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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

BHP Billiton Innovation Pty Ltd v. SpeciaSeries

Case No. D2006-1218

 

1. The Parties

The Complainant is BHP Billiton Innovation Pty Ltd, Melbourne, Australia, represented by Griffith Hack Patent and Trademark Attorneys, Melbourne, Australia.

The Respondent is SpeciaSeries, New York, United States of America.

 

2. The Domain Name and Registrar

The disputed domain name <bhpbiliton.com> is registered with Go Daddy Software.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 21, 2006. On September  22, 2006, the Center transmitted a request for registrar verification by email to Go Daddy Software in connection with the domain name at issue. On that same date, Go Daddy Software transmitted its verification response by email to the Center confirming that the Respondent was listed as the registrant and providing the contact details for the administrative, billing, and technical contact. 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 October 2, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was October 22, 2006. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 23, 2006.

The Center appointed J. Christopher Thomas, Q.C. as the sole panelist in this matter on October 31, 2006. 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 Group is the world’s largest diversified resources Group, employing approximately 37,000 people in more than 100 operations in 25 countries. The Group is a dual-listed company comprising BHP Billiton Limited and BHP Billiton Plc. They are separate companies but operate as the Group known as BHP Billiton. BHP Billiton Innovation is also part of the Group and it holds some of the BHP Billiton Group’s intellectual property.

BHP Billiton was created through the June 29, 2001 merger of BHP Limited (now BHP Billiton Limited) and Billiton Plc (now BHP Billiton Plc). It is headquartered in Melbourne with offices in London and supporting offices around the world. It has had an average annual turnover between 2001 and 2005 in excess of US$22 billion; its 2006 turnover exceeded US$39 billion.

BHP Billiton operates a website at “www.bhpbilliton.com”. It also is the registrant of many domain names, many of which start with “bhpbilliton”.

BHP Billiton is the owner of numerous trademarks worldwide for the marks BHP, BILLITON and BHP BILLITON, including the following trademark registrations set out in Annexure 6 of the Complaint.

The Respondent operates a website at “www.bhpbiliton.com”, consisting of a standard linking website containing sponsored links. None of the links relate or link to BHP Billiton or its websites.

A link located at the top right hand corner of the Respondent’s website indicates that the <bhpbiliton.com> domain may be for sale.

The Whois database indicates that the Respondent is the registrant of 78 domain names, many of these domain names are well known trademarks of third parties, which contain sponsored links similar to the website at “www.bhpbiliton.com”.

 

5. Parties’ Contentions

A. Complainant

The Complainant asserts that:

The disputed domain name <bhpbiliton.com> registered by the Respondent is identical and confusingly similar to the trademarks held by the Complainant. The disputed domain name differs from BHP Billiton’s BHP BILLITON trademark only in that the disputed domain name is missing the letter “l”. The combination of the “BHP” element and the misspelt “BILLITON” creates a word that is confusingly similar to both the BHP and the BILLITON trademarks.

The Respondent has no rights or legitimate interests in respect of the domain name. The Respondent does not have any right or legitimate interest in the disputed domain name. It has no connection with BHP Billiton, nor has it been licensed or authorized by the BHP Billiton to use the disputed domain name.

The disputed domain name is not the name of the Respondent nor is the domain name similar or connected with the name under which the Respondent holds the domain name registration.

The Respondent SpeciaSeries has not been known by the disputed domain name, nor is BHP Billiton aware of any trademarks in which the Respondent may have rights that are identical or similar to the disputed name.

The Respondent is not making a legitimate non-commercial or fair use of the disputed domain name. The Respondent has misled consumers by diverting Internet traffic from the disputed domain name to a website containing sponsored links.

The Respondent is attempting to generate business by luring BHP Billiton’s customers to the Respondent’s own website by exploiting the misspelling of BHP Billiton’s trademark. When the customers are directed to the disputed domain, the administrative contact email address is indicated as “(this_domain_for_sale)@specialseries.com)”.

The Respondent registered the domain name and is using it in bad faith. It is contended that the Respondent registered the disputed domain name primarily for the purpose of disrupting the business of BHP Billiton. The domain name is an obvious misspelling, known as “typo squatting,” of BHP Billiton’s BHP BILLITON trademark as well as its domain name <bhpbilliton.com>. The Respondent registered its domain name with the primary aim of diverting Internet traffic to the Respondent’s website containing sponsored links.

The Respondent has intentionally attempted to attract, for commercial gain, Internet users to the Respondent’s website by creating a likelihood of confusion with the Complainant’s trademark by indicating that the domain name may be for sale by showing the administrative contact’s email address as “(this_domain_for_sale)@specialseries.com)”.

Moreover, bad faith can be inferred by the registration of a well known trademark. The intentional misspelling of the widely known BHP BILLITON trademark is evidence of a registration in bad faith. In sum, the Respondent is engaging in a pattern of conduct in registering domain names which are confusingly similar to widely known trademarks.

B. Respondent

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

 

6. Discussion and Findings

In order for the Panel to decide to grant the remedy requested by the Complainant under the Policy, it is necessary that the Complainant prove, as required by paragraph 4(a) of the Policy, that:

(i) the contested 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 interests in respect of the domain name; and

(iii) the domain name has been registered and is being used in bad faith.

In the present case the Panel is of the view that the record contains sufficient evidence of each of the three requisite elements.

A. Identical or Confusingly Similar

First, the Complainant claims and the Panel has verified to its satisfaction that the Complainant is the owner of numerous trademarks worldwide for the marks BHP, BILLITON and BHP BILLITON. The Panel also verified that BHP Billiton operates a website at “www.bhpbilliton.com”.

The domain name in dispute, <bhpbiliton.com>, is confusingly similar and identical to the Complainant’s trademarks. The disputed domain name differs from BHP Billiton’s BHP BILLITON trademark only in that the disputed domain name is missing the letter “l”. The combination of the BHP element and the misspelling of BILLITON creates a word that is confusingly similar to both the BHP and the BILLITON trademarks.

The contested domain name is confusingly similar to a mark in which the Complainant has rights. The Complainant has fulfilled the requirements of paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

Second, the Complainant must prove that the Respondent has no rights or legitimate interests in respect of the domain name. The Complainant has proven that the Respondent has no rights to the domain name. There is no evidence of the Respondent’s use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services.

The Respondent has no connection with BHP Billiton, nor has it been licensed or authorized by the BHP Billiton to use the disputed domain name.

The disputed domain name is not the name of the Respondent nor is the domain name similar or connected with the name under which the Respondent SpeciaSeries holds the domain name registration.

Nor is the Respondent making a legitimate non-commercial or fair use of the disputed domain name.

The Panel agrees with the Complainant therefore that the Respondent has no rights or legitimate interests in the disputed domain name within the meaning of paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

Third, it must be shown that the domain name at issue has been registered and is being used in bad faith.

The Respondent’s domain name serves to divert users to a website containing sponsored links. By exploiting a common misspelling of BHP Billiton’s trademark, the Respondent has misled consumers by diverting Internet traffic away from BHP Billiton’s website at “www.bhpbilliton.com” in an attempt to generate business by luring BHP Billiton’s customers to the Respondent’s own website.

The Respondent indicates on its website that the disputed domain name may be for sale. The email address for the administrative contact is “(this_domain_for_sale)@specialseries.com)”.

In the circumstances, the Panel has no doubt in concluding that the domain name was registered and used in bad faith.

 

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 <bhpbiliton.com> be transferred to the Complainant.

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J. Christopher Thomas, Q.C.
Sole Panelist

Dated: November  10, 2006