WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

BHP Billiton Innovation Pty Ltd v. Zong Wang

Case No. D2017-0625

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 Respondent is Zong Wang of Nanning, Guangxi, China.

2. The Domain Names and Registrars

The disputed domain names <bhpchina.com>, <bhpcn1.com> and <bhpcn2.com> (the "Disputed Domain Names") are registered with GoDaddy.com, LLC (the "Registrar").

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on March 28, 2017. On March 28, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Names. On March 29, 2017, 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on March 30, 2017. In accordance with the Rules, paragraph 5, the due date for Response was April 19, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on April 22, 2017.

The Center appointed Peter J. Dernbach as the sole panelist in this matter on April 28, 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

The Complainant is an affiliate of a global diversified resources group BHP Billiton, which is headquartered in Melbourne, Australia, with major offices in London, United Kingdom of Great Britain and Northern Ireland (the "United Kingdom"), and supporting offices around the world. The Complainant has produced registration information of several trademarks, inter alia: BHP, China trademark, Registration No. 843825, registered on May 28, 1996; BHP, the United States trademark, Registration No. 3685364, registered on September 22, 2009; and BHP, the United States trademark Registration No. 1367145, registered on October 22, 1985.

According to the WhoIs data and the Registrar's verification response, the Disputed Domain Names were registered on March 10, 2017. Although the the Disputed Domain Dame <bhpchina.com> is currently inactive, the evidence submitted with the Complaint shows that it previously resolved to a website which included "BHP Billiton" in its heading. The disputed domain names <bhpcn1.com> and <bhpcn2.com> do not resolve to active websites.

5. Parties' Contentions

A. Complainant

The Complainant requests that 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 Disputed Domain Names are confusingly similar to the Complainant's BHP trademark. The Disputed Domain Names integrate the BHP trademark in its entirety. The generic Top-Level Domain ("gTLD") ".com" does not affect the assessment that a domain name is confusingly similar to a particular trade mark. The non-distinctive addition "China", "cn", "1" and "2" to the Disputed Domain Names cannot change the fact that the Disputed Domain Names are confusingly similar with the BHP trademarks.

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

The Respondent has not at any time been commonly known by the Disputed Domain Names. Furthermore, the Complainant is not aware of any trademarks in which the Respondent may have rights that are identical or similar to the Disputed Domain Names. Also, the Respondent is 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 Respondent's registration of domain names that are confusingly similar to the Complainant's well-known BHP trademark constitutes registrations in bad faith.

Also, the Disputed Domain Name <bhpchina.com> resolved to an active website, which the Complainant suspects is an elaborate attempt at fraud by attracting Internet users to an online location by creating a likelihood of confusion with the Complainant and its BHP trademark. Moreover, the Respondent's "passive use" of the Disputed Domain Names <bhpcn1.com> and <bhpcn2.com> is evidence of bad faith use in light of the present set of circumstances. Accordingly, the Disputed Domain Names are being used in bad faith.

B. Respondent

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

6. Preliminary Procedural Issue: 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".

The Complainant filed the Complaint against several 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, <bhpchina.com>, <bhpcn1.com> and <bhpcn2.com> are all registered by the same registrant. Therefore, the Panel finds that the Complaint against the three Disputed Domain Names is in compliance with the Policy and the Rules and will include all three Disputed Domain Names in the same proceeding.

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 Complainant has established that it is the owner of the BHP trademark.

The Disputed Domain Names, <bhpchina.com>, <bhpcn1.com> and <bhpcn2.com>, incorporate the BHP trademark in its entirety with the combination of terms "china", "cn", numbers "1", "2", and the generic Top−Level Domain ("gTLD") ".com". The additions of the terms "China" and "cn", numbers "1" and "2" as well as the gTLD ".com" do not distinguish the Disputed Domain Names from the Complainant's BHP trademark. The distinctive part of the Disputed Domain Names is the "bhp" element, which contains the Complainant's trademark in its entirety.

The Panel concludes that the Disputed Domain Names are confusingly similar to the Complainant's BHP 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 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 Complainant has established it is the owner of the BHP trademark and confirmed that it has no connection or affiliation with the Respondent. The Complainant also states that it is not aware of any trademarks in which the Respondent may have rights that are identical or similar to the Disputed Domain Names.

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 thus 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 evidence or allegation to show that it has rights or legitimate interests as demonstrated in paragraph 4(c) of the Policy in respect of the Disputed Domain Names. The Respondent did not disclose any relationship with the Complainant. 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 otherwise commonly known by the Disputed Domain Names.

Also, the Respondent did not submit any evidence or allegation to show that it is making a legitimate noncommercial or fair use of the Disputed Domain Names, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue

Based on the above, 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 Complainant's BHP trademark has been registered in many jurisdictions in the world and the Respondent chose to use the BHP trademark as the distinctive part of the Disputed Domain Names. No allegation or evidence suggests that the Respondent selected the BHP trademark as used in the Disputed Domain Names for any reason other than the reputation of the Complainant's trademark. Therefore, the Panel confirms that the Disputed Domain Names were registered in bad faith.

All the Disputed Domain Names are inactive now. However, previous content of the website provided in evidence as annexes to the Complaint indicates that the Respondent extensively used the BHP trademark on the website to which the Disputed Domain Name <bhpchina.com> resolved. The content of the website included an introduction to the resources company "BHP Billiton" and appears to have been reproduced from the Complainant's official website "www.bhpbilliton.com". The features would create an impression with Internet users that the website was an official website of the Complainant, or is endorsed or sponsored by the Complainant. The Panel finds that the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the Respondent's website by creating a likelihood of confusion with the Complainant's trade mark and official site. The Panel concludes that the aforementioned Disputed Domain Name was used in bad faith.

The Disputed Domain Names <bhpcn1.com> and <bhpcn2.com> are currently inactive and do not redirect to any website. However, the fact that the Respondent passively holds the inactive Disputed Domain Names does not prevent the Panel from a finding of use in bad faith. The Panel must still examine all the circumstances of the case to determine whether the Respondent is acting in bad faith. (Paragraph 3.2 of WIPO Overview 2.0). The Panel looks into the present case in its entirety and finds that it is highly possible that the Respondent passively holds the inactive Disputed Domain Names for some future active use in a way that would be competitive with or otherwise detrimental to the Complainant. (Jupiters Limited v. Aaron Hall, WIPO Case No. D2000-0574). According to the foregoing cumulative facts, the Panel finds that the Respondent's passive holding of the Disputed Domain Names that are currently inactive constitutes use in bad faith.

As 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, <bhpchina.com>, <bhpcn1.com> and <bhpcn2.com>, be transferred to the Complainant.

Peter J. Dernbach
Sole Panelist
Date: May 12, 2017