Complainant is Bayerische Motoren Werke AG of Munich, Germany, represented by KLAKA Rechtsanwälte, Germany.
Respondent is Fundacion Private Whois of Panama City, Panama. 2. The Domain Name and Registrar
The disputed domain name is registered with I Corp. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the ”Center”) on September 11, 2012. On September 11, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 12, 2012, the Registrar transmitted by email to the Center its verification response disclosing 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 Complainant on September 12, 2012, providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amendment to the Complaint on September 13, 2012.
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” 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 Respondent of the Complaint, and the proceedings commenced on September 18, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was October 8, 2012. Respondent did not submit any formal response but sent informal communications to the Center on September 19, and 20, 2012.1 Accordingly, the Center notified Respondent’s default on October 10, 2012.
On September 19, 2012, Respondent responded to the Notification of Complaint as follows: “and what you want?” The Center then acknowledged receiving this missive and notified Respondent that it would regard this as its complete response to the Complaint in the absence of further communications, and reminded Respondent of the deadline for the response under the Rules. To this, on September 20, 2012, Respondent submitted the rejoinder: “LoooL! Is not my right to own this domain or what? So what? Send me your lawyer friend and we see......”
The Center appointed Nasser A. Khasawneh as sole panelist in this matter on October 17, 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
Complainant is owner of many registrations worldwide for its famous BMW mark, including for example German Trademark Registration No. 221388, registered December 10, 1917, in classes 12, 7, 8, 9 and 11 (word-picture mark) and German Trademark Registration No. 410579, registered November 17, 1929, (combined mark consisting of stylized letters “BMW”).
The disputed domain name was registered on March 3, 2012, and consists of a combination of the letters BMW, a hyphen, and the German word “karriere” which among other things means in the English language a noun, “career.” The disputed domain name presently routes users to a webpage with the notice “This Account Has Been Suspended.”2 5. Parties’ Contentions A. Complainant
Complainant contends that its registered BMW trademark is famous, on the basis of its continuous use since 1917, providing details of its substantial revenues and sales and extensive marketing of millions of automobiles and other products under the mark.
Complainant avers that the disputed domain name is used to redirect users to Complainant’s webpage, “/career”, and that Respondent is also posting in online classifieds false advertisements for employment by Complainant. When people respond to the ads, sending inquiries to the web address at the disputed domain name, Complainant alleges, they are sent email from a fictitious person in Complainant’s Human Resources Department and asked to submit personal details to Respondent by email.
In its allegations under the policy, Complainant contends that: (1) the disputed domain name is confusingly similar to Complainant’s marks; (2) Respondent has no rights or legitimate interest to use the marks, particularly as Respondent uses Complainant’s mark as a part of a scheme to appear as though it is a part of Complainant’s operations in order to deceive Internet users into submitting personal details to Respondent; and (3) Respondent registered and is using the disputed domain name in bad faith by creating consumer confusion for its own commercial gain and for the purpose of disrupting Complainant’s business.
On the basis of the above, Complaint requests transfer of the disputed domain name. B. Respondent
Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings
The Rules require the Panel to render its Decision on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable. Rules, paragraph 15(a). Complainant must establish each element of paragraph 4(a) of the Policy, namely:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights;
(ii) Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
Complainant must establish these elements even if Respondent does not reply. The Vanguard Group, Inc. v. Lorna Kang,WIPO Case No. D2002-1064. In the absence of a response, the Panel may also accept as true the reasonable factual allegations in the Complaint. E.g., ThyssenKrupp USA, Inc. v. Richard Giardini,WIPO Case No. D2001-1425 (citing Talk City, Inc. v. Michael Robertson,WIPO Case No. D2000-0009). A. Identical or Confusingly Similar
The Panel finds that the disputed domain name is confusingly similar to the BMW marks in which Complainant has rights.
Complainant’s BMW figurative marks consist of the letters “BMW” on an emblem consisting of a multi-colored circle design. Complainant’s combined mark cited above consists of the capital letters “BMW.” The Panel considers for the present purpose that the dominant element of Complainant’s figurative and letter marks consist of the letters “BMW.” See, e.g., Cambridge Nutritional Foods Limited and Cambridge Manufacturing Company Limited v. Cambridge Diet Pty Ltd,WIPO Case No. DAU2010-0021.
UDRP panels usually disregard the gTLD suffix in determining whether a disputed domain name is identical or confusingly similar to a complainant’s marks. See e.g., HUK-COBURG haftpflicht-Unterstützungs-Kasse kraftfahrender Beamter Deutschlands A.G. v. DOMIBOT (HUK-COBURG-COM-DOM), WIPO Case No. D2006-0439; VAT Holding AG v. V,WIPO Case No. D2000-0607; and Shangri-La International Hotel Management Limited v. NetIncome Ventures Inc.,WIPO Case No. D2006-1315.
The Panel is of the view that the addition of the hyphen and term “karriere” does nothing to distinguish the disputed domain name from Complainant’s BMW marks, since Respondent has included the letters “BMW” at the beginning of the disputed domain name. E.g., Sanofi-aventis, Sanofi-Aventis Deutschland GmbH v. Andrey Mitrofanov,WIPO Case No. D2007-1772; Giata Gesellschaft für die Entwicklung und Vermarktung interaktiver Tourismusanwendungen mbH v. Keyword Marketing, Inc.,WIPO Case No. D2006-1137; and Hoffmann-La Roche Inc. v. Aneko Bohner,WIPO Case No. D2006-0629. The letters “BMW” remain the predominant identifier within the disputed domain name. See Bayerische Motoren Werke AG v. RC,WIPO Case No. D2012-0124.
The Panel concludes, therefore, that Complainant has established the first element of paragraph 4(a) of the Policy. B. Rights or Legitimate Interests
The Panel also agrees with Complainant that Respondent has no rights or legitimate interests in the disputed domain name.
