Complainant is Bayerische Motoren Werke AG, of Munich, Germany, represented by Kelly IP, LLP, of the United States of America.
Respondent is Ryan G Foo, PPA Media Services, of Santiago, Chile. 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 February 9, 2015. On February 10, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 13, 2015, 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 February 16, 2015 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on February 18, 2015.
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 Respondent of the Complaint, and the proceedings commenced on February 26, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was March 18, 2015. Respondent did not submit any response. Accordingly, the Center notified Respondent's default on March 19, 2015.
The Center appointed Mr. Perkins as the sole panelist in this matter on March 30, 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. 4. Factual Background 4.A. Complainant
4.A.1 Complainant is the very well known manufacturer of automobiles and motorcycles. For example, in the calendar year 2013 it sold in excess of 1,655,000 automobiles and 115,000 motorcycles producing revenue of some Euros 76 billion. Its products and components are manufactured at 30 sites in 14 countries, it has more than 110,000 employees worldwide and 3,250 authorised dealers in more than 140 countries. BMW WELT/ BMW WORLD
4.A.2 The BMW WELT facility opened in 2007 and is located in Milbertshofen (near Munich) next to Complainant's home plant, BMW WERKE, and the BMW MUSEUM. That facility serves as a distribution centre for BMW cars as well as a location for extensive exhibitions of BMW's products, conferences and events. The German word "welt" translates to "world" in English, hence the English version BMW WORLD.
4.A.3 Complainant registered the domain name in 2001 and began using that domain name to resolve to the BMW-WELT website in 2002.
4.A.4 Complainant registered the domain name in 2007, which also resolves to the BMW WELT website.
4.A.5 The BMW WELT/ BMW WORLD facility has become enormously popular and in 2011 had more than 2.3 million visitors and on July 4, 2012 welcomed its ten millionth guest. It is the most popular tourist attraction in Bavaria. Complainant's BMW trade marks
4.A.6 Complainant's BMW trade mark has been in use since 1917. Interbrand ranked the mark 11th of the"Best Global Brands" in 2014, valuing the mark at more than USD $34.2 billion. Complainant owns numerous registrations for the BMW trade mark in more than 140 countries worldwide.
4.A.7 By way of example, exhibited to the Amended Complaint are Complainant's earliest registrations of the BMW trade mark in Germany. They are:
Registration No. 221388 BMW and Design Classes 7-9 and 11-12 filed October 5, 1917 and registered December 10, 1917
Registration No. 410579 BMW Classes 7 and 12 filed February 23, 1929 and registered November 15, 1929.
4.A.8 Also exhibited are two of Complainant's numerous BMW trade mark registrations in the United States. They are:
Registration No.611,710 BMW Class 12 filed March10 , 1954 and registered September 6, 1955 but in use from February 1949.
Registration No. 613,465 BMW and Design Class 12, filed March 10, 1954 and registered October 4, 1955 but also in use from February 1949. 4.B Respondent
4.B.1 In the absence of a Response, all that is known of Respondent is derived from the Amended Complaint and its exhibits.
4.B.2 The disputed domain name was registered on April 10, 2010. The registrant is one, Ryan G Foo, PPA Media Services, of Santiago, Chile.
4.B.3 The disputed domain name resolves to a pay-per-click website, which links to various third party websites including competing automobile brands such as NISSAN, HONDA, LEXUS and SUBARU. Respondent's website to which the disputed domain name resolves uses Complainant's BMW trade mark, its well known BMW Logo - which is also widely registered - and the words BMW WORLD, with the BMW logo placed in the letter "O" in the word "WORLD".
4.B.4 Complainant cites fourteen Decisions under the Policy against Respondent, in the majority of which Respondent was using third party trade marks for pay-per-click websites. These included BMW v PPA Media Services/ Ryan G Foo,WIPO Case No. D2013-0704, where the disputed domain name was transferred to Complainant. The others also involved well known trade marks, two examples being FOX SPORTS and CRATE & BARREL. 5. Parties' Contentions 5.A Complainant 5.A.1 Identical or Confusingly Similar
5.A.1.1 Complainant's case is that the disputed domain name incorporates its famous BMW trade mark in its entirety and the addition of the suffix "world" renders the domain name identical to Complainant's well known BMW WORLD facility. It is also to all intents and purposes identical to Complainant's domain name registered in 2007. In the circumstances, Complainant says that the disputed domain name is confusingly similar to its BMW trade mark.
5.A.1.2 In this connection, Complainant cites Decisions under the Policy where disputed domain names incorporating the BMW mark and a descriptive word ; ; ; and were all found to be confusingly similar to the BMW trade mark.
