Complainant is Bayerische Motoren Werke AG of Munich, Germany, represented by Kelly IP, LLP, United States of America.
Respondent is Aditya Roshni, Web Services Pty of New Delhi, India. 2. The Domain Names and Registrar
The disputed domain names and are registered with BigRock Solutions Pvt Ltd. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 29, 2015. On June 30, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On July 1, 2015, the Registrar transmitted by email to the Center its verification response confirming that 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 Respondent of the Complaint, and the proceedings commenced on July 3, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was July 23, 2015. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on July 24, 2015.
The Center appointed Gabriel F. Leonardos as the sole panelist in this matter on July 29, 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
Complainant is a German manufacturer of automobiles and motorcycles, which also provides maintenance and repair services, as well as consumer and dealer financing, leasing, insurance, and warranty services such as new vehicle warranties and extended warranties.
Complainant’s products and components are manufactured in fourteen countries located in four different continents.
Complainant also owns several registrations for the BMW trademark in more than 140 countries, such as registration No. 221388 registered since December 10, 1917, and registration No. 410579, registered since November 15, 1929, all filed before German Patent and Trademark Office (Deutsches Patent-und Markenamt).
Besides owning the domain name since January 29, 1996, Complainant also owns the domain names and registered on November 4, 1998 and May 14, 1995 (Exhibit 6 of the Complaint).
The disputed domain names and were registered on July 14, 2006 and August 4, 2009, respectively. 5. Parties’ Contentions A. Complainant
Complainant claims that two of its authorized dealers use trade names and domain names that are similar to the disputed domain names. Complainant adds that its authorized dealer in Austin, Texas, United States uses the trade name “BMW of Austin” and the corresponding domain name (as per Exhibit 7 of the Complaint).
Moreover, Complainant alleges that its authorized dealer in Fort Lauderdale, Florida, United States also uses the trade name “Lauderdale BMW of Ft. Lauderdale” and the corresponding domain name (as per Exhibit 7 of the Complaint).
Complainant points out that Respondent registered the disputed domain names long after Complainant began using its trademarks. Complainant also infers that the disputed domain names are comprised of Complainant’s famous BMW trademark in its entirety and of the geographic terms “Austin” and “Fort Lauderdale”, both of which directly relate to Complainant’s business and its authorized dealers (as per paragraph 24, Exhibit 7 of the Complaint).
Furthermore, Complainant affirms that Respondent uses the disputed domain names to generate pay-per-click or “click through” commissions via advertising links for competing automobile companies and offers the disputed domain names for sale. In this sense, according to Complainant, Respondent uses the disputed domain name to redirect Internet users to the website of one of Complainant’s competitors, namely Mazda. Complainant further claims that Respondent receives commissions for directing Internet users to Mazda’s website, as shown in Exhibit 10 of the Complaint.
In addition, Complainant states that Respondent uses the disputed domain name for a pay-per-click website that features sponsored-link advertisements for various third-party commercial websites, which includes websites advertising competing automobile companies and brands (e.g., Mercedes-Benz, Porsche, Mazda, Jaguar, Ford and Lincoln), and directly competing services (e.g., car sales). Complainant argues that Respondent receives “click-through” commissions when Internet users click on the sponsored-link advertisements featured on its website (as per Exhibit 11 of the Complaint).
Complainant also asserts that Respondent’s websites associated with the disputed domain names offer them for sale (as per Exhibits 10 and 11 of the Complaint). According to Complainant, Respondent also offers to sell the disputed domain names on marketplace websites (as per Exhibit 12 of the Complaint).
Complainant further states that on June 2, 2015 it sent a cease and desist letter to Respondent demanding the transfer of the disputed domain names, but Respondent has not offered a reply so far (as per Exhibit 13 of the Complaint).
Complainant affirms that Respondent’s bad-faith registration and use of trademark-related domain names have been subject of several adverse UDRP decisions brought by third parties, including the following five (5) representative decisions holding as acts of bad faith Respondent’s use of the disputed domain names for pay-per-click websites with sponsored-link advertisements and/or advertising links: Volkswagen v. Aditya Roshni, c/o Web Services Party,WIPO Case No. D2013-0635; Volkswagen v. PrivacyP / Aditya Roshni, Web Services Pty,WIPO Case No. D2014-0058; F.Hoffmann-La Roche v. Domain Admin/ Aditya Roshni/ Web Services Pty,WIPO Case No. D2007-1595; Hoffmann-La Roche v. Aditya Roshni, Web Services Pty,WIPO Case No. D2008-1086; Allstate v. PrivacyP / Web Services Pty, Aditya Roshni,WIPO Case No. D2011-0289.
