WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
BHP Billiton Innovation Pty Ltd. v. DomainDoormnan LLC Privacy Service
and Pertshire Marketing, Ltd
Case No. D2008-1732
1.
The Parties
The Complainant BHP Billiton Innovation Pty Ltd. is an incorporated Company in
Melbourne, Victoria, Australia.
The Complainant is represented through Griffith Hack Patent and Trade Mark
Attorneys, Australia.
The Respondents are (i) DomainDoorman LLC Privacy Service, Coconut Grove,
Florida, the United States of America and, (ii) Pertshire Marketing, Ltd, Tortola, British
Virgin Islands, Overseas Territory of the United Kingdom of Great Britain and Nothern
Ireland.
2.
The Domain Names and Registrar
The disputed domain names <bhbbilliton.com> and <bhpbilton.com> registered with
DomainDoorman LLC.
3.
Procedural History
On November, 11, 2008, the Complainant submitted a complaint through e-mail to the
World Intellectual Property Organization Arbitration and Mediation Center (the
“Center”) for a decision in accordance with the Uniform Domain Name Dispute
Resolution Policy (the “Policy”), 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”) against the
Respondent No. 1.
On November 12, 2008, the Center sent a Request for Verification to the Registrar.
On November, 13, 2008, the Registrar, confirmed by e-mail to the Center that it was
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the Registrar of the said Domain Names and that the registrant of the said Domain
Names is not the Respondent No. 1. The Registrar identified the Respondent of the
Domain Names <bhpbilition.com> and <bhbbilliton.com> as Pertshine Marketing Ltd.
On November 14, 2008, the Center sent a Notice of Change in Registrant information
to the Complainant. The Center invited the Complainant to amend the Complaint by
amending the additional information, which was provided by the Registrar on
November 13, 2008.
On November 14, 2008, The Center asked the Registrar to confirm in accordance with
ICANN’s Expired Domain Deletion Policy, paragraph, 3.7 and 5.7;
a)
that the Domain Name <bhpbiliton.com> will be placed in Registrar LOCK
status and that the Domain Name will remain in such status after the lapse of the
expiry date until the UDRP proceedings are concluded and;
b)
whether any action is required by the parties (either now by the Respondent, or by
the Complainant in the event that the Domain Name is deleted or expires during
the dispute) to keep the Domain Name under Registrant LOCK so that the
administrative procedure can continue as required under the UDRP.
On November 17, 2008, The Registrar confirmed that the domain shall remain in the
Registrar LOCK until the end of the Administrative proceedings. The Registrar
expressed the guarantee of the payment of $49 as a renewal fee prior to the transfer of
the Domain Name in case the Complainant is the prevailing party to the dispute.
On November 17, 2008, the Complainant’s representative agreed to make payment of
renewal fee of $49 prior to the transfer of Domain Name.
On November 18, 2008, the Complainant submitted the amended Complaint
electronically to the Center.
On December 4, 2008, the Complainant submitted the amended Complaint in hard copy
to the Center.
On December 5, 2008, having found that the amended Complainant had satisfied the
formal requirements of the Policy, the Rules and the Supplemental Rules, the Center
sent the Notification of Complaint and Commencement of Administrative Proceeding
(the Notification) by post/courier, facsimile and e-mail to the Respondents and the
same was copied electronically to Complainant’s Representative. It also extended
copies of the Notification to The Registrar.
The Notification set the formal date of the commencement of this administrative
proceeding as December 5, 2008 and required the Respondents to submit response to
the Complainant and the Center within twenty (20) calendar days from the date of
receipt of the Notification, i.e., by December 25, 2008, failing which the Respondents
would be considered to be in default.
On December 29, 2008, the Center sent the Notification of Respondents Default to the
Respondents and copied it to the Complainant’s Representative via e-mail.
On January 12, 2009, the Center appointed me to be the Panel after receiving the
Statement of Acceptance and Declaration of Impartiality and Independence.
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On January 12, 2009, the Center sent a Notification of Appointment of Administrative
Panel and Projected Decision Date to the Complainant’s Representative and the
Respondents by e-mail. On the same day, the Center sent a Transmission of Case File
to the Panel.
The Panel finds that the Center has discharged its obligations and responsibilities under
the Rules. The Panel will issue its decision based on the statements and documents
submitted and in accordance with the Policy, the Rules and the Supplemental Rules and
any principles of law that the Panel deems to be applicable.
4.
Factual Background
The Complainant states that it is the world’s largest diversified resources group
employing approximately 37,000 in more than 100 operations in 25 countries. BHP
Billiton was crated through DLC merger of BHP Limited (now BHP Billiton Limited)
and Billiton Plc, which was concluded on June 29, 2001. In the Complaint, the group is
referred to as BHP Billiton.
The Complainant further states that BHP Billiton is headquartered in Melbourne with
major offices in London and supporting offices around the world. BHP Billiton
operates a website “www.bhpbilliton.com”. The Complainant has filed its company
profile as Annexure 3 to the Complaint.
