WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
BHP Billiton Innovation Pty Ltd v. Whois Privacy Services Pty Ltd /
Pertshire, Pertshire Marketing
Case No. D2010-0658
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 Whois Privacy Services Pty Ltd. of Brisbane, Queensland, Australia /
Pertshire, Pertshire Marketing of Tortola, British Virgin Islands, United Kingdom of
Great Britain and Northern Ireland.
2.
The Domain Name and Registrar
The disputed domain name <bphbilliton.com> is registered with Fabulous.com.
3.
Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center
(the “Center”) on April 27, 2010 and the subject domain names were <bphbilliton.com>
and <bhpbillion.com>. On April 27, 2010, the Center transmitted by email to
Fabulous.com a request for registrar verification in connection with both of the domain
names. On April 28, 2010, Fabulous.com transmitted by email to the Center its
verification response, disclosing registrant and contact information for the domain names
which differed from the named Respondent and contact information in the Complaint.
The Center sent an email communication to the Complainant on April 29, 2010,
providing the registrant and contact information disclosed by the Registrar and inviting
the Complainant to submit an amendment to the Complaint. The Complainant filed an
amended Complaint on April 30, 2010, retaining only the disputed domain name
<bphbilliton.com> as the subject and filed a new complaint for the domain name
<bhpbillion.com>. 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
page 1
Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the
Respondent of the Complaint, and the proceedings commenced on May 4, 2010. In
accordance with the Rules, paragraph 5(a), the due date for Response was May 24, 2010.
The Respondent did not submit any response. Accordingly, the Center notified the
Respondent’s default on May 25, 2010.
The Center appointed John Katz QC as the sole panelist in this matter on June 2, 2010.
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 Group BHP Billiton is a true global corporate entity, known in most, if not all,
jurisdictions worldwide. It employs over 37,000 people in more than 100 operations in
25 countries around the world. It is listed on a number of the world’s major stock
exchanges through its various corporate entities.
Although headquartered in Melbourne, Australia, it has corporate centres in London,
Johannesburg and Houston.
The Group BHP Billiton is the result of the merger of two already large and
internationally recognized corporate entities. BHP was a leading global natural
resources company involving minerals, oil, gas and steel. It was an iconic and pioneering
Australian company that grew to acquire an internationally respected presence and
reputation. It can trace its history back to 1885.
Billiton was a premier mining company in the world involved in aluminum, nickel, base
metals and coal amongst other commodities. Billiton can trace its roots back to 1865.
The Group BHP Billiton can claim to be a world leader in various commodities and is
amongst the largest producer of commodities including metals, alloys and coal. It has
nevertheless diversified well beyond these core commodities as the Complaint
documents show. Annexures 3 and 4 to the Complaint give but a snapshot of the
enormity of the combined group operations.
The Complainant in this matter is BHP Billiton Innovation Pty Ltd. It is said in the
Complaint document to be “a wholly owned subsidiary of BHP Billiton Ltd, holding
some of BHP Billiton’s intellectual property”.
There are then set out several domain names registered in favour of BHP Billiton. A
consideration of Annexure 5 shows in fact a number of different registrant names,
including the Complainant.
So far as the registered trade marks are concerned those in New Zealand appear to be
registered in the name of BHP Ltd. The Australian marks are in the name of the
Complainant and the United Kingdom marks appear to be in the name of Billiton
Intellectual Property BV of the Netherlands.
Although it would have been preferable for this issue of ownership or licensed rights to
be better explained, this Panel is prepared to draw the inference that in the BHP Billiton
page 2
Group there are various inter-company licensing arrangements that exist which give the
Complainant entitlement and ability to enforce the various rights that clearly do exist.
A not dissimilar approach was adopted by the panel in NVT Birmingham LLC a/b/a CBS
42 WIAT-TV v.ZJ (WIPO Case No. D2007-1079, September 21, 2007), although there it
appears evidence of licensing arrangements was before the panel.
5.
Parties’ Contentions
A.
