WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Bayerische Motoren Werke AG and John Cooper Garages Limited v. ActiveI Case No. D2008-1717 1. The Parties
The Complainants are Bayerische Motoren Werke AG, of Munich, Germany and John Cooper Garages Limited, of Berkshire United Kingdom, represented by Bayerische Motoren Werke AG , Germany.
The Respondent is ActiveI, of Quaker Hill, Connecticut, United States of America. 2. The Domain Name and Registrar
The disputed domain name (the “Domain Name”) is registered with W Internet Services GmbH d/b/a . 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 7, 2008. On November 10, 2008, the Center transmitted by email to W Internet Services GmbH d/b/a a request for registrar verification in connection with the disputed Domain Name. On November 13, 2008, W Internet Services GmbH d/b/a 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 21, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was December 18, 2008. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on December 22, 2008.
The Center appointed Luca Barbero as the sole panelist in this matter on January 7, 2009. 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 Complainants are Bayerische Motoren Werke AG (hereinafter also BMW AG) and John Cooper Garages Limited (hereinafter also JCG)
JCG is the owner of trademarks JOHN COOPER WORKS including the following trademarks:
- Trademark registration in the United Kingdom (word and device) No. 2325025 filed on February 27, 2003 and registered on September 10, 2004 in classes 7 and 12
- Trademark registration in the Unites States of America No. 319539
The JOHN COOPER WORKS trademarks are licensed to BMW AG.
The Respondent registered the Domain Name on October 6, 2005. 5. Parties' Contentions A. Complainant
The Complainants inform the Panel that BMW AG carries on business in the manufacture and distribution of motor vehicles, including motor vehicles sold under the well-known car brands BMW, MINI and ROLLS-ROYCE.
The Complainants indicate that the trademark JOHN COOPER WORKS has been used since 2003 in connection with tuning kits and car models under its MINI brand of cars. The Complainants point out that the names John Cooper and John Cooper Works have been associated with MINI going back almost 50 years.
The Complainants state that BMW AG and JCG entered into a licensing and distribution agreement in 2003 and that BMW AG purchased JCG including the trademarks rights in the JOHN COOPER WORKS trademarks in January 2007.
The Complainants contend that the Respondent has never been entitled to use any of the Complainants' trademarks and that the Respondent's use of the JOHN COOPER WORKS trademarks is neither connected to, sponsored or authorized by, nor within the control of the Complainants.
The Complainants indicate that the web site corresponding to the Domain Name was displaying various sponsored links.
The Complainants further indicate that the following statement was displayed on the website at the Domain Name “Make an offer on this Domain” which linked to a Network Solutions homepage that provided a form that could be filled out in order to make an offer to purchase the Domain Name, requesting an amount greater than $100.
The Complainants inform the Panel that an email requesting the Respondent to discontinue any further use or reference to the JOHN COOPER WORKS trademark and that the domain name be transferred to the Complainants was sent on July 7, 2008 to the Respondent and that a subsequent reminder was sent on September 4, 2008 but the Respondent never replied.
The Complainants contend that the Domain Name is confusingly similar to the JOHN COOPER WORKS trademarks and allege that the distinctive portion of the JOHN COOPER WORKS device mark are the words “John Cooper Works”
With reference to rights or legitimate interests in respect of the Domain Name, the Complainants assert that the Respondent is not a licensee of the Complainants' marks and has not been authorized in any way to use the same. The Complainants further allege that the Respondent has made no legitimate non commercial or fair use of the Domain Name.
With reference to the circumstances evidencing bad faith, the Complainants state that the Domain Name is connected to sponsored links to third party web sites, including a search web site for various popular topics and that such web sites (also referred to as pay-per-click sites) are financed with revenue from the sponsored listings and therefore constitutes use of the Domain Name in a commercial manner.
The Complainants emphasize that the web site at the Domain Name also specifically states “Below are sponsored listing for goods and services related to: ”, thereby potentially misleading Internet users to believe that the web site itself or the sponsored listings may have an affiliation to one or both of the Complainants.
