Administrative panel decision bhp billiton Innovation Pty Ltd V. Max Bobo




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ARBITRATION
AND
MEDIATION CENTER




ADMINISTRATIVE PANEL DECISION

BHP Billiton Innovation Pty Ltd v. Max Bobo

Case No. D2015-1373



1. The Parties

The Complainant is BHP Billiton Innovation Pty Ltd of Melbourne, Victoria, Australia, represented by Griffith Hack, Australia.


The Respondent is Max Bobo of Skyesville, Maryland, United States of America (“United States”).


2. The Domain Name and Registrar

The disputed domain name (the “Domain Name”) 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 August 4, 2015. On August 4, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On August 5, 2015 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 August 10, 2015. In accordance with the Rules, paragraph 5, the due date for Response was August 30, 2015. The Respondent did not submit any Response. Accordingly, the Center notified the Respondent’s default on August 31, 2015.
The Center appointed Charters Macdonald-Brown as the sole panelist in this matter on September 8, 2015. 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 BHP Billiton Innovation Pty Ltd, part of the BHP Billiton Group (“BHP Billiton”), the world’s largest diversified resources group. The core of the BHP Billiton Group is a dual listed company comprising BHP Billiton Limited and BHP Billiton Plc. The Complainant is a wholly owned subsidiary of BHP Billiton Limited.


The BHP Billiton Group has its headquarters in Australia and offices around the world; employing more than 40,000 people in 25 countries. The group’s annual turnover in 2009, 2010, 2011, 2012 and 2013 was approximately USD 50.2 billion, USD 52.8 billion, USD 71.7 billion, USD 72.2 billion and USD 65.9 billion, respectively.
BHP Billiton is the owner of numerous trade mark registrations, including several in the Complainant’s name, for the trade mark BHP BILLITON around the world, including the selection set out below:



Country

Trade Mark

Registration No.

Classes

Australia

BHP BILLITON

1141449

4, 6, 37, 40, 42

New Zealand

BHP BILLITON

764470

4, 6, 37, 40, 42

United Kingdom

BHP BILLITON

2264607

1, 2, 4, 6, 7, 8, 9, 11, 14, 16, 17, 19, 21, 25, 35, 36, 37, 38, 39, 40, 41, 42

European Union

BHP BILLITON

0986799

4, 6, 37, 40, 42

United States

BHP BILLITON

3703871

4, 6, 37, 40, 42

Canada

BHP BILLITON

TMA79495

Wares and Services Equivalent of Classes 4, 6, 37, 40, 42

BHP Billiton controls a number of domain names incorporating the trade mark BHP BILLITON including , , , , , and .


The Domain Name was registered by the Respondent on July 20, 2015. The website at the Domain Name currently appears as an “Index of/” page. The Respondent did not respond to the Complaint.
The Complainant exhibits an email dated August 2, 2015 which was received by a third party and subsequently forwarded to the BHP Billiton Group via its “general enquiries” email address. The email, which purported to be from a director of “BHP Billiton Limited”, was an invitation for employment and directed the recipient to respond to two email addresses both featuring the Domain Name.



5. Parties’ Contentions

A. Complainant

The Complainant contends that the Domain Name is confusingly similar to BHP Billiton’s portfolio of BHP BILLITON trade marks identified above, that the Respondent has no rights or legitimate interests in the Domain Name, and that the Domain Name was registered and is being used in bad faith. The Complainant requests that the Domain Name be transferred to it.



B. Respondent

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




6. Discussion and Findings

Paragraph 4(a) of the Policy provides that, in order to be entitled to the transfer of a domain name, a complainant shall prove the following three elements:


(i) the domain name is identical or confusingly similar to a trade mark or service mark in which the complainant has rights;
(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.
Paragraph 5(f) of the Rules provides that, if the Respondent fails to submit a response (as in this case), in the absence of exceptional circumstances, the Panel shall decide the dispute based upon the Complaint.
In this case the Complainant has expressly requested that the Panel exercise its discretion to issue a decision on the merits.

