ADMINISTRATIVE PANEL DECISION
BHP Billiton Innovation Pty Ltd v. Registration Private, Domains by Proxy, LLC / Sean Fournier, Epic Web Designs
Case No. D2017-1701
1. The Parties
The Complainant is BHP Billiton Innovation Pty of Ltd Melbourne, Victoria, Australia, represented by Griffith Hack Patent and Trade Mark Attorneys, Australia.
The Respondent is Registration Private, Domains by Proxy, LLC of Scottsdale, Arizona, United States of America / Sean Fournier, Epic Web Designs of Calgary, Alberta, Canada, self-represented.
2. The Domain Name and Registrar
The disputed domain name <bhp.energy> is registered with GoDaddy.com, LLC (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on September 4, 2017. On September 4, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 5, 2017, the Registrar 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 Complainant filed an amended Complaint on September 7, 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 September 11, 2017. In accordance with the Rules, paragraph 5, the due date for Response was October 1, 2017. The Respondent sent an email communication to the Center on September 11, 2017. The Response was filed with the Center on September 15, 2017.
The Center appointed William R. Towns as the sole panelist in this matter on September 29, 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
The Complainant is part of the BHP Billiton Group ("BHP Billiton"), headquartered in Melbourne, Australia. BHP Billiton Group is a leading multinational producer of diversified resources including iron ore, coal, copper, and uranium, and oil and gas.1 The Complainant is the holder of registrations for the BHP trademarks around the world, including in Australia, China, and the United States of America ("United States" or "U.S."). The BHP mark was first registered in Australia in 1931. The Complainant also maintains a large portfolio of BHP and BHP-formative domain names.
The Respondent registered the disputed domain name on March 3, 2017, according to the Registrar's WhoIs records. The disputed domain name currently resolves to a parked page provided by GoDaddy.com with "related links" to other advertising links, the majority of which are related to the Complainant or to other companies engaged in similar energy-related enterprises.
5. Parties' Contentions
A. Complainant
The Complainant submits that the disputed domain name is confusingly similar to the Complainant's BHP mark, which the Complainant maintains has become the world's most well-known brand in diversified resources and mining of such resources. The Complainant asserts that addition of a Top-Level Domain (TLD) such as ".energy" should be disregarded in assessing the confusing similarity of the disputed domain name to the Complainant's mark, even though the TLD clearly is related to the Complainant's business.
The Complainant maintains that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant submits that the Respondent has not been commonly known by the disputed domain name, and that the Respondent is not making a legitimate noncommercial or fair use of the disputed domain name.
The Complainant contends that the disputed domain name was registered and is being used in bad faith. The Complainant asserts that the BHP mark enjoys a worldwide reputation, with the Complainant having a market capitalization of USD 108 billion and revenue of USD 44.6 million. According to the Complainant, bad faith may be inferred from the registration of a well-known mark, and it may be inferred from the Respondent's registration of a domain name that is confusingly similar to the Complainant's well-known mark that the disputed domain name was registered in bad faith. The Complainant further submits that the Respondent's passive holding of the disputed domain name does not preclude a finding of bad faith registration and use, given the Respondent's anticipated failure to provide evidence of any actual or contemplated good faith use. 2
B. Respondent
The Respondent states that he is a car collector, and that his collection includes both gas and electric powered cars. According to the Respondent, "bhp" is an abbreviation for brake horsepower, a measurement of a (gasoline) car's power. The Respondent explains that the power of an electric car, however, is measured in kilowatts. The Respondent represents he is building a crowd sourced repository system and power conversion tool for both gas and electric cars. The Respondent states that he has already devoted more than 100 hours to this project, and hopes to sell his power conversion calculators and even high-powered cars on his website. The Respondent offers that the abbreviation "bhp" has been used since at least the 17th Century, and submits his project is not competitive in relation to the Complainant's business.
6. Discussion and Findings
A. Scope of the Policy
The Policy is addressed to resolving disputes concerning allegations of abusive domain name registration and use. Milwaukee Electric Tool Corporation v. Bay Verte Machinery, Inc. d/b/a The Power Tool Store, WIPO Case No. D2002-0774. Accordingly, the jurisdiction of this Panel is limited to providing a remedy in cases of "the abusive registration of domain names", also known as "cybersquatting". Weber-Stephen Products Co. v. Armitage Hardware, WIPO Case No. D2000-0187. See Final Report of the First WIPO Internet Domain Name Process, April 30, 1999, paragraphs 169-177. The term "cybersquatting" is most frequently used to describe the deliberate, bad faith abusive registration of a domain name in violation of rights in trademarks or service marks. Id. at paragraph 170. Paragraph 15(a) of the Rules provides that the panel shall decide a complaint on the basis of statements and documents submitted and in accordance with the Policy, the Rules and any other rules or principles of law that the panel deems applicable.
