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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Bayerische Motoren Werke AG v. JMXTRADE.com Selling Premium Domain

Case No. D2000-1693

 

1. The Parties

The Complainant is Bayerische Motoren Werke AG, commonly referred to as BMW AG, of Petuelring 130, Munich, Germany, represented by Dr. Jörg Pohlman, Head of Trademarks of BMW AG.

The Respondent is JMXTRADE.com Selling Premium Domain of 300 E. Bellevue Drive, #131, Pasadena, California 91101, United States of America, representing itself.

 

2. The Domain Name and Registrar

The disputed domain name is <ultimatedrivingmachine.com> and the Registrar is Network Solutions, Inc., of Herndon, Virginia, USA.

 

3. Procedural History

This is an administrative proceeding pursuant to the Uniform Domain Name Dispute Resolution Policy ("the Policy") adopted by the Internet Corporation for Assigned Names and Numbers ("ICANN") on August 26, 1999, in accordance with the Rules for the Policy, approved by ICANN on October 24, 1999, ("the Rules") and the Supplemental Rules for the Policy ("the Supplemental Rules") of the WIPO Arbitration and Mediation Center ("the Center").

The Complaint was received by the Center by email on December 5, 2000, and in hard copy on December 8, 2000. The Center acknowledged receipt on December 6, 2000 and also on that day sought registration details from the Registrar. On December 13, 2000 the Registrar confirmed that the Respondent is the registrant; the record was created on February 27, 2000; its 5.0 Service Agreement is in effect (which incorporates the Policy) and that the status of the disputed domain name is "on hold."

On December 14, 2000, the Center satisfied itself that the Complainant had complied with all formal requirements, including payment of the prescribed fee. On December 15, 2000 the Center printed out a copy of the disputed Web page and formally notified the Respondent by post/courier, fax and email of the Complaint and of the commencement of this administrative proceeding and sent copies to the Complainant, the Registrar and ICANN.

The formal date of the commencement of the proceeding was accordingly December 15, 2000. The last day specified in the notice for a response was January 3, 2001. After receiving a copy of the Complaint from the Complainant in accordance with the Rules but before receiving the Center’s official notification, the Respondent on December 14, 2000 submitted a letter by email responding to the Complaint. Having received the Center’s formal notification, the Respondent on December 29, 2000, filed a Response by email and on January 4, 2001, in hardcopy. A copy of the initial letter was annexed to the hardcopy of the Response. Receipt of the Response was acknowledged by the Center on January 3, 2001.

On January 17, 2001, the Center notified the parties of the appointment of Alan L Limbury as the administrative panel, Mr. Limbury having submitted a Statement of Acceptance and Declaration of Impartiality. The Center nominated January 30, 2001, as the date by which, absent exceptional circumstances, the panel is required to forward its decision to the Center.

The language of the proceeding was English.

The panel is satisfied that the Complaint was filed in accordance with the requirements of the Rules and Supplemental Rules; payment was properly made; the panel agrees with the Center’s assessment concerning the Complaint’s compliance with the formal requirements; the Complaint was properly notified in accordance with paragraph 2(a) of the Rules; the amended Response was filed within the time specified by the Rules and the single-member administrative panel was properly constituted.

 

4. Factual Background (uncontested facts)

The Complainant carries on business in the manufacture and distribution of motor vehicles. The Complainant is the registered owner of US Trademark Registration No. 1240182 "The Ultimate Driving Machine" in International Class 12 (automobiles). This mark is primarily used as an advertising slogan for use in all advertisements featuring BMW vehicles in print, television, on the Internet and other media. This mark has been used in the United States since August 1, 1975.

The Complainant and its American subsidiary, BMW North America Inc., have used this trademark in connection with goods and services recognized in the United States to be of the highest quality. During the 1999 calendar year alone, US $64.8 million was spent on advertising in the United States for BMW products, and the trademark "The Ultimate Driving Machine" appeared in virtually every advertisement.

By letter sent by fax and post dated August 31, 2000, the Complainant advised the Respondent that its unauthorized use of the trademark "The Ultimate Driving Machine" in connection with the disputed domain name violated its trademark rights. The letter requested that the Respondent discontinue further use or reference to any trademark of BMW AG and that the domain be transferred to the Complainant. The Respondent replied by email on the same day stating that they would pass the Complainant’s letter on to their legal department and would follow their counsel’s advice. The Complainant waited for the Respondent’s further response, but received nothing. After being sent a reminder on October 11, 2000, the Respondent replied by email the following day with the brief statement "We intend to proceed the way we see fit".

 

5. Parties’ Contentions

A. Complainant

Rights

By reason of the efforts and care of the Complainant and its American subsidiary, the excellent quality of BMW products and services, and the large advertising spend used in relation to its trademark, the trademark "The Ultimate Driving Machine" has become unique and is identified by the public solely with the Complainant and its products and services.

