WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

BHP Billiton Innovation Pty Ltd v. Femi Gam

Case No. D2017-1152

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 Femi Gam of Portland, Oregon, United States of America.

2. The Domain Name and Registrar

The disputed domain name <bhpbillitoncareer.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 June 13, 2017. On June 13, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 14, 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 June 16, 2017. In accordance with the Rules, paragraph 5, the due date for Response was July 6, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 10, 2017.

The Center appointed Halvor Manshaus as the sole panelist in this matter on July 21, 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 part of an Anglo-Australian diversified resources group, having its headquarters in Melbourne, Victoria, Australia. The Complainant and its related entities employ more than 40,000 people in more than 100 operations in 25 countries, with a market capitalization of USD 108 billion as of June 30, 2015.

The Complainant owns the work mark BHP BILLITON registered inter alia in Australia (reg. no. 1141449), New Zealand (reg. no. 764470), the United Kingdom of Great Britain and Northern Ireland (reg. no.

2264607), the European Union (reg. no. 0986799), the United States of America (reg. no. 3703871, registered on November 3, 2009) and Canada (reg. no. TMA794995).

The Complainant owns the domain names <bhpbilliton.com>, <bhpbilliton.net>, <bhpbilliton.info>, <bhpbilliton.org>, <bhpbilliton.mobi> and <bhpbilliton.biz>, through which the Complainant promotes the Complainant’s brand and business.

The Respondent is a private individual. The Respondent is listed as the owner of the disputed domain name, <bhpbillitoncareer.com> first registered on May 19, 2017. As of the date of this decision, the disputed domain name does not point to an active website.

5. Parties’ Contentions

A. Complainant

The Complainant contends that the disputed domain name is confusingly similar to the Complainant’s trademarks. The Complainant’s trademark BHP BILLITON is the world’s most well-known brand in diversified resources and the mining of such resources.

The Complainant contends that consumers, upon viewing the disputed domain name, are highly likely to expect an association with the Complainant. The inclusion of the descriptive term “career” does not distinguish the disputed domain name from the Complainant’s trademark BHP BILLITON. The addition of a Top-Level Domain (“TLD”) such as “.com” does not affect the assessment that the disputed domain name is confusingly similar to the Complainant’s trademark BHP BILLITON.

The Complainant contends that the Respondent does not have any right or legitimate interest in the disputed domain name. The Respondent has not at any time been commonly known by the disputed domain name and the Complainant is not aware of the trademarks in which the Respondent may have rights that are identical or similar to the disputed domain name. The Respondent is not making legitimate noncommercial or fair use of the disputed domain name.

The Complainant contends that the disputed domain name was registered, and is used in, bad faith. It may be inferred from the Respondent’s registration of a domain name that is confusingly similar to the Complainant’s well-known trademark BHP BILLITON that the disputed domain name was registered in bad faith. The Respondent has used the disputed domain name to dispatch emails with fraudulent employment offers in the Complainant. The Respondent’s conduct in registering the disputed domain name is passive use that in itself, viewed in the context of the present set of circumstances, is evidence of bad faith use.

B. Respondent

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

6. Discussion and Findings

The Complainant has, in accordance with paragraph 4(i) of the Policy, requested that the disputed domain name be transferred to the Complainant.

In accordance with paragraph 4(a) of the Policy, in order to succeed in this proceeding and obtain the transfer of the disputed domain name, the Complainant must establish that each of the three following elements is satisfied:

(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and

(iii) the disputed domain name has been registered and is being used in bad faith.

Pursuant to paragraph 15(a) of the Rules, the Panel shall decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable. Moreover, in accordance with paragraph 14(b) of the Rules, if a party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under, the Rules of any request from the Panel, the Panel shall draw such inferences therefrom, as it deems appropriate.

On the basis of the evidence introduced by the Complainant and in particular with regard to the content of the relevant provisions of the Policy, (paragraphs 4(a), (b), (c)), the Panel concludes as follows:

A. Identical or Confusingly Similar

The disputed domain name, <bhpbillitoncareer.com> comprises the Complainant’s trademark BHP BILLITON in its entirety. The addition of the descriptive term “career” and the extension TLD “.com” is insufficient to distinguish the disputed domain name from the Complainant’s trademark.

