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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Bayerische Motoren Werke AG v. bmwcar.com

Case No. D2002-0615

 

1. The Parties

The Complainant is Bayerische Motoren Werke AG, a corporation organized under the laws of the Federal Republic of Germany, with a principal place of business at Petuelring 130, Munich, Germany. The Complainant is represented by Ms. Aimee Gessner, in-house Counsel.

The Respondent is bmwcar.com, 15984 Civlie Road, Orange, NY 92344, United States of America.

 

2. The Domain Name and Registrar

The domain name at issue is <bmwcar.com> (the "Domain Name").

The Registrar is Dotster Inc dba dotster.com (the "Registrar"), 11807 NE 99th St., Suite 1100, Vancouver, WA 98682, United States of America.

 

3. Procedural History

The Complainant filed a Complaint by e-mail with the World Intellectual Property Organization Arbitration and Mediation Center (the "Center") on July 3, 2002. On July 8, 2002, the Center received a hard copy of the Complaint, with supporting evidence.

On July 4, 2002, a Request for Registrar Verification was transmitted to the Registrar, which confirmed, on July 16, 2002, that the Domain Name was registered with Dotster and that the Respondent was the current registrant of the Domain Name. The Registrar transmitted to the Center the full whois details relating to the Domain Name.

On July 17, 2002, the Center reviewed the Complaint to verify that it satisfied the formal requirements of the ICANN Uniform Domain Name Dispute Resolution Policy (the "Policy"), the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules"), and the Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules").

The Sole Panelist has independently determined and agrees with the assessment of the Center that the Complaint meets the formal requirements of the Policy, the Rules and the Supplemental Rules.

The language of the administrative proceeding is English, being the language of the registration agreement.

On July 18, 2002, the Center notified the Respondent by courier and e-mail, in accordance with Paragraph 2(a) of the Rules, of the commencement of this proceeding and set August 6, 2002, as the last date for the submission of a Response.

The Center did not receive a Response from the Respondent. On August 7, 2002, the Center issued a Notification of Respondent Default, which was sent by e-mail to the Parties.

On August 9, 2002, the Center invited Mr. Fabrizio La Spada to serve as Sole Panelist. On August 12, 2002, the Center received Mr. La Spada's Statement of Acceptance and Declaration of Impartiality and Independence. On August 13, 2002, the Center appointed Mr. La Spada as Sole Panelist and issued a Notification of Appointment of Administrative Panel and Projected Decision Date, which was communicated by e-mail to the Parties. The Center set August 27, 2002 as the Projected Decision Date.

The Sole Panelist finds that the Administrative Panel was properly constituted and appointed in accordance with the Rules and the Supplemental Rules.

 

4. Factual Background

The Complainant is a corporation which manufactures and sells motor vehicles under the BMW trademark. It is the owner of several trademark registrations for "BMW" and "BMW and design" in Germany, in the United States and throughout the world. The first registration of the BMW trademark ("BMW and design") was made in Germany in 1917 for goods including, amongst others, land, air, water vehicles, automobiles, and vehicles parts (registration No. 221388). The first registration for the word mark "BMW" was made in Germany in 1929 for goods including, amongst others, aircraft engines, motor vehicles, and motorcycles (registration No. 410 579). The word mark "BMW" has also been registered in the United States in 1955 for goods including, amongst others, automobiles, motor vehicles, and cycles (registration No. 611 710).

In February 2002, the Domain Name was connected to a website featuring a search engine relating to a number of activities, including notably gambling, finance, computers, and travel. The website also contained the following statement : "This domain name is for sale". At the time, the Domain Name was registered in the name of : "(This Domain is For Sale)", 23852, Pacific Coast Highway Suite 720 Malibu, CA 90265, USA. The administrative contact was a company named Success Incorporated.

By letter of February 13, 2002, to Success Incorporated, the Complainant requested the latter to cease the use of the "BMW" trademarks and to transfer the Domain Name to the Complainant. On February 27, 2002, the Complainant received an e-mail from a person named Karim, who stated that he had owned the Domain Name since 1998 and had spent USD 750.- for it (including registration fees until 2004). Karim offered to transfer the Domain Name against payment of the amount of USD 750.-.

After February 2002, the Domain Name was transferred to the Respondent. At the time the Complaint was filed, the whois details related to the Domain Name showed that bmwcar.com's address was 23852 pch #720, Malibu, CA 90265, USA.

