The Complainant is Bayerische Motoren Werke AG of Munich, Germany, represented by Finnegan, Henderson, Farabow, Garrett & Dunner, LLP, United States of America (“USA”).
The Respondents are Manuel Zan of Distrito Federal, Mexico, and Cristian Morzan of Coral Gables, Florida, USA. 2. The Domain Names and Registrar
The disputed domain names and are registered with GoD, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 17, 2015. On February 17, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On February 18, 2015, the Registrar transmitted by email to the Center its verification response confirming that the Respondents are listed as the registrants 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 Respondents of the Complaint, and the proceedings commenced on March 3, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was March 23, 2015. The Respondents did not submit any response. Accordingly, the Center notified the Respondents’ default on March 24, 2015.
The Center appointed Wilson Pinheiro Jabur as the sole panelist in this matter on April 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. 4. Factual Background
The Complainant, a German corporation, is a manufacturer of automobiles and motorcycles with more than 106,000 employees around the world and revenues in 2013 of more than EUR 76 billion.
It is the owner, amongst several others, of the following trademark registrations (Exhibit 7 to the Complaint):
- German Trademark Registration No. 221388 for the mark BMW and design, filed on October 5, 1917 and issued on December 10, 1917, covering products in classes 12, 07, 08, 09 and 11, and
- German Trademark Registration No. 410579 for the mark BMW, filed on February 23, 1929 and issued on November 15, 1929, covering products in classes 12 and 07.
The disputed domain names and were registered, respectively on March 30, 2009 and July 29, 2009. Currently, active webpages resolve from the disputed domain names depicting the Complainant’s mark or products, purportedly offering for sale spare BMW parts. 5. Parties’ Contentions A. Complainant
The Complainant asserts that since 1917, it has been manufacturing automobiles and motorcycles under its BMW trademark and service mark. The BMW trademark, registered in over 120 countries worldwide according to the Complainant, enjoys unquestionable fame, having been ranked 12th in the “Top 100 Brands” report for global brands conducted by Interbrand in 2013, being valued at more than USD 31 billion.
The Complainant, in addition to manufacturing automobiles and motorcycles also provides numerous services including maintenance and repair, consumer and dealer financing, leasing, insurance and warranty services under the BMW trademark, which is also licensed on a wide variety of accessories and collateral products.
The Complainant asserts that the disputed domain names were registered by the same person or entity who possibly registered them using false information such as the street address listed in the WhoIs information, given that investigation revealed that no “Manual Zan” resided at that address. Also, at some point in time both disputed domain names appeared as having “Manual Zan” as registrant, and later the WhoIs records for were altered to list “Christian Morzan” as registrant.
According to the Complainant, the distinctive element of the disputed domain names is the “bmw” acronym which is identical to the Complainant’s notorious BMW trademark. The disputed domain names are confusingly similar to the BMW trademark given that the addition of the Spanish word “repuestos” (“spare parts”) merely relates to the Complainant’s business and creates a potential impression in Internet users that the Respondents are the Complainant’s authorized resellers, or are affiliated with the Complainant.
As to the absence of rights or legitimate interests, the Complainant argues that:
(i) the Respondents are not part of the Complainant’s dealers network nor are they authorized resellers of its products;
(ii) the Respondents registered the disputed domain names without the Complainant’s authorization;
(iii) it has not found that the Respondents have any registered trademarks or trade names corresponding to the disputed domain name;
(iv) the disputed domain names are used in connection with websites offering the Complainant’s products seeking to create an impression of association with the Complainant; moreover, the website related to the domain name appears to receive “click-through” or “pay-per-click” commissions for advertisements displayed on the website whereas the domain name promotes parts and services related to Complainant’s competitors;
(vii) the Respondents did not adequately disclose the relationship, or lack thereof, between the Respondents and the Complainant, thus conveying the false impression that the Respondents are an authorized reseller/service center for the Complainant’s products, and
(viii) there is no evidence to demonstrate that the Respondents are/have ever been commonly known by the disputed domain names, especially considering the fame of the Complainant’s BMW trademark.
as it relates to the bad faith registration and use of the disputed domain names, the Complainant asserts that the Respondents’ knowledge of the Complainant’s trademark is evident given the reproduction of its logotype and products on the websites that resolve to the disputed domain names, making it only possible to conclude that the Respondents knew about the Complainant’s trademark and reputation, and used them to their advantage in bad faith.