Identity and confusing similarity

The domain name <ultimatedrivingmachine.com> is confusingly similar to the trademark "The Ultimate Driving Machine", in which the Complainant has rights.

This is especially the case since ".com" is a generic top level domain name ending, leaving the dominant and distinctive component of the disputed domain as being "Ultimate Driving Machine", which differs from the trademark of the Complainant only by the removal of the word "the" from the Complainant’s trademark.

Illegitimacy

The Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent is not a licensee of the Complainants’ mark and has not been authorized in any way to use it. The Respondent has made no other legitimate non-commercial or fair use of the domain name.

Bad Faith

The Respondent is using the registration record of the domain name to offer the domain for sale. Firstly, the phrase "Selling Premium Domain" appears in the registrant field of the record. Secondly, the administrative contact listed in the registration, Joseph Martinez, is using the email address <WebAddress4Sale@aol.com>. Such an offer for sale of the domain name clearly constitutes an act which should be taken to be evidence of bad faith registration and use within the meaning of Paragraph 4(b) of the Policy.

Furthermore, the Respondent is involved in the business of selling domains. Their web site under <jmxtrade.com> lists, among other things, web addresses for sale. A link to <greatwebaddress.com>, another web site which lists domains for sale, can be found on <jmxtrade.com>.

Although the domain name <ultimatedrivingmachine.com> is not listed for sale on the Respondent’s web sites, bad faith should be inferred from the fact that the Respondent is a mass trader in domain names. While Respondent will likely argue that the domains they offer for sale are generic, this is not the case for all of the domains that are listed for sale. A number of these domains involve a geographic location, for example <eCzechRepublic.org>, <ePanama.org>, <eCulverCity.com>, etc., for which the respective states and/or municipalities have corresponding name rights. The domain name BeanyBabys.com, which is also listed for sale on the Respondent’s web sites, is also confusingly similar to the trademark "Beanie Babies", a famous toy product of the toy company Ty, Inc., who have at least common law rights to this name. (See for example, use of the term "Beanie Babies" by Ty, Inc. on the web site <Ty.com>). Therefore, the fact that the Respondent registers and uses other domain names for the primary purpose of selling them should be taken as an inference that the disputed domain name has also been registered and is being used in bad faith within the meaning of Paragraph 4(b) of the Policy.

B. Respondent

Rights in the trademark

The claimant has failed to prove trademark protection for the disputed domain. He did not present any evidence that the domain name has been a trademark.

There is no existing trademark at the time of our registration of the disputed domain, nor there is one right now. Further more, complainant has stipulated in their own documents that the domain in dispute is different from their trademark name.

Identity and confusing similarity.

The Complainant has stated that the omission of the word "The" is the sole basis for their claim that the disputed domain becomes confusingly similar to their name. You could probably apply this argument for domain names with letters "BMW" (<BMWMachines.com>, <BMWCars.com> etc.). Complainant is known for "BMW", not for "Ultimate Driving Machine". "Ultimate Driving Machine" is as generic as web address can be.

Legitimacy

The claimant bears the burden of proving lack of legitimate interest of respondent, which they have failed. Their whole argument is base purely on a wild assumption:

"We have legitimate interest in this domain to feature Auto Conversion Specialists, Hybrid Converted Auto Machines & Customized Auto Body Shops. As you can see Ultimate Driving Machine is very appropriate for this program."

Bad faith

The claimant also failed to prove bad faith because he did not present any evidence that the domain name holder or respondent approached him with an offer:

"The complainant asked numerous times if we are selling this domain name, and we have repeatedly said that we are NOT SELLING this domain. After several failed attempts, we then received a very troublesome letter asking for the immediate transfer of the disputed domain. They have stated in this unpleasant letter, and I quote ‘If we do not hear from you by this date, we will not hesitate to pursue all legal remedies which are available to us.’ They further state that we are in violation of all types of state and federal statutes. It is because of this menacing letter, that we have postponed all our development plans for this domain for almost a year now."

 

6. Discussion and Findings

To qualify for cancellation or transfer, a Complainant must prove each element of paragraph 4(a) of the Policy, namely:

- the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

- the Respondent has no rights or legitimate interests in respect of the domain name; and

- the disputed domain name has been registered and are being used in bad faith.

Rights

The evidence establishes that, descriptive though they are, the words THE ULTIMATE DRIVING MACHINE were first used by the Complainant as a trademark in United States commerce on August 1, 1975 and, through use, had come by May 31, 1983 to be distinctive of the Complainant’s automobiles, so as to qualify for registration as a trade mark on the Principal Register of the United States Patent and Trademark Office in respect of automobiles in class 12. The Complainant clearly has rights in those words as a trademark.

Identity or confusing similarity

"Essential" or "virtual" identity is sufficient for the purposes of the Policy: see e.g. The Stanley Works and Stanley Logistics, Inc v. Cam Creek. Co., Inc, (D2000-0113) and Nokia Corporation v. Nokiagirls.com (D2000-0102).