The Complainants assert that the Respondent also states “Make an offer on this domain name”, implying that the Domain Name is for sale. The Complainants submit that the offer to sell the Domain Name on a web site to a third party should be taken as evidence constituting bad faith registration and use within the meaning of paragraph 4(b) of the Policy.
According to the Complainants, the fact that the Respondent has not listed a specific sale price on its web site is also irrelevant, since by making a general statement that the domain is for sale, the Respondent is in effect asking potential buyers to make an offer and is holding out for more than out-of pocket expenses.
The Complainants inform the Panel that the Respondent has registered 1,864 domains and has been acknowledged in past UDRP decisions to be a cybersquatter with a pattern of registering domain names incorporating the marks of third parties. (See for example Sanofi-Aventis v. ActiveI, Jason Peterson,WIPO Case No. D2006-0987; F. Hoffmann La Roche AG v. ActiveI, Jason Peterson, WIPO Case No. D2007-1567; Cyber Curriculum Vitae, S.L. v. ActiveI,WIPO Case No. D2006-0830; QVC, Inc. and ER Marks, Inc. v. ActiveI,WIPO Case No. D2005-1303.) B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings 6.1. Language of the proceeding
According to paragraph 11(a) of the Rules, “Unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding.”
In view of the above, the language of the present proceeding would have been German but the Panel, having regard to e.g. the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, is of the opinion that “In certain situations, where the respondent can clearly understand the language of the complaint, and the complainant would be disadvantaged by being forced to translate, the language of proceedings can remain the language of the complaint, even if it is different to the language of the registration agreement.”
The Complainants have requested that this proceeding be in English based on the following reasons:
- JCG is located in the United Kingdom and the Respondent is located in the United States of America, which both are English speaking countries.
- BMW AG, while being a German company, “has filed numerous UDRP complaints in the English language”.
- Filing a complaint “from scratch in German, including translations of trademark certificates and press releases only available in English would be burdensome and costly”
- The Respondent's web site at “www.activei” is only available in the English language
- Other UDRP cases (also conducted in English) in which the Respondent has been involved in show that it has registered various domain names with registrars all over the world and has probably done so because of its large portfolio of domains rather than for language reasons.
The Panel shares the view held in L'Oreal S.A. v. MUNHYUNJA,WIPO Case No. D2003-0585 where the Panel found that “Paragraph 10(b) of the Rules requires the Panel to ensure that the Parties to this proceeding are treated with equality and that each Party is given a fair opportunity to present its case. […] Having taken into account the relative disadvantages to the Parties and to the proceeding of the use of Korean, and the exhortation in paragraph 10(c) that The Panel shall ensure that the administrative proceeding takes place with due expedition. And having regard to all the circumstances set out above, the Panel decides that this administrative proceeding be in English.”
The Panel notes that the Respondent is located in an English speaking country and has been involved in prior WIPO UDRP decisions held in English while the Complainants have indicated that it would be a disadvantage to translate.
In view of all the above, the Panel finds that the language of the present proceeding shall be in English. 6.2. Decision
According to paragraph 15(a) of the Rules: “A Panel shall decide a complaint on the basis of the statements and documents submitted 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:
(i) that the Domain Name registered by the Respondent is identical or confusingly similar to a trademark or a service in which the Complainant has rights; and
(ii) that the Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) that the Domain Name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
The Complainants have provided evidence of ownership of the trademark JOHN COOPER WORKS.
The Panel finds that the Domain Name is therefore identical to the trademarks owned by the Complainants.
In comparing the Complainants' marks to the Domain Name with reference to the Panel takes into account the well-established principle that the generic top level domain, may be excluded from consideration as being merely a functional component of a domain name. See interalia, Rollerblade, Inc. v. Chris McCrady,WIPO Case No. D2000-0429 “the specific top level of the domain name such as ‘.net' or ‘.com' does not affect the domain name for the purpose of determining whether it is identical or confusingly similar”; Chevy Chase Bank, F.S.B. v. Peter Ojo,WIPO Case No. D2000-1770 “the accused domain name is legally identical to Complainant's trade name CHEVY CHASE BANK”).