Lastly, the Respondents, by using the disputed domain names, are not making a legitimate noncommercial or fair use without intent for commercial gain, but are misleadingly diverting consumers for their own commercial gain. B. Respondents
The Respondents did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Joint Respondents
The Complainant asserts that the disputed domain names were registered by the same person or entity.
Considering the particulars and elements of the case (notably (i) the fact that “Manuel Zan” was the named registrant of both disputed domain names (ii) which are quite similar, merely altering the position of the Complainant’s trademark either before or after the Spanish word “repuestos” and (iii) considering that the disputed domain names were registered within a short interval of time), as well as the absence of any reply from the Respondents that could indicate anything different, this Panel accepts that the disputed domain names are under common ownership or control and that therefore it is appropriate to have the two disputed domain names jointly decided. B. Identical or Confusingly Similar
The Complainant has established its rights in the BMW trademark.
The addition of the generic term “repuestos” which means “spare parts” in Spanish only makes the disputed domain names even more similar to the Complainant’s notorious trademark, creating a high risk of association by Internet users.
Therefore the Panel finds that the disputed domain names are confusingly similar to the Complainant’s trademark. The first element of the Policy has been established. C. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides a non-exclusive list of circumstances that may indicate a respondent’s rights to or legitimate interests in a domain name. These circumstances are:
(i) before any notice of the dispute, the respondent’s 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) the respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if it has not acquired trademark or service mark rights; or
(iii) the respondent is making a 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.
In that sense, the Complainant indeed states that no authorization, license, permission or consent was granted for the use of BMW in the disputed domain names.
Also, the absence of any trademarks or trade names registered by the Respondents corresponding to the disputed domain names, or any possible link between the Respondents and the disputed domain names, that could be inferred from the details known of the Respondents or the webpage relating to the disputed domain names, corroborate the absence of a right or legitimate interest.
The Respondents have been using images of automobiles manufactured by the Complainant as well as the notorious BMW trademark in connection with webpages that purport to offer for sale after-market BMW parts. Previous UDRP panels have recognized that, under certain conditions, the use of a domain name that reflects a trademark for the resale of the trademark holder’s goods can give rise to rights or legitimate interests. See Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903. These conditions include, inter alia, that the website under the domain name “[is used to sell] only the trademarked goods” and that it “accurately and prominently [discloses] the registrant’s relationship with the trademark holder.” WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 2.3. The website under the disputed domain name has no such disclaimer, and in fact states that it is an importer of parts directly from Germany, which if anything implies (falsely) a commercial relationship with the Complainant, a German company. While the website under the disputed domain name states that it is part of the company “CVM Auto”, in the Panel’s view this is not a disclaimer as to the registrant’s relationship (or lack thereof) with the Complainant. Further, as the Complainant points out, the website at this disputed domain name contains what appears to be a link to spare parts for other car brands (e.g., Dodge, Jeep and Chrysler).
Under these circumstances and absent evidence to the contrary, the Panel finds that the Respondents do not have rights or legitimate interests with respect to the disputed domain names. D. Registered and Used in Bad Faith
The Policy indicates in paragraph 4(b)(iv) that bad faith registration and use can be found in respect of a disputed domain name, where, by using the disputed domain name, a respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with a complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the website or location or of a product or service on the website or location.
In this case, both the registration and use of the disputed domain names in bad faith can be found in view of the reproduction of the Complainant’s products and trademark logotype in connection with the products commonly manufactured by the Complainant on the websites.
The Respondents’ use of the disputed domain names not only clearly indicates full knowledge of the Complainant’s trademark but also an attempt of misleadingly diverting consumers for their own commercial gain.
For the reasons above, the Respondents’ conduct has to be considered, in this Panel’s view, as bad faith registration and use of the disputed domain names pursuant to paragraph 4(b)(iv) 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 names and be transferred to the Complainant.
Wilson Pinheiro Jabur
Sole Panelist
Date: April 13, 2015
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