Paragraph 4(a) of the Policy requires that the complainant prove each of the following three elements to obtain a decision that a domain name should be either cancelled or transferred:
(i) the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) the respondent has no rights or legitimate interests with respect to the domain name; and
(iii) the domain name has been registered and is being used in bad faith.
Cancellation or transfer of the domain name is the sole remedy provided to the complainant under the Policy, as set forth in paragraph 4(i).
Paragraph 4(b) of the Policy sets forth four situations under which the registration and use of a domain name is deemed to be in bad faith, but does not limit a finding of bad faith to only these situations.
Paragraph 4(c) of the Policy in turn identifies three means through which a respondent may establish rights or legitimate interests in a domain name. Although the complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, UDRP panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is primarily, if not exclusively, within the knowledge of the respondent. Thus, the consensus view is that paragraph 4(c) of the Policy shifts the burden of production to the respondent to come forward with evidence of rights or legitimate interests in the domain name, once the complainant has made a prima facie showing. See, e.g., Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270.
B. Identical or Confusingly Similar
The Panel finds that the disputed domain name <bhp.energy> is identical to the BHP mark, a well-known mark in which the Complainant has demonstrated rights through registration and use. In considering this issue, the first element of the Policy serves essentially as a standing requirement.3 The threshold inquiry under the first element of the Policy involves a relatively straightforward comparison between the complainant's trademark and the disputed domain name. In this case, the BHP mark is clearly recognizable in the disputed domain name.4
The TLD ".energy" does not serve to dispel the confusing similarity of the disputed domain name with the Complainant's mark. Top-Level Domains generally are disregarded when evaluating the identity or confusing similarity of the complainant's mark to the disputed domain name under paragraph 4(a)(i) of the Policy, irrespective of any ordinary meaning that might be ascribed to the TLD.5 In this instance the disputed domain name is identical to the Complainant's mark when disregarding the TLD ".energy". See, e.g., De Beers Intangibles Limited v. Domain Admin, Whois Privacy Corp., WIPO Case No. D2016-1465 (<debeers.feedback> is identical to complainant's DE BEERS mark).
Accordingly, the Panel finds the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.
C. Rights or Legitimate Interests
As noted above, once the complainant makes a prima facie showing under paragraph 4(a)(ii) of the Policy, paragraph 4(c) shifts the burden of production to the respondent to come forward with evidence of rights or legitimate interests in a domain name. The Panel is persuaded from the record of this case that a prima facie showing under paragraph 4(a)(ii) of the Policy has been made. It is undisputed that the Respondent has not been authorized to use the Complainant's BHP mark. Regardless, the Respondent registered the disputed domain name, which is identical to the Complainant's BHP mark. The disputed domain name resolves to a parking page with pay-per-click advertising links related to the Complainant.
Pursuant to paragraph 4(c) of the Policy, the Respondent may establish rights or legitimate interests in the disputed domain name by demonstrating any of the following:
(i) before any notice to it of the dispute, the Respondent's use of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; or
(ii) the Respondent has been commonly known by the disputed domain name, even if he has acquired no trademark or service mark rights; or
(iii) the Respondent is making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
After thorough review of the attendant facts and circumstances, the Panel finds the Respondent has failed to come forward with evidence of rights or legitimate interests in the disputed domain name within the meaning of paragraph 4(c) of the Policy. The Respondent has not been commonly known by the disputed domain name. The Respondent's only use of the disputed domain name has been with a parking page populated with advertising links related primarily to the Complainant. Further, there is no indication in the record that the Respondent is making a legitimate noncommercial or other fair use of the disputed domain name within the contemplation of paragraph 4(c)(iii) of the Policy.
The Respondent claims to have registered the disputed domain for eventual use with a website on which he would promote his power conversion tool (once developed), and possibly sell high-powered automobiles. However, and as noted above, the Respondent's only use of the disputed domain name to date has been to link it with a pay-per-click parking page. The Respondent has provided no evidence of any use of or demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods or services within the meaning of paragraph 4(c)(i) of the Policy.
