WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Bayerische Motoren Werke AG (BMW AG) v. Anthony Edwards Case No. D2008-1624 1. The Parties
The Complainant is Bayerische Motoren Werke AG (BMW AG), of Munich, Germany, represented internally.
The Respondent is Anthony Edwards, of Dubai, United Arab Emirates (UAE). 2. The Domain Name and Registrar
The disputed domain name is registered with Network Solutions, LLC. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 24, 2008. On October 24, 2008, the Center transmitted by email to Network Solutions, LLC a request for registrar verification in connection with the disputed domain name. On October 24, 2008, Network Solutions, LLC 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” or “UDRP”), 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 November 3, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was November 23, 2008. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on November 24, 2008.
The Center appointed James A. Barker as the sole panelist in this matter on December 5, 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. 4. Factual Background
In the absence of a Response, the following facts are not contested.
The Complainant is Bayerische Motoren Werke AG, more commonly referred to as BMW AG, a corporation organized under the laws of the Federal Republic of Germany, with a principal place of business at Munich, Germany.
The Complainant carries on business in the manufacture and distribution of motor vehicles. The Complainant is the owner of various registered trademarks for BMW. Those marks have been in use since as early as 1917 in Germany. The Complainant provided evidence of its registered marks. In particular, the Complainant enclosed a list of the relevant trademark registrations and copies of the trademark certificates for its trademarks in the UAE, covering motor vehicles and the repair and maintenance of motor vehicles. According to the WhoIs details, the Respondent has an address in the UAE.
In the UAE, the Complainant has licensed and authorized two companies to be official importers of the Complainant in the UAE, namely Arabian Gulf Mechanical Centre in Dubai and Abu Dhabi Motors in Abu Dhabi. The products and services offered by these companies are under the control and supervision of the Complainant. They are the only companies in the UAE that are authorized to use the Complainant's trademarks and can claim an official status and affiliation with the Complainant.
According to the WhoIs details and as confirmed by the Registrar, the Respondent registered the disputed domain name in November 2005. 5. Parties' Contentions A. Complainant Background
The Complainant's dealings with the Respondent regarding his business “Tony Edwards Motors' (“TEM”) and its unauthorized use of the Complainant's trademarks has been ongoing since as early as October 2003.
The Respondent is a former service manager of the Arabian Gulf Mechanical Centre (AGMC), BMW's official importer in Dubai, UAE. (As evidence, the Complainant provides an excerpt from the importer agreement between BMW and AGMC from 2001 regarding information about key personnel of the importer, which names Mr. Edwards, the Respondent, as a National Service Manager.) After leaving AGMC, the Respondent founded TEM, an independent BMW service garage, in or around 2003 and continues to manage and control the company today.
Soon after TEM was established, TEM and the Respondent entered into negotiations with the Complainant for status as an authorized BMW Service Center. While the Complainant was open to the idea of TEM receiving status as an authorized BMW service center, AGMC, which had exclusive rights at the time for the region, refused to permit any authorization status from being granted to TEM. Therefore, neither the Complainant nor AGMC granted any authorized status to TEM.
In 2006, the Complainant discovered that the Respondent had registered and started to advertise the disputed domain name (which is intended to stand for BMW United Arab Emirates).
A cease and desist letter was sent by the Complainant's legal representatives to TEM on November 14, 2006, after which the Respondent replied on November 12, 2006 that he would no longer be using the disputed domain name and would be willing to transfer it to the Complainant. However, after repeated requests to transfer the disputed domain name to the Complainant, the Respondent has not undertaken any steps to complete a transfer to the Complainant.
During the period in which these letters were sent, conversations did take place between the Respondent and the Complainant's legal representatives in which the Respondent requested an amount of $3000 (USD) for his registration costs, which is clearly an amount higher than the actual registration costs he incurred at the time but which the Complainant agreed to in order to settle the matter quickly.
