The Complainant is Bayerische Motoren Werke AG, of Munich Germany, represented by Finnegan, Henderson, Farabow, Garrett & Dunner, LLP, United States of America (“United States”).
The Respondent is stewart print, stewartprint, of Kidderminster, United Kingdom of Great Britain and Northern Ireland (“United Kingdom”). 2. The Domain Name and Registrar
The disputed domain name , (the “Domain Name”) registered with GoD, LLC. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 20, 2014. On December 22, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On December 23, 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.
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 6, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was January 26, 2015. An informal Response was filed with the Center on January 25, 2015. Further communications from the Respondent to the Center were sent on December 24, 2014, January 6, 2015 and February 10, 2015. Each of these communications has been forwarded to the Panel.
The Center appointed Nicholas Smith as the sole panelist in this matter on February 10, 2015. 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.
On February 17, 2015, the Complainant filed a supplemental filing with the Center. On the same day, the Respondent filed a response to the Complainant’s supplemental filing. The Panel, in the exercise of its discretion decided to admit both supplemental filings. 4. Factual Background
The Complainant, based in Germany, is a leading manufacturer of high performance automobiles and motorcycles. The Complainant has sold over one million automobiles and 80,000 motorcycles globally each year since 2008. Its products are manufactured in 24 facilities in 13 countries. In 2012 the Complainant had an annual revenue of EUR 76.8 billion.
The Complainant has held trade marks for the word mark BMW (the “BMW Mark”) since at least 1917. It currently holds registrations for the BMW Mark in Germany, United States and the Lao People’s Democratic Republic.
The Domain Name was created on February 24, 2010. It currently resolves to a website which states that “This Page Is Reserved For Beautifully Made Windows of Laos” and makes reference to the present proceeding (“Respondent’s Website”). Prior to the notification from the Complainant the Domain Name resolved to a website (“Respondent’s former website”) which was titled “BMWLAOS.COM live your dream” and featured a photo of a BMW vehicle, a copy of the Complainant’s logo and an invitation to contact the owner of the website to have a new or used car delivered to them. 5. Parties’ Contentions A. Complainant
The Complainant makes the following contentions:
(i) that the Domain Name is identical or confusingly similar to the Complainant’s BMW Mark;
(ii) that the Respondent has no rights nor legitimate interests in respect of the Domain Name; and
(iii) that the Domain Name has been registered and is being used in bad faith.
The Complainant is the owner of the BMW Mark. It owns trade marks for the BMW Mark around the world and in particular, Germany, the United States and the Lao People’s Democratic Republic and enjoys significant worldwide reputation in those marks.
The Domain Name consists of the BMW Mark with the addition of the word “laos”. The Domain Name contains the BMW Mark in its entirety and the mere addition of a geographic term does not distinguish the Domain Name from the BMW Mark. Rather, the Domain Name will confuse Internet users into believing that the Respondent is based in the Lao People’s Democratic Republic and operating a business in connection with the Complainant.
There are no rights or legitimate interests held by the Respondent in respect of the Domain Name. The Respondent is not commonly known by the Domain Name, nor does the Respondent have any authorization from the Complainant to register the Domain Name. The Respondent’s has registered the Domain Name to pass itself off as connected with the Complainant which does not amount to bona fide use or a legitimate noncommercial fair use. The Respondent’s use of the Domain Name does not grant the Respondent rights or legitimate interests in the Domain Name.
The Domain Name was registered and is being used in bad faith. The Respondent’s former website was a website that contained similarities to an authentic BMW dealer site, providing an air of false legitimacy. The existence of that website shows that the Respondent had the Complainant in mind when he registered the Domain Name, which shows bad faith registration. The Respondent’s registration and use of the Domain Name was for the purpose of disrupting the business of the Complainant. The Respondent is trying to give the impression that it is one of the international outlets of the Complainant and it is anticipated that this use will divert customers from the Complainant for the Respondent’s financial benefit. This conduct amounts to registration and use of the Domain Name in bad faith. B. Respondent
The Respondent characterizes the conduct of the Complainant as a scam by the Complainant to acquire the Domain Name. The Respondent registered the Domain Name in 2010 for a project in the Lao People’s Democratic Republic, and the Respondent’s Website is not used for a car repair company, but for a company known as “Beautifully Made Windows Laos.” The Domain Name was registered because it corresponds with the initials of family members of the Respondent who live in the Lao People’s Democratic Republic.
The Respondent claims that he has strong connections with the Lao People’s Democratic Republic and the Lao people that include his wife. The Respondent challenges the registration of the BMW Mark in the Lao People’s Democratic Republic, suggesting that it was only obtained by paying money to corrupt government officials or is a forgery. The Respondent makes a number of additional claims of corruption both in the Lao People’s Democratic Republic and by the Complainant.
The Respondent alleges that BMW has engaged thugs who have threatened him over the Domain Name. Furthermore he alleges that the Respondent’s former website was set up by BMW to assist them in succeeding in the matter. The Respondent urges that the Panel not bow to the pressure from large companies to transfer the Domain Name. 6. Discussion and Findings A. Identical or Confusingly Similar
To prove this element the Complainant must have trade or service mark rights and the Domain Name must be identical or confusingly similar to the Complainant’s trade or service mark.
The Complainant is the owner of the BMW Mark, having registrations for BMW Mark as a trade mark in Germany, the United States and the Lao People’s Democratic Republic. The Respondent’s assertion that the BMW Mark in the Lao People’s Democratic Republic was registered for corrupt purposes is not accepted by the Panel. In any event, the Complainant also has trade mark registrations in Germany and the United States, which is sufficient to satisfy the requirement under this element.
