WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
BHP Billiton Innovation Pty Ltd v. Burha
Case No. D2017-1711
1. The Parties
Complainant is BHP Billiton Innovation Pty Ltd of Melbourne, Australia, represented by Griffith Hack Patent and Trade Mark Attorneys, Australia.
Respondent is Burha of Manama, Bahrain.
2. The Domain Name and Registrar
The disputed domain name <billitonrecruitment.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 September 6, 2017. On September 6, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 7, 2017, the Registrar transmitted by email to the Center its verification response confirming that 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 Respondent of the Complaint, and the proceedings commenced on September 14, 2017. In accordance with the Rules, paragraph 5, the due date for Response was October 4, 2017. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on October 5, 2017.
The Center appointed Stephanie G. Hartung as the sole panelist in this matter on October 11, 2017. 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
Complainant is a company organized under the laws of Australia that belongs to one of the world’s leading resources companies, extracting and processing minerals, oil, gas and other products.
Complainant has provided evidence that the Billiton group of companies is the registered owner of numerous trademarks relating to the designation “Billiton” including, inter alia:
- Word mark BILLITON, IP Australia, Registration No.: 301605,
Registration Date: October 27, 1976, Status: Active;
- Word mark BILLITON; Intellectual Property India, Registration No.: 381445;
Registration Date: September 28, 1984; Status: Active;
- Word mark BILLITON, Japan Patent Office, Registration No.: 1406289,
Registration Date: January 31, 1980, Status: Active.
Moreover, Complainant evidentially controls a number of domain names relating to the BILLITON trademark, including <billiton.com>, <bhpbilliton.com> and <bhpbillitonjobs.com>, most of which redirect to Complainant’s official website at “www.bhp.com” promoting Complainant’s business and products.
Respondent, residing in Bahrain, registered the disputed domain name on July 9, 2017. As of the time of the rendering of this decision, the disputed domain name does not resolve to any content on the Internet.
Complainant requests that the disputed domain name be transferred to Complainant.
5. Parties’ Contentions
Complainant contends to be the world’s largest diversified resources group, employing more than 40,000 people in more than 100 operations in 25 countries. Complainant alleges that the BHP BILLITON trademark has over the years become the world’s most well-known brand in diversified resources.
Complainant submits that the disputed domain name is confusingly similar to Complainant’s BHP BILLITON and BILLITON trademarks, notwithstanding the non-distinctive addition “recruitment”.
Moreover, Complainant asserts that the Respondent has no rights or legitimate interests with respect to the disputed domain name since (1) Respondent has not at any time been commonly known by the disputed domain name nor is Complainant aware of any trademarks identical or similar to the disputed domain name in which Respondent may have rights and (2) Respondent is not making a legitimate noncommercial or fair use of the disputed domain name which at the date of the filing of the Complaint did not point to any active website.
Finally, Complainant argues that Respondent registered and is using the disputed domain name in bad faith since (1) the disputed domain name reflects Complainant’s well-known trademark, (2) Complainant suspects that Respondent attempts to engage in a so-called recruitment fraud inviting applicants to an employment offer to make a payment to Respondent and (3) even the mere “passive use” of the disputed domain name in the absence of any actual or contemplated good faith use may qualify as pointing to bad faith.
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
Under paragraph 4(a) of the Policy, Complainant carries the burden of proving:
(i) That the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) That Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) That the disputed domain name has been registered and is being used in bad faith.
Respondent's default in the case at hand does not automatically result in a decision in favor of Complainant, however, paragraph 5(f) of the Rules provides that if Respondent does not submit a response, in the absence of exceptional circumstances, the Panel may decide the dispute solely based upon the Complaint. Further, the Panel may draw such inferences as are appropriate from Respondent's failure to submit a Response.
A. Identical or Confusingly Similar
The Panel concludes that the disputed domain name <billitonrecruitment.com> is confusing similar to the BILLITON trademark in which Complainant has rights.
