy.

The Disputed Domain Names, <bhpbilliton.me> and <bhpnilliton.cc>, incorporate the BHP BILLITON trademark in its entirety, with the addition of the ccTLDs “.me” as well as “.cc”. The addition of the ccTLDs “.me” and “.cc” cannot distinguish the Disputed Domain Names from the Complainant’s BHP BILLITON trademark. The only distinctive part of the Disputed Domain Names is “bhp billiton”, which is identical to the trademark in which the Complainant has rights.

According to the above, the Panel concludes that the Disputed Domain Names are confusingly similar to the Complainant’s BHP BILLITON trademark. The condition of paragraph 4(a)(i) of the Policy has been fulfilled.

B. Rights or Legitimate Interests

Paragraph 4(a)(ii) of the Policy provides that “[a domain-name holder] is required to submit to a mandatory administrative proceeding in the event that [a complainant] asserts to the applicable [administrative-dispute-resolution service provider], in compliance with the Rules of Procedure, that […] (ii) [the respondent has] no rights or legitimate interests in respect of the [disputed] domain name[.]”

Paragraph 4(c) of the Policy sets out the following several circumstances “[which], in particular but without limitation, if found by the Panel, shall demonstrate [the respondent’s] rights or legitimate interests to the [disputed] domain name for the purposes of Paragraph 4(a)(ii) [of the Policy]:

(i) before any notice to [the respondent] of the dispute, [the respondent’s] use of, or demonstrable preparations to use, the [disputed] domain name or a name corresponding to the [disputed] domain name in connection with a bona fide offering of goods or services; or

(ii) [the respondent] (as an individual, business, or other organization) [has] been commonly known by the [disputed] domain name, even if [the respondent has] acquired no trademark or service mark rights; or

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

The Panel has established that the Complainant has rights in the BHP BILLITON trademark, as noted above. Based on the available record, the Panel finds that the Complainant has made out a prima facie case that the Respondent lacks rights or legitimate interests in the Disputed Domain Names. The burden of production shifts to the Respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the Disputed Domain Names.

The Respondent did not submit any persuasive allegation or evidence indicating any rights or legitimate interests as demonstrated in paragraph 4(c) of the Policy. The Disputed Domain Names are not used for any bona fide offering of goods or services. The Respondent is not in any way related to the Complainant’s business, is not one of its distributors and the Respondent does not carry out any activity for the Complainant nor does it have any business with it. Therefore, the Respondent cannot claim that it has rights or legitimate interests in the Disputed Domain Names.

According to the record in the WhoIs database, there is no evidence showing that the Disputed Domain Names have any connection with the Respondent’s name or the Respondent is commonly known by the Disputed Domain Names.

Therefore, the Panel finds that the condition of paragraph 4(a)(ii) of the Policy has been fulfilled.

C. Registered and Used in Bad Faith

Paragraph 4(a)(iii) of the Policy provides that “[a domain-name holder] is required to submit to a mandatory administrative proceeding in the event that [a complainant] asserts to the applicable [administrative-dispute-resolution service providers], in compliance with the Rules of Procedure, that […] (iii) [the respondent’s] domain name has been registered and is being used in bad faith”.

Paragraph 4(b) of the Policy explicitly states, in relevant part, that “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:

[…]

(iv) by using the domain name, [the respondent has] intentionally attempted to attract, for commercial gain, Internet users to [the respondent’s] 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 [the respondent’s] web site or location or of a product or service on [the respondent’s] web site or location”.

The BHP BILLITON trademark has been registered in many countries in the world. The Respondent chose BHP BILLITON trademark as the only distinctive part of the Disputed Domain Names. No allegation or evidence suggests that the Respondent selected the BHP BILLITON as used in the Disputed Domain Names for any reason other than the reputation of the trademark. Such intentional registration shows the bad faith of the Respondent. Thus, the Panel concludes that the Disputed Domain Names were registered in bad faith.

Moreover, the websites that <bhpbilliton.me> and <bhpbilliton.cc> previously resolved to or currently resolve to contain advertisements or links with names such as “BHP Billiton Jobs”, “Mining Companies Australia”, etc. clearly aiming at confusing the Internet users so that they may click on the advertisements or sponsored links. The Panel therefore infers that the Respondent, by registering the Disputed Domain Names, has intentionally attempted to attract, for commercial gain, Internet users to its 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 the Respondent’s website or location or of a product or service on the Respondent’s website.

The Respondent argues that the sponsored links on the website that the Disputed Domain Name previously resolved to or currently resolves to are default settings, and that the Respondent is not responsible for the content. However, UDRP panels have found that a domain name registrant will normally be deemed responsible for content appearing on a website at its domain name, even if such registrant may not be exercising direct control over such content. Prior UDRP panels have recognized that the use of another’s trademark to generate revenue from Internet advertising can constitute registration and use in bad faith as a classic illustration of the conduct condemned by paragraph 4(b)(iv) of the Policy. (McDonald’s Corporation v. ZusCom, WIPO Case No. D2007-1353). The Panel therefore concludes that the Disputed Domain Names have been registered and are being used in bad faith.

The condition of paragraph 4(a)(iii) of the Policy has been fulfilled.

8. 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 Names <bhpbilliton.me> and <bhpbilliton.cc> be transferred to the Complainant.

Peter J. Dernbach
Sole Panelist
Date: November 9, 2015