However, due to the Respondent's avoidance of calls and attempted visits by the Complainant's legal representatives to complete the transfer and settle the matter once and for all, the Complainant has lost all patience for an amicable settlement and has decided to file this Complaint to request the Panel to grant a transfer of the disputed domain name. Complaint under paragraph 4(a) of the Policy
The Complainant submits that the disputed domain name is identical or confusingly similar to its BMW trademarks. The addition of the element “uae” does not make the predominant element “bmw” less distinctive. “UAE” is the abbreviation for the United Arab Emirates. The use of such a term referring to a country in combination with a trademark, such as , is likely to lead to confusion as to the status of the registrant of such a domain name because it implies that the registrant is the official representative of BMW in that country. In this respect, the Complainant relies on other decisions of the Panel in which domain names containing a registered trademark followed by a geographic term were held to be identical or confusingly similar to the registered trademark. See for example, CSA International v. John O. Shannon and Care Tech Industries, Inc., WIPO Case No. D2000-0071; Wal-Mart Stores, Inc. v. Walmarket Canada, WIPO Case No. D2000-0150.
Secondly, the Complainant submits that the Respondent has no rights or legitimate interests in respect of the disputed domain name. Neither the Respondent nor his business TEM are licensees of the Complainant's marks and they have 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.
Anticipating a possible argument that the Respondent is making a bona fide offering under paragraph 4(c)(i) of the Policy, the Complainant refutes this by reference to the test set out in Oki Data Americas, Inc. v. ASD, Inc.,WIPO Case No. D2001-0903. In particular, the Complainant claims that the Respondent has not taken any steps to prevent confusion as to his status. The Complainant also notes that, although the Respondent's current website does not use the Complainant's trademarks, it includes a number of elements which might confuse customers as to the Respondent's association with the Complainant.
Thirdly, the Complainant submits that the Respondent is, 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.”
The Complainant argues that the deceptive nature of the Respondent's website, as well as the ways that the Respondent has tried to pass itself off as an official BMW service center by using the Complainant's trademarks and corporate identity elements, such as copyrighted photographs and misusing customer data that Respondent obtained as an ex-service manager of an official dealer, all must lead to the conclusion that the Respondent registered and used the domain name in bad faith under paragraph 4(b)(iv) of the Policy.
Paragraph 4(b)(iii) of the Policy also lists the circumstance of a Respondent having “registered the disputed domain name primarily for the purpose of disrupting the business of a competitor” as evidence of bad faith. In this case, the Respondent's business competes with the business of the Complainant as performed by its official importers and service centers in the UAE. As an ex-National Service Manager for an authorized BMW importer and service center, the Respondent was well aware of the trademark rights of the Complainant at the time he registered the disputed domain name.
The Complainant also points to other circumstances it says should be considered to constitute bad faith registration and use within the meaning of paragraph 4(b) of the Policy. Those include the Respondent's demand to the Complainant for $3000 to cover its registration costs, which is simply an attempt to profit from the disputed domain name, since this amount is simply beyond the reasonable costs of a domain name registration, as well as the Respondent's failure to transfer the disputed domain name to the Complainant, even though it had confirmed in writing that it would do so. B. Respondent
The Respondent did not reply to the Complainant's contentions. However in correspondence to the Complainant, dated November 13, 2008, in connection with this dispute (a copy of which was attached to the Complaint), the Respondent stated that:
“we will no longer be using the domain name for any internet based search engine. We had bought this name in good faith as it was unregistered and free for whoever wanted to purchase it […] in the event that you would want to transfer this name to another party please ask them to contact me to arrange the transfer.” 6. Discussion and Findings
To succeed under paragraph 4(a) of the Policy, the Complainant must prove that:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name was registered and is being used in bad faith.
Where, as in this case, the Respondent has not submitted a Response, paragraph 5(e) of the Rules provides that “in the absence of exceptional circumstances, the Panel shall decide the dispute based upon the complaint.”
The Panel does not find that there are exceptional circumstances in this case. Accordingly, whether the Complainant has established the three elements of paragraph 4(a) of the Policy is set out below, determined against the argument and evidence provided in the Complaint. The Panel notes that the Complaint in this case appears thorough, well presented, and well supported by evidence. A complaint in this form is naturally one which a panel may treat as credible and persuasive, particularly in the absence of a response to rebut it. A. Identical or Confusingly Similar
The disputed domain name is not identical to the Complainant's registered BMW mark. However, the Panel finds that it is confusingly similar.
The Complainant's mark is an acronym (for “Bayerische Motoren Werke”). UAE is an acronym for “United Arab Emirates”. It might be argued that the disputed domain name combines acronyms other than the Complainant's mark and the known geographic indicator for the UAE and, in that case, the disputed domain name is not confusingly similar to the Complainant's mark. That is, it might be said that “bmwuae” has a number of associations, separate from the Complainant's mark.
