The Complainant is Bayerische Motoren Werke Aktiengesellschaft (BMW AG) of Munich, Germany, represented by Jun He, China.
The Respondent is fengzhenghua of Zhejiang, China. 2. The Domain Name and Registrar
The disputed domain name is registered with B, Inc. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 11, 2014. On August 11, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 12, 2014, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. On August 12, 2014, the Center transmitted an email to the parties in both Chinese and English language regarding the language of the proceeding. On August 13, 2014, the Complainant confirmed its request that English be the language of the proceeding. The Respondent did not comment on the language of the proceeding by the specified due date.
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 August 20, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was September 9, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 10, 2014.
The Center appointed Douglas Clark as the sole panelist in this matter on September 22, 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 is a multinational luxury car company. The Complainant also sells “BMW Lifestyle” clothing in China since 2011 and has clothing stores in at least 13 cities in China. The Complainant is the registered proprietor of the trademark BMW in various countries including China in numerous classes, including Class 25.
The disputed domain name was registered on July 8, 2008. The website to which the disputed domain name resolves is a page promoting the clothing line BMN in China. It features a logo that is very similar to the Complainant’s logo, pictures of the Complainant’s cars as well as advertising high end clothing and accessories. Western male models are shown wearing the clothing. 5. Parties’ Contentions A. Complainant
Identical or confusingly similar
The Complainant argues that the disputed domain name is made entirely up of the registered trademark BMW and the geographical description “German” to which generic Top-Level Domain (“gTLD”) “.com” has been added. It is therefore confusingly similar to the Complainant’s registered trademark BMW.
No rights or legitimate interests
The Complainant submits that the Respondent has not been known by the disputed domain name and the Respondent has no connection with the Complainant or any of its affiliates and has never sought or obtained any trademark registrations for BMW.
Registered and used in bad faith
The Complainant submits that there is no doubt that before registration of the disputed domain name the Respondent knew of the Complainant’s rights in the BMW trademark. The use the Respondent has made on its website where the Complainant’s cars and a logo very similar to the Complainant’s are featured shows the Respondent’s bad faith. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings 6.1. Language of the Proceeding
The language of the Registration Agreement for the disputed domain name is Chinese. Paragraph 11(a) of the Rules provides that:
“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.”
The Complainant requested that the language of the proceeding be English on the grounds the disputed domain name contains an English word “German”; the Respondent uses some English language phrases on its website; and, the Complainant is German so it will cause unnecessary delay to translate the Complaint into Chinese.
The Respondent did not respond to this request.
The Center made a preliminary determination to:
1) accept the Complaint as filed in English;
2) accept a Response in either English or Chinese;
3) appoint a Panel familiar with both languages mentioned above, if available.
The final determination of the language of the proceeding lies with this Panel. As a first point, this Panel does not consider the Complainant’s submission that the Complainant is not familiar with Chinese to be of much weight. The Complainant is represented in these proceedings by native speakers of Chinese. Some English is used on the website in advertising slogans and in a copyright notice. The text (in Chinese) describing the Respondent is designed to give the impression it is an international business. These latter factors are not overwhelmingly in favour of allowing the proceedings to proceed in English.
However, the Respondent has not responded to the Center’s preliminary determination.
This Panel decided in Z, Inc. v. Zufu aka Huahaotrade,WIPO Case No. D2008-1191, that a respondent’s failure to respond to a preliminary determination by the Center as to the language of the proceeding “should, in general, be a strong factor to allow the Panel to decide to proceed in favour of the language of the Complaint.”
Further, as set out below, the Panel considers the merits of the case to be strongly in favour of the Complainant. Translating the Complaint would cause unnecessary delay in this matter.
These factors lead the Panel to determine to follow the Center’s preliminary determination. As the only pleading before the Panel is in English, the Panel will render its decision in English. 6.2. Substantive Issues
This is a very simple case of clear cybersquatting which the UDRP was designed to stop. A. Identical or Confusingly Similar
The disputed domain name is made up of the registered trademark BMW, the geographical term “German” and the gTLD “.com”. The disputed domain name is confusingly similar to the registered trademark BMW. The first part of the paragraph 4(a) of the Policy is therefore satisfied. B. Rights or Legitimate Interests
The Respondent has not responded to the Complaint to assert any rights or legitimate interests. Paragraph 2.1 of the WIPO Overview of WIPO Panel views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”) provides:
“While the overall burden of proof rests with the complainant, panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is often primarily within the knowledge of the respondent. Therefore a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, the burden of production shifts to the respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such appropriate allegations or evidence, a complainant is generally deemed to have satisfied paragraph 4(a)(ii) of the UDRP.”
The Complainant has made out a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name. None of the circumstances in paragraph 4(c) of the Policy, which sets out how a respondent can prove its rights or legitimate interests, are present in this case. C. Registered and Used in Bad Faith
For the same reasons as those above, the Panel has no hesitation in finding that the disputed domain name was registered in bad faith and is being used in bad faith.
This case falls with paragraph 4(b)(iv) of the Policy which provides that a respondent has registered and is using a domain name in bad faith where:
“by using the domain name, [the respondent] have intentionally attempted to attract, for commercial gain, Internet users to [the respondent’s] web site 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] web site or location or of a product or service on [the respondent’s] web site or location.” 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.
Douglas Clark
Sole Panelist
Date: October 6, 2014
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