The Complainant is Bayerische Motoren Werke AG of Munich, Germany, represented by Kelly IP, LLP, United States of America (“United States”).
The Respondent is Contact Privacy Inc. Customer 0126592991 of Toronto, Ontario, Canada / Damir Gasparlin of Candian, Texas, United States. 2. The Domain Name and Registrar
The disputed domain name (the “Domain Name”) is registered with Tucows Inc. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 30, 2017. On March 30, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On March 30, 2017, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on April 7, 2017 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on April 12, 2017.
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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on April 20, 2017. In accordance with the Rules, paragraph 5, the due date for Response was May 10, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 11, 2017.
The Center appointed Mathias Lilleengen as the sole panelist in this matter on May 17, 2017. 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 manufactures, sells and distributes automobiles and motorcycles. The Complainant owns the trademark, service mark, and trade name BMW. It has continuously used BMW as a trademark and service mark since 1917. Under the BMW mark, the Complainant also provides numerous services including maintenance and repair services, financing, leasing, insurance, and warranty services, among others. The Complainant uses and licenses its BMW mark on a wide variety of automobile and motorcycle parts and accessories and collateral products.
The Complainant owns numerous registrations for the BMW trademark and variations of it in more than 140 countries around the world. The earliest registration for the BMW mark is in Germany, registered in 1917. The Complainant owns numerous registrations for the BMW mark in the United States, including registration No. 611710 for the mark BMW in block letters, first used in commerce February 1949, filed March 10, 1954, issued September 6, 1955, covering automobiles and motorcycles in International Class 12.
At the time of filing of the Complaint, also at the time of drafting this decision, the Domain Name resolves to an active web page that advertises and offers unauthorized, counterfeit “BMW” automobile and motorcycle parts and accessories including pedals and footrests, floor mats and liners, lights, brakes, and wheels. 5. Parties’ Contentions A. Complainant
The Complainant provides trademark registrations, and submits that its trademark is well known. The Complainant argues that the Domain Name is confusingly similar to the Complainant’s trademark. The Domain Name incorporates the Complainant’s trademark in its entirety, in combination with the descriptive terms “cheap” and “parts”. These additions do not distinguish the Domain Name from the Complainant’s BMW mark.
The Complainant argues further that the Respondent is not affiliated or related to the Complainant in any way, or licensed or otherwise authorized to use the BMW trademark. The Respondent is not using the Domain Name in connection with any bona fide offering of goods or services. The Respondent uses the Domain Name for a commercial website that advertises/offers unauthorized, counterfeit, and/or competing vehicle parts and that prominently displays the Complainant’s BMW Logo. This does not constitute a bona
fide offering of goods or services nor a legitimate noncommercial or fair use.
As to bad faith, the Complainant argues that the Respondent must have been aware of the Complainant’s world famous trademark at the time of the registration of the Domain Name. Further, the Respondent uses the Domain Name to intentionally attract, for commercial gain, Internet users by creating a likelihood of confusion with Complainant’s famous and registered BMW mark as to the source, sponsorship, affiliation, and/or endorsement of Respondent’s website and the products advertised/offered therein. Use of a trademark-related domain name to advertise and/or offer unauthorized, counterfeit, and/or competing products constitutes bad faith under the