The Complainant is Bayerische Motoren Werke A.G. of Munich, Germany, represented by Gün Avukatlik Bürosu Mehmet Gün & Partners, Turkey.
The Respondent is Fatih KARAASLAN of Istanbul, Turkey; PrivacyP of Nobby Beach, Queensland, Australia. 2. The Domain Name and Registrar
The disputed domain name is registered with PDR Ltd. d/b/a PublicDomainR (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 3, 2013. On December 3, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 4, 2013, 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 the Complainant on December 5, 2013 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on December 9, 2013.
The Center verified that the Complaint together with the amended 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 amended Complaint, and the proceedings commenced on December 11, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was December 31, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 3, 2014.
The Center appointed Gökhan Gökçe as the sole panelist in this matter on January 13, 2014. 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, Bayerische Motoren Werke A.G., is a German automobile, motorcycle and engine manufacturing company founded in 1916 and it carries on business as a manufacturer and distributor of motor vehicles and spare parts. The Complainant is the owner of the registered trademark BMW as a word and figure mark in several classes in many countries, including Turkey. The Complainant has several registered trademarks in Turkey for “bmw” and other derivative trademarks. The earliest registration date as listed in the Turkish government trademark registry and evidence by the annexes of the Complaint with respect to BMW is 1973.
The disputed domain name was registered on July 31, 2008. The Panel visited the website at the disputed domain name on January 25, 2014 and observed that the website at the disputed domain name is used in connection with a Turkish-language website offering the Complainant’s branded goods for rent. The website also contains photographs of the Complainant’s products. The website does not include a disclaimer with respect to the Respondent’s relationship to the Complainant. 5. Parties’ Contentions A. Complainant
In accordance with paragraph 4(b)(i) of the Policy, the Complainant requests that the disputed domain name be cancelled. The Complainant submits the grounds for these proceedings listed in paragraph 4(a) of the Policy. Identical or Confusingly Similar
The Complainant asserts that the disputed domain name comprises the word “bmw” which is identical to its registered trademark BMW. The Complainant states that BMW is a well-known trademark under the WIPO criteria and that the Complainant has obtained favorable decisions in previous UDRP decisions and asserts that the addition of “kiralama” which means “renting” in English and the addition of a generic top-level domain, “.com”, does not have an impact on the overall impression of the dominant part of the disputed domain name and does not exclude the likelihood of confusion. Rights or Legitimate Interests
The Complainant asserts that the Respondent does not have any registered legitimate rights to use the disputed domain name. The Complainant asserts that the Respondent is using the BMW trademark although it is registered trademark of the Complainant and that the Respondent is trying to create confusion among the consumers that it is the one and only BMW rent-a-car company of Turkey. The Complainant further asserts that the purpose of the Respondent is to create an impression of an association with the Complainant and to tarnish the Complainant’s trademark and its reputation thereof. Registered and Used in Bad Faith
The Complainant contends that, due to the reputation and the goodwill of the Complainant’s trademark, the Respondent is aiming to benefit from the advantages of the well-known status of the BMW trademark and to create confusion among the Turkish public.
The Complainant further contends that the use of a privacy service to conceal the registrant’s true identity is indicative of bad faith. The Complainant alleges that the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the Respondent’s website 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 the Respondent’s website or location or of a product or service on its website. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
Paragraph 4(a) of the Policy sets forth the following three elements which the Complainant must prove, during the administrative proceedings, to merit a finding that the disputed domain name be cancelled:
(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 has been registered and is being used in bad faith.
Pursuant to paragraph 15(a) of the Rules, the Panel shall decide a complaint 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. A. Identical or Confusingly Similar
The Policy simply requires the Complainant to demonstrate that the disputed domain name is identical or confusingly similar to a trademark in which the Complainant has rights. The Panel is satisfied that the Complainant is the owner of the trademark BMW as evidenced in the annexes to the Complaint.
In relation to the disputed domain name, it is clear that the disputed domain name fully incorporates the Complainant’s trademark and the only difference between the disputed domain name and the Complainant’s trademark is the addition of the words “kiralama” and the “.com” extension.
The Panel is in the opinion that the addition of the word “kiralama”, which means “renting”, does not negate the confusing similarity with the Complainant’s trademark. “On the contrary, the nature of the generic terms used would tend to reinforce consumers’ erroneous conclusion that the websites to which the disputed domain names resolve are somehow legitimately included in the supply and service system established by the Complainant under its […] trademark”, Aktiebolaget Electrolux v. Ibrahim Yurtcu, WIPO Case No. D2013-0796.
The Panel further finds that the addition of the “.com” extension is irrelevant when determining whether the disputed domain name is confusingly similar to the Complainant’s trademark, PRL USA Holdings, Inc. v. Spiral Matrix,WIPO Case No. D2006-0189. It has been stated in several decisions by other UDRP panels that the incorporation of a trademark in its entirety into a domain name may be sufficient to establish that the domain name is identical or confusingly similar to a registered trademark, Bayerische Motoren Werke AG, Sauber Motorsport AG v. Petaluma Auto Works,WIPO Case No. D2005-0941. The Panel recognizes the Complainant’s rights and concludes that the disputed domain name is confusingly similar to the Complainant’s BMW trademark.