BHP Billiton Innovation is a wholly owned subsidiary of BHP Billiton Limited holding
some of BHP Billiton’s Intellectual Property.
The Complainant has annexed WHOIS records of various Domain Names as Annexure
5 to the Complaint.
The Complainant has also filed list of search reports from the Trade Mark Databases of
Australia, New Zealand and United Kingdom for the mark BHP BILLITON in various
classes as Annexure 6 to the Complaint.
5.
Parties’ Contentions
A.
Complainant
The Complainant submits that the Domain Names <bhpbilliton.com> and
<bhpbiliton.com> are confusingly similar to BHP Billiton’s extensive portfolio of BHP
BILLITON trademarks. The Complainant submits that the BHP BILLITON is not only
highly distinctive but it has over the years become the world’s most well known brand
in diversified resources. It follows that non-distinctive alterations (exchanging “p” for
“b” and removal of “li”) to this highly distinctive mark do not sufficiently distance the
disputed domain names from BHP Billiton Innovation’s trademark in order to avoid
confusion.
It further submits that consumers upon viewing the Domain Names <bhbbilliton.com>
and <bhpbiliton.com> are highly likely to expect an association with BHP Billiton.
The Complainant submits that for the following reasons, the Respondents do not have
any right or legitimate interest in the Domain Names.
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a)
The Respondents have not any time been commonly known by the Domain
Names. Furthermore, BHP Billiton is not aware of any trademarks in which the
Respondents may have rights that are identical or similar to the Domain Names.
b)
The Respondents are not making a legitimate, non-commercial or fair use of the
disputed names. The Complainant has made reference to screen shots of the
Respondents’ website <bhbbilliton.com> and <bhpbiliton.com> which, consists
of standard linking pages containing sponsored links annexed to the Complaint as
Annexure 7. The Respondents are deriving commercial benefit from such
sponsored links.
c)
The Respondents are intentionally engaging in a conduct which is misleading to
consumers by diverting Internet traffic away from BHP Billiton’s website
“www.bhpbilliton.com”. The Respondents are attempting to generate business
through sponsored links by exploiting confusion amongst the consumers as to the
association or affiliation of the Respondents’ website with the goods and services
of BHP Billiton.
The Complainant submits that the Domain Names are registered and used in bad faith.
B.
Respondents
The Respondents have not filed any Response.
6.
Discussion and Findings
6.1
Effect of Respondent’s default
Paragraph 5 (a) of the Rules requires the respondent to submit its response to the Center
within twenty (20) days of the commencement of the administrative proceeding.
By paragraph 5 (b)(i) of the Rules, it is expected of the respondent to:
“respond specifically to the statements and allegations contained in the
complaint and include any and all bases for the Respondent (domain name
holder) to retain registration and use of the disputed domain name”
By the Notification, the Center informed the Respondents that the last date for sending
response was December 25, 2008. The Respondents have failed to submit response. In
view of the default it is open to the Panel, under paragraph (14)(b) of the Rules to:
“draw such inferences…as it considers appropriate.”
The inferences include the right of the Panel to conclude as stated in Ogaan India
Private Limited v. Mehboob Alam, WIPO Case No. D2000-0720:
“that the Respondent has no evidence to rebut the assertion of the
Complainant.”
However before arriving at a decision, due heed must be paid to what was said in
Charles Jourdan Holding AG v. AAIM, WIPO Case No. D2000-0403. In that
administrative proceeding, it was the Panel’s view that
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“in the absence of a response to the Complainant’s allegations by the
Respondent, the Panel must evaluate those claims in the light of the
unchallenged evidence submitted by the Complainant.”
It is therefore obligatory on the part of the Panel to ascertain, despite the absence of the
response, whether the Complainant has successfully made out a case against the
Respondents for the transfer of the Domain Names to the Complainant.
6.2
Elements to be proven
Paragraph 4(a) of the Policy envisages that to succeed, the complainant must establish
that:
(i)
the disputed domain name is identical or confusingly similar to a trademark
or service mark in which the complainant has rights;
(ii)
the respondent has no rights or legitimate interest in respect of the disputed
domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
The Complainant must prove that all the aforesaid three elements are present.
6.3
Identical or confusingly similar
The Complainant claims rights to the mark BHP BILLITON by virtue of registered
trademark BHP BILLITON in various classes in Australia, New Zealand and the
United Kingdom.
The Complainant also asserts its rights in the domain name <bhpbilliton.com>. The
Panel finds that the Domain Names <bhbbilliton.com> and <bhpbilton.com> are
identical and/or confusingly similar to the Complainant’s trademark BHP BILLITON
(also to the domain name <bhpbilliton.com>) and are likely to cause confusion and
deception in the mind of Internet users.
The Complainant has discharged its onus to prove the first element as required by the
paragraph 4(a)(i) of the Policy. The Panel accepts the case setup by the Complainant to
establish that the Domain Names are confusingly similar to the Complainant’s
trademark BHP BILLITON and the domain name <bhpbilliton.com>.