The Domain Name consists of the BMW Mark and the term “laos”. The addition of a geographical term to a trade mark is generally not sufficient to provide any distinctiveness to a domain name, see Carlsberg A/S v. Persona l/ decohouse, decohouse,WIPO Case No. D2011-0972; BP p.l.c.v. Kang-Sungkun Portraits Production,WIPO Case No. D2001-1097; Rolls-Royce PLC v. Hallofpain,WIPO Case No. D2000-1709 and The Nasdaq Stock Market, Inc. v. Vidudala Prasad,WIPO Case No. D2001-1493. Moreover, an individual viewing the Domain Name may be confused into thinking that the Domain Name would refer to a site run by the Complainant, offering its motor vehicles in the Lao market. The Panel finds that the Domain Name is confusingly similar to the Complainant’s BMW Mark. Consequently, the requirement of paragraph 4(a)(i) of the Policy is satisfied. B. Rights or Legitimate Interests
To succeed on this element, a complainant must make out a prima facie case that the respondent lacks rights or legitimate interests in the domain name. If such a prima facie case is made out, then the burden of production shifts to the respondent to demonstrate rights or legitimate interests in the domain name.
Paragraph 4(c) of the Policy enumerates several ways in which a respondent may demonstrate rights or legitimate interests in a domain name:
“Any of the following circumstances, in particular but without limitation, if found by the panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):
(i) before any notice to you of the dispute, your use of, or demonstrable 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; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.” (Policy, paragraph 4(c))
The Respondent is not affiliated with the Complainant in any way. It has not been authorized by the Complainant to register or use the Domain Name or to seek the registration of any domain name incorporating the BMW Mark or a mark similar to the BMW Mark. There is no evidence that the Respondent is commonly known by the Domain Name or any similar name. There is no evidence that the Respondent has used or made demonstrable preparations to use the Domain Name for a legitimate noncommercial use. Rather, it appears from the evidence submitted by the Complainant that, prior to the notification of the dispute, the Respondent was using the Domain Name to operate a website that, without the permission of the Complainant:
(a) makes reference to the Complainant’s BMW Mark and used the Complainant’s logo and a photo of a BMW motor vehicle, potentially indicating that it is in some way formally connected with the Complainant; and
(b) appears to offer cars or a car buying service, from which the Respondent is likely to receive revenue.
In the circumstances, such use is not a bona fide offering of goods or services. The Respondent’s assertion that the former website was set up by the Complainant is not accepted by the Panel.
Upon receipt of the Complainant’s cease-and-desist letter, the Respondent replaced the Respondent’s former website with the Respondent’s Website which refers to “Beautifully Made Windows Laos”. The Respondent submits that the Domain Name refers to such a business. However the Respondent provides no evidence to show that this is a legitimate, operating, business, rather than, as the Complainant alleges, a transparent attempt to suggest that the Domain Name is used for any purpose other than benefiting from the confusion between the Domain Name and the BMW Mark. Furthermore, the Respondent, in his response, then contradicts his own claims by asserting that, in fact, the Domain Name was registered because it reflects the initials of family members. In short, the Respondent’s assertions that he has rights or legitimate interests are unsupported by any evidence, inherently contradictory and are not accepted by the Panel.
The Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the Domain Name. The Respondent has had an opportunity to rebut the presumption that he lacks rights or legitimate interests but has failed to provide any evidence that would rebut that presumption. The Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name under paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
For the purposes of paragraph 4(a)(iii), 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 a domain name in bad faith:
(i) circumstances indicating that the Respondent 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 owners of the trade mark or service mark or to a competitor of the Complainant, for valuable consideration in excess of its 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 a competitor; or
(iv) by using the Domain Name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its 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. (Policy, paragraph 4(b))
The Panel finds that it is likely that the Respondent was aware of the Complainant and its reputation in the BMW Mark at the time the Domain Name was registered. The Respondent’s former website made frequent references to the Complainant and its BMW Mark and logo and appeared to at least imply that he is known as or has a formal connection with the Complainant. The registration of the Domain Name in awareness of the BMW Mark and in the absence of rights or legitimate interests in this case amounts to registration in bad faith.
The Respondent was using the Domain Name to intentionally attempt to attract, for commercial gain, Internet users to a website, by creating a likelihood of confusion with the Complainant’s Mark as to the source, sponsorship, affiliation or endorsement of its website. The Respondent’s former website consisted of a website offering car buying services or cars targeting consumers in the Lao People’s Democratic Republic. It is therefore highly likely that the Respondent received revenue from Internet users who happen to come across the Respondent’s Website by means of confusion with the BMW Mark. The Panel finds that such use amounts to use in bad faith.
The Respondent has failed to offer any evidence that its current use of the Domain Name (the Respondent’s Website) is anything other than an attempt to create a false website to support his claim that he has rights or legitimate interests in the Domain Name. This present use of the Domain Name does not prevent the Panel making a finding of bad faith.
Finally the Panel notes that the Respondent has made various allegations against the Complainant, including as previously mentioned suggestions that the Complainant had forged the Respondent’s former website, that it had forged Lao trade mark documents, and also hired “thugs” to force him to transfer the Domain Name. The Response offered no evidence to support those allegations and as such were not accepted by the Panel.
Accordingly, the Panel finds that the Respondent has registered and is using the Domain Name in bad faith under paragraph 4(a)(iii) 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 Domain Name be transferred to the Complainant.
Nicholas Smith
Sole Panelist
Date: February 15, 2015
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