In view of the above, the Panel finds that the Complainants have proven that the Domain Name is identical to a trademark in which the Complainants have rights in accordance with paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
The Complainant must show that the Respondent has no rights or legitimate interests in respect of the Domain Name. The Respondent may establish a right or legitimate interest in the Domain Name by demonstrating in accordance with paragraph 4(c) of the Policy any of the following:
(i) that it has made 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 prior to the dispute; or
(ii) that it is commonly known by the Domain Name, even if it has not acquired any trademark rights; or
(iii) that it intends to make a legitimate, non-commercial or fair use of the Domain Name without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark.
It is well-established that the burden of proof lies on the Complainant. However, satisfying the burden of proving a lack of the Respondent's rights or legitimate interests in respect of the Domain Name according to paragraph 4(a) of the Policy is potentially quite onerous, since proving a negative circumstance is always more difficult than establishing a positive one.
Accordingly, it is sufficient that the Complainant shows a prima facie case that the Respondent lacks rights or legitimate interests in the Domain Name in order to shift the burden of proof on to the Respondent. If the Respondent fails to demonstrate rights or legitimate interests in the Domain Name in accordance with paragraph 4(c) of the Policy or on any other basis, the Complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy. (Croatia Airlines d.d. v. Modern Empire Internet Ltd.,WIPO Case No. D2003-0455, Belupo d.d. v. WACHEM d.o.o.,WIPO Case No. D2004-0110; Met America Mortgage Bankers v. Whois ID Theft Protection, c/o Domain Admin, NAF Claim No. 852581).
In the case at hand, by not submitting a Response, the Respondent has failed to invoke any circumstance that could demonstrate, pursuant to paragraph 4(c) of the Policy, any rights or legitimate interests in the Domain Name.
The Panel observes that there is no relation, disclosed to the Panel or otherwise apparent from the record, between the Respondent and the Complainants. The Respondent is not a licensee of the Complainants, nor has the Respondent otherwise obtained an authorization to use the Complainants' trademarks.
Furthermore, there is no indication before the Panel that the Respondent is commonly known by the disputed Domain Name, has made preparations to use the disputed Domain Name in connection with a bona fide offering of goods or services, or that it intends to make a legitimate, non-commercial or fair use of the disputed Domain Name and the Respondent has not provided any convincing evidence to the contrary.
The Panel notes that the disputed Domain Name was at the time of the filing of the Complaint pointing to a sponsored pay-per-click (“PPC”) website mainly aimed at directing visitors to competing third party commercial websites. More in particular, the Panel observes that the website was displaying the following indication “below are sponsored listing for good and services related to: ”
The Panel finds that under the circumstances the use of the disputed Domain Name merely for a PPC page which directs visitors to various third party commercial websites does not constitute a legitimate, non commercial or fair use of the disputed Domain Name under the Policy. See e.g. Manheim Auctions Inc. v. Whois ID Theft Protection, WIPO Case No. D2006-1044. See also, Asian World of Martial Arts Inc. v. Texas International Property Associates,WIPO Case No. D2007-1415.
Thus, in light of the above, the Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name, in accordance with paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
For the purpose of paragraph 4(a)(iii) of the Policy, the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of the Domain Name in bad faith:
(i) circumstances indicating that the holder has registered or has 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 the holder's documented out-of-pocket costs directly related to the Domain Name; or
(ii) the holder has 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 the holder has engaged in a pattern of such conduct; or
(iii) the holder has registered the Domain Name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the Domain Name, the holder has intentionally attempted to attract, for commercial gain, Internet users to the holder's website or other online location, by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of the holder's website or location or of a product or service on the holder's website or location.
As to bad faith at the time of the registration the Panel notes that in light of the use of the trademark for over fifty years, the amount of advertising of Complainants' products worldwide the widely known character of the Complainants' trademarks, the Respondent was very likely aware of the Complainants' trademarks.
As in Gateway, Inc. v. Lorna Kang, WIPO Case No. D2003-0257, this Panel shares the view of a number of panel findings of “opportunistic bad faith” in the registration of renowned or even somewhat less famous trademarks. As stated inter alia in DHL Operations B.V v. Net Marketing Group,WIPO Case No. D2005-0868 “It is obvious that the value and goodwill, of the Complainant's mark DHL which has an extensive world wide recognition, would have been known to the Respondent at the time of registration of the Domain Name. The registration and use of the mark by an entity unconnected to the Complainant gives rise to the presumption of opportunistic bad faith.”
