WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

BHP Billiton Innovation Pty Ltd v. Obum Nekey

Case No. D2017-0090

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 Obum Nekey of London, United Kingdom of Great Britain and Northern Ireland (“United Kingdom”).

2. The Domain Names and Registrar

The disputed domain names <bhpbilitoninc.com> and <bhpbillitoninc.com> are 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 January 18, 2017. On January 18, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On January 20, 2017, 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 Complainant filed an amended Complaint on January 31, 2017.

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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on February 1, 2017. In accordance with the Rules, paragraph 5, the due date for Response was February 21, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 22, 2017.

The Center appointed Torsten Bettinger as the sole panelist in this matter on March 8, 2017. 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 more than 40,000 people in more than 100 operations in 25 countries. The core of the Group is a dual listed company comprising BHP Billiton Limited and BHP Billiton Plc. The two entities continue to exist as separate companies, but operate as a combined group known as “BHP Billiton”.

BHP Billiton was created through the DLC merger of BHP Limited (now BHP Billiton Limited) and Billiton Plc (now BHP Billiton Plc), which was concluded on June 29, 2001. The Complainant, BHP Billiton Innovation is a wholly owned subsidiary of BHP Billiton Limited, holding some of BHP Billiton’s intellectual property.

BHP Billiton is headquartered in Melbourne with major offices in London and supporting offices around the world. BHP Billiton operates a website that is accessible via various domain names including <bhpbilliton.com>.

BHP Billiton is the owner of numerous trademarks worldwide for the trade mark BHP BILLITON including

BHP Billiton controls numerous domain names containing the trademark BHP BILLITON, including <bhpbilliton.com>, <bhpbilliton.net>, <bhpbilliton.info>, <bhpbilliton.org>, <bhpbilliton.mobi> and <bhpbilliton.biz>.

The Respondent registered the disputed domain names <bhpbillitoninc.com> on January 4, 2017 and the domain name <bhpbilitoninc.com> on January 16, 2017. The Respondent has been sending emails from the addresses “[…]@bhpbilitoninc.com” and “[…]@bhpbillitoninc.com” purporting to be the company “BHP Billiton Petroleum USA” and offering jobs to the recipients of the emails. The disputed domain names do not point to active websites.

5. Parties’ Contentions

A. Complainant

The Complainant submits that the disputed domain names are confusingly similar to its BHP BILLITON trademarks, that the Respondent has no rights or legitimate interests in the disputed domain names and that the Respondent has registered and is using the disputed domain names in bad faith.

With regard to the confusing similarity between the trademark and the disputed domain names, the Complainant argues that the disputed domain names incorporate the famous BHP BILLITON trademark in its entirety and that the addition of the generic Top-Level Domain (“gTLD”) suffix “.com” is irrelevant in considering whether the disputed domain names are confusingly similar to the Complainant’s BHP BILLITON trademarks.

With regard to the Respondent having no rights or legitimate interests in the disputed domain names, the Complainant submitted that (1) the Respondent has not at any time been commonly known by the disputed domain names, (2) it is not aware of any trade marks in which the Respondent may have rights that are identical or similar to the disputed domain names and (3) that Respondent is not making a legitimate noncommercial or fair use of the disputed domain names.

With regard to the disputed domain names having been registered and being used in bad faith, the Complainant submits that the bad faith registration may be inferred from the Respondent’s registration of domain names that are confusingly similar to its well-known BHP BILLITON trademarks and from the fact that the Respondent used the disputed domain names to send out fraudulent offers under email addresses “[…]@bhpbilitoninc.com” and “[…]@bhpbillitoninc.com” purporting to be the company “BHP Billiton Petroleum USA”.

B. Respondent

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

6. Discussion and Findings

A. Identical or Confusingly Similar

The disputed domain names <bhpbilitoninc.com> and <bhpbillitoninc.com> are confusingly similar to Complainant’s BHP BILLITON trademarks.