The Panel concludes that the disputed domain name is confusingly similar to trademarks in which the Complainant has rights.

B. Rights or Legitimate Interests

The Panel has not been presented with, or otherwise discovered, any evidence showing: (i) that the Respondent has received a license or other permission to use the Complainant’s trademarks or any domain name incorporating or simulating these marks; (ii) that the Respondent is commonly known by the disputed domain name; (iii) that the Respondent has acquired trademark or service mark rights to use the disputed domain name; or (iv) that the Respondent is making legitimate noncommercial or fair use of the disputed domain name.

The combination of the fanciful term “bhpbilliton” and the descriptive term “career” in the disputed domain name is naturally understood as referring to career opportunities in the Complainant or other employment related matters thereto. The Complainant has received an enquiry from a person claiming to have received a fraudulent employment offer from an email address under the disputed domain name.

The presented evidence referred to by the Complainant is, in the Panel’s view, sufficient to establish prima facie that the Respondent has no rights or legitimate interests in the disputed domain name. As held by the panel in Ticketmaster Corporation v. Global Access, WIPO Case No. D2007-1921, the Respondent carries the burden of demonstrating rights or legitimate interests in the disputed domain name when such prima facie case is made.

The Respondent has not replied to the Complainant’s contentions. The Panel thus concludes that the Respondent has no rights or legitimate interests in respect of the disputed domain name.

C. Registered and Used in Bad Faith

The Complainant has not submitted proof with regards to paragraph 4(b) no. (i) through (iv) of the Policy, which provides for specific circumstances that shall be considered as evidence of the registration and use of a domain name in bad faith, nor has the Panel uncovered any such proof. The question then is whether there is any other evidence for the Respondent's registration and use of the disputed domain name in bad faith.

The Panel considers it likely that the Respondent was aware of the Complainant’s trademark BHP BILLITON at the time of registration of the disputed domain name. In any case the Respondent had or should have had such knowledge as per the Complainant’s registration of the trademark worldwide.

Further, as described above concerning rights or legitimate interests, the Panel has found that the Respondent has no rights or legitimate interests in respect of the disputed domain name. This Panel therefore concludes that the Respondent sought to register the disputed domain name because of its association with the Complainant, the Complainant’s reputation and the Complainant’s business. Taken together with the fact that the Respondent has not filed any Response in these proceedings and that the Complainant has received an enquiry from a person claiming to have received a fraudulent employment offer from an email address under the disputed domain name, the Complainant has, in the Panel’s view, established on balance that the Respondent registered and used the disputed domain name in bad faith.

The Panel further notes that the disputed domain name does not resolve to any active website – so-called passive holding of the domain name. As held in Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003, and confirmed in later UDRP WIPO cases, the passive holding of a domain name can, in certain circumstances, constitute a domain name being used in bad faith.

As noted in Telstra Corporation Limited v. Nuclear Marshmallows, supra and adhered to in later decisions,
cf. Ladbroke Group Plc v. Sonoma International LDC, WIPO Case No. D2002-0131 and Sanofi-aventis v. Gerard Scarretta, WIPO Case No. D2009-0229, the question as to which circumstances may constitute a domain name being used in bad faith cannot be answered in the abstract, and must instead be answered in respect of the particular facts of a specific case. In the present case, the Panel bases its decision in this regard on the following circumstances:

(i) the Complainant's trademark BHP BILLITON has a strong reputation, is highly distinctive and widely known, and is registered worldwide;

(ii) the Respondent has not substantiated any actual or contemplated good faith use of the disputed domain name, and it is difficult to conceive of any such good faith use;

(iii) the Complainant has received an enquiry from a person claiming to have received a fraudulent employment offer from an email address under the disputed domain name;

(iv) the Respondent has failed to respond to the Complainant's correspondence regarding the registration and use of the disputed domain name, and has similarly failed to respond to the Complainant’s contentions in this dispute; and

(v) taking the above into account, it is difficult to conceive of a plausible actual or contemplated active use of the domain name by the Respondent that would not be illegitimate, such as by being a passing off, or an infringement of the Complainant’s rights under trademark law.

The Panel thus concludes that the Respondent has registered and used the disputed domain names in bad faith.

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, <bhpbillitoncareer.com> be transferred to the Complainant.

Halvor Manshaus
Sole Panelist
Date: August 4, 2017