The disputed domain name incorporates the BILLITON trademark in its entirety. Numerous UDRP panels have recognized that incorporating a trademark in its entirety can be sufficient to establish that the disputed domain name is at least confusingly similar to a registered trademark (see e.g., PepsiCo, Inc. v. PEPSI, SRL (a/k/a P.E.P.S.I.) and EMS Computer Industry (a/k/a EMS), WIPO Case No. D2003-0696). Moreover, it has been held in many UDRP decisions and has become a consensus view among panelists (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.8), that the addition of a generic or descriptive term or geographic wording to a trademark in a domain name is insufficient, in and of itself, to avoid the finding of confusing similarity under the first element of the UDRP. Accordingly, the addition of the generic term “recruitment” does not dispel the confusing similarity arising from the incorporation of Complainant’s BILLITON trademark in the disputed domain name.
Therefore, Complainant has established the first element under the Policy set forth by paragraph 4(a)(i).
B. Rights or Legitimate Interests
The Panel is further convinced on the basis of Complainant’s undisputed contentions that Respondent has not made use of the disputed domain name in connection with a bona fide offering of goods or services, nor has Respondent been commonly known by the disputed domain name, nor can it be found that Respondent has made a legitimate noncommercial or fair use thereof without intent for commercial gain.
Respondent has not been authorized to use Complainant’s BILLITON trademark, either as a domain name or in any other way. Also, there is no reason to believe that Respondent’s name somehow corresponds with the disputed domain name and Respondent does not appear to have any trademark rights associated with the term “Billiton”. Finally, Respondent has not used the disputed domain name for a bona fide offering of products or services nor for a legitimate noncommercial or fair purpose. So far, the disputed domain name apparently did not resolve to any active content on the Internet, neither by the time of the filing of the Complaint nor as of the time of the rendering of this decision, in other words, it appears to have been passively held. In this context, UDRP panels have recognized that merely registering a domain name, even one that is comprised of a dictionary word or phrase, does not by itself automatically confer rights or legitimate interests in said domain name (see WIPO Overview 3.0, section 2.10.1).
Accordingly, Complainant has established a prima facie case that Respondent has no rights or legitimate interests with respect to the disputed domain name. Having done so, the burden of production shifts to Respondent to come forward with appropriate evidence demonstrating rights or legitimate interests in the domain name (see WIPO Overview 3.0, section 2.1). Given that Respondent has defaulted, Respondent has not met that burden.
Therefore, the Panel finds that Complainant has also satisfied paragraph 4(a)(ii) and, thus, the second element of the Policy.
C. Registered and Used in Bad Faith
The Panel finally holds that the disputed domain name was registered and is being used by Respondent in bad faith.
Complainant suspects that Respondent in registering the disputed domain name attempts to engage in a so-called recruitment fraud inviting applicants to an employment offer to make a payment to Respondent. Though Complainant’s line of argumentation is not supported by any further evidence, UDRP panelists have found that the non-use of a domain name would not generally prevent a finding of bad faith under the doctrine of passive holding, but that the totality of the circumstances in each case is to be looked at, including factors such as the degree of Complainant’s trademark reputation, the failure of Respondent to submit a response or the implausibility of any good faith use to which the domain name may be put (see WIPO Overview 3.0, section 3.3). In the case at hand, the Panel notes that at least Complainant’s BHP BILLITON trademark allegedly has become a very well-known brand in diversified resources, that Complainant’s BILLITON trademarks have been registered for over three decades, that Respondent in fact has not submitted any response and, finally, given that the term “Billiton” apparently is no dictionary or generic term, the case file lacks any indication as to why Respondent needed to rely on this very term other than to somehow profit from the good reputation connected thereto. The Panel, therefore, concludes that Respondent has registered and uses the disputed domain name in a manner which at least takes unjustified and unfair advantage of the BILLITON trademark and must, therefore, be considered as registered and being used in bad faith within the meaning of the Policy.
Therefore, the Panel finds that Complainant has also satisfied the third element under the Policy as set forth by paragraph 4(a)(iii).
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 <billitonrecruitment.com> be transferred to Complainant.
Stephanie G. Hartung
Date: October 17, 2017