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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Bayerische Motoren Werke AG v. RaveClub Berlin

Case No. D2003-0385

 

1. The Parties

The Complainant is Bayerische Motoren Werke AG of Munich, Germany, represented by Aimee Gessner of Germany.

The Respondent is RaveClub Berlin of Cherry Hill, New Jersey, United States of America, and with an additional address at Free Speech Internet of Furstenplatz, Dusseldorf, Germany.

 

2. The Domain Names and Registrar

The disputed domain names <bwmfilms.com> and <bwmusa.com>are registered with CSL Computer Service Langenbach GmbH dba Joker.com.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on May 20, 2003. Following a Complaint Deficiency Notification, an Amendment of Complaint was filed in e-mail form on May 30, 2003.

On May 21, 2003, the Center transmitted by email to CSL Computer Service Langenbach GmbH dba Joker.com a request for Registrar Verification in connection with the domain names at issue. On May 21, 2003, the Registrar transmitted by email to the Center its Verification Responses confirming that Respondent is listed as the Registrant and providing the contact details for the administrative, billing, and technical contacts; those addresses were indicated as the one in New Jersey which is mentioned above, while the address of Respondent as the holder of the domain name was indicated to be the one in Dusseldorf. According to the Verification Responses, Respondent had changed the address for the contacts mentioned but not its address at the domain itself. The Verification Responses furthermore indicated that the Uniform Domain Name Dispute Resolution Policy was standard at the Registrar and that no domain names could be registered without it. The Registrar added that it would "freeze" the domain name.

The Center verified that the Complaint, together with the Amendment to the Complaint, satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the "Policy"), 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on June 6, 2003. In accordance with the Rules, paragraph 5(a), the due date for Response was June 26, 2003. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s Default on June 30, 2003.

The Center appointed Mr. Henry Olsson as Sole Panelist in this matter on July 2, 2003. 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. The Projected Decision Date was July 16, 2003.

 

4. Factual Background

The main business of Complainant is the manufacture and distribution of motor vehicles, and its trademarks BMW and BMW AND DESIGN have been used since 1917 in Germany. The later trademark was first registered in Germany in December 1917, and the former mark in November 1929. The marks are used not only in connection with vehicles etc., but also in relation to a wide variety of goods which promote the image and lifestyle associated with BMW cars and motorcycles. In addition to the German registration, Complainant registered the BMW trademarks in more than 120 countries worldwide; four such registrations are valid in the United States. Complainant has submitted copies of registration certificates for those later registrations.

In accordance with paragraph 3(b)(xiii) of the Rules, Complainant agrees to submit, only with respect to any challenge that may be made by Respondent to a decision by the Administrative Panel to transfer or cancel the domain names, that are the subject of the Complaint, to the jurisdiction of the courts where Respondent is located by the address given for domain name holder in the concerned Registrar’s Whois database at the time of the submission of the Complaint to the Center, in this case the address indicated above, in New Jersey, United States.

 

5. Parties’ Contentions

A. Complainant

General

Complainant first submits that by reason of the wide use of the BMW trademarks, those have become unique and are identified by the public solely with Complainant and its products and services. Accordingly, Complainant enjoys an exceedingly valuable reputation and goodwill throughout the world, not only among purchasers of the products, but also among other members of the public. According to Complainant the public has long recognized the trademark BMW as identifying and distinguishing products and services produced and rendered only by Complainant.

With reference to BMW AG v. Loophole, WIPO Case No. D2000-1156 (October 26, 2000) Complainant submits that it has been acknowledged that BMW trademarks are well known throughout the world.

Complainant contends that Respondent has never been entitled to use any of the trademarks of Complainant, and the unauthorized use is neither connected to, sponsored or authorized by, nor within the control of, Complainant.

Complainant alleges that it became aware of the registrations of the domain names at issue by Respondent on March 24, 2003, when it tried to reach its official website <bmwusa.com> but made a typing error and was redirected to a pornographic website. In its further research Complainant found also the registration, <bwmfilms.com> that mimics the domain name <bmwfilms.com> owned by Complainant. The websites <bmwusa.com> and <bmwfilms.com> are, according to Complainant, popular official websites and they have been in use since their registration in 1995 and 2001, respectively.

