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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

BHP Billiton Innovation Pty Ltd v. Yorkshire Enterprises Limited and Whois Privacy Services Pty Ltd

Case No. D2009-1558

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 Respondents are Yorkshire Enterprises Limited of St Johns, Antigua and Barbuda and Whois Privacy Services Pty Ltd of Brisbane, Queensland, Australia (hereinafter referred to as the "Respondent").

2. The Domain Name and Registrar

The disputed domain name <wwwbhpbilliton.com> is registered with Fabulous.com.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on November 20, 2009. On November 20, 2009, the Center transmitted by email to Fabulous.com a request for registrar verification in connection with the disputed domain name. On November 23, 2009, Fabulous.com transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on November 25, 2009 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 November 27, 2009. 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 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 December 2, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was December 22, 2009. The Respondent did not submit any response. Accordingly, the Center notified the Respondent`s default on December 23, 2009.

The Center appointed Amund Grimstad as the sole panelist in this matter on January 8, 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

BHP Billiton is the registrant of a number of domain names. BHP Billiton is the owner of trade marks in New Zealand, Australia and the United Kingdom for marks consisting of and containing the words "bhp billiton".

The disputed domain name resolves to a website containing sponsored links, including links to BHP Billiton`s competitors.

5. Parties` Contentions

A. Complainant

It is submitted that the domain name <wwwbhpbilliton.com> is confusingly similar to BHP Billiton`s BHP BILLITON trade marks. It is submitted that the BHP BILLITON trade mark is highly distinctive and that it is the world`s most well known brand in diversified resource.

It is submitted that the Respondent is attempting to exploit typographical errors of omitting the full stop when entering the URL "www.bhpbilliton.com".

It is further submitted that consumers, upon viewing the Respondent`s domain name <wwwbhpbilliton.com>, are likely to expect an association with BHP Billiton.

The Respondent does not have any right or legitimate interest in the disputed domain name.

(a) The disputed domain name is not similar or in any way connected with the name under which the Respondent holds the domain name registration.

(b) It is submitted that the Respondent has not at any time been commonly known by the disputed domain name. Furthermore, BHP Billiton is not aware of any trade marks in which the Respondent may have rights that are identical or similar to the disputed domain name.

(c) It is further submitted that the Respondent is not making a legitimate non-commercial or fair use of the disputed domain name.

(d) It is submitted that the Respondent is intentionally engaging in conduct which is misleading to consumers by diverting Internet traffic away from BHP Billiton`s websites.

It is submitted that the Respondent registered and is using the disputed domain name in bad faith.

(a) BHP Billiton enjoys a world wide reputation in its BHP BILLITON marks and domain names. It may be inferred from the Respondent`s registration of a domain name confusingly similar to BHP Billiton`s well known BHP BILLITON mark that the disputed domain name was registered in bad faith.

(b) It is submitted that pursuant to paragraph 4(b)(iii) of the Policy, the Respondent has registered the disputed domain name primarily for the purpose of disrupting the business of BHP Billiton. The disputed domain name is an obvious variation of BHP Billiton`s BHP BILLITON trade mark, only adding "www" to the BHP BILLITON trade mark. It is submitted that the Respondent registered the domain name with the primary aim of diverting Internet traffic intended for BHP Billiton to the Respondent`s website containing sponsored links. It therefore follows that the disputed domain name was obtained with the intention of disrupting the Complainant`s business.

(c) It is submitted that the Respondent has, by using the disputed domain name and pursuant to paragraph 4(b)(iv) of the Policy, intentionally attempted to attract, for commercial gain, Internet users to the Respondent`s web site, by creating a likelihood of confusion with the Complainant`s trade mark.

(d) It is submitted that it is highly unlikely that the Respondent was not aware of the Complainant`s BHP BILLITON trade mark in view of the fact that BHP Billiton is the world`s largest resources group. It is submitted that BHP Billiton has acquired a reputation in its BHP BILLITON trade mark. It is submitted that the choice of the Respondent`s domain name, namely combining the BHP BILLITON trade mark with "www", is in itself evidence of the Respondent`s knowledge of BHP BILLITON`s trade mark rights and its business. Finally, it is submitted that the Respondent`s knowledge of BHP Billiton is evidenced by the inclusion of references to BHP Billiton on the Respondent`s website.

(e) It is submitted that it may be inferred from the Respondent`s conduct in registering a domain name consisting of an alteration of BHP Billiton`s well known trade mark that the Respondent was aware of that trade mark. It is submitted that this creates a presumption that the disputed domain name was registered in bad faith.

B. Respondent

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

6. Discussion and Findings

A. Identical or Confusingly Similar

In order for the Complainant to successfully argue that the disputed domain name must be transferred from the Respondent to the Complainant, the domain name must be identical or confusingly similar to a trade mark or service mark in which the Complainant has rights cf. Policy, paragraph 4(a)(i).

The domain name <wwwbhpbilliton.com> is confusingly similar to BHP Billiton`s BHP BILLITON trade marks.

The domain has incorporated the full trademark of the Complainant. The addition of "www" does not prevent the domain name, being confusingly similar to the BHP BILLITON trademark. Omitting the full stop when entering the URL "www.bhpbilliton.com" does not prevent the domain name from being confusingly similar to the trade mark.

B. Rights or Legitimate Interests

Secondly the Complainant must show that the Respondent has no rights or legitimate interests in respect of the disputed domain name, cf Policy , paragraph 4(a)(ii).

The Complainant is required to make out an initial prima facie case that the Respondent lacks rights or legitimate interests. The Respondent then carries the burden of demonstrating rights or legitimate interests in the domain name. If the Respondent fails to do so, a Complainant is deemed to have satisfied Policy, paragraph 4(a)(ii), cf. Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455.

The Complainant has made a prima facie case that the Respondent lacks rights or legitimate interests in the domain name. In the absence of submissions from the Respondent, the Complainant is deemed to have satisfied Policy, paragraph 4(a)(ii).

C. Registered and Used in Bad Faith

Finally, the Complainant must show that the domain name has been registered and is being used in bad faith, cf. Policy, paragraph 4(a)(iii).

The trade mark of the Complainant is registered in a number of countries and is used worldwide. The question is whether the Respondent has registered the domain name in bad faith.

The Respondent`s domain name is used to promote links to commercial websites. This constitutes "commercial" use of the domain name.

If the Respondent has intentionally attempted to attract, for commercial gain, Internet users to an on-line location, by creating a likelihood of confusion with the Complainant`s mark as to the source, sponsorship, affiliation, or endorsement of a the Respondent`s web site or other location, this is evidence of bad faith registration and use, cf Policy, paragraph 4(b)(iv).

The Panel agrees that the trade mark is well-known. It is most likely that the Respondent was aware of the Complainant, and the trade-marks, when the Respondent registered the domain name.

The Panel agrees with the decision rendered in Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co., WIPO Case No. D2000-0163, in that bad faith may be found where a domain name "is so obviously connected with such a well-known product that its very use by someone with no connection with the product suggests opportunistic bad faith".

The use of the trade mark BHP BILLITON suggests that the Respondent has acted in bad faith. The omission of the full stop punctuation strengthens the impression that the Respondent has acted in bad faith.

The third requirement of the Policy has therefore been fulfilled.

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

Amund Grimstad
Sole Panelist

Dated: January 22, 2010