The Panel finds that the requirements of paragraph 4(a)(i) of the Policy are fulfilled. Consequently, the Panel finds for the Complainant on the first element of the Policy. B. Rights or Legitimate Interests
In accordance with paragraph 4(a)(ii) of the Policy, the Complainant must prove that the Respondent has no rights or legitimate interests in respect of the disputed domain name. It is established in numerous UDRP decisions that it is difficult for a complainant to prove a negative and for that reason the complainant is required to make out an initial prima facie case that the respondent lacks rights or legitimate interests in a domain name, Belupo d.d. v. WACHEM d.o.o. ,WIPO Case No. D2004-0110. Once the complainant makes a prima facie case, the burden of demonstrating rights or legitimate interests in the disputed domain name shifts to the respondent. Paragraph 4(c) of the Policy provides various ways in which a respondent may demonstrate rights or legitimate interests in a domain name. If the respondent fails to do so, the complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy.
The Complainant contends that the Respondent does not have any rights or legitimate interests in the disputed domain name. The Respondent is using the BMW trademark although it is registered trademark of the Complainant and that the Respondent is trying to create confusion among the consumers that it is the one and only BMW rent-a-car company of Turkey. The Complainant alleges the Respondent’s reason for registering the disputed domain name is to create an impression of an association with the Complainant and to tarnish the Complainant’s trademark and its reputation thereof.
The Panel finds that there is no evidence to suggest that the Respondent has any rights in any trademarks or service marks which are identical, similar or related to the disputed domain name. The Panel accepts that the Respondent is not commonly known by the disputed domain name, even if the Respondent has acquired no trademark or service mark rights.
The Panel visited the website at the disputed domain name on January 25, 2014, and found that the disputed domain name resolves to a Turkish-language website offering the Complainant’s branded goods for rent. The website also contains photographs of the Complainant’s products. One of the conditions stipulated in previous UDRP proceedings for a reseller to be regarded as having a right or legitimate interest in registering a domain name which incorporates a complainant’s trademark is that the website must accurately disclose the respondent’s relationship with the trademark owner, Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903. The website does not include a disclaimer with respect to the Respondent’s relationship to the Complainant. Therefore, the Panel finds that the Respondent does not accurately disclose the relationship between the Respondent and the Complainant and the Respondent is not making use of the disputed domain name in connection with a bona fide offering of goods or services.
The website associated with the disputed domain name is a commercial website used for the promotion of car rental services offered by the Respondent. Therefore, the Panel infers that there is no intention of legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain or to misleadingly divert consumers.
Paragraph 4(a)(ii) of the Policy requires the Complainant to prove that the Respondent has no rights to or legitimate interests in the disputed domain name. The Complainant has established a prima facie case that the Respondent lacks a right or legitimate interest in the disputed domain name. The Respondent did not submit a Response. In light of the above, the Panel concludes that the Respondent has no rights or legitimate interests in the disputed domain name.
The requirements of paragraph 4(a)(ii) of the Policy are fulfilled and, consequently, the Panel finds in favor of the Complainant on the second element of the Policy. C. Registered and Used in Bad Faith
Finally, the Complainant must show that the disputed domain name has been registered and is being used in bad faith under paragraph 4(a)(iii) of the Policy.
Paragraph 4(b) of the Policy provides a non-exhaustive list of circumstances that, if found by a panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
(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 trademark 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 trademark 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 a competitor; 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 on-line 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 the respondent’s website or location.
The Complainant’s trademark BMW was registered and has been used long before the Respondent’s registration of the disputed domain name and the reputation of the Complainant’s trademark in the field of motor vehicles is clearly established. Further the Respondent’s website associated with the disputed domain name contains the BMW trademark and photographs of the Complainant’s products. Therefore, the Respondent was aware of the Complainant’s trademark BMW at the time the disputed domain name was registered. The Panel, in accordance with previous decisions issued under the Policy, is of the opinion that actual knowledge of the Complainant’s trademark at the time of registration of the disputed domain name is to be considered as an inference of bad faith, Parfums Christian Dior v. Javier Garcia Quintas and C,WIPO Case No. D2000-0226. In this Panel’s view, it therefore follows that the Respondent, at the time of registration, must have been aware that the commercial use of the disputed domain name could likely result in a violation of the Complainant’s trademark rights, suggesting that there was never an intention of good faith use, Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003.
Further, the fact that the Respondent’s website uses the Complainant’s trademark BMW in connection with offering services related to the Complainant’s goods suggests that by using the disputed domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website and other on-line 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.
After examining all circumstances surrounding the registration and use of the disputed domain name, the Panel finds that the Respondent registered and is using the disputed domain name in bad faith. Accordingly, the Panel finds in favor of the Complainant on the third element of the Policy. 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 cancelled.
Gökhan Gökçe
Sole Panelist
Date: January 27, 2014
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