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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Bayerische Motoren Werke AG v. bmwrider llc

Case No. D2008-0610

 

1. The Parties

The Complainant is Bayerische Motoren Werke AG, of Germany, represented by BMW AG, Germany.

The Respondent is bmwrider llc, United States of America.

 

2. The Domain Names and Registrar

The disputed domain names <bmwofchandler.com>, <bmwofchandler.net> and <bmwofescondido.com> are registered with GoDaddy.com, Inc.

 

3. Procedural History

The Complaint (naming as Respondent Domains by Proxy, Inc.) was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 18, 2008. On April 21, 2008, the Center transmitted by email to GoDaddy.com, Inc. a request for registrar verification in connection with the domain name <bmwofescondido.com>. On April 21, 2008, GoDaddy.com, Inc. transmitted by email to the Center its verification response disclosing underlying registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on April 24, 2008, providing the underlying registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on April 29, 2008. That amendment also requested the addition to the Complaint of the disputed domain names <bmwofchandler.com> and <bmwofchandler.net>, submitting inter alia that the registrant information for the added domain names was consistent with that for the original domain name <bmwofescondido.com>. On May 5, 2008, the Center transmitted by email to GoDaddy.com, Inc. a request for registrar verification in connection with the additional domain names at issue. On May 5, 2008, GoDaddy.com, Inc. 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 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 May 7, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was May 27, 2008. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 29, 2008.

The Center appointed Dr. Clive N.A. Trotman as the sole panelist in this matter on June 9, 2008. 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 Panel is satisfied that Domains by Proxy, Inc. is simply a privacy domain name registration service. The Registrar has confirmed that the registered owner of the disputed domain names is bmwrider llc. Accordingly, the Panel will treat bmwrider llc as the sole Respondent. See e.g. Xtraplus Corporation v. Flawless Computers, WIPO Case No. D2007-0070.

 

4. Factual Background

The following factual information is summarized from the Complaint. The Complainant is in the business of motor vehicle manufacture and distribution. The BMW trademarks have been in use since 1917 in Germany. They are also now used in relation to goods including accessories and merchandise, such as clothing, watches, sunglasses and leather goods that promote the image and lifestyle associated with BMW automobiles and motorcycles. Services such as the repair and maintenance of motor vehicles, financial leasing of motor vehicles, and participation and sponsorship of sporting events, are also covered by various trademark registrations. BMW trademarks are registered in over 120 countries, including the United States.

No factual information about the Respondent is available other than that appearing in the registration details for the disputed domain name.

 

5. Parties’ Contentions

A. Complainant

The Complainant contends that it holds rights in the trademarks BMW and BMW and design and has done so since 1917 in Germany. Attached as documentary evidence are copies of the following trademark registrations:

Trademark: BMW and design

Country: Germany

Registration No. 221388

Reg. Date: December 10, 1917

Class: 12

Goods: Land, air, water vehicles, automobiles, bicycles, accessories for automobiles and bicycles, vehicle parts; stationary engines for solid, liquid and gaseous operating supplies and their components and accessory parts.

Valid until: October 31, 2017

Trademark: BMW

Country: Germany

Registration No. 410579

Reg. Date: November 15, 1929

Class: 7, 12

Goods: Aircraft engines, land, air, water vehicles, motorcycles, internal combustion engines for solid, liquid and gaseous operating supplies and their components.

Valid until: February 28, 2009

Trademark BMW

Country USA (being the stated location of the Respondent)

Registration No. 611710

Reg. Date September 6, 1955.

The Complainant contends that it has a high reputation worldwide for products of quality and is well known through its trademarks by the public.

The Complainant further contends that the disputed domain names are identical or confusingly similar to the BMW trademarks because the dominant and distinctive component of the domain names is “BMW”. The added geographical terms “of Escondido” (a city near San Diego, California) or “of Chandler” (a city or town in Arizona) do not make the predominant element “BMW” less distinctive. The Complainant cites Toyota Motor Sales USA v. Rafi Hamid dba ABC Automobile Buyer, WIPO Case No. D2001-0032 (domain names with added geographic designations found to be confusingly similar to the Lexus trademarks).

The Complainant and its licensees often use the trademark BMW in combination with geographic terms, e.g., as <bmwusa.com>, <bmwofmanhattan.com> and <bayareabmw.com>. The Complainant has an authorized BMW dealer in Escondido, California, named “BMW of Escondido”, and therefore there is a high likelihood that <bmwofescondido.com> would be understood by customers to refer to the products and services of the Complainant offered in Escondido.

The generic top level domain “.com” is not sufficient to render a domain name dissimilar from a trademark or to prevent consumer confusion.

The Complainant further contends that the Respondent has no rights or legitimate interests in the disputed domain names. The Respondent is not a licensee of the Complainant’s trademarks and has not been authorized to use them. The Respondent has made no legitimate non-commercial or fair use of the domain names.

The Complainant further contends that the Respondent has registered and is using the domain names in bad faith. The Respondent is intentionally attempting to attract, for commercial gain, Internet users to the corresponding websites by confusion with the complainant’s trademarks as to the source, sponsorship, affiliation, or endorsement of the websites or of product or services on them. The websites provide links to advertisers of other products on what may reasonably be presumed to be a pay-per-click basis, thereby constituting commercial use. Users who reach the websites corresponding to the disputed domain names may be confused into thinking they are authorized by the Complainant.

The Complainant says BMW of Escondido was until recently known as Brecht BMW, of which Randal Laseter, now the administrative contact of the Respondent, was formerly an employee. Therefore, it is contended, the Respondent knew of the impending name change, or was at the least aware of the BMW dealership located in Escondido. The Complainant contends therefore that in terms of paragraph 4(b)(ii) of the Policy the Respondent has registered the domain name in order to prevent the trademark owner from reflecting the trademark in a corresponding domain name. Furthermore there is the required element of a pattern of such conduct because the Respondent has registered three domain names incorporating the letters BMW in the present case.

The Complainant says the Respondent, by using the registrant name bmwriders llc, implies it is a limited liability company. The Complainant has searched and found no record of any entity called bmwriders llc in the USA. The use of false registrant details is an indication of bad faith under paragraph 4(b) of the Policy (BMW AG v. Loophole, WlPO Case No. D2000-1156). Furthermore the inclusion of the Complainant’s trademark in the registrant name increases the likelihood of confusion under paragraph 4(b)(iv) of the Policy.

The Complainant contends that, if the Respondent were to assert in its defence that the registrar and not the Respondent has placed the sponsored links, then the decision in Villeroy & Boch AG v. Mario Pingerna, WIPO Case No. D2007-1912, should be considered precedent (commercial gain under paragraph 4(b)(iv) of the Policy need not be derived by the Respondent itself; the owner of a domain name has the power to instruct the Registrar to remove sponsored links and must accept liability for the content of the website).

The Complainant further contends that the failure of the Respondent’s privacy service to reply to the Complainant with disclosure of the true registrant’s identity is evidence of bad faith, citing HSBC Finance Corporation v. Clear Blue Sky Inc. and Domain Manager, WIPO Case No. D2007-0062 (in which the Panel said “[…] bad faith is compounded when the domain name owner or its duly authorized privacy service, upon receipt of notice that the domain name is identical to a registered trademark, refuses to respond or even to disclose the domain name owner’s identity to the trademark owner”).

The Complainant contends that failure of the Respondent to reply to a cease and desist email letter dated April 28, 2008 is evidence of bad faith.

The Complainant requests that the disputed domain names be transferred to the Complainant.

B. Respondent

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

 

6. Discussion and Findings

Paragraph 4(a) of the Policy states that the respondent is required:

“to submit to a mandatory administrative proceeding in the event that a third party (a “complainant”) asserts to the applicable provider, in compliance with the Rules of Procedure, that:

(i) your domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and

(ii) you have no rights or legitimate interests in respect of the domain name; and

(iii) your domain name has been registered and is being used in bad faith.”

The Complainant has made the relevant assertions as above. The dispute is properly within the scope of the Policy and the Panel has jurisdiction to decide the dispute.

A. Identical or Confusingly Similar

The Complainant has provided adequate documentary evidence that it has for many years held rights in the registered trademark “BMW” in various forms, including the plain initials.

The three disputed domain names all have a similar pattern, namely, the letters “bmw” conjoined to “ofescondido” or “ofchandler”, followed by the gTLD identifier, either “.com” or “.net”. It is well established that for the purposes of determining confusing similarity under the Policy, the gTLD identifier, being inevitable in a domain name, is of no consequence. What remains in each case is “bmw”, “of”, and a place name. The Panel accepts the Complainant’s evidence that the trademark BMW is world famous. Internet domain names in the present context do not distinguish between upper and lower case, thus there is no technical difference between “bmw” and BMW. The “bmw” part of the disputed domain names is identical to the Complainant’s trademark. It is also well established that prefixes, suffixes, words or letters, including geographical names, in which a trademark may be wrapped for use as a domain name, rarely detract from a finding of confusing similarity.

On the facts, the Panel finds the disputed domain names to be confusingly similar to the Complainant’s trademark BMW in the terms of paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

The Complainant states that as the owner of the trademark BMW it has not licensed or authorized the Respondent to use its trademark, and that the Respondent has not made any legitimate non-commercial or fair use of the domain names.

The Complainant has stated a prima facie case to the effect that the Respondent has no rights or legitimate interests in the domain names, to which the Respondent had the opportunity to reply in the terms of paragraph 4(c) of the Policy, but did not do so. The Panel finds that the Respondent has no rights or legitimate interests in the disputed domain names in the terms of paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

Paragraph 4(a)(iii) of the Policy requires the Complainant to prove that each disputed domain name has been registered and is being used in bad faith. Paragraph 4(b) lists four circumstances that, without limitation, shall be evidence of the registration and use of a domain name in bad faith:

“(i) circumstances indicating that you 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

(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or

(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website 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 website or location or of a product or service on your website or location.”

The Complainant has adduced evidence of alleged bad faith registration and use under more than one of the above criteria and also generally.

Screen prints of the websites corresponding to the disputed domain names are of similar character, being parking pages available through a service of the registrar. Each displays prominently the relevant disputed domain name incorporating the letters “bmw”, a list of links to a wide variety of sites that appear to be predominantly commercial, also a search facility, and some general display advertisements. The main page of links contains a statement from the registrar to the effect that it, the registrar, has provided the links.

The Complainant has anticipated a possible defence that the Respondent is not responsible for the links put there by the registrar. The Complainant says that the Respondent is in fact responsible, citing Villeroy & Boch AG v. Mario Pingerna, WIPO Case No. D2007-1912. There is a contrary view that a Respondent need not necessarily be held responsible for automated advertising content (Mariah Media Inc. v. First Place® Internet Inc., WIPO Case No. D2006-1275). A distinction, however, is that the present Complainant is not arguing solely on the basis of the advertising content of the parking pages, but on the existence of links per se. It may in this Panel’s view reasonably be inferred that the Respondent chose to use the registrar’s parking facility and was aware, or ought to have been aware, of the nature of the facility in featuring links and advertising.

The Panel finds it implausible that the Respondent registered domain names containing the trademark BMW without some intent ultimately to benefit. The style of each domain name is found to be sufficient evidence of an intention to attract Internet users by confusion with the Complainant’s trademark. The remaining question is the existence and nature of any potential commercial gain. The Panel finds on the balance of probabilities that the Respondent expects either to receive a share of the revenue resulting from the pay-per-click or click-through activities of users who follow the links provided by the registrar (paragraph 4(b)(iv) of the Policy), or to attract buyers who might pay a profitable price for the domain names (paragraph 4(b)(i) of the Policy), or both. The Panel need not know which activity is the Respondent’s uppermost intention as paragraphs 4(b)(i) to 4(b)(iv) of the Policy are illustrative and without limitation. The evidence is sufficient that the Panel has found bad faith registration and use in the terms of paragraph 4(a)(iii) of the Policy.

Additional evidence, as discussed below, supports the finding of bad faith registration and use by the Respondent.

The Complainant states that it has an authorized dealership located in Escondido now known as “BMW of Escondido”, which is identical to the disputed domain name <bmwofescondido.com>. Furthermore the Respondent’s administrative contact, according to the Complainant’s certified statement, is a former employee of the same dealership under the dealership’s previous name. On balance this circumstance supports a conclusion that the Respondent had the requisite knowledge of the Complainant’s trademark and of the relevance and potential value of the disputed domain name before its registration. The Panel finds these facts to be supporting evidence of bad faith generally in the terms of paragraph 4(a)(iii) of the Policy.

The Complainant certifies that there is no evidence of the existence of the company name bmwriders llc proffered by the Respondent in the domain name registration documents. On balance, the Panel finds that the Respondent has given false registration details, aggravated by the use in those details of the Complainant’s trademark BMW without the Complainant’s authorization, constituting bad faith.

The failure of the Respondent to reply to the Complainant’s cease and desist letter is also supporting evidence of bad faith (Ebay Inc. v. Ebay4sex.com and Tony Caranci, WIPO Case No. D2000-1632).

For all the above reasons, the Panel finds bad faith registration and use of the disputed domain names by the Respondent to be proven.

 

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 <bmwofchandler.com>, <bmwofchandler.net> and <bmwofescondido.com> be transferred to the Complainant.

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Dr. Clive N.A. Trotman
Sole Panelist

Dated: June 23, 2008