Complainant contends that the disputed domain names are confusingly similar to its famous registered trademark BMW, since they both contain Complainant’s trademark in its entirety combined with a geographic term (“Austin” and “Fort Lauderdale”). Considering this, Complainant mentions several UDRP decisions that have consistently held that combining a trademark with geographic terms renders a domain name confusingly similar to that mark.
Additionally, Complainant argues that the addition of the terms “Austin” and “Fort Lauderdale” increases the similarity of the disputed domain names to Complainant’s BMW trademark because Internet users are led to believe that the disputed domain names are related to Complainant’s business in Austin and Fort Lauderdale. In connection with this matter, Complainant mentions other UDRP decisions that sustain this understanding.
Complainant claims that Respondent has no rights or legitimate interests in the disputed domain names since Respondent’s registration and use of the disputed domain names to generate pay-per-click or “click-through” commissions via advertising links for competitive automobile related websites does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use under the UDRP. Considering this, Complainant mentions that several UDRP panels have consistently found no legitimate interest in the use of trademark-related domain names for pay-per-click websites and similar websites featuring advertising links, including in cases involving domain names comprised of Complainant’s BMW mark.
Furthermore, Complainant states that there is no evidence that Respondent is or has ever been commonly known by the disputed domain names. Also according to Complainant, Respondent is not a licensee of Complainant, and Complainant has never authorized Respondent to register or use the disputed domain names or its BMW mark.
Complainant claims that given the fame of Complainant’s BMW mark, Respondent could not be known by the disputed domain names and, therefore, mentions the following UDRP decision which held that a respondent had no legitimate interest in the domain name because the fact that Complainant’s BMW and X5 marks were well-known worldwide prevented the respondent from invoking any rights or legitimate interests: BMW v. Null,WIPO Case No. D2002-0937.
Complainant further adds that Respondent lacks rights or legitimate interests in the disputed domain names since it offers to sell the disputed domain names and, according to Complainant, under Policy paragraph 4(c)(i) this kind of behavior constitutes an independent ground for lack of rights or legitimate interests as per prior UDRP decisions.
Moreover, Complainant points out that Respondent’s registration and use of the disputed domain names directly meets the grounds of bad faith established in the UDRP.
In this sense, Complainant affirms that Respondent uses the disputed domain names intentionally to attract Internet users for commercial gain, by creating a likelihood of confusion with Complainant’s BMW trademark, as to the source, sponsorship, affiliation, and/or endorsement of Respondent’s websites and/or the goods and services advertised therein. Complainant mentions several UDRP panel decisions in order to emphasize its point of view.
Complainant alleges that Respondent unfairly disrupts Complainant’s business by using the disputed domain names for advertising links for competitive automobile-related websites, which, according to Complainant, also constitutes an act of bad faith.
In addition, Complainant states that Respondent has a bad faith pattern of registering domain names containing Complainant’s BMW trademark. Notwithstanding this, Complainant argues that Respondent’s bad faith is further evidenced by the fact that Respondent’s cybersquatting activities have been the subject of several adverse UDRP decisions involving third party trademarks.
Lastly, Complainant asserts that there is no doubt that Respondent had knowledge of Complainant’s rights to its BMW mark by the time it registered the disputed domain names, given the fame of Complainant’s BMW trademark, which is also an indicative of bad faith, according to Complainant. B. Respondent
Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings
To succeed, Complainant must demonstrate that all of the elements listed in paragraph 4(a) of the Policy have been satisfied:
(i) the disputed domain names are identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) Respondent has no rights or legitimate interests in respect of the disputed domain names; and
(iii) the disputed domain names have been registered and are being used in bad faith.
The burden of proving these elements is on Complainant. A. Identical or Confusingly Similar
Complainant has duly proven the first element under paragraph 4(a) of the Policy by attesting that it is the legitimate owner of several trademark registrations for the trademark BMW worldwide.
In addition, the Panel also considers that the disputed domain names and are confusingly similar to Complainant’s trademark, since they are composed by the exact same term “BMW” with the addition of the geographical terms “Austin” and “Fort Lauderdale”, both of which are cities in the United States of America.
In several UDRP decisions, previous panels have considered that the mere addition of geographical terms to a domain name which reproduced a complainant’s trademark in its entirety was insufficient to dispel the possibility of confusion between the trademark and the domain name. See Petroleo Brasileiro S.A - Petrobras v. Mario Andrés Vilches Alcaíno, Precom Comunicaciones,WIPO Case No. D2011-1282 and Playboy Enterprises International, Inc. v. Zeynel Demirtas,WIPO Case No. D2007-0768.
Thereby, the Panel concludes that in the present case, the terms “Austin” and “Fort Lauderdale” are unable to avoid the possibility of confusion between the disputed domain names and Complainant’s trademark BMW.