The Policy contains a non-exhaustive list of circumstances that may demonstrate when a respondent has rights or legitimate interests in the use of a domain name. The list includes: (1) the use of the “domain name in connection with a bona fide offering of goods and services”; (2) an entity being commonly known by the domain name; or (3) the making of “a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers.” Policy, paragraphs 4(c)(i)–(iii).
Complainant must show a prima facie case proving that a respondent lacks rights or legitimate interests. E.g., Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455. The absence of rights or legitimate interests is established if a complainant makes out a prima facie case and the respondent enters no response. Id., (citing De Agostini S.p.A. v. Marco Cialone,WIPO Case No. DTV2002-0005).
Complainant avers that: (1) Respondent is not commonly known by the disputed domain name; and (2) that Respondent has no authorization or license from Complainant to use the BMW marks. In the absence of a response, the Panel accepts these undisputed facts as true.
Complainant also alleges that Respondent is not a making legitimate non-commercial use of the disputed domain name, but that Respondent is using the name with intent for commercial gain by confusing consumers.
The Panel agrees. On the basis of the record before it, the Panel also finds that Respondent is not actively offering any goods or services, or making use of the site for any sort of other information or commentary that might support a finding of bona fide or fair use.3 Therefore the Panel rules that Respondent is not making a legitimate noncommercial, bona fide, or fair use of the disputed domain name.
Complainant has established a prima facie case. Refraining from submitting a response, Respondent has brought to the Panel’s attention no circumstances from which the Panel could infer that Respondent has rights or legitimate interests in use of the disputed domain name.
Therefore, the Panel concludes that the second element of paragraph 4(a) of the Policy is established. C. Registered and Used in Bad Faith
The Panel finds that the third element of paragraph 4(a) of the Policy, bad faith registration and bad faith use, is also established.
Paragraph 4(b) of the Policy lists circumstances which, without limitation, are deemed to be evidence of the registration and use of a domain name in bad faith. Those circumstances are:
(i) Circumstances indicating that the respondent has registered or 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 trade mark or service mark or to a competitor of that complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) the respondent has registered the domain name in order to prevent the owner of the trade mark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of the complainant; or
(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to the respondent’s website or other location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on respondent’s website or location.
The Panel agrees with Complainant’s allegation that its BMW mark is famous. On the basis of the fame of the mark and the fact that Respondent used the disputed domain name to redirect Internet users to Complainant’s website, the Panel infers that Respondent was clearly aware of the mark before including the mark in the disptued domain name. It is therefore clear to the Panel that Respondent registered the disputed domain name with full intention to attract Internet users simply through using the famous BMW trademark. Such conduct constitutes bad faith registration under Policy Paragraph 4(b)(iv). See, e.g., Veuve Cliquot Ponsardin, Maison Fondee en 1772 v. The Polygenix Group Co.,WIPO Case No. D2000-0163 (disputed domain name “so obviously connected with such a well-known product that its very use by someone with no connection with the product suggests opportunistic bad faith”).
As for bad faith use under the Policy, Complainant has submitted evidence that Respondent is publishing false advertisements for employment opportunities with Complainant, using the disputed domain name as a part of the email address to which jobseekers should inquire. The record also includes what Complainant represents as a March 30, 2012, email from Respondent, answering an employment inquiry and signed by a fictitious individual represented as a member of Complainant’s Human Resources department. That communication requests materials from presumed applicants, including a letter of reference from a former employer plus, significantly, a high-quality photograph of the front and back of the applicant’s identification card and proof of their residential address in Germany.
The Panel accepts these pieces of evidence as credible,4 particularly in light of the nature of Respondent’s brief communications with the Center upon receiving notification of these proceedings. The Panel agrees with Complainant, therefore, that Respondent has been using the disputed domain name in its misleading efforts to obtain personal data from potential job seekers.
The Panel does not agree that there is sufficient evidence to support Complainant’s contention that Respondent is attempting to disrupt Complainant’s business as provided under Policy Paragraph 4(b)(iii). However, the evidence clearly does support Complainant’s argument that Respondent is using the disputed domain name in an effort to profit from consumer confusion under Policy Paragraph 4(b)(iv).
The failure of Complainant to respond to Complainant’s demand letter of April 18, 2012, and failure to maintain accurate contact details as required in the registration agreement are further evidence of bad faith use under the circumstances.5
The Panel concludes therefore that Respondent has registered and is using the disputed domain name in bad faith. 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 Complainant.
Nasser A. Khasawneh
Sole Panelist
Date: October 30, 2012
1 Respondent’s brief communications demonstrate that notification was received, although the written notification to Respondent by the Center was returned because according to the courier company, the address listed in the WhoIs record and confirmed by the Registrar did not exist.
2 The Panel has undertaken limited research by visiting the website to which the disputed domain name routes, see WIPO Overview of WIPO Panel Views on Selected UDRP Questions (“WIPO Overview 2.0”), paragraph 4.5. As of the time of writing this decision, the webpage is blank, with a notice “This account has been suspended.”
3 A respondent in such circumstances might conceivably argue that it is providing information about potential careers at BMW. However Respondent has not made such a claim and refrains from submitting any substantive response. The record as it stands suggests instead that Respondent is using the disputed domain name in association with a phishing scam.
4 Copies of the advertisement and letter allegedly from Respondent are annexed to the Complaint, along with a screen capture that demonstrates that the disputed domain name was used to redirect users to Complainant’s careers webpages.
5 Since the Panel has determined that the record provides ample evidence of bad faith, the Panel need not address Complainant’s contention that Respondent has attempted to conceal its identity in bad faith by using the disputed domain name as the registrant contact name.
Full & Egal Universal Law Academy