Complainant
The Complainant has put in much evidence of the operations of the BHP Billiton Group.
That includes its combined mining, oil and gas, coal and other activities around the world.
Its registered marks and domain names are also in evidence. That results in an immense
build up of goodwill and associated intellectual property holding in part at least in favour
of the Complainant.
The Respondent merely offers, via the disputed domain name, links to sponsored sites.
There can be, on the Complainant’s argument, a valid case made out that by virtue of its
immense goodwill, the Respondent is merely taking advantage of that. No other
explanation for the Respondent’s use of the disputed domain name can be imagined. The
Complainant and others in the BHP Billiton Group are truly a global brand. Thus the
public would assume, contrary to the fact, a link or association between the Complainant
and BHP Billiton Group on the one hand and Respondent on the other.
B.
Respondent
Because the Respondent has defaulted it has not put before the Panel any evidence.
As a result little is known of the activities of the Respondent. However, the website
<www.bphbilliton.com> is accessible and the main screen shows that it defaults to a
number of employment related websites. One can infer that the Respondent generates
revenue on a click per view/visit from these sponsored links.
6.
Discussion and Findings
The Policy adopted by ICANN is directed towards resolving disputes concerning
allegations of abuse of domain name registrations.
As part of the process, a Complainant must provide evidence and submissions in support
of its Complaint. The expectation is that the Complainant will provide such supporting
evidence as is necessary to make out its case under all three heads in paragraph 4(a) of the
Policy. The Respondent is given full opportunity to respond. In this instance, the
Respondent has defaulted.
Paragraph 4(a) of the Policy sets out three elements that must be established by a
Complainant to merit a finding that a Respondent has engaged in abuse of domain name
registration and to obtain relief. These elements are that:
(i)
The Respondent’s domain name is identical or confusingly similar to a trade mark
page 3
or service mark in which the Complainant has rights; and
(ii)
The Respondent has no rights or legitimate interests in respect of the domain name;
and
(iii) The Respondent’s domain name has been registered and is being used in bad faith.
Each of three elements must be established by a Complainant to warrant relief.
A.
Identical or Confusingly Similar
As to the first ground, the disputed domain name must be shown to be identical or
confusingly similar to trade marks in which the Complainant has rights.
The Complainant must establish that it has such rights either to common law or registered
trade marks or service marks and that those rights are being abused by the respondent.
Aside from what would undoubtedly be its internationally known name and reputation,
the Complainant has a number of registered trade marks in Australia, the United
Kingdom and New Zealand. BHP Billiton is the registered proprietor or user of various
domain names as are set out in Annexure 7 to the Complaint.
The sheer number and variety of these, including a number of different spellings, with or
without a hyphen, show a concerted effort to populate the worldwide web with various
domain names to ensure public interest is captured and directed accordingly.
Some of these domain names are registered in the name of the Complainant. It would
appear as if the registered trade marks in New Zealand at least are registered in the name
of BHP Limited as proprietor. The United Kingdom trade mark in evidence is in the
name of Billiton Intellectual Property BV of the Netherlands. The Australian mark BHP
Billiton in evidence is in the name of the Complainant.
For the reasons earlier set out this Panel is prepared to assume that the present
Complainant does indeed itself have rights in respect of these marks whether registered
or not and that these rights subsist either directly or indirectly through various corporate
entities in the BHP Billiton Group in favour of and are enforceable by the Complainant.
Thus, the Complainant has rights in respect of both registered trade marks and at
common law and has an entitlement to protect its trading name BHP Billiton or any name
that is confusingly similar.
The disputed domain name is <bphbilliton.com>. It can be seen it is an inversion of
“bhp” to “bph”. It takes considerable effort from the reader to discern this difference
which can easily go unnoticed and likely would go unnoticed by the casual observer. It is
only when looking to discern a difference that such is detected.