6.4 Respondent’s rights or legitimate interests in the Domain Names
The Respondent No.1 is apparently providing privacy services relating to the
registration of the Domain Names through the ICANN accredited Registrar by the
name of DomainDoorman LLC. The Respondent No.1 has apparently provided
privacy shield services to the Respondent No.2 and the Registrar disclosed the identity
on verification by the Center.
The Respondent No.2 has not filed any response to the Complaint nor has claimed or
established that it has any rights or legitimate interests in the Domain Names.
The case of the Complainant that the Respondent has not been known by the Domain
Names remains unrebutted and unchallenged. Furthermore, in order to prove that the
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Respondents are not making non-commercial use of the Domain Names the
Complainant has annexed screen shots of the websites hosted on the Domain Names as
Annexure 7 to the Complaint. The case of the Complainant that Respondents are
intentionally engaging in conduct which is misleading consumers by diverting Internet
traffic away from BHP BILLITON’s website “www.bhpbilliton.com” also remains
unrebutted and unchallenged. The Respondent No.2 is attempting to generate business
through sponsored links by exploiting confusion amongst consumers as to the
association or affiliation of the Respondents’ website with the goods and services of
BHP Billiton.
The Panel accepts the Complainant submissions. Since the Respondent No. 2 has
failed to prove its rights in the Domain Names and reply to the Complainant’s
contentions, the second element of paragraph 4.a.(ii) is satisfied in favor of the
Complainant and against the Respondents.
6.5
Registration and Use in Bad Faith
The Complainant asserts that BHP Billiton is a well-known mark of the Complainant
and the registration of the Domain Names by the Respondents is registered in bad faith
having full knowledge of the reputation of the Complainant’s rights in the mark BHP
Billiton.
The Complainant further asserts that the Respondents have registered the Domain
Names <bhpbilton.com> and <bhbbilliton.com> with a primary aim of diverting the
Internet traffic intended for BHP Billiton to the Respondents’ website containing
sponsored links.
The Complainant further asserts that the Respondents have by using the Domain Names
intentionally attempted to attract for commercial gain Internet users to the
Respondents’ website by creating a likelihood of confusion with the Complainant’s
trademark.
a)
BHP Billiton enjoys a world wide reputation in its BHP Billiton marks and
domain names is established from the submissions made in paragraph 15 of the
complaint indicating that BHP Billiton generated turnover of USD 47.5 billion
and USD 59.5 billion in 2007 and 2008 respectively. Zwack Unicum Rt. v. Erica
J. Duna, WIPO Case No. D2000-0037.
b)
The Respondents have registered the Domain Names primarily for the purposes of
disrupting the business of BHP Billiton as is apparent from the fact that the
Domain Names are obvious misspellings of BHP Billiton’s trademark BHP
BILLITON as well as its well-known domain name <bhpbilliton.com>. The
Domain Names have been registered by the Respondents for the primary purpose
of diverting Internet traffic intended for BHP BILLITON to the Respondents’
Domain Names containing sponsored links.
c)
The Respondents have by using the disputed domain names and pursuant to
paragraph 4(b)(iv) of the Policy, intentionally attempted to attract for commercial
gain, Internet users to the Respondents’ website by creating a likelihood of
confusion with the Complainant’s trademark.
d)
It is highly unlikely that the Respondents were not aware of the Complainant’s
BHP Billiton trademark in view of the fact that BHP Billiton is one of the world’s
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largest resource groups. BHP Billiton has acquired a reputation in its BHP
BILLITON trademark is established by documentary evidence produced on
record. The choice of the Respondents’ Domain Names, namely two obvious
misspellings of the BHP BILLITON trademark are in itself evident of the
Respondents’ knowledge of BHP BILLITON’s trademark rights and its business.
e)
It may be inferred from the Respondents’ conduct in registering two Domain
Names consisting of misspellings of BHP Billiton’s well-known trademark that
the Respondents were aware of that mark. Autosales Incorporated, dba Summit
Racing Equipment v. Domain Active Pty. Ltd., WIPO Case No. D2004-0459.
f)
The Respondents are engaging in typo-squatting. The practice of typosquatting in
itself constitutes bad faith registration and use.
g)
The Respondent No.2 Pertshire Marketing, Ltd has in the past been a party in an
administrative proceeding under UDRP. The decision of Deutsche Borse AG v.
Pertshire Marketing Ltd., WIPO Case No. D2006-0786 concerning domain name
<deutschborse.com>.
h)
The Respondent No.2 is engaging in a pattern of conduct of registering domain
names containing third party trademarks.
The Panel accepts the contentions raised by the Complainant and in the absence of any
response submitted by the Respondents, admits the case set up by the Complainant and
discharges the Complainant of proving the last element as per paragraph 4(a)(iii) of the
Policy.
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 names, <bhpbilton.com> and
<bhbbilliton.com> be transferred to the Complainant.
___________________________
Amarjit Singh
Sole Panelist
Dated: January 26, 2009
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