On 8 March 2016, a complaint was filed with WIPO on behalf of BHP Billiton Innovation Pty Ltd (BHP) seeking the transfer of the domain www.bhp.pw (Domain) from He Yanzhe of Shenzhen, Guangdong, China (Respondent) to BHP (BHP Billiton Innovation Pty Ltd v. He Yanzhe).
For those of us not in au fait with the ccTLD ‘.pw’, it refers to the region of Palau, an archipelago of more than 500 islands in the Pacific Ocean and is known for its pristine waters for scuba-diving and snorkelling.
BHP is a leading global resources company with more than 100 operations in 25 countries and owns a number of trade mark registrations for ‘BHP BILLITON’ and ‘BHP’ in numerous jurisdictions (BHP Marks). As such, BHP were easily able to satisfy the first of the three requirements outlined in the Uniform Domain Name Dispute Resolution Policy (UDRP); that the Domain is identical or confusingly similar to a trade or service mark owned by BHP.
Having established the first element, by submitting that BHP had not authorised the Respondent’s use of the BHP Marks, BHP was able to establish the second element, that the Respondent had no legitimate right or interest in the Domain. Additionally, the Respondent had not conducted business under the Domain and owned no service or trade marks relevant to the Domain.
Surprisingly, given the reputation of BHP and the number of registered trade marks it owns, the Respondent contested the second element, arguing that the letters ‘B’, ‘H’ and ‘P’ are together a common and descriptive term, particularly as an acronym for brake horsepower. The Respondent submitted that they should be able to acquire a domain consisting of common and descriptive terms when the domain is obtained by way of “open and fair channels”.
Predictably, the Panel did not accept the Respondent’s argument. The panel stated that it is irrelevant that the letters ‘B’, ‘H’ and ‘P’ may have a meaning aside from the BHP Marks because the Respondent failed to establish any right or legitimate interest in the Domain containing those letters.
BHP also established the third and final element, registration in bad faith. The Domain was parked and only resolved to a page notifying visitors that it was available for sale. As the BHP Marks have been in use for decades and were registered in a variety of jurisdictions before the Domain was registered, the Panel found it hard to accept that the Respondent was not aware of the Domain’s similarity to the BHP Marks.
The panel considered that the Respondent purposely registered the Domain in order to take advantage of the goodwill and reputation associated with the BHP Marks. The panel’s view is supported by the fact that the Respondent owns more than 27,000 domain names, including for canoncorp.com and betalock.com (a list of the domain names owned by a person is easily attainable through a “reverse whois” search). This points to a systemic pattern of conduct by the Respondent in obtaining registration for domain names which are the same or similar to well-known third party trade marks in which they have no rights.
Having successfully established the three UDRP elements, the Panel ordered that the Domain be transferred to BHP.
Timing is Everything
While it may be possible to successfully mount an argument with respect to the use of descriptive terms in domain names, it is probably best not to test such an argument against an internationally renowned company which has been trading since the late 1800’s and is particularly protective of its reputation and intellectual property and where you have a history of registering in excess of 20,000 domains using trade marks which are well-known, highly visible and obviously do not belong to you.