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and Mediation Center
ADMINISTRATIVE PANEL DECISION
BHP Billiton Innovation Pty Ltd. v. Domain Place
Case No. D2007-0244
1. The Parties
The Complainant is BHP Billiton Innovation Pty Ltd., Melbourne, of Australia, represented by Griffith Hack Patent and Trade Mark Attorneys, Australia.
The Respondent is Domain Place, South Spain, Sao Tome, of Sao Tome and Principe.
2. The Domain Name and Registrar
The disputed domain name <billiton-uk.com>is registered with eNom.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 19, 2007. On February 21, 2007, the Center transmitted by email to eNom a request for registrar verification in connection with the domain name at issue. On February 21 2007, eNom transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant. The Center verified that the Complaint satisfied the formal requirements of 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”).
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 March 22, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was April 11, 2007. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 13, 2007.
The Center appointed Mary Vitoria, QC as the sole panelist in this matter on April 24, 2007. 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.
The language of the proceedings is English.
4. Factual Background
4.1 The Complainant is a member of the BHP Billiton Group (“BHP Billiton”), which is the world’s largest diversified resources Group, employing approximately 37,000 people in more than 100 operations in 25 countries. The main activities are mining and dealing in metals and minerals, gas, petroleum and diamonds. The core of the Group is a dual listed company comprising BHP Billiton Limited and BHP Billiton Plc. The two entities continue to exist as separate companies, but operate as a combined group known as BHP Billiton. Billiton Intellectual Property BV and Billiton BV are also part of the Group. BHP Billiton was created through the Dual Listed Companies merger of BHP Limited (now BHP Billiton Limited) and Billiton Plc (now BHP Billiton Plc), which was concluded on June 29, 2001. BHP Billiton has its headquarters in Melbourne with major offices in London and supporting offices around the world. BHP Billiton’s average annual turnover between 2001 and 2005 exceeded US$22 billion. BHP Billiton’s turnover for 2006 exceeds US$39 billion.
4.2 BHP Billiton operates a website at “www.bhpbilliton.com”. Members of BHP Billiton, including the Complainant, are the registrants of numerous domain names including the names <bhpbilliton> and <bhp-billiton>.
4.3 Billiton Intellectual Property BV, which is a member of BHP Billiton, is the owner of numerous trade marks worldwide for the trade mark BILLITON including International Trade Marks Nos. 319100 and 431779, US Trade Mark No. 1527768, Australian Trade Mark No 301605, New Zealand Trade mark No. 139069, all registered in Class 6 and Canadian Trade Mark No. TMA276670.
4.4 The listed registrant of record for the disputed domain name has been confirmed by the concerned registrar as “Domain Place”. The underlying identity and legal status of the Respondent is not clear because the name “Domain Place” could be the trading style of an individual or a corporate or other legal entity. The Respondent appears to be based in Sao Tome and Principe, two islands located off the coast of West Africa.
4.5 The Respondent has been sending emails from the address “firstname.lastname@example.org purporting to be the “IT Dept. Billiton UK” and to offer jobs to the recipients of the emails. The website “www.billiton-uk.com” redirects to the website of BHP Billiton at “www.bhpbilliton.com”.
5. Parties’ Contentions
5.1 The domain name <billiton-uk.com> is confusingly similar to BHP Billiton’s extensive portfolio of BILLITON trademarks. The disputed domain name differs from BHP Billiton’s BILLITON trademark only in that the disputed domain name contains the addition “uk” and a hyphen. This addition is not sufficient to distance the disputed domain name from the BILLITON trademark. It is well settled that the top level “.com”, should be discounted when considering confusing similarity: see F. Hoffmann-La Roche AG v. Macalve e-dominios S.A. (WIPO Case No. D2006-0451). The disputed domain name is confusingly similar to BHP Billiton’s BILLITON trademark pursuant to paragraph 4(a)(i) of the Policy.
