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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Bayerische Motoren Werke AG v. Whois Protection

Case No. D2007-1142

 

1. The Parties

The Complainant is Bayerische Motoren Werke AG, of Munich, Germany.

The Respondent is Whois Protection, of West Bay of the Cayman Islands.

2. The Domain Name and Registrar

The disputed domain name <desertbmw.com> (the “Domain Name”) is registered with Rebel.com Services Corp.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 2, 2007. On August 6, 2007, the Center transmitted by email to Rebel.com Services Corp. a request for registrar verification in connection with the Domain Name. On August 9, 2007, Rebel.com Services Corp. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. The Center verified that 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 August 13, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was September 2, 2007. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 3, 2007.

The Center appointed Alfred Meijboom as the sole panelist in this matter on September 10, 2007. 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, Bayerische Motoren Werke AG, more commonly referred to as BMW AG, manufactures and distributes motor vehicles.

The Complainant holds BMW trademark registrations in more than 120 countries, including:

- BMW device (reg. no. 221388), Germany, since 1917;

- BMW (reg. no. 410579), Germany, since 1929;

- BMW (reg. no. 611710), USA, since 1955;

- BMW (reg. no. 1020725), Cayman Islands, since 2000.

The Complainant asserted that it has intensively used the BMW trademark throughout the world for decades and as result thereof it has become well known, which has been acknowledged by the panel in BMW AG v. Loophole, WIPO Case No. D2000-1156.

The authorized BMW dealers in the Las Vegas area have been trading under the names “Desert BMW of Henderson” and “Desert BMW of Las Vegas” for many years. They use the domain names <desertbmwofhenderson.com> and <desertbmwoflasvegas.com> and share the website at “www.lasvegasbmw.com”.

The Domain Name was registered on November 27, 2005. The Domain Name leads to a so-called “click through” website with pop-ups (e.g. an advertisement for an on-line casino) and different links to other websites and companies, none of them associated with the Complainant or its authorized dealers.

A print-out of Rebel.com’s WHOIS database dated May 9, 2007, mentioned “Whois ID Theft Protection” as the registrant.

On May 9, 2007, the Complainant sent the registrant a cease and desist letter by e-mail requesting the transfer of the Domain Name. The registrant did not reply.

A print-out of Rebel.com’s WHOIS database dated August 1, 2007, mentioned “Whois Protection” of the Cayman Islands with the same e-mail address, whois@ieprotection.com, as “Whois ID Theft Protection”, but with a different address and telephone number. The use of the website linked to the Domain Name had not changed.

 

5. Parties’ Contentions

A. Complainant

Based on the following arguments the Complainant requested the Panel to issue a decision that the Domain Name be transferred.

Since the e-mail address of the initial registrant “Whois ID Theft Protection” and the current registrant “Whois Protection”, the Respondent in this procedure, is the same, the Complainant treated them as the same entity fort the purpose of the Complaint.

Identical or Confusingly Similar

The Complainant contended that the dominant and distinctive component of the Domain Name is “BMW”, which is identical to the Complainant’s registered trademarks.

“Desert” can be used in its usual meaning of “dry, desolate land”, but is also a common term for Nevada or Las Vegas. Therefore, the Complainant asserts, the word “desert” in the Domain Name is either generic or geographical and thus descriptive. Either way, the addition of the word “desert” does not avoid confusion with the Complainant’s BMW trademarks. Moreover, the fact that the Complainant’s authorized dealers in the Las Vegas area trade under the names “Desert BMW of Las Vegas” and “Desert BMW of Henderson” even increases the likelihood of confusion with the Domain Name.

Rights or Legitimate Interests

The Complainant claimed that the Respondent has no rights or legitimate interests in respect of the Domain Name. The Respondent is not a licensee and has not been authorized in any way to use the Complainant’s BMW trademarks. Furthermore, the Respondent does not make legitimate non-commercial or fair use of the Domain Name

Registered and Used in Bad Faith

The Complainant asserted that the Respondent has “registered the domain name in order to prevent the owner of the trademark from reflecting the mark in a corresponding domain name, provided that [he has] engaged in a pattern of such conduct” as meant in the Policy, Paragraph 4(b)(ii). The Complainant, its subsidiary BMW of North America LLC and authorized BMW dealers are prevented from using the Domain Name. According to the Complainant the Respondent is in the cyber squatting business, as evidenced by the numerous WIPO UDRP decisions granted against Respondent under its name “Whois Theft Protection”, and the registration of the domains in those cases is evidence constituting “a pattern of conduct” within the meaning of the Policy, Paragraph 4(b)(ii).

Furthermore, the Complainant contended that the Respondent is intentionally attempting “to attract, for commercial gain, Internet users to [the] website....by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of [the] website or location or of a product or service on the website or location” as meant in the Policy Paragraph 4(b)(iv). The website which is linked to the Domain Name is a search portal with links to other third party websites. The Respondent earns revenues from the advertised listings. Visitors who accidentally come across the Respondent’s website or who are looking for information regarding the Complainant’s authorized “Desert BMW” dealers may be confused as to whether the Respondent’s website is sponsored or affiliated by the Complainant.

For these reasons the Complainant asserted that the actions of the Respondent should be considered to be evidence constituting bad faith registration and use.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

 

6. Discussion and Findings

According to paragraph 4(a) of the Policy, the requested remedy can be granted if the Complainant asserts and proves each of the following:

A. that the Domain Name is identical or confusingly similar to a trademark or a service mark in which Complainant has rights; and

B. that the Respondent has no rights or legitimate interests in respect of the Domain Name; and

C. that the Domain Name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

The Complainant holds BMW trademark registrations in more than 120 countries, including Germany (reg. no. 221388 and 410579), USA (reg. no. 611710) and Cayman Islands, where the Respondent is based. Consequently, the Panel finds that the Complainant has rights in the BMW trademark.

For the purpose of assessing whether the Domain Name is identical or confusingly similar to the BMW trademark in which the Complainant has rights, the “.com” suffix is disregarded, as it being a necessary component of the Domain Name. The difference between the BMW trademark and the Domain Name is the addition of the word “desert”. As such the addition of a common word does not usually reduce the likelihood of confusion. Moreover, the Panel finds that, since “desert” is, as Complainant undisputedly asserted, commonly used for the Las Vegas area and the authorized BMW dealers in that area have been trading under the names “Desert BMW of Henderson” and “Desert BMW of Las Vegas” for many years and are using the domain names <desertbmwofhenderson.com> and <desertbmwoflasvegas.com>, the addition of “desert” even increases the likelihood of confusion. As a result the Panel considers the Domain Name <desertbmw.com>, confusingly similar to the Complainant’s BMW trademark (see Toyota Motor Sales USA v. Rafi Hamid dba ABD Automobile Buyer, WIPO Case No. D2001-0032).

B. Rights or Legitimate Interests

According to paragraph 4(c) of the Policy the Complainant should prove that the Respondent has no right or legitimate interest in the Domain Name. According to the consensus view among panels, this condition is met if the Complainant makes a prima facie case that the Respondent has no rights or legitimate interests, and the Respondent fails to show one of the three circumstances mentioned in paragraph 4(c) of the Policy.

The Complainant contended that it did not authorize the Respondent to use the BMW trademark in any way. Nor could the Panel establish any indications that the Respondent was previously known under the Domain Name or is using the Domain Name for bona fide offering of goods or services, or for non-commercial or fair use. For these reasons, the Panel finds that the Respondent has no rights or legitimate interest in the Domain Name.

C. Registered and Used in Bad Faith

The Domain Name is composed of the term “bmw”, which is identical to the Complainant’s BMW trademarks, and the common word “desert”. The Panel considers that the BMW trademarks have a reputation and are well known throughout the world. In accordance with ACCOR v. Tigertail Partners, WIPO Case No. D2002-0625, the Panelist finds it is reasonable to conclude that only someone who was familiar with the BMW trademark could have registered the Domain Name. Therefore the Panelist finds that the Domain Name was registered in bad faith.

For this finding it is irrelevant whether the Respondent, “Whois Protection”, has acquired the Domain Name from “Whois ID Theft Protection” or if it is the same entity, since for the purposes of the Policy, the acquisition of the domain name at issue constitutes registration. (See MC Enterprises v. Mark Segal (Namegiant.com), WIPO Case No. D2005-1270.

The Complainant must also prove that the Respondent is using the Domain Name in bad faith.

According to paragraph 4(b) of the Policy an indication for use in bad faith is if the Respondent is intentionally attempting to attract, for commercial gain, Internet users to his website by creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation, or endorsement of his website or of a product or service on his website.

The Respondent generates traffic to the website linked to the Domain Name by creating a likelihood of confusion with the BMW trademark. The website is a so called “click through” website with pop-ups (e.g. an ad for an on-line casino) and various links to other websites and companies, none of them associated with the Complainant or its authorized dealers. Such use is considered to be commercial. Therefore, in view of paragraph 4(b) of the Policy, the Panel finds that the Domain Name is also being used in bad faith.

The Panel finds it very well possible that the Complainant correctly asserted that the Respondent, “Whois Protection”, is the same entity as “Whois ID Theft Protection”, who has engaged in a pattern of ‘cyber squatting’ as evidenced by Fry’s Electronics, Inc v. Whois ID Theft Protection, WIPO Case No. D2006-1435; The Hartz Mountain Corporation v. Whois ID Theft Protection, WIPO Case No. D2006-1319; Charlotte Russe Holding, Inc. v. Whois ID Theft Protection, WIPO Case No. D2007-0371, and Swarovski AG v. Whois ID Theft Protection, WIPO Case No. D2007-0225. However, it is not necessary to make a finding in this respect, since the Panelist has already concluded that the Respondent registered and is using the Domain Name in bad faith.

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 name <desertbmw.com> be transferred to the Complainant.

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Alfred Meijboom
Sole Panelist

Dated: September 17, 2007