 

5. Parties’ Contentions

A. Complainant

The Complainant asserts that the "BMW" trademarks have been in use since 1917 in Germany and thereafter in over 120 countries, in connection with goods and services which are recognized throughout the world to be of the highest quality. It submits that the "BMW" trademarks have become unique and are identified by the public solely with the Complainant and its products and services.

The Complainant contends that the Domain Name is confusingly similar to the BMW trademarks. According to the Complainant, "car" is a generic word, which does not make the predominant element ("bmw") less distinctive. The Complainant suggests that, since cars are its main product, the addition of the word "car" in the Domain Name creates confusion instead of alleviating it.

The Complainant also submits that the Respondent has no rights or legitimate interests in the Domain Name. It points out that the Respondent is not a licensee of Complainant's marks and has not been authorized to use the latter. According to the Complainant, the Respondent has not made a non-commercial or fair use of the Domain Name.

The Complainant further contends that the Respondent has registered and is using the Domain Name in bad faith. It submits that the Domain Name was registered primarily for the purpose of selling it and that the Respondent is intentionally attempting to attract Internet users to its website for commercial gain, by creating a confusion with the Complainant's mark as to the source, sponsorship, affiliation or endorsement of the web site or location or of a product or service on the web site or location.

The Complainant also alleges that the Respondent changed its registration details after being contacted by the Complainant, in an attempt to avoid liability. The Complainant submits that this is evidence of bad faith.

On these bases, the Complainant seeks the transfer of the Domain Name.

B. Respondent

The Respondent has not submitted a Response or any other comments.

 

6. Discussion and Findings

In accordance with Paragraph 4(a) of the Policy, in order to succeed in this proceeding and obtain the transfer of the Domain Name, the Complainant must prove that each of the three following elements are satisfied:

1. The Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights (see below, section 6.1); and

2. The Respondent has no rights or legitimate interests in respect of the Domain Name (see below, section 6.2); and

3. The Domain Name has been registered and is being used in bad faith (see below, section 6.3).

Paragraph 4(a) of the Policy clearly states that the burden of proving that all these elements are present lies with the Complainant.

The Sole Panelist notes that, pursuant to Paragraph 15(a) of the Rules, it shall decide the complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable. Moreover, in accordance with Paragraph 14(b) of the Rules, if a party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under, the Rules or any request from the Panel, the Panel shall draw such inferences therefrom as it considers appropriate.

6.1 Is the Domain Name Identical or Confusingly Similar to a Trademark in which Complainant has Rights ?

This question raises two issues : (1) does the Complainant have rights in a trademark or service mark; and (2) is the Domain Name identical or confusingly similar to such trademark or service mark.

As to the first question, the Complainant has produced satisfactory evidence that it is the owner of several BMW trademarks, which are registered in Germany and in the United States (e.g., word mark "BMW" Reg. No. 410 579 registered on November 15, 1929 in Germany; word mark "BMW" Reg. No. 611'710 registered on September 6, 1955 in the United States).

As to the second question, the Sole Panelist finds that the Domain Name is confusingly similar to the trademark BMW. As numerous prior panels have held, when a domain name wholly incorporates a complainant's registered mark, that is sufficient to establish confusing similarity for purposes of the Policy (see, e.g., Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903 ; Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525; Eauto, L.L.C. v. Triple S. Auto Parts d/b/a Kung Fu Yea Enterprises, Inc., WIPO Case No. D2000-0047). That is especially the case where the word that is added to the Complainant's trademark is not distinctive, as is the case in the present matter (addition of "car") (see Reliant Energy, Inc. v. Brent Graeter, WIPO Case No. D2001-0246; Freni Brembo S.p.A. v. Webs We Weave, WIPO Case No. D2000-1717). Moreover, the Sole Panelist finds that the addition of the word "car", which refers to the main product of the Complainant, increases the likelihood of confusion between the Domain Name and the Complainant's "BMW" trademarks (see Volvo Trademark Holding AB v. e-motordealer Ltd., WIPO Case No. D2002-0036; Nintendo of America, Inc. v. Tyasho Industries and Thomas G. Watson, WIPO Case No. D2001-0976).

The Sole Panelist therefore finds that the Domain Name is confusingly similar to a trademark in which the Complainant has rights.

6.2 Does the Respondent Have Rights or Legitimate Interests in the Domain Name ?

The Complainant submits that the Respondent has no rights or legitimate interests in the Domain Name. It points out that the Respondent has not been authorized to use the "BMW" trademarks and has not made any non-commercial or fair use of the Domain Name. The Respondent, which did not file a Response, did not dispute this contention nor provide information as to its rights or interests in the Domain Name.