It is well established that the test of identity or confusing similarity under the Policy is confined to a comparison of the disputed domain name and the trademark alone, independent of the products for which the domain name is used or other marketing and use factors usually considered in trademark infringement cases. See Arthur Guinness Son & Co. (Dublin) Limited v. Dejan Macesic, WIPO Case No. D2000-1698; Ansell Healthcare Products Inc. v. Australian Therapeutics Supplies Pty, Ltd., WIPO Case No. D2001-0110; Dixons Group Plc v. Mr. Abu Abdullaah, WIPO Case No. D2001-0843; AT&T Corp. v. Amjad Kausar, WIPO Case No. D2003-0327; BWT Brands, Inc andBritish American Tobacco (Brands), Inc. v. NABR, WIPO Case No. D2001-1480; Britannia Building Society v. Britannia Fraud Prevention, WIPO Case No. D2001-0505.

In this case, the disputed domain names incorporate the Complainant’s BHP BILLITON trademark in its entirety. The similarity between Complainant’s BHP BILLITON Mark and the disputed domain names is not mitigated by the addition of the letters “inc”, an abbreviation of Incorporation.

In numerous cases, it has been held that a domain name that wholly incorporates a registered mark is sufficient to establish confusing similarity for purposes of the Policy despite the addition of descriptive words or elements to such marks. Caterpillar Inc. v. personal, WIPO Case No. D2010-2190; Dell Computer Corporation v. MTO C.A. and Diabetes Education Long Life, WIPO Case No. D2002-0363; Quixtar Investments, Inc. V. Dennis Hoffman, WIPO Case No. D2000-0253; America Online, Inc. v. Miao-qua Wang, WIPO Case No. D2001-0115; Bayer Aktiengesellschaft v. H. Monssen, WIPO Case No. D2003-0275; Dell Computer Corporation v. Logo Excellence, WIPO Case No. D2001-0361.

The omission of the second “l” in the disputed domain name <bhpbilitoninc.com>, an obvious misspelling of the Complainant’s trademark BHP BILLITON, is also without legal significance and does not exclude confusing similarity.

Furthermore, it has also been long established under the UDRP case law that the gTLD “.com” is not to be taken into account when assessing issue of identity and confusing similarity.

For the foregoing reasons the Panel concludes that the disputed domain names are confusingly similar to Complainant’s BHP BILLITON trademarks in which Complainant has exclusive rights.

B. Rights or Legitimate Interests

A Respondent may establish its rights or legitimate interests in the disputed domain names, among other circumstances, by showing any of the following elements:

“(i) before any notice to you [Respondent] of the dispute, your 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; or

“(ii) you [Respondent] (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or

“(iii) you [Respondent] are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.”

Because the Respondent did not file a Response, there is no evidence showing that Respondent is a licensee of, or otherwise affiliated with the Complainant, and has been authorized by the Complainant to use its BHP BILLITON trademarks.

There is also no evidence that Respondent has been commonly known by the disputed domain names, or has made a bona fide use of, the disputed domain names, or that it has, for any other reason, rights or legitimate interests in the disputed domain names.

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

C. Registered and Used in Bad Faith

The Panel is satisfied that the Complainant’s BHP Billiton trademarks are well-known around the world, including in the United Kingdom where the Respondent is apparently located. The registration and use of the Complainant’s BHP BILLITON trademarks significantly predate the registration of the disputed domain names, which reproduce the BHP BILLITON trademark in its entirety. It is therefore clear to the Panel that the Respondent was aware of the Complainant’s BHP BILLITON trademarks at the time of registration of the disputed domain names.

The Respondent has used the disputed domain names to send out fraudulent purporting to be the company “BHP Billiton Petroleum USA” and offering jobs to the recipients of the emails.

“Phishing”, as this type of fraud is known, is an email scam targeting many businesses worldwide. The senders are generally trying to obtain personal and / or bank information. They may also be trying to extract money for processing job applications or costs related to “work permits” or “visa working papers”.

The Panel thus concludes that the registration and use of the disputed domain names constitutes bad faith within the meaning of paragraph 4(a)(iii)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 disputed domain names <bhpbilitoninc.com> and <bhpbillitoninc.com> be transferred to the Complainant.

Torsten Bettinger
Sole Panelist
Date: March 22, 2017