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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

BHP Billliton Innovation Pty Ltd v. Ravindra Bala

Case No. D2008-1059

1. The Parties

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

The Respondent is Ravindra Bala, United States of America.

2. The Domain Name and Registrar

The disputed domain name <mybhp.com> is registered with GoDaddy.com, Inc.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 11, 2008. On July 14, 2008, the Center transmitted by email to GoDaddy.com, Inc. a request for registrar verification in connection with the disputed domain name. On the same date, GoDaddy.com, Inc. transmitted its verification response to the Center by email, 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”), 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 July 28, 2008. In accordance with the Rules, paragraph 5(a), the due date for the Response was August 17, 2008. The Respondent did not submit any response. Accordingly, the Center notified the Respondent of its default on August 18, 2008.

The Center appointed a panelist on August 21, 2008. Due to exceptional and unforeseen circumstances, this appointed panelist was not able to carry on with this case. The Center appointed the undersigned as the sole panelist in this matter on September 5, 2008. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence on September 4, 2008, as required by the Center to ensure compliance with the Rules, paragraph 7.

On September 17, 2008, the Panel issued a Panel Order, inviting the Complainant to submit evidence that it has rights in the trademarks upon which it relies or is authorized to represent the registrant of the BHP trademarks, BHP Billiton Limited, with regard to the protection of these trademarks. On September 22, 2008, the Complainant submitted evidence of the fact that it is a wholly owned subsidiary of BHP Billiton Limited. Referring to UDRP case law, it submitted that it can be considered to have rights in the trademarks through its affiliation with BHP Billiton Limited. Alternatively, it sought leave from the Panel to amend the Complainant’s name to BHP Billiton Limited.

4. Factual Background

The Complainant is BHP Billiton Innovation Pty Ltd., part of the BHP Billiton Group. BHP Billiton Group is a company specialized in diversified resources. The core of the BHP Billiton Group is a dual listed company comprising BHP Billiton Limited and BHP Billiton Plc. BHP Billiton Limited is the registrant of trademarks in – amongst others – New Zealand, Canada, Europe, Singapore and the United States of America. These include the following registrations:

- BHP, registered with the United States Patent and Trademark Office on November 26, 2002 (filing date January 11, 2001), Registration Number 2653462;

- BHP, registered with the United States Patent and Trademark Office on December 17, 2002 (filing date September 14, 1999), Registration Number 2663715;

- BHP, registered with the United States Patent and Trademark Office on October 22, 1985 (filing date September 12, 1984), Registration Number 1367145;

- BHP, registered with the United States Patent and Trademark Office on April 5, 1988, (filing date April 9, 1984) Registration Number 1482969.

The Complainant is a wholly-owned subsidiary of the registrant of the BHP trademarks, BHP Billiton Limited.

The Respondent registered the disputed domain name on January 31, 2006. The Respondent operates a website under the disputed domain name, which contains a blank page, except for a message stating that the domain name is for sale and providing the Respondent’s e-mail address.

5. Parties’ Contentions

A. Complainant

Identical or confusingly similar

The Complainant contends that the disputed domain name is confusingly similar to the BHP trademarks. It submits that the BHP trademark is not only highly distinctive, but also one of the world’s most well-known brands in the resources industry. The Complainant points out that the BHP Billiton Group has a turnover in excess of USD 22 billion between 2001 and 2005 and in excess of USD 47 billion in 2007. The BHP Billiton Group has 37,000 employees working in 25 countries and is the largest diversified resources group in the world. According to the Complainant, it follows that the non-distinctive addition “my” to the trademark does not distance the domain name sufficiently from the trademark to avoid confusion.

Rights or legitimate interest of the Respondent

The Complainant submits that the Respondent has no connection with the BHP Billiton Group and has not been authorized to use the disputed domain name. It states that the disputed domain name is not the name of the Respondent, nor has it been commonly known by the name. Referring to a print-out of the Respondent’s website, the Complainant further contends that the Respondent is not making a legitimate noncommercial or fair use of the domain name. It argues that by using the disputed domain name, the Respondent is intentionally engaging in conduct which is misleading to consumers by creating the impression that the domain name is authorized by BHP. The Complainant suggests that the Respondent is attempting to generate financial gain by awaiting an offer from BHP to purchase the disputed domain name.

Registration and use in bad faith by the Respondent

Referring to print-outs from the BHP website and the ASIC Free Company Name Search website, the Complainant argues that BHP Billiton Group is the world’s largest diversified resources group and that the BHP trademark is well-known throughout the world. With reference to URDP case law, the Complainant states that bad faith registration may be inferred from the Respondent’s registration of a domain name with the well-known BHP trademark as its only distinctive feature. The Complainant submits that, given the fame of the BHP trademark, it is unlikely that the Respondent did not know of the BHP trademark at the time of registration of the disputed domain name. The Complainant argues that the choice of the Respondent’s domain name in itself is evidence of the Respondent’s knowledge of BHP Billiton Group’s trademarks and its business.

Further, referring to print-outs of the Respondent’s website, the Complainant contends that the Respondent has registered the disputed domain name for the purpose of selling or transferring the domain name to another party for commercial gain.