According to paragraph 4(c) of the Policy, a Respondent may establish its rights or legitimate interests in the Domain Name, 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 trade mark 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 trade mark or service mark at issue."

On the basis of the statements and documents submitted, the Sole Panelist is satisfied that the Respondent has no rights or legitimate interests in the Domain Name.

There is no indication that the Respondent is using the Domain Name in connection with a bona fide offering of goods or services. The only evidence on record shows that, in February 2002, the Domain Name was used (by the previous owner of the Domain Name) in connection with a search engine which was totally unrelated to the names "bmw" or "bmwcar". Moreover, there are no elements showing that the Respondent is or was commonly known by the Domain Name at any point in time. Finally, there is no evidence that the Respondent is making a legitimate noncommercial or fair use of the Domain Name.

In accordance with the elements set out above, the Sole Panelist finds that the Respondent has no rights nor legitimate interests in respect of the Domain Name.

6.3 Is There Evidence of Registration and Use of the Domain Name in Bad Faith ?

Paragraph 4(b) of the Policy sets out four circumstances which, without limitation, shall be evidence of the registration and use of a domain name in bad faith. In particular, Paragraphs 4(b)(i) and 4(b)(iv) provide as instances of registration and use in bad faith:

"(i) circumstances indicating that you [Respondent] have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or

[…]

(iv) by using the domain name, you [Respondent] have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location."

The Sole Panelist is satisfied that these circumstances are fulfilled in this case.

First, there is evidence that, in February 2002, the website connected to the Domain Name prominently displayed the statement "This domain name is for sale". Moreover, when contacted by the Claimant, the Respondent offered to sell the Domain Name for an amount of USD 750.-. The Respondent claimed that this amount corresponded to its out-of-pocket expenses (registration fees for the period 1998-2004), but did not document this claim. The Sole Panelist considers that, in the absence of evidence to the contrary and on the basis of the general experience, the amount of USD 750.- exceeds the cost of a six-year registration. The Sole Panelist notes in this respect that the cost of a five-year registration with the Registrar (in the .com TLD) is today less than USD 70.-.

The Sole Panelist is aware of the fact that, when the offer was made, the Domain Name was registered in the name of (This Domain is for Sale), and not in the name of the Respondent. At the time the Complaint was filed with the Center, the owner of the Domain Name was <bmwcar.com>. However, the Sole Panelist notes that the address of the owner of the Domain Name remained the same. The address was modified after the Complaint was filed. The Sole Panelist agrees with the Complainant's statement that the modification of the contact details was likely made with the purpose of avoiding liability under the UDRP.

Second, the Sole Panelist considers that the BMW trademark is a famous mark and has a worldwide reputation in connection with automobiles and other vehicles. It is thus highly likely that the Respondent was fully aware of the existence of the Complainant and its rights in the BMW trademarks at the time it registered the Domain Name.

Moreover, there is no justification in the statements and documents submitted for the use of the Complainant's trademark in the Domain Name, other that the attempt to attract, for commercial gain, Internet users to the Respondent's web site, by creating initial confusion as to the source, sponsorship, affiliation, or endorsement of the Respondent's web site. The Sole Panelist notes that the Respondent does not use the words "bmw" or "bmwcar" to offer goods and/or services through the Domain Name. On the contrary, the use that was made of the Domain Name was merely to direct users to a commercial search engine, where no mention was made of the Domain Name or of names corresponding to the Domain Name. The Sole Panelist finds that this is further evidence that the Respondent registered and uses the Domain Name in bad faith, to benefit from the Complainant's trademarks’ reputation and to attract Internet users to its web site for commercial gain (see, e.g., Microsoft Corporation v. MindKind, WIPO Case No. D2001-0193).

Therefore, the Sole Panelist finds that the Domain Name was registered and is being used in bad faith.

 

7. Decision

On the basis of the elements set out above, the Sole Panelist finds that :

1. The domain name <bmwcar.com> is confusingly similar to the trademark "BMW", in which the Complainant has rights;

2. The Respondent does not have any rights or legitimate interests in respect of the Domain Name;

3. The Domain Name was registered and is being used in bad faith.

Therefore, in accordance with Paragraphs 4(a) and 4(i) of the Policy and 15 of the Rules, the Sole Panelist orders that the Domain Name <bmwcar.com> be transferred to the Complainant.

 


 

Fabrizio La Spada
Sole Panelist

Dated: August 27, 2002

 

Источник информации: https://www.internet-law.ru/intlaw/udrp/2002/d2002-0615.html

 

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