This is a weak argument. There is little evidence in the current record that the disputed domain name could credibly have any other association than that outlined by the Complainant. This is likely the association which motivated the Respondent to register the disputed domain name.
The Complainant's mark is distinctive and well-known. The fact of the Complainant's mark being well-known throughout the world has been accepted in prior proceedings referred to by the Complainant: e.g. BMW AG v. Loophole,WIPO Case No. D2000-1156. There are also a number of prior proceedings in the Complainant's favor, where various panels have accepted the Complainant's mark as continuing to be a distinctive element of a domain name, even where combined with various other terms. See e.g. Bayerische Motoren Werke AG v. Domain Name Services,WIPO Case No. D2008-0147; Bayerische Motoren Werke AG and Williams Grand Prix Engineering Limited v. Neil Malkhandi,WIPO Case No. D2000-1172; Bayerische Motoren Werke AG v. Peter Carrington also trading as Party Night Inc.,WIPO Case No. D2003-0367; Bayerische Motoren Werke AG v. DLR,WIPO Case No. D2001-1231.
In the latter of those cases (the “DLR case”) one of the domain names in dispute () was comparable to the disputed domain name in this case. That domain name combined both the Complainant's mark as the first appearing element, and then the abbreviation “UK” for the United Kingdom of Great Britain and Northern Ireland. In that case, the Complainant's mark and geographic identifier were separated by a hyphen. The hyphen in that case may have accentuated the separate elements of the Complainant's mark and UK as a geographic identifier. But in this case, the lack of any hyphen, or other separation between the Complainant's mark and the geographic identifier UAE is of little consequence.
As in the DLR case, the Complainant's mark appears first in the disputed domain name, which more strongly emphasizes the Complainant's mark. UAE is also an obvious and well-known geographic identifier for the United Arab Emirates. It is well established that the addition of an obvious geographic identifier to a distinctive mark is not sufficient to distinguish the domain name from the mark itself. (In addition to the cases referred to by the Complainant, see recently e.g. Allianz SE v. Yi Qin,WIPO Case No. D2008-1502.)
For these reasons, the Panel finds that the disputed domain name is confusingly similar to the Complainant's BMW mark. B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy sets out certain matters to which may demonstrate that the Respondent has rights or legitimate interests in a disputed domain name for the purposes of paragraph 4(a)(ii), relevantly including that:
“(i) before any notice to you [the Respondent] of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services;”.
As noted above, the Respondent has used the disputed domain name in connection with an offering of goods – being the Respondent's car dealership which offers the Complainant's vehicles for sale. But the Panel finds that this use is not bona fide for the purpose of paragraph 4(c)(i). As noted by the Complainant, the Respondent does not operate an authorized BMW importer and service center, and has no rights to the Complainant's trademark. The Respondent therefore had no right or legitimate interest in incorporating the Complainant's trademark in the disputed domain name.
The Panel agrees with relevant prior panel authority referred to by the Complainant: R.T. Quaife Engineering, Ltd. and Autotech Sport Tuning Corporation d/b/a Quaife America v. Bill Luton,WIPO Case No. D2000-1201. In that case, the panel found that, among other things, the respondent was not entitled to register the complainant's mark in combination with a geographic identifier, because to do so suggests a much broader and deceptive affiliation with the Complainant.
As such, the Panel finds that the Complainant has established this element. C. Registered and Used in Bad Faith
For similar reasons to those set out above, the Panel finds that the Respondent has registered and used the disputed domain name in bad faith.
The Complainant provides evidence of prior communications between the Respondent and the Complainant, in connection with the Respondent's attempt to become an authorized BMW importer and service center. In the event, no such relationship was formalized. For the reasons given by the Complainant, the Respondent was obviously aware of the Complainant's registered mark. He clearly registered the disputed domain name because of its association with the Complainant's mark in the UAE. There is no dispute that, in doing so, the Respondent was seeking to exploit the trademark value of the Complainant's mark. In addition, the Complainant provides evidence that the Respondent was deceptively using the disputed domain name, in conjunction with other indications such as the presentation of his website, to create the misleading impression of being an authorized BMW dealer and service center. 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.
James A. Barker
Sole Panelist
Dated: December 19, 2008
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