5.2 The Respondent does not have any right or legitimate interest in the disputed domain name. The Respondent has no connection with BHP Billiton. In particular, the Respondent has not been licensed or authorised by BHP Billiton to use the disputed domain name. The disputed domain name is not the name of the Respondent. Furthermore the domain name is not similar or in any way connected with the name under which the Respondent holds the domain name registration. The Respondent has not at any time been commonly known by the disputed domain name. 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 Respondent is not making a legitimate non-commercial or fair use of the disputed domain name in that the Respondent is using the disputed domain name to send emails to third parties creating the impression that the emails emanate from Billiton-UK.
5.3 The Respondent registered and uses the disputed domain name in bad faith. The Respondent has registered the disputed domain name primarily for the purpose of disrupting the business of BHP Billiton. The disputed domain name is identical to BHP Billiton’s BILLITON trademark. The Respondent registered its domain name with the primary aim of impersonating BHP Billiton’s employees in emails to third parties. The disputed domain name was therefore obtained with the intention of disrupting the Complainant’s business.
5.4 The Respondent has, by using the disputed domain name in an email address and redirecting the domain name to the Complainant’s website, intentionally attempted to attract attention from third parties by creating a likelihood of confusion with the Complainant’s BILLITON trademark. It is evident from the Respondent’s conduct and choice of domain name that the Respondent was aware of BHP Billiton and its BILLITON trademark. Bad faith registration may be inferred by the registration of a well known trade mark: see, The Nasdaq Stock Market v. NSDAQ.COM, NASDQ.COM AND NASAQ.COM (WIPO Case No. D2001-1492).
5.5 The Respondent’s address, telephone numbers, fax numbers and name are clearly incorrect. The Respondent has not supplied a specific address. The dialing code for Spain is 34, not 677. It is submitted that the Respondent is attempting to hide his or her identity, which, it is submitted, is in itself evidence of bad faith: see, Chung, Mong Koo and Hyundai Motor Company v. Individual (WIPO Case No. D2005-1068).
5.6 The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
6.1 According to Paragraph 15(a) of the Rules, the Panel must decide a 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.
6.2 In accordance with Paragraph 4(a) of the Policy, the Complainant must prove that each of the three following elements are satisfied:
(i) The 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 domain name; and
(iii) The domain name has been registered and is being used in bad faith.
6.3 Paragraph 4(a) of the Policy states that the burden of proving that all these elements are present lies on the Complainant. At the same time, 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 or any request from the Panel, the Panel may draw such inferences therefrom, as it considers appropriate.
6.4 Since the Respondent failed to respond to the Complaint within the stipulated time, the Panel assumes that the Respondent admits, and does not contest, all the facts asserted by the Complainant in the Complaint. Upon careful review of the evidential materials submitted by the Complainant to support its contentions, the Panel finds the following:
A. Identical or Confusingly Similar
6.5 The domain name <billiton-uk.com> is confusingly similar to the BILLITON trademark in which the Complainant, as a member of the BHP Billiton Group, has rights.
6.6 The addition of the geographic signifier “uk” does not serve sufficiently to distinguish or differentiate the disputed domain name from the trademark BILLITON. It has been determined by UDRP panels in numerous precedents that the mere addition of a geographical name to a trademark does not exclude confusing similarity. See, for example, Accor v. Everlasting FriendshipTrust,
WIPO Case No. D2005-0626 and Wal-Mart Stores Inc v. Walmarket Canada,
WIPO Case No. D2000-0150. Equally the addition of a ccTLD or gTLD to the mark does not avoid confusing similarity. See, for example, F. Hoffmann-La Roche AG v. Macalve e-dominios S.A.,
WIPO Case No. D2006-0451 and Telstra Corp Ltd v. Nuclear Marshmallows,
WIPO Case No. D2000-0003. The generic top-level domain (gTLD) name “.com” is without legal significance since use of a gTLD is required of domain name registrants, “.com” is one of only several such gTLDs, and “.com” does not serve to identify a specific service provider or enterprise as a source of goods or services.