Furthermore, the Panel agrees that the addition of these terms may actually increase the possibility of confusion between the disputed domain dames and Complainant’s BMW trademark, since, as stated by Complainant, Internet users might be misled to believe that the disputed domain names are related to Complainant’s business in Austin and Fort Lauderdale.
The Panel understands that the disputed domain names containing Complainant’s trademark in its entirety is sufficient to cause confusion and create false associations between Complainant and Respondent, misguiding consumers into believing that Respondent’s activities have the same origin as to the products and services provided by Complainant under the BMW trademark.
Therefore, the Panel finds that the disputed domain names and are confusingly similar to Complainant’s BMW trademark. B. Rights or Legitimate Interests
The consensus view of UDRP panels on the burden of proof under paragraph 4(a)(ii) of the Policy is summarized at paragraph 2.1 of the WIPO Overview of WIPO Panel Views on UDRP Questions, Second Edition (“WIPO Overview, 2.0”) as follows: “[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 [...]. If the respondent does come forward with some allegations or evidence of relevant rights or legitimate interest, the panel then weighs all the evidence, with the burden of proof always remaining on the complainant.”
In this case Complainant has provided sufficient prima facie evidence of “no rights or legitimate interests”, so the burden of production shifts to Respondent. As Respondent has not filed any response, the Panel has considered Complainant’s prima facie evidence to be sufficient to demonstrate that Respondent has no rights or legitimate interests in the disputed domain names and for the purposes of Policy paragraph 4(a)(ii).
The Panel acknowledges that:
(i) Respondent is not commonly known as “BMW” and does not own any registered trademarks or trade names corresponding to the disputed domain names;
(ii) No license or authorization of any kind has been given by Complainant to Respondent to use the trademark BMW in any form, nor to seek registration of any domain name incorporating said mark;
(iii) Respondent is not authorized to promote Complainant’s services and has never had a business relationship with Complainant.
(iv) Respondent has no prior rights or legitimate interest in the disputed domain names, given that Complainant’s registrations for the trademark BMW preceded the registration of the disputed domain names.
In this sense, Respondent cannot reasonably sustain that it was intending to develop a legitimate activity through the disputed domain names, given that it registered the disputed domain names in a clear attempt of taking advantage of Complainant’s well known BMW trademark.
Additionally, Respondent is not currently using the disputed domain names in connection with a bona fide offering of goods or services, since it has intentionally chosen domain names based on a famous registered trademark in order to generate commissions by advertising links for competitive automobile related companies.
On that account, the Panel is also of the opinion that Respondent is not commonly known by the disputed domain names and that it does not have any rights or legitimate interests in the disputed domain names.
Therefore, the Panel finds that Respondent has no rights or legitimate interests in respect to the disputed domain names (Policy, paragraph 4(a)(ii)). C. Registered and Used in Bad Faith
The Panel finds it is highly unlikely that Respondent had no knowledge of Complainant’s company name and trademark BMW at the time of registration of the disputed domain names, considering its well known status and success in the automobile and motorcycle fields. In this sense, the Panel concludes that Respondent registered the disputed domain names with the intention to take unjust advantage of Complainant’s BMW trademark.
The Panel concludes that the “for sale” notices on Respondent’s websites connected with the disputed domain names are themselves an indication of bad faith, as per paragraph 4(b)(i) of the Policy, since it shows that the disputed domain names were registered with the sole intent of being sold, or otherwise transferred to the legitimate owner of the trademark.
The Panel recognizes that Respondent uses the disputed domain names to intentionally attract Internet users for commercial gain, by creating a likelihood of confusion with Complainant’s BMW trademark, since it is clearly possible for Internet users to end up at Respondent’s websites while searching for Complainant’s products and services.
Previous Panels have ruled that “a likelihood of confusion is presumed, and such confusion will inevitably result in the diversion of Internet traffic from Complainant’s site to Respondent’s site” (E, Inc. v. Triple E Holdings Limited,WIPO Case No. D2006-1095 and L'oreal SA v. 张容容, LinChaoJie, Guangxi NanNing IDEA Business Planning Co., Ltd,WIPO Case No. D2010-1318).
Additionally, a quick trademark search would have revealed to Respondent the existence of Complainant’s trademark. If there were a Respondent’s failure to do so, this would be a contributory factor to its bad faith (Lancôme Parfums et Beauté & Cie, L’Oréal v. 10 Selling,WIPO Case No. D2008-0226).
Accordingly, the Panel concludes that the disputed domain names were registered and are being used in bad faith. 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 Complainant.
Gabriel F. Leonardos
Sole Panelist
Date: August 12, 2015
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