By letter and e-mail on March 24, 2003, Complainant advised Respondent that the unauthorized use of the BMW trademark in its domain registration, especially in connection with pornography, tarnished and violated its trademark rights and requested Respondent to discontinue further use of or reference to the trademarks of Complainant; Respondent was also requested to transfer the domain names at issue to Complainant. According to Complainant, the letter was returned marked "Addressee Unknown" but the e-mail went through.

Finally, Complainant adds that Respondent is known for often engaging in "typosquatting" and that there are previous UDRP decisions where Respondent has been ordered to transfer the domain names at issue in those cases.

Identity or Confusing Similarity

Complainant alleges that the dominant and distinctive component in the domain names is "bwm" which is confusingly similar to the well-known and registered trademark BMW. This transposition in the domain names of the letters "M" and "W" in BMW does not create a distinct mark capable of overcoming a claim of confusing similarity. Complainant refers in this context to another case, namely Sony Kabushiki Kaishi a/t/a Sony Corporation v. John Zuccarini d/b/a RaveClub Berlin, NAF Case No. FA0206000114714 in which <sonysytle.com> was found to be confusingly similar to the marks SONY and SONY STYLE and which also cited other similar cases. Furthermore, Complainant submits that the addition of any further terms to a well-known mark or a misspelling of a well-known mark (in this case "usa" or the word "films") also does not preclude similarity to the mark and is not sufficient to render a domain name dissimilar or to prevent consumer confusion.

Complainant suggests that, in addition or in the alternative, the domain name <bwmfilms.com> is confusingly similar to the mark BMWFILMS.COM for which Complainant has common law rights by way of its use and advertising of its website "www.bmwfilms.com". Similarly, according to Complainant, the domain name <bwmusa.com> is confusingly similar to the mark BMWUSA.COM for which Complainant also has common law trademark rights by way of its use and advertising of its website under the <bmwusa.com> domain name.

Rights or Legitimate Interests

In this respect, Complainant states that Respondent is not a licensee of the marks of Complainant and has not been authorized in any way to use those marks; furthermore Respondent has made no legitimate non-commercial or fair use of the domain names at issue. Complainant adds, that the use of "typosquatting" to divert Internet users to pornographic websites does not demonstrate any legitimate interest on behalf of Respondent, as illustrated in a similar situation in an earlier case to which Complainant makes reference (America Online, Inc. v. Peter Carrington d/b/a Party Night, NAF Case No. FA 0208000118314).

Registration and Use in Bad Faith

Complainant submits that Respondent was, in accordance with paragraph 4(b)(iv) of the Policy, attempting to "attract, for commercial gain, Internet users to the web site …by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the web site or location of a product or service on the web site or location." According to Complainant, the domain names of Respondent were connected to commercial websites and it can be inferred that Respondent commercially benefits from diverting consumers to the numerous advertisements for other websites that appear automatically when the domain names at issue are typed. Complainant suggests that such a use carries with it the likelihood of confusing Internet users who mistype the URL of Complainant when they are searching for the websites of Complainant. In fact the acts of "typosquatting" and the use of domain names to divert Internet users to pornographic sites has been found in previous cases involving Respondent to represent bad faith use of the domain names; Complainant refers in that context to NAF Case No. FA0206000114714 which has been mentioned above.

Remedies Requested

In accordance with paragraph 4(b)(i) of the Policy, for the reasons described, Complainant requests the Administrative Panel to issue a decision that the contested domain names be transferred to Complainant.

B. Respondent

Respondent did not reply to the Complainant’s contentions and is thus in default.

 

6. Discussion and Findings

Paragraph15 of the Rules prescribes that the Panel shall decide a Complaint on the basis of the statements made and documents submitted and in accordance with the Policy, the Rules and any principles of law that it deems applicable.

In the case of default by a party, paragraph 14 of the Rules prescribes that if a party, in the absence of exceptional circumstances, does not comply with a provision of, or a requirement under, these Rules, the panel shall draw such inferences therefrom as it considers appropriate. In this case, no Response has been submitted and none of the contentions by Complainant has been contested, despite the opportunity given to do so. The Panel will therefore have to operate on the basis of the factual circumstances contained in the Complaint and the documents available to support those contentions.

From the Verification Responses submitted by the Registrar it follows that the Policy applies to the domain name registrations at issue. Respondent is consequently obliged to submit to a mandatory administrative proceeding as the one now initiated in respect of the domain names.

