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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

BHP Billiton Innovation Pty Ltd v. Ahmad Puraminy

Case No. DIR2007-0001

 

1. The Parties

The Complainant is BHP Billiton Innovation Pty Ltd of Melbourne, Australia; represented by Griffith Hack Patent and Trade Mark Attorneys, Australia.

The Respondent is Ahmad Puraminy of the Islamic Republic of Iran.

 

2. The Domain Name and Registrar

The disputed domain name <bhpbilliton.ir> is registered with IRNIC.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 16, 2007. On January 17, 2007, the Center transmitted by email to IRNIC a request for registrar verification in connection with the domain name at issue. On January 18, 2007, IRNIC transmitted by email to the Center its verification response confirming that the Respondent is 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 Dispute Resolution Policy for Internet Domain Names Registered under .IR (the “ .IR Policy”), the Rules for .IR Domain Name Dispute Resolution Policy (the “ .IR Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).

In accordance with the .IR Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on January 26, 2007. In accordance with the .IR Rules, paragraph 5(a), the due date to respond was February 15, 2007. On February 8, 2007, the Respondent submitted an email communication to the Center questioning its authority to administer the case and objecting to the language of the procedure. On the same day, the Center requested IRNIC to indicate the specific language of the registration agreement as used by the registrant for the disputed domain name. On February 9, 2007, IRNIC replied to Center stating that the language of all their registration contracts was English.

On February 16, 2007, the Center notified the Respondent’s default. The Respondent answered on the same day with a further request for clarification of the issues raised in its communication to the Center of February 8, 2007. On February 19, 2007, the Center acknowledged receipt of Respondent’s email communications of February 8  and 16, 2007, and informed the Respondent that they would be included in the case file transmission to the Panel. It also drew the Respondent’s attention to paragraph 11 of the .IR Rules which states that “the language of the administrative proceeding shall be the language of the Registration Agreement”. The Center informed the Respondent that IRNIC had confirmed that the language of all their registration contracts is English and forwarded IRNIC’s reply of February 9, 2007, containing such confirmation.

The Center appointed David J.A. Cairns as the sole panelist in this matter on February 28, 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 .IR Rules, paragraph 7.

 

4. Factual Background

The BHP Billiton Group arose from the merger as a Dual Listed Company of BHP Limited and Billiton Plc concluded on June 29, 2001. The BHP Billiton Group is a global producer and marketer of diversified resources. It is a world leader in its business sector employing 37,000 people in more than 100 operations in 25 different countries.

The BHP Billiton Group, through various corporate entities, has registered the trademarks BHP, BILLITON and BHP BILLITON in many countries.

BHP Billiton Group has also registered numerous domain names with a second level portion ‘bhpbilliton’ including generic top level domains such as .com, .biz, .org, .net and .info; and country code top level domains such as .za, .jp, .eu and .co.uk. The Complainant is the registrant of numerous such registrations.

The Respondent owns the disputed domain name, the registration of which it requested on December 17, 2006. There is no webpage associate with the disputed domain name.

On December 26, 2006, an individual named Ali Alavi sent an email to the Complainant in the following terms:

“Dear Sir,

I have registered the BhpBilliton.ir,

(You can check it in nic.ir, whois system)

If you want to buy the domain let me know

certainly you don’t like it be misused by spam mailer

and receive a main from recruitment@bhpbilliton.ir to work in gaz pipline project of Iran”

5. Parties’ Contentions

A. Complainant

The Complainant submits that the disputed domain name is confusingly similar to BHP Billiton’s extensive portfolio of BHP, BILLITON and BHP BILLITON trademarks. The disputed domain name contains both the “bhp” element and the “billiton” element, which the Complainant alleges to be in themselves highly distinctive.

The Complainant also states that the disputed domain name is substantially identical to the BHP BILLITON trademark, and that the country code top level domain name .ir should be discounted for the purposes of comparison.