6.7 The Panel accepts the Complainant’s submissions and finds for the Complainant on the first element.
A. Rights or Legitimate Interests
6.8 There is no evidence of any rights or legitimate interest of the Respondent in the domain name. The Complainant has not licensed or otherwise permitted the Respondent to use the trademark BILLITON or to apply for any domain name including this trademark. It has prior rights in the trademark BILLITON which precede for many years the Respondent’s registration of the domain name.
6.9 The domain name in dispute <billiton-uk.com> redirects to the website “www.bhpbilliton.com” which is the website of BHP Billiton and its member companies. This redirection gives the impression that the website “www.billiton-uk.com” is equally a website of BHP Billiton and its member companies. Anyone who had received an unsolicited email from“email@example.com” and who checked on the accuracy of the web address would be likely to be deceived into thinking the sender of the email was connected with BHP Billiton. The Panel concludes that in this case, such use is not legitimate.
6.10 The Panel accepts the Complainant’s submissions that the Respondent does not have any rights or legitimate interests in respect of the disputed domain name. The Panel finds for the Complainant on the second element.
C. Registered and Used in Bad Faith
6.11 The Complainant submits pursuant to paragraph 4(b)(iii) of the Policy that the respondent registered the disputed domain name primarily for disrupting the business of BHP Billiton by impersonating BHP Billiton’s employees in emails to third parties.
6.12 The Panel is not convinced on the evidence that the Respondent registered the domain name in dispute primarily for the purpose of disrupting the business of BHP Billiton. It may well be the case that the Respondent’s primary purpose was to impersonate BHP Billiton’s business for its own commercial gain.
6.13 The Complainant submits that bad faith is shown by the fact that the Respondent knew or must have known of the BHP Billiton Group, of which the Complainant is a member, when it registered and subsequently used the domain name in dispute and that, by using the disputed domain name in an email address and redirecting the domain name to the BHP Billiton website, the Respondent intentionally attempted to attract attention from third parties by creating a likelihood of confusion with the BILLITON trademark.
6.14 According to Paragraph 4(b)(iv) of the Policy, the use of a domain name, with the intention to attempt to attract, for commercial gain, Internet users to a website or other on-line location, by creating a likelihood of confusion with the Complainant's trademark as to the source, sponsorship, affiliation, or endorsement of the disputed web site or location or of a product or service on said web site or location is regarded as evidence of bad faith.
6.15 The Panel is satisfied on the evidence that the Respondent knew of the business of BHP Billiton when it registered and used the disputed domain name. The primary meaning of Billiton is a geographical designation as it is an island in the Indonesian archipelago, famous for its mineral deposits. There is no natural connection between the mark BILLITON and the Respondent. The Panel draws the conclusion that the most likely reason the Respondent chose the domain name was to associate itself and its business with that of the Complainant and to profit from its reputation and thereby to attract internet users to its business identified by its email address, for commercial gain.
6.16 The Panel concludes that by registering and using the disputed domain name, the Respondent intentionally attempted to attract, for commercial gain, Internet users to its business identified by its email address by creating a likelihood of confusion with the trademark BILLITON as to the source, sponsorship, affiliation, or endorsement of the business through the use of the disputed domain name <billiton-uk.com>. The Panel concludes that the Respondent registered and has used the disputed domain name in bad faith.
6.17 The Complainant has also submitted that the Respondent has attempted to hide its identity and that this, in itself, is evidence of bad faith. The Respondent has not identified itself as either an individual or other legal identity. The address “South” in the city “Spain” in Sao Tome and Principe appears to have been invented and is incomplete. The telephone number 677.00123456 has the international code number ‘677’ for the Solomon Islands and the obvious numerical sequence strongly suggests that this is an invented number. The email contact address “firstname.lastname@example.org” also appears to be fictitious as MAILER-DAEMON reported that this user did not have a yahoo.com account. The Panel is prepared to infer in the circumstances that the Respondent has attempted to hide its identity and that this constitutes further evidence that the registration and use of the domain name in dispute has been in bad faith.
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 <billiton-uk.com> be transferred to the Complainant.
Mary Vitoria, QC
Dated: May 8, 2007