Paragraph 4(a) of the Policy directs that Complainant has to prove each of the following:

- that the domain names registered by Respondent are identical with, or confusingly similar to, a trademark or a service mark in which Complainant has rights
- that Respondent has no rights or legitimate interests in the domain names, and
- that the domain names have been registered and are being used in bad faith.

In the following parts of this Decision, the Panel discusses each of those elements.

A. Identical or Confusingly Similar

In this respect, Complainant has, according to paragraph 4(a)(i) of the Policy, to prove that the domain names at issue are identical with, or confusingly similar to, a trademark or a service mark in which Complainant has rights.

The domain names at issue in this case are <bwmusa.com> and <bwmfilms.com>.

From the submission by Complainant, supported by documentary evidence, follows that Complainant has registered trademark rights in the trademark BMW AND DESIGN and BMW both in Germany and in a number of other countries, inter alia in the form of four registrations of the trademark BMW in the United States. On the basis of the contentions by Complainant relating to its use and advertising of the website under "www.bmwfilms.com" and other evidence available the Panel also concludes that Complainant has common law trademark rights in the notion BMWFILMS. The Panel furthermore considers that the BMW trademarks are well known not only among purchasers but also among the general public.

As Complainant has alleged, what Respondent has done is to merely transpose the letters "M" and "W" in the notion BMW. This act, when seen together with the fact that the notion BMW is a well known trademark, leads the Panel to the conclusion that the disputed domain names are in fact confusingly similar to the trademarks in which Complainant has rights. The addition of the notion ".com" is not such as to remove the likelihood of confusion.

On the basis of these considerations the Panel finds it to be established that there exists a confusing similarity between the trademarks in which Complainant has rights and the domain names at issue.

B. Rights or Legitimate Interests

In this respect, Complainant has, according to paragraph 4(a)(ii) of the Policy, to prove that Respondent has no rights or legitimate interests in the domain names at issue.

The Panel first notes that, as just mentioned, Complainant has trademark rights in the marks BMW and BMWFILMS both in the United States and in Germany, that is, in both countries in which Respondent has addresses, and the Panel also notes that the notion/mark BMW is well known not only among vehicle purchasers but also among the general public. It is, in the view of the Panel, inconceivable that Respondent did not know of the protected trademarks prior to the registration of the domain names at issue.

The Panel accepts the allegations by Complainant to the effect that Respondent is not a licensee of the marks of Complainant and has not in any way been authorized to use those, and also that Respondent has made no legitimate non-commercial or fair use of the domain names. The Panel finds that the actions by Respondent to divert Internet users to pornographic websites does not demonstrate any legitimate interest on behalf of Respondent.

On the basis of these considerations, the Panel finds it to be established that Respondent has no rights or legitimate interests in the domain names at issue.

C. Registered and Used in Bad Faith

In this respect, Complainant has, according to paragraph 4(a)(iii) of the Policy, to prove that the domain names at issue have been registered and are being used in bad faith. Paragraph 4(b) of the Policy sets out some circumstances which, in particular but without limitation, shall, if found to be present by the Panel, be considered as evidence of registration and use in bad faith.

Complainant has, in this respect, basically alleged that from the fact that the websites of Respondent were connected to commercial pornographic websites it can be inferred that Respondent commercially benefits from diverting consumers to the advertisements for other pornographic sites which automatically appear in connection with the domain names at issue.

On the basis of the circumstances thus present, the Panel accepts the allegation by Complainant that Respondent has intentionally attempted, and attempts, to attract for commercial gain Internet users to the website by creating a likelihood of confusion with the trademarks of Complainant as to the source, sponsorship, affiliation or endorsement of the websites. These actions amount, in the view of the Panel, to registration and use of the domain names in bad faith under the Policy.

D. Conclusions

On the basis of these considerations, the Panel considers it to be established that the domain names at issue are confusingly similar to the trademarks in which Complainant has rights, that Respondent has no rights or legitimate interests in the domain names and that the domain names have been registered and are being used in bad faith. The request by Complainant for a transfer of the domain names shall consequently be approved.

 

7. Decision

For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain names <bwmusa.com> and <bwmfilms.com> be transferred to Complainant.

 

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Henry Olsson
Sole Panelist

Dated: July 3, 2003