The Complainant's BHP mark is distinctive and well-known, and the Complainant is a major provider of natural resources that are used in the production of energy. While TLDs typically are disregarded when assessing confusing similarity under paragraph 4(a)(i) of the Policy, it is well settled that the meaning of a particular TLD may be relevant to assessments under paragraphs 4(a)(ii) and 4(a)(iii) of the Policy. See, e.g., Fifth Street Capital LLC v. Fluder (aka Pierre Olivier Fluder), WIPO Case No. D2014-1747 (<fifthstreet.finance>); Bialetti Industrie S.p.A. v. Onno Brantjes, Stichting Taxaceae, WIPO Case No. D2016-1450 (<bialetti.coffee>, et. al,); Volkswagen AG v. Milena Milovanov, WIPO Case No. D2016-2117 (<volkswagen.engineer>).
Against this backdrop, the Panel concludes that the Respondent in all likelihood was aware of the Complainant's BHP mark when registering the disputed domain name. The Respondent's selection of the TLD ".energy" reinforces this conclusion, and further suggests that the Respondent registered the disputed domain name intending in some manner to trade on the Complainant's mark.
Accordingly, the Panel finds the Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy.
D. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy states that any of the following circumstances, in particular but without limitation, shall be considered evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that the respondent registered or acquired the disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the disputed domain name registration to the complainant (the owner of the trademark or service mark) or to a competitor of that complainant, for valuable consideration in excess of the respondent's documented out-of-pocket costs directly related to the disputed domain name; or
(ii) circumstances indicating that the respondent registered the disputed domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or
(iii) circumstances indicating that the respondent registered the disputed domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) circumstances indicating that the respondent is using the domain name to intentionally attempt to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of the respondent's website or location or of a product or service on its website or location.
The examples of bad faith registration and use set forth in paragraph 4(b) of the Policy are not meant to be exhaustive of all circumstances from which such bad faith may be found. See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003. The overriding objective of the Policy is to curb the abusive registration of domain names in circumstances where the registrant seeks to profit from and exploit the trademark of another. Match.com, LP v. Bill Zag and NWLAWS.ORG, WIPO Case No. D2004-0230.
For the reasons discussed under this and the preceding heading, the Panel considers that the Respondent's conduct in this case constitutes bad faith registration and use of the disputed domain name within the meaning of paragraph 4(a)(iii) of the Policy. As noted above, the Panel concludes that the Respondent in all probability was aware of the Complainant's well-known BHP mark when registering the disputed domain name. This finding is reinforced by the Respondent's selection of the TLD ".energy", which is clearly related to the Complainant's business. The Respondent's singular use of the disputed domain name has been to generate pay-per-click advertising revenues. The Panel notes that even if the links on the website at the disputed domain name were generated by a third party (such as a registrar) nor the fact that the Respondent may not have directly profited, would by itself prevent a find of bad faith.6 Having regard for the foregoing, the Panel concludes that the Respondent's primary motive in relation to the registration and use of the disputed domain name was to capitalize on, or otherwise take advantage of, the Complainant's trademark rights. The Panel also has taken into account the Respondent's use of a privacy service. See, e.g., Sermo, Inc. v. CatalystMD, LLC, WIPO Case No. D2008-0647.
Accordingly, the Panel finds the Complainant has satisfied the requirements 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 name <bhp.energy> be transferred to the Complainant.
William R. Towns
Sole Panelist
1 The core of the BHP Billiton Group is a dual listed company comprising BHP Billiton Limited and BHP Billiton Plc, operating as BHP Billiton. The Complainant holds some of BHP Billiton's intellectual property.
2 The Complainant further requests, even should the Respondent consent to the transfer of the dispute domain name, that the Panel nevertheless issue a decision on the merits. However, the Respondent has not requested the transfer of the dispute domain name.
3 See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0"), section 1.7.
4 See WIPO Overview 3.0, section 1.8 and cases cited therein. When the relevant trademark is recognizable in the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) does not preclude a finding of confusing similarity under paragraph 4(a)(i) of the Policy.
5 The meaning of a particular TLD, however, may in some cases be relevant to assessments under paragraphs 4(a)(ii) and 4(a)(iii) of the Policy. See WIPO Overview 3.0, section 1.11 and cases cited therein. See also WIPO Overview 3.0, section 1.8.
6 See WIPO Overview 3.0, section 3.5 and cases cited therein.