The Complainant also submits that the Respondent is engaging in a pattern of conduct in registering domain names containing third party trademarks. It refers to a print-out of a website on which an email exchange between a certain Cody Mays and the Respondent is presented. In this email discussion, the Respondent states: “I buy and sell domains globally… and I have more than 9200 domains.. Most of my domains are on auto renew.”

The Complainant further states that the Respondent is the registrant of the domain name <thetopnames.com>, connected to a website that contains a list of thousands of domain names registered by the Respondent. These domain names include combinations of well-known trademarks with the addition of the phrase “my”, such as:

- <mycitizenwatch.com>

- <myck.com>

- <mydunhill.com>

- <myfaberge.com>

- <mytata.com>

- <myolympia.com>

- <myysl.com>

- <mydunlop.com>

- <mycommbank.com>

The Complainant refers to UDRP case law and submits that a pattern of conduct in registering domain names containing third party trademarks supports a finding of bad faith.

Based on the foregoing, the Complainant requests that the disputed domain name be transferred to the Complainant.

B. Respondent

The Respondent did not file a Response.

6. Discussion and Findings

A. Identical or Confusingly Similar

Paragraph 4(a)(i) of the Policy requires that the disputed domain name be identical or confusingly similar to a trademark or service mark “in which the Complainant has rights”. It is not required that the Complainant is the owner of the trademark. It has been accepted in UDRP decisions that a company related as a subsidiary or parent to the registered holder of a mark may be considered to have rights in the mark (see, for instance, Miele Inc. v. Absolute Air Cleaners and Purifiers, WIPO Case No. D2000-0756 and Grupo Televisia S.A., Televisia S.A. de C.V., Estretagia Televisia S.A. de C.V., Videoserpel Ltd. v. Party Night Inc., a/k/a/ Peter Carrington, WIPO Case No. D2003-0796). In the case Miele Inc. v. Absolute Air Cleaners and Purifiers, the Panel decided:

“The Panel finds that the Complainant, through its affiliation with its grandparent corporation which owns the trademark registration, has rights in and duties concerning the mark MIELE.”

Taking into account this case, the Panel is of the opinion that the Complainant has rights in the BHP trademarks. Since the entire trademark BHP is incorporated in the disputed domain name, the Panel finds that the disputed domain name is confusingly similar to the trademark. The addition of the generic phrase “my” to the trademark BHP in the disputed domain name does nothing to change this (see, for instance, Compiere Inc. v. James Zhong, WIPO Case No. D2007-0130, regarding the domain name <mycompiere.com>).

B. Rights or Legitimate Interests

The Panel is of the opinion that the Respondent does not have rights or legitimate interests in the disputed domain name. The Complainant has not authorized the Respondent to register or use its trademark as part of the disputed domain name, nor is there evidence that the Respondent has been commonly known by the domain name. Taking into account the reputation of the trademark BHP, the use of the domain name for a website where the domain name is offered for sale cannot be considered to constitute a legitimate noncommercial use of the domain name or a use connected with a bona fide offering of goods or services either.

C. Registered and Used in Bad Faith

The Panel finds that the Respondent has registered and is using the disputed domain name in bad faith.

The Panel finds that the Respondent was likely aware of the Complainant and its trademarks at the time of registration of the disputed domain name, since the BHP Billiton Group is a renowned company throughout the world and the BHP trademarks are well-known and have been in use in commerce for many years prior to the registration of the disputed domain name. Moreover, the Complainant submitted evidence that the Respondent is the registrant for a website on which numerous domain names are offered on sale, which contain other well-known trademarks of third parties. The Complainant also submitted email correspondence, in which the Respondent declared that it holds more than 9,200 domain names and buys and sells domain names globally.

In view of this, it is virtually impossible to conceive that the Respondent was not aware of the Complainant’s trademarks at the time of the registration. The Panel agrees with the Complainant that the Respondent’s registration of a domain name incorporating a well-known mark of which he clearly must have been aware, without any evident right to do so, can itself be taken as evidence of bad faith (see, e.g., Playboy Enterprises International, Inc. v. Federico Concas, a.k.a John Smith, a.k.a. Orf3vsa, WIPO Case No. D2001-0745). The Panel therefore concludes that the disputed domain name was registered in bad faith.

Taking into account the advertisements for the disputed domain name found at the website “www.mybhp.com”, the “Top Domain Names for Sale” portion of the website “www.thetopnames.com” and the statement of the Respondent that it buys and sells domain names globally, the Panel finds persuasive evidence that the Respondent holds the disputed domain name for the purpose of reselling it at a profit to the Complainant or a competitor of the Complainant. As set out in many administrative proceedings conducted under the Policy, offers to sell to the public at large domain names that are identical or confusingly similar to marks of others may constitute bad faith within the meaning of paragraph 4(a)(iii) of the Policy (see for instance Wal-Mart Stores, Inc. v. Kenneth E. Crews, WIPO Case No. D2000-0580).

In view of the above, the Panel is of the opinion that the domain name has been registered and is being 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 <mybhp.com> be transferred to the Complainant.

Wolter Wefers Bettink
Sole Panelist

Dated: September 29, 2008