A. Identical or Confusingly Similar

The Complainant has demonstrated that the Complainant (or members of the BHP Billiton Group of which the Complainant is a subsidiary) is the owner of registrations for the BHP BILLITON trade marks.


The Domain Name appears to be a misspelling of the BHP BILLITON trade mark: the Domain Name incorporates the entirety of the trade mark but for (i) the removal of the first letter “I” from the Domain Name and (ii) the re-positioning of the second letter “I” within the Domain Name to appear after, rather than before, the letter “T”. The addition of the generic Top-Level Domain “.com” does not serve to distinguish the Domain Name from the BHP BILLITON trade mark, and should generally be disregarded for the purpose of the similarity assessment. In the light of the similarity of the Domain Name and the BHP BILLITON trade mark, it is the Panel’s view that the Respondent has sought to take advantage of potential typos being made by users attempting to access the Complainant’s website or send an email to an email address of the Complainant or its group. Accordingly the (low) threshold test for paragraph 4(a)(i) of the Policy is satisfied, and, in the Panel’s view, the Domain Name is confusingly similar to the marks in which the Complainant has rights.
The Complainant has therefore established that the Domain Name is confusingly similar to a trade mark or service mark in which the Complainant has rights.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy provides some examples (without limitation) where a respondent can demonstrate rights or legitimate interests in a domain name by showing one of the following:


(i) before receiving any notice of the dispute, the respondent used or made demonstrable preparation to use the domain name (or a name corresponding to the domain name) in connection with a bona fide offering of goods or services; or
(ii) the respondent has been commonly known by the domain name (even if it has acquired no trade mark or service mark rights); or
(iii) the respondent is making a legitimate noncommercial or fair use of the domain name without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.
The Complainant has submitted that the Respondent has not at any time been commonly known by the Domain Name and nor is the Complainant aware of any trade marks in which the Respondent may have rights which are identical or similar to the Domain Name.
Based on the Respondent’s default and on the prima facie evidence provided in the Complaint, the Panel finds that the Policy paragraph 4(c) circumstances are not present and the Respondent has no rights or legitimate interests in the Domain Name.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy states that the following circumstances in particular, but without limitation, shall be evidence of registration and use of a domain name in bad faith:


(i) circumstances indicating that the respondent has registered or acquired the domain name primarily for the purpose of renting or selling or otherwise transferring the domain name registration to the complainant who is the owner of the trade mark or service mark or to a competitor of that complainant for valuable consideration in excess of its documented out-of-pocket costs directly related to the domain name; or
(ii) the respondent registered the domain name in order to prevent the owner of the trade mark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation or endorsement of its website or location of a product or service on its website or location.
The Panel notes that the Domain Name points to an “index page” and agrees with the Complainant that to the extent that this is considered “passive use” it should be viewed in the context of the circumstances as evidence of bad faith use. In this regard, the Panel notes paragraph 7.9 of the decision in Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003: “the relevant issue is not whether the Respondent is undertaking a positive action in bad faith in relation to the domain name, but instead whether, in all the circumstances of the case, it can be said that the Respondent is acting in bad faith.” However, in any event, the attempted use of the Domain Name for what appears to be an employment fraud scheme would suggest that this is more than a case of passive use of a domain name.
The Panel accepts the Complainant’s submissions, which the Respondent has not disputed, that it is highly likely that (i) the Respondent would have been aware of the Complainant’s business (as the world’s largest diversified resources company) and therefore the BHP BILLITON trade mark when it registered the Domain Name, (ii) the Respondent has registered an incorrect spelling of the well-known BHP BILLITON trade mark and (iii) the Respondent has used or attempted to use the Domain Name for what appears to be an employment fraud scheme.
Therefore, the Respondent registered and is using the Domain Name in bad faith within the meaning of bad faith registration and use as set out in paragraph 4(b) of the Policy.


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 Domain Name be transferred to the Complainant.

Charters Macdonald-Brown

Sole Panelist



Date: September 18, 2015



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