5.A.1.3 Additionally, Complainant cites decisions under the Policy where the combination of the word "world" with a trade mark has been held to be confusingly similar to that mark. For example, ; ; ; ; and were held confusingly similar to, respectively, the trade marks GLOCK; CITADEL; GOOGLE; POTTERY BARN; and KINECT. 5.A.2 Rights or Legitimate Interests
5.A.2.1 Complainant's case is that none of the circumstances demonstrating rights to or legitimate interests in the disputed domain name set out in paragraph 4 (c)(i) - (iii) of the Policy are present.
5.A.2.2 First, Respondent's use of the disputed domain name for the pay-per-click website described in paragraph 4.B.3 above cannot qualify as either a bona fide offering of goods under paragraph 4c(i) of the Policy or a legitimate noncommercial or fair use under paragraph 4(c)(iii) of the Policy. In that respect, Complainant cites five Decisions in its favour under the Policy involving the disputed domain names ; ; ; ; and .
5.A.2.3 Second, Complainant says that the additional use of its BMW logo on Respondent's website evidences both lack of a legitimate interest in the disputed domain name as well as passing off citing the case involving the domain name (already cited above),
5.A.2.4 Third, Complainant's case is that, clearly, Respondent cannot bring itself within paragraph 4(c)(ii) of the Policy, nor has Complainant licensed or otherwise authorised Respondent to use the BMW mark. 5.A.3 Registered and Used in Bad Faith
5.A.3.1 First, on the basis of the website to which the disputed domain name resolves (as described in paragraph 4.B.3 above ), bad faith registration and use under paragraph 4b(iv) of the Policy is, Complainant says, clearly demonstrated. Such is further demonstrated - Complainant says - by Respondent's use of the famous BMW logo on the website to which the disputed domain name resolves.
5.A.3.2 Second, Complainant says that Respondent's use of the disputed domain name for a website linking to third party websites advertising competitor automobiles also demonstrates Respondent's intention to disrupt Complainant's business by registering that domain name. In that respect, Complainant refers again to the Decision involving the domain name .
5.A.3.3 Third, Complainant asserts bad faith registration and use of the disputed domain name under paragraph 4(b)(ii) of the Policy having regard to the pattern of conduct summarised in paragraph 4.B.4 above.
5.A.3.4 Finally, given the fame of the BMW trade mark, the use of the equally well known BMW logo on Respondent's website and the highly popular BMW WELT/ BMW WORLD facility, it is Complainant's case that Respondent clearly had knowledge of the BMW mark when registering the disputed domain name in April, 2010. Such registration was, in the circumstances, made in bad faith. 5. B Respondent
As already noted, no Response has been filed. 6. Discussion and Findings
6.1 The Policy paragraph 4(a) provides that Complainant must prove each of the following in order to succeed in an administrative proceeding
(i) that the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) that Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) that the disputed domain name has been registered and is being used in bad faith.
6.2 The Policy paragraph 4(c) sets out circumstances which, in particular but without limitation, if found by the Panel to be proved shall demonstrate Respondent's rights or legitimate interests in the disputed domain name in issue.
6.3 The Policy paragraph 4(b) sets out circumstances which, again 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.
6.4 As stated, the circumstances set out in paragraph 4(b) and 4(c) of the Policy are not exclusionary. They are without limitation. That is, the Policy expressly recognizes that other circumstances can be evidence relevant the requirements of paragraphs 4(a)(ii) and (iii) of the Policy. 6.5 Identical or Confusingly Similar
On the basis of the facts summarised in paragraph 4.A and the submissions and supporting cases summarised in paragraph 5.A.1 above, it is clear that Complainant has rights in the famous BMW trade mark and that the disputed domain name is confusingly similar to that mark. Accordingly, the two requirements of paragraph 4(a)(i) of the Policy are met. 6.6 Rights or Legitimate Interests
On the basis of the facts summarised in paragraph 4.B.3 and the submissions and supporting cases summarised in paragraph 5.A.2 above, it is equally clear that Respondent cannot demonstrate any rights to or legitimate interests in the disputed domain name. Accordingly, the requirement of paragraph 4(a)(ii) of the Policy is met. 6.7 Registered and Used in Bad Faith
On the basis of the facts summarised in paragraphs 4.B.3 and 4 and the submissions and supporting cases summarised in paragraph 5.A.3 above, the requirement of paragraph 4 (a)(iii) of the Policy is also met. 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.
David Perkins
Sole Panelist
Date: April 13, 2015
Full & Egal Universal Law Academy