The Panel, in accordance with previous decisions issued under the Policy, is of the opinion that knowledge of the Complainants' trademark at the time of the registration of the Domain Name is to be considered in drawing an inference of bad faith (see Parfums Christian Dior v. Javier Garcia Quintas and C,WIPO Case No. D2000-0226).
The Panel finds that Internet users, in light of the fact that the disputed Domain Name was at the time of the filing of the Complaint pointing to a sponsored pay-per-click website aimed only at directing visitors to competing third party commercial websites, may be misled as to the source, sponsorship, affiliation, or endorsement of the Respondent's website. Moreover, in all likelihood, the Respondent profits by earning pay-per-click revenues (see inter alia, Manheim Auctions Inc. v. Whois ID Theft ProtectionWIPO Case No. D2006-1044, Fry's Electronics, Inc v. Whois ID Theft ProtectionWIPO Case No. D2006-1435, Barry D. Sears, Ph.D. v. YY / Yi YanlinWIPO Case No. D2007-0286).
The Panel therefore finds paragraph 4(b)(iv) of the Policy to be applicable in this case since the Respondent has attempted (and probably succeeded) to attract Internet users to a website for commercial gain, by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation or endorsement of the Respondent's services.
Furthermore, the Panel observes that the Domain Name was pointing to a parking page where it was stated “Below are sponsored listing for goods and services related to: ” which further indicates that the Respondent may have been probably aware of the Complainants' trademarks.
The Panel finds also that in light of the fact that the Domain Name was offered for sale on the website linked to , the Domain Name was registered primarily for the purpose of selling it.
The Panel shares the view held in Educational Testing Service v. TOEFL,WIPO Case No. D2000-0044 where the Panel decided that an offer to sell generally was sufficient evidence for a finding of bad faith. Likewise offering domain name for sale on website constitutes offer to sell to complainant, complainant's competitors and others see inter alia, Venturum GmbH v. Coventry Investments, Ltd., DomainCollection Inc.,WIPO Case No. D2003-0405.
In view of the above, the Panel deems paragraph 4(b)(i) of the Policy also applicable to the present case.
Moreover, the Panel finds paragraph 4(b)(ii) as well applicable in this case since the Respondent has registered the Domain Name in order to prevent the Complainants from using the mark and has clearly engaged in a pattern of such conduct since it has also registered other Domain Names incorporating registered trademarks that have been subject of five proceedings under the Policy, Patelco Credit Union v. Activei, Inc.,WIPO Case No. D2005-1295; QVC, Inc. and ER Marks, Inc. v. ActiveI,WIPO Case No. D2005-1303; Cyber Curriculum Vitae, S.L. v. ActiveI,WIPO Case No. D2006-0830; Sanofi-Aventis v. ActiveI, Jason Peterson,WIPO Case No. 2006-0987; F. Hoffmann La Roche AG v. ActiveI, Jason Peterson, WIPO Case No. D2007-1567.
The Panel concurs with the views expressed in Sanofi-Aventis v. ActiveI,WIPO Case No. 2006-0987 where the panel with regard to this same Respondent stated that “there is a further element which is relevant in the resolution of this dispute. Complainant contends that Respondent is a cybersquatter because it has shown a pattern of registering domain names incorporating the marks of third parties. Complainant relies on Accor v. Jason Petersen, WIPO Case No. D2006-0356 (“This is a simple case of cybersquatting”); Patelco Credit Union v. ActiveI, WIPO Case No. D2005-1295; and QVC, Inc. and ER Marks, Inc. v. ActiveI, WIPO Case No. D2005-1303. In short, Respondent has in fact a history of registering and using domain names in bad faith.”
In view of the above, the Panel finds that the disputed Domain Name was registered and is being used 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 be transferred to the Complainant.
Luca Barbero
Sole Panelist
Dated: January 21, 2009
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