The Complainant has domain name registrations for <bhpbilliton.com> so the striking
similarity between that and the disputed domain name is immediately apparent. It is also
noted that the Complainant has a domain name <bhp-billiton.com> and also a <.net>,
<.org> and <.biz> suffix registration, so there are already domain names registered in
favour of the Complainant with subtle variations in spelling and style.
Although specifically referred to in the amended Complaint document itself, the case file
as transmitted also includes the decision in BHP Billiton Innovation Pty Ltd. v. Domain
Doormnan LLC Privacy Service and Pertshire Marketing, Ltd, WIPO Case No.
D2008-1732 concerning the disputed names <bhbbilliton.com> and <bhpbilton.com>.
page 4
There the panel found both to be confusingly similar to marks in respect of which the
Complainant had rights.
In this case the only distinction between the present disputed domain name
<bphbilliton.com> and the first in WIPO Case No. D2008-1732, supra, is that here the
prefix is <bph> whereas in the cited decision, it was <bhb>.
It is also noted that one of the Respondents in the said decision was Pertshire Marketing
Ltd of Tortola, British Virgin Islands (a BOT). The present second named Respondent is
the same entity.
There is a considerable body of case law in relation to what constitutes the same or
identical mark in trade mark jurisprudence.
The Panel notes in passing that in the European Court decision of LTJ Diffusion SA v
Sardas Vertdaubet SR [2003] FSR 34 the Court considered what constituted use of an
identical mark. It held that a mark used by a Respondent is identical with a
Complainant’s mark if the former “reproduced without any modification or addition all
the elements constituting the trade mark or, where, viewed as a whole, it contains
differences so insignificant that they go unnoticed by an average consumer”.
The Panel considers this statement helpful when applying the test of the first element to
the facts of the present Complaint. If one looks at the disputed domain name from the
viewpoint of whether or not when viewed as a whole it contains differences so
insignificant that they go unnoticed by the Internet user, it must follow that the disputed
domain name incorporates the virtually identical mark to that for which the Complainant
has protection in each case.
However, even if that was not so there can be absolutely no quarrel with the argument
that the disputed domain name is confusingly similar. This must especially be so where
the differences are of such a minor nature that to most Internet users they would go
unnoticed or at best would simply, if noticed, be dismissed as inconsequential.
The Panel accordingly finds that paragraph 4(a)(i) of the Policy is made out.
B.
Rights or Legitimate Interests
As to the second ground, that there are no rights or legitimate interests possessed by the
Respondent, the Respondent does not put forward in evidence any business or trading
operation known as or by reference to any of the trade marks in suit thereby justifying a
proprietory right to the mark.
Under paragraph 4(a)(ii) a Respondent can justify its registration of the disputed domain
name on certain grounds some of which are set out in paragraph 4(c) of the Policy. Such
grounds resolve broadly to own name use, bona fide use, or legitimate non commercial or
fair use.
Even though the Respondent has defaulted, it is not sufficient simply to assume from that
that the Respondent has no legitimate rights or can claim none.
There is no evidence of any rights or legitimate interest that the Respondent may have
and it is inherently unlikely it would have any.
The Panel accordingly finds that paragraph 4(a)(ii) of the Policy is made out.
page 5
C.
Registered and Used in Bad Faith
As to the third ground, this requires that the domain name be registered and used in bad
faith. As has previously been said in other panels’ decisions together with earlier
decisions of this Panel, both elements must be made out. Accordingly, both registration
and use in bad faith have to be established by the Complainant.
The disputed domain name shows that it is used to default to sponsored links. This
clearly suggests the Respondents are gaining revenue by click per view or pass through
and by this means are not only cyber squatting but potentially diverting traffic and
wrongly earning revenue through their activities. This must therefore be wrongful
registration and bad faith use.
The Panel accordingly finds that paragraph 4(a)(iii) of the Policy is made out.
7.
Decision
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of
the Rules, the Panel orders that the domain name <bphbilliton.com> be transferred to the
Complainant.
John Katz QC
Sole Panelist
Dated: June 16, 2010
page 6