WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

BHP Billiton Innovation Pty Ltd v. Kiara Earle

Case No. D2016-0956

1. The Parties

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

The Respondent is Kiara Earle of Bieler, Western Australia.

2. The Domain Name and Registrar

The disputed domain name <bhpbillitoncareers.com> is registered with eNom, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 13, 2016. On May 13, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 16, 2016, 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. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amended Complaint on May 19, 2016.

The Center verified that 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 May 19, 2016. In accordance with the Rules, paragraph 5, the due date for Response was June 8, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 14, 2016.

The Center appointed Andrea Dawson as the sole panelist in this matter on July 5, 2016. 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

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 Complainant, BHP Billiton Innovation is a wholly owned subsidiary of BHP Billiton Limited, holding some of BHP Billiton’s intellectual property. BHP Billiton is often referred to simply as BHP.

The Complainant is the owner of numerous trademark registrations for the trademark BHP BILLITON around the world; among others one can mention Australia (BHP BILLITON trademark registration no. 764470 registered on June 12, 2008); New Zealand, the United Kingdom of Great Britain and Northern Ireland, the European Union, the United States of America and Canada (See Annexure 7 of the Complaint).

BHP Billiton controls numerous domain names containing the trademark BHP BILLITON, including <bhpbilliton.com>, <bhpbilliton.net>, <bhpbilliton.info>, <bhpbilliton.org>, <bhpbilliton.jobs>, <bhpbilliton.mobi> and <bhpbilliton.biz>.

The disputed domain name was registered on April 20, 2016.

At the time the Complaint was filed the disputed domain name forwarded to the Complainant’s website at “www.bhpbilliton.com”. The website is currently inactive and contains a message stating that the account has been suspended.

5. Parties’ Contentions

A. Complainant

The Complainant asserts that it owns very extensive rights in the BHP BILLITON trademark and that the BHP BILLITON trademark has over the years become the world’s most well known brand in diversified resources and the mining of such resources.

The Complainant further asserts that consumers, upon viewing the disputed domain name, are highly likely to expect an association with BHP Billiton, in particular in light of the similarity of the domain name with the BHP BILLITON trademark, notwithstanding the non-distinctive addition of the term “careers”

The Complainant states that the Respondent is not providing a legitimate service through the disputed domain name, that the Respondent has no rights in relation to the disputed domain name, and that the Respondent is not commonly known by the disputed domain name. Furthermore, BHP Billiton is not aware of any trademarks in which the Respondent may have rights that are identical or similar to the disputed domain name.

The Complainant asserts that the Respondent is not using the disputed domain name for a legitimate business, nor has it made demonstrable preparations to use the disputed domain name in relation to a bona fide offering of goods or services.

The Complainant adds that it may be inferred from the Respondent’s registration of a domain name that is confusingly similar to its well-known BHP BILLITON trademark that the disputed domain name was registered in bad faith. The Complainant adds that the fact that the Respondent is using the disputed domain name to engage in what the Complainant suspects is an elaborate attempt at recruitment fraud as described in this Complaint is evidence of bad faith registration and use of the disputed domain name.

The Complainant among other circumstances asserts that the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of the website or location or of a product or service on the website or location.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

A. Identical or Confusingly Similar

The Complainant has established rights to the BHP BILLITON trademarks. The disputed domain name, which combines the Complainant’s trademark with the generic term “careers”, is confusingly similar to the registered trademarks of the Complainant.

This Panel agrees with the Complainant’s opinion that the addition of the element “career”, is not sufficient to avoid the confusing similarity between the disputed domain name and the Complainant’s trademark, but, on the contrary, it may add to the confusion given the many thousands of domain names owned by the Complainant and that its trademarks are very well-known internationally.

Therefore, the Panel finds the disputed domain name to be confusingly similar to the trademark BHP BILLITON in which the Complainant has rights. Accordingly, the Panel finds that the Complainant has satisfied paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

Under paragraph 4(a)(ii) of the Policy, the Complainant must prove that the Respondent has no rights or legitimate interests in the disputed domain name.

However, many prior UDRP panels have established that once a complainant makes out a prima facie case that a respondent has no rights or legitimate interests in a disputed domain name the burden of production shifts to the respondent to demonstrate that it does have rights or legitimate interests in the disputed domain name.

The Panel agrees that the Complainant needs only to make out a prima facie case and finds that it has met that standard.

The Panel accepts the arguments of the Complainant that the Respondent has not been authorized by the Complainant to use its trademark, or to seek registration of any domain name incorporating said mark.

The Respondent does not appear to make any legitimate noncommercial or fair use of the disputed domain name, nor any use in connection with a bona fide offering of goods or services for the reasons described in section 6.C below.

Finally, the Respondent has not replied to the Complainant’s contentions, alleging any rights or legitimate interests in the disputed domain name.

Accordingly, the Panel finds that the Complainant has satisfied paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

Under paragraph 4(a)(iii) of the Policy, the Complainant must prove that the disputed domain name was registered and is being used in bad faith. Paragraph 4(b) of the Policy sets out certain circumstances which, in particular but without limitation, if found by the Panel to be present, shall be evidence of both registration and use of the disputed domain name in bad faith.

The Panel finds that the Complainant has submitted evidence, unchallenged by the Respondent, that the Respondent has registered the disputed domain name with knowledge of the Complainant’s rights in the Complainant’s trademarks and that the Respondent’s bad faith is evidenced by several circumstances indicating that the Respondent must have been aware of the Complainant’s trademarks at the time of the registration of the disputed domain name.

Furthermore the Panel finds that it is reasonable to conclude that Respondent had knowledge of the Complainant’s existence and the services it provided, since it cannot be a mere coincidence that not only does the disputed domain name coincide with a registered trademark of the Complainant, but it also includes a generic term which can easily be confused as the Complainants recruitment site, offering employment opportunities by the Complainant.

Consequently, it is fair to conclude that the Respondent must have had the Complainant’s trademark in mind when registering the disputed domain name, especially taking into consideration that the Complainant is a worldwide corporate holding that offers employment opportunities to a large spectrum of people, very similar to what the Respondent was supposedly offering via its website.

Finally, noting the assertions and documents provided by the Complainant regarding the Respondent’s activities, this Panel considers that there is enough evidence to find in the balance of probabilities that the Respondent’s real intention was to give the impression of being a legitimate BHP BILLITON Group business and to take advantage of the reputation and goodwill associated with the Complainant’s BHP BILLITON trademark.

In view of the above, it is clear to the Panel that the Respondent intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation, or endorsement of its website.

For the above-cited reasons, the Panel finds that the disputed domain name was registered and is being used in bad faith; therefore, the requirements of paragraph 4(a)(iii) of the Policy are also fulfilled in this case.

7. 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 name, <bhpbillitoncareers.com> be transferred to the Complainant.

Andrea Dawson
Sole Panelist
Date: July 14, 2016