US cases have adopted the same approach, see Sporty’s Farm L.L.C. v. Sportsman’s Market, Inc., 202 F.3d 489, 497-98 (2d Cir. 2000) (the differences between the trademark "sporty’s" and the domain name <sportys.com> – specifically, an apostrophe in the trademark and the addition of .com in the domain name – are "inconsequential", such that the domain name is "indistinguishable" from and "certainly ‘confusingly similar’ to the protected mark").

The test of confusing similarity under the Policy, unlike trademark infringement or unfair competition cases, is confined to a consideration of the disputed domain name and the trademark: AltaVista Company v. S.M.A., Inc., (D2000-0927); Gateway, Inc. v. Pixelera.com, Inc. (formerly Gateway Media Productions, Inc.) (D2000-0109).

In this case the essence of the trademark is the combination of the words ULTIMATE DRIVING MACHINE. The definite article is inconsequential in terms of sight, sound and concept. The disputed domain name reflects the essence of the Complainant’s trademark and the panel finds it is essentially identical and confusingly similar to that mark.

Illegitimacy

Paragraph 4(c) of the Policy sets out, without limitation, circumstances which, if proved, establish a registrant’s rights or legitimate interests to a disputed domain name. The Complainant has the onus of proof on this, as on all issues.

The Complainant has not authorized the Respondent to use its mark nor to include that mark in any domain names.

The Respondent claims a legitimate interest in the disputed domain name by virtue of its asserted plans to feature automobile-related goods and services, namely Auto Conversion Specialists, Hybrid Converted Auto Machines and Customized Auto Body Shops. Having regard to the Complainant’s trademark registration in relation to automobiles, such use by the Respondent would infringe the Complainant’s mark and therefore cannot give rise to a legitimate interest on the part of the Respondent in the disputed domain name. See Chanel, Inc. v. Estco Technology Group, (D2000-0413).

Bad faith

Despite the Respondent’s denials (after the Complainant first complained about the disputed domain name) that the disputed domain name is for sale, paragraph 4(b)(i) of the Policy requires consideration of the position at the time of registration.

The following circumstances indicate that the Respondent registered the disputed domain name primarily for the purpose of selling it:-

- the inclusion of the phrase "Selling Premium Domain" in the registrant field of the record and the email address WebAddress4Sale@aol.com of the registrant’s administrative contact, Mr. Joseph Martinez - see Euromarket Designs, Inc. v. Domain For Sale VMI, (D2000-1195): "the manner in which the Respondent chose to identify itself and its administrative and billing contacts … unmistakably conveys its intention, from the date of the registration, to sell rather than make any use of the disputed domain name";

- the listing of web addresses for sale on the Website <jmxtrade.com>, many of which are generic;

- the Respondent’s contention that the disputed domain name is generic (indicating that he saw it no differently from those generic names that are for sale); and

- the link from the Respondent’s Website site to <greatwebaddress.com>, another Website which lists domains for sale.

There is nothing inherently wrongful in the offer or sale of domain names, without more, such as to justify a finding of bad faith under the Policy: LifePlan v. Life Plan, (FA 94826); CBS Broadcasting Inc. v. Worldwide Webs, Inc. (D2000-0834). However, "this pre-supposes that the domain name in question has arisen independently and legitimately, and was not specifically created or registered for the purposes of eliciting a sale. That is the key criterion in establishing bad faith": European Broadcasting Union v Domain 4 sale (D2000-0737).

As to whether the sale which the Respondent contemplated when he registered the disputed domain name was (a) to the Complainant or its competitor and (b) for valuable consideration in excess of documented out-of-pocket costs directly related to the domain name, as required under subparagraph 4(b)(i) of the Policy, it is not necessary that there be evidence of a specific offer to the Complainant (or its competitor): The Journal Newspapers, Inc. v. DomainForSale 980dollars (FA95395). Further, it may be inferred from the mere offering for sale that the price to be negotiated would exceed the registration costs: Media West-GSI, Inc., and Gannett Satellite Information Network, Inc. v. Damain Macafee (D2000-1032).

Although the Respondent has not directly contacted the Complainant in an effort to sell the domain name, the registrant’s contact information itself constitutes an offer to transfer the domain name registration ‘for valuable consideration in excess of the Respondent’s out-of-pocket costs directly related to the domain name.’ See DLJ Long Term Investment v. Namewhiz.com-NameForSale (FA95758).

Accordingly, the Complainant has proved that the domain names were registered and are being used in bad faith.

 

7. Decision

Pursuant to paragraphs 4(i) of the Policy and 15 of the Rules, the panel requires the domain name <ultimatedrivingmachine.com> to be transferred to the Complainant.

 

 

Alan L Limbury
Sole Panelist

Dated: January 26, 2001