WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Bayerische Motoren Werke AG v. vneye
Case No. D2003-0627
1. The Parties
The Complainant is Bayerische Motoren Werke AG, Munich, Germany, represented by legal counsel of BMW AG, Germany.
The Respondent is vneye, junbuk, Republic of Korea.
2. The Domain Name and Registrar
The disputed domain name is registered with Network Solutions, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on August 11, 2003. On August 11, 2003, the Center transmitted by email to Network Solutions, Inc. a request for registrar verification in connection with the domain name at issue. On August 14, 2003, Network Solutions, Inc. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact.
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 18, 2003. In accordance with the Rules, paragraph 5(a), the due date for Response was September 7, 2003. The Respondent did not submit a formal response. Accordingly, the Center notified the Respondent�s default on September 9, 2003.
It should be noted however, that Respondent had sent an email in Korean/English to the Center on August 13, 2003, apparently explaining the reasoning behind the registration of the disputed domain name. On August 18, 2003, the Center explained the formal procedure for the UDRP including when and how to submit a formal response.
The Center appointed Knud Wallberg as the sole panelist in this matter on September 19, 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.
4. Factual Background
The Complainant carries on business in the manufacture and distribution of motor vehicles. The trademarks "BMW" and "BMW and design" (hereinafter referred to as the "BMW Trademarks") have been in use since as early as 1917 in Germany.
The Complainant is also the registered owner of BMW Trademarks in over 120 countries worldwide. Due to the location of the residence of the Respondent, the Complainant has, in particular, enclosed details of trademark registrations in the Republic of Korea (for various goods including passenger cars) and copies of these registration certificates were attached to the Complaint.
5. Parties� Contentions
A. Complainant
(i) The disputed domain name is identical or confusingly similar to BMW Trademarks
In accordance with paragraph 4(a)(i), the Complainant submits that the domain name is identical or confusingly similar to the trademark "BMW". The dominant and distinctive component of the disputed domain name is "BMW" which is identical to the Complainant�s registered trademarks.
The addition of the generic word "telematics" does not make the predominant element "BMW" less distinctive. See for example, Toyota France and Toyota Jidosha K.K.d/b/a Toyota Motor Corporation v. Computer-Brain, WIPO Case No. D2002-0002 in which the Panel ruled that the domain name is substantially identical to and confusingly similar to the trademark "TOYOTA".
The word "telematics" is in fact a common term used in the automobile industry, which is a word which refers to the combination of telecommunications and computer science. The field of telematics covers technology used in cars such as voice recognition systems, navigation systems and wireless Internet connection. Reference material regarding telematics from the publication "Automotive New Europe: Guide to Vehicle Technology", October 22, 2001, was enclosed to the Complaint.
Furthermore, the Complainant actually offers telematic products and services to its customers and therefore the addition of the word "telematics" to the name "bmw" is even more likely to create confusion rather than alleviate any confusion. See Bellsouth Intellectual Property Corporation v. Freeworld and/or Luis, WIPO Case No. D2000-1807 with respect to the domain name .
Finally, the ending .COM is a generic top level domain which is not sufficient to render a domain name dissimilar or to prevent consumer confusion.
(ii) Respondent�s Lack of Legitimate Interests
In accordance with paragraph 4(c) of the Policy, the Complainant submits that the Respondent has no rights or legitimate interests in respect of the domain name that is the subject of the Complaint. The Respondent is not a licensee of the Complainant�s mark and has not been authorized in any way to use the same. The Respondent has made no legitimate non-commercial or fair use of the domain name.
(iii) Respondent�s Registration and Use of the Domain Name in Bad Faith
Paragraph 4(b) of the Policy lists the circumstances, in particular but without limitation, which are evidence of bad faith.
Paragraph 4(b)(i) states that circumstances indicating that the domain name was registered or acquired primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of the domain name registrant�s out-of-pocket costs directly related to the domain name shall be evidence of registration and use of a domain name in bad faith.
