The Complainant is Bayerische Motoren Werke AG of Munich, Germany, represented by Finnegan, Henderson, Farabow, Garrett & Dunner, LLP, United States of America.
The Respondent is RC of Yonkers, New York, United States of America, represented pro se. 2. The Domain Name and Registrar
The disputed domain name is registered with GoD, LLC. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 24, 2012. On January 25, 2012, the Center transmitted by email to GoD, LLC. a request for registrar verification in connection with the disputed domain name. On January 25, 2012, GoD, LLC transmitted by email to the Center its verification response confirming that the Respondent, RC, 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 January 30, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was February 19, 2012. The first Response was filed with the Center on February 13, 2012. The Complainant filed its Supplemental Filing on February 16, 2012. The second Response was filed with the Center on February 16, 2012.
The Center appointed Michael J. Spence as the sole panelist in this matter on March 2, 2012. 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 is the owner of the trade mark BMW registered for a range of goods and services, but primarily for use in association with the manufacture and sale of automobiles and motorbikes. The BMW mark has an extremely strong international reputation. The Respondent operates a website under the disputed domain name which includes both advertising links and also articles about the Complainant’s products and services. The Respondent does not operate under licence from the Complainant, nor is there any commercial or other relationship between the two parties. The website operated under the disputed domain name features the Complainant’s registered logo. The Respondent has offered the disputed domain name for sale. 5. Parties’ Contentions A. Complainant
The Complainant contends that the disputed domain name is identical or confusingly similar to its trade mark; that the Respondent has no rights or legitimate interests in the disputed domain name; and that the disputed domain name has been registered or is being used in bad faith. B. Respondent
The Respondent contends that the disputed domain name is not identical or confusingly similar to the Complainant’s trade mark. “Bmwev” is an invented word that simply contains the three letters “b”, “m” and “w”; that it has the rights or legitimate interests in the use of the disputed domain name enjoyed by the proprietor of a legitimate noncommercial “fan site”; that it has therefore not shown bad faith in either the registration or the continued use of the disputed domain name; and that in attempting to purchase the disputed domain name from the Respondent, while threatening either legal action or action under the UDRP, the Complainant is guilty of abuse of the UDRP process. 6. Discussion and Findings A. Identical or Confusingly Similar
The trade mark BMW is one of a small class of international trade marks that is immediately recognizable and that enjoys the strongest of reputations. The addition of the letters “ev” does not counter the confusion that the disputed domain name is likely to create, especially as it is plausible that these letters could be seen as an abbreviation of the term “electric vehicle”. Moreover, the Respondent’s contention that the disputed domain name is used for the operation of a legitimate fan site depends upon the assumption that Internet users will find an allusion to the Complainant in the disputed domain name. The Panel therefore rejects its argument that “bmwev” is simply an invented word that happens to contains the letters “b”, “m”, and “w”.
The Panel therefore finds that the Complainant has established the first element of paragraph 4(a) of the Policy. B. Rights or Legitimate Interests
It is for the Complainant to establish, at least prima facie, that the Respondent has no rights or legitimate interests in the disputed domain name (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).
In this case the Complainant has established a strong prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name in that it has no licence or other relationship with the Complainant; it has never apparently been known by the disputed domain name; and it has apparently attempted to profit from the use of the disputed domain name by click-through advertising and by attempting to sell the disputed domain name.
The Respondent has attempted to rebut this prima facie argument by claiming that the website operated under the disputed domain name is a legitimate “fan site”, and that it has only ever lost money through the operation of the website. The view of the WIPO UDRP Panel decisions most favourable to the Respondent in their treatment of “fan sites” is summarized in paragraph 2.5 of the WIPO Overview of WIPO Panel Decisions on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”) as follows: “The registrant of an active and noncommercial fan site may have rights and legitimate interests in the domain name that includes the complainant’s trademark. The site should be actually in use, clearly distinctive from any official site, and noncommercial in nature.” In this case, the website is barely in active use; its use of the Complainant’s logo suggests that care has not been taken clearly to distinguish it from an official website; and the presence of click-through advertising rebuts the suggestion that the site is noncommercial in nature. The fact that the website may, in fact, have been loss-making, is irrelevant to the issue of whether it is commercial or noncommercial in nature.
The Panel therefore finds that the Complainant has established the second element of paragraph 4(a) of the Policy. C. Registered and Used in Bad Faith
The very strongly established reputation of the Complainant’s trade mark, and the strong likelihood of confusion, mean that the Respondent must have known about the Complainant’s trade mark and the registration of the disputed domain name is likely to be in bad faith. The presence of click-through advertising on the website operated under the disputed domain name, and the offering of the disputed domain name for sale, are both evidence of an intention to profit from the confusion potentially created by the disputed domain name and provide clear evidence of bad faith use.
The Panel therefore finds that the Complainant has established the third element of paragraph 4(a) of the Policy. D. Claim of Abuse of the UDRP Process
The Respondent claims that the Complainant “is violating the integrity of the UDRP domain resolution system”, and that “they are using the UDRP for capital gain purpose only”.
The Panel believes that the Complainant’s offers to purchase the disputed domain name represent a reasonable attempt to bring a quick resolution to its dispute with the Respondent and cannot be the basis of any negative imputation that it has attempted to abuse the UDRP Process. Moreover, the Panel’s findings on each of the three elements of paragraph 4(a) of the Policy indicate that the Complainant’s use of the UDRP process was justified. 7. Decision
For 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.
Michael J. Spence
Sole Panelist
Dated: March 10, 2012
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