The Complainant states that the Respondent does not have any right or legitimate interests in the disputed domain name for a number of reasons. Firstly, the Respondent has no connection with BHP Billiton Group and has not been licensed or authorised by BHP Billiton Group to use the disputed domain name. Secondly, the disputed domain name is not the name of the Respondent nor is in any way connected with the name under which the Respondent holds the domain name registration. Thirdly, the Respondent has not at any time been commonly known by the disputed domain name. The Complainant submits that it is not aware of any trademarks in which the Respondent may have rights that are identical or similar to the disputed domain name. Fourthly, the Respondent is merely passively holding the domain name. Finally, the Respondent has indicated that the domain name is for sale. The Complainant contends that it may be inferred from such action that the Respondent has no rights or legitimate interests in the disputed domain name.

The Complainant submits that the Respondent has registered and is using the disputed domain name in bad faith. It states that the Respondent registered the disputed domain name primarily for the purpose of selling the domain name to the BHP Billiton Group. The Complainant draws attention to the fact that the Respondent contacted the BHP Billiton Group less than 10 days after having registered the disputed domain name. Further, the Complainant submits that the Respondent registered the domain name in order to prevent BHP Billiton from registering its well-known trademark BHP BILLITON as a domain name under the country code .ir. It contends that the Respondent was clearly aware of the Complainant’s BHP BILLITON trademark. The Complainant submits that nevertheless the Respondent’s choice of domain name is in itself evidence of the Respondent’s knowledge of the BHP Billiton Group’s trademark rights and its business given it is the world’s largest resources group. Finally, the Complainant states that passive holding of a domain name is another factor to be considered in finding bad faith.

B. Respondent

Following transmission of the Complaint, the Respondent submitted by email to the Center the following communication on February 8, 2007:

“Dear Sir,

I am Ahmad Pouramini, I received a complaint which has been posted by your organization about the domain name bhpbilliton.ir, and it had been mentioned that I must response it, but before anything I would like to hear your answer regarding points below:

1-However you must have autorotation [sic, authorization] to issue such complaint but as you know I’v registered this domain by nic.ir and this domain already has been confirmed by them and I expect to receive any complaint from this organization and I even can not be sure how creditable are other claims which I receive from other sources

2-Please note I am in Iran, and when I bought this domain I selected nic.ir because its located in Iran and I can trace any complaint via them, its impossible for me to contact or pay to organizations outside Iran

3-And I’v selected nic.ir to receive any issue about my domains in Persian, unfortunately I am not able to understand the huge documents you sent to me in English or post an accurate and proper response in English

4-The most important point is that this domain name has been confirmed by nic.ir otherwise I couldn&#8217;t register this domain, and I have certificates shows that my domain has been confirmed by them, it means it was according to any rules exist for registering such a domain, then first they must tell me about the basis of their confirmation

5-Even if nic.ir announce me that their confirmation encounter some problems, they must compensate the payment I paid them plus the harm I get if they take back the domain

6-The document you sent me include an e-mail from Mr. ali alavi to bhpbilliton, as you know I am Ahmad Pouramini and my e-mail is different and I don’t know this man (ali alavi), and I even surprise how the bhpbilliton include such letter as a part of their documents, simply anyone can open an account in yahoo and write such a mail

Please send your answers to above matters and indicate explicitly any questions or vague point that I may have to answer if I must send my response to another contact, please let me know

With best regards,

Ahmad Pouramini”.

On February 16, 2007, and after receipt of the Center’s Notification of Respondent Default the Respondent made the following email communication:

“Dear Sir,

I have sent you my response much before deadline, and I’v attached my response again in this mail,

and I had asked you some questions that you can review them again then this new excuse of you is not legall, and if you intended to use this execution, I will complain you because I had sent my response to you,

first look at them

then bother me

I am awaiting to hear what is your answer”.

On March 7, 2007, the Respondent sent another communication to the Center:

“Dear Sir,

I don’t know about mail you sent, and even don’t open then

if you get the domain without my permission then its your job,

i stated once in a letter my reasons which you care none of them

if you need any contribution from me, the nic.ir must compensate the harm that I recieve

I just contribute if recieve at least 5000 dollors.”

 

6. Discussion and Findings

The disputed domain name is a country code top level domain for Iran. Disputes within the Iran cc-TLD space are subject to the .IR Policy and the .IR Rules. The .IR Policy and the .IR Rules are based on the ICANN Uniform Domain Name Dispute Resolution Policy, the ICANN Rules for Uniform Domain Name Dispute Resolution Rules and, in particular, the elements that the Complainant must prove to succeed in this proceeding under paragraph 4 of the .IR Policy are identical to the elements in paragraph 4 of the ICANN Uniform Domain Name Dispute Resolution Policy.

The Respondent in its communications has raised certain procedural and jurisdictional issues, questioning the authority of an organisation outside Iran to deal with this matter, and stating that he had selected with IRNIC to communicate in Persian. First, there is no doubt as to the Center’s jurisdiction over this dispute. Paragraph 4 of the .IR Policy requires a domain name holder such as the Respondent to submit to a mandatory administrative proceeding conducted by a designed dispute resolution Provider. Article 1 of the .IR Rules defines “Provider” as a “dispute resolution service provider approved by IRNIC. A list of such Providers appears at http://www.nic.ir/ascii/Provider.htm.” This link resolves to the announcement that “At the present time dispute resolution service for .IR domains is provided by WIPO Arbitration and Mediation Center.”

According to paragraph 11 of the .IR UDRP Rules “the language of the administrative proceeding shall be the language of the Registration Agreement”. Upon request by the Center, IRNIC has confirmed that the language of all their .ir registration contracts is English. Therefore, the Panel finds that the language of the proceedings is the English language.

The Respondent also states that its registration of the disputed domain name has been confirmed by IRNIC. The registration of the disputed domain name with IRNIC is not in dispute in this proceeding. It is the validity of such registration that the Complainant has challenged by initiating the present proceeding.

Turning to the merits of the Complaint, the Panel is required to decide the Complaint on the basis of the statements and documents submitted and in accordance with the .IR Policy, the .IR Rules and any rules and principles of law that it deems appropriate (see paragraph 15(a) of the .IR Rules).

The .IR Policy requires the Complainant to prove all three of the following elements to be entitled to the relief sought: (i) that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; (ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and (iii) that the Respondent’s domain name has been registered and is being used in bad faith.

Paragraph 4(b) of the .IR Policy elaborates some circumstances that shall be evidence of the registration and use of the domain name in bad faith. Paragraph 4(c) sets out various circumstances which, if found by the Panel to be proved based on the evaluation of all the evidence presented, shall demonstrate that the Respondent has rights and legitimate interests in the disputed domain name.

A. Identical or Confusingly Similar

The Panel accepts that the BHP Billiton Group owns various trademark registrations for the BHP, BILLITON, and BHP BILLITON trademarks. The BHP BILLITON trademark registrations include the following: (i) Registration Nє 30118073.3 with the Deutsche Patent-und Markenamt of Germany; (ii) Registration Nєs (210) 634243, 634244, 634245, 634247, 634248, 634249, 634250, 634251, 634252, 634255, 634256, 634258, 634260, 634261, 634263 with the Intellectual Property Office of New Zealand; and (iii) Registration Nє 2264607 with the UK Patent Office.

The Panel accepts that the Complainant is a member of the BHP Billiton Group. It is not the registered owner of any of the trademark registrations submitted in evidence. However, the Complainant would appear to hold certain intellectual property of the BHP Billiton Group, and in particular is the holder of an extensive list of generic and country code domain names including a second level portion ‘bhpbilliton’ or variations thereof. On the basis of these circumstances, the Panel accepts that the Complainant has rights in the BHP BILLITON trademarks referred to above within the meaning of paragraph 4(a)(i) of the .IR Policy.

In determining whether a disputed domain name is identical or confusingly similar to the Complainant’s trademark the relevant comparison involves the second-level portion of the domain name only (here, “bhpbilliton”). Clearly a trademark does not usually include a URL prefix (here, “www”), or a top-level domain name suffix (here, “.ir”) that are functional elements of a domain name, and the comparison required for the first element of the Policy must exclude these elements. These elements are incapable of performing any distinctive function, and (as is well-established in decisions under the identical terms of the ICANN UDRP Policy) they should not be considered in making this determination (see Indofil Chemicals Company v. Amar Vakil, WIPO Case No. D2006-0792, D. Ronaldo de Assis Moreira v. Eladio Garcнa Quintas, WIPO Case No. D2006-0524 and LDLC.COM v. LaPorte Holdings, WIPO Case No. D2005-0687). Further, a domain name cannot contain separate words, which must of necessity be compressed to a single word or be joined by hyphen or hyphens. Accordingly, there is no significance in the fact that the BHP BILLITON trademark comprises two words that are compressed together in the disputed domain name.

On this basis, the Panel finds that the disputed domain name is identical with the BHP BILLITON trademark. Accordingly, the first element required by the .IR Policy is satisfied.

B. Rights or Legitimate Interests

The Panel notes the following circumstances in relation to any possible rights or legitimate interests of the Respondent in the disputed domain name: (i) there is no evidence before the Panel that the Respondent has any proprietary or contractual rights in any registered or common law trademark corresponding in whole or in part to the disputed domain name; (ii) the Respondent is not authorised or licensed by the Complainant to use the BHPBILLITON trademark or to register and use the disputed domain name; (iii) there is no evidence that the Respondent has been commonly known by the disputed domain name; (iv) there is no evidence of legitimate non-commercial or fair use of the disputed domain name, nor preparation to use the domain name in connection with a bona fide offering of goods and services prior to the notice of the dispute to the Respondent.

Paragraph 4(c) of the .IR Policy provides a list of three circumstances, any of which is sufficient to demonstrate that the Respondent has rights or legitimate interests in the disputed domain name. There is no evidence before the Panel of the existence of any of these circumstances in the present case.

Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in the domain name.

C. Registered and Used in Bad Faith

In considering the question of registration and use in bad faith, the Panel notes the following: (i) The BHP Billiton Group is an internationally known multinational; (ii) the Respondent has offered no explanation as to how he came to register a domain name containing such a well-known trademark; (iii) the Respondent did not deny in his communications that he knew of the BHP Billiton group or of the BHP BILLITON trademark when he registered the disputed domain name, and the Panel concludes that the Respondent knew of the BHP Billiton Group when it registered the disputed domain name; (iv) the Respondent is not operating any webpage associated with the disputed domain name.

Paragraph 4(b) of the .IR Policy elaborates various circumstances that shall be evidence of the registration and use of the domain name in bad faith. Paragraph 4(b)(i) states that it shall be evidence of registration and use in bad faith that the domain name was registered primarily for selling the registration to the owner of the trademark for valuable consideration in excess of the respondent’s documented out-of-pocket expenses directly related to the domain name.

The disputed domain name was registered on December 17, 2006. On December 26, 2006, the disputed domain name was offered for sale to the Complainant. No price was mentioned, but the offer to sell was accompanied by threats to use the disputed domain name to disrupt the Complainant’s business.

The domain name was offered to the Complainant via email by an individual named Ali Alavi and having the following email account: door_dast_banafsh@yahoo.com. The Respondent states that it does not know who this individual is, and that the opening of an account and sending of such email constitutes an action which could have been done by anyone.

The Panel notes the inherent unlikelihood that a person with no connection with the Respondent would offer for sale the Respondent’s domain name registration, particularly so soon after its registration. The Panel is satisfied that if this communication was not made by the Respondent, then it was made at the suggestion of the Respondent or with his knowledge. The threats included with the offer to sell are both independent evidence establishing bad faith, and also accepted by the Panel as indicative that the consideration sought was greater than documented out-of-pocket expenses. Accordingly, the Panel concludes that bad faith is also established in accordance with paragraph 4(b)(i) of the .IR Policy.

Further, the Panel finds that the Respondent registered and is using the disputed domain name in bad faith because it is not possible to conceive any plausible actual or contemplated use of the disputed domain name by the Respondent, other than the illegitimate attempt to obtain economic consideration from the Complainant for the transfer of the domain name or the intentional deception of Internet users (see, for example, the UDRP decisions in Las Vegas Sands, LLC v. Casino Company, WIPO Case No. D2006-0978 and Ladbroke Group PLC v. Sonoma International LDC, WIPO Case No. D2002-0131).

Accordingly, the Panel is satisfied that the disputed domain name was registered and is being used in bad faith.

 

7. Decision

For all the foregoing reasons, in accordance with paragraphs 4(i) of the .IR Policy and 15 of the .IR Rules, the Panel orders that the domain name <bhpbilliton.ir> be transferred to the Complainant.

---

David J.A. Cairns
Sole Panelist

Dated: March 14, 2007