The evidence presented above regarding the numerous emails sent by the Respondent directly to the Complainant as well as the "Domain For Sale" web sites linked to "www.", which have explicitly named prices which are greater than the Registrant�s out-of-pocket costs, clearly indicates bad faith within the meaning of paragraph 4(b)(i) of the Policy.
Paragraph 4 (b)(iv) of the Policy also includes a further situation which is indicative of bad faith. This refers to the situation in which "by using the domain name, you 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 domain name was linked to several different web sites, most recently to a search web site for various topics, including gambling. Such search web sites are normally financed with revenue from the web sites that are featured in the searches. Such use of thus constitutes use of the domain name in a commercial manner. The search web site also does not contain any information that is specific to the Complainant�s products or services and is being used merely to attract Internet users searching for information regarding BMW telematic products and services. Others who accidentally come across the web site may be confused as to whether the Respondent�s web site is sponsored or affiliated by the Complainant or one of its subsidiaries.
For the reasons outlined above, the Complainant submits that the Respondent is, as under paragraph 4(b)(iv) of the Policy, intentionally 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 or of a product or service on the web site or location".
Finally, the Respondent also changed its registration details several times in an attempt to avoid liability for its misuse of the domain name. This circumstance should also be taken as inference of bad faith within the meaning of paragraph 4(b) of the Policy.
B. Respondent
The Respondent did not submit a formal reply to the Complainant�s contentions. The Panel has read the previous communication between the parties as well as the Respondent�s e-mail to the Center of August 13, 2003, but this communication is very difficult to understand and gives no basis for further scrutiny by the Panel.
6. Discussion and Findings
According to paragraph 15(a) of the Rules the Panel shall decide a complaint in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.
Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:
1) that the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and,
2) that the Respondent has no legitimate interests in respects of the domain name; and
3) the domain name has been registered and used in bad faith.
A. Identical or Confusingly Similar
Complainant is the owner of numerous trademark registrations for "BMW" worldwide including in the country of residence of the Respondent, Republic of Korea.
The distinctive part of the contested domain name contains the "BMW" mark in full with the addition of the word "telematics". The Panel finds that Complainant has proven that this word is a generic term (also) within the automobile sector and that the term is actually used by Complainant in connection with their products.
The Panel therefore finds that it is highly likely the disputed domain name in the public�s mind will be associated with the Complainant�s trademark. The domain name must therefore be considered confusingly similar to Complainant�s trademarks.
The prerequisites in the Policy, paragraph 4 (a) (i) are therefore fulfilled.
B. Rights or Legitimate Interests
The Complainant has not licensed or otherwise permitted Respondent to use its trademark or to apply for any domain name incorporating the mark.
No formal Response was filed in the case and under these circumstances the Respondent must bear the consequences of not having proved that he has any prior rights or legitimate interests in the domain name.
The prerequisites in the Policy, paragraphs 4 (a) (ii), and 4 (c) are also considered fulfilled.
C. Registered and Used in Bad Faith
Paragraph 4 (a) (iii) of the Policy further provides registration and use in bad faith. Paragraph 4 (b) regulates, by way of example, the kind of evidence that is required.
Due to the notoriety of Complainant�s mark and in the absence of a response the Panel finds it unlikely that Respondent did not know Complainant�s trademark when registering the disputed domain name.
The domain name has been used in many different ways which all are likely to disrupt or otherwise hamper the business of the Complainant. Also, the domain name has been explicitly offered for sale for an amount that clearly exceeds the out of pocket costs of registering the domain name.
Bearing these facts and the facts mentioned above under A) and B) in mind, the Panel finds that the domain name has been registered and is being used in bad faith, paragraphs 4 (a) (iii) and 4 (b).
Consequently, all the prerequisites for cancellation or transfer of the domain name according to paragraph 4(a) of the Policy are fulfilled.
The Complainant has requested transfer of the domain name.
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 disputed domain name be transferred to the Complainant.
Knud Wallberg
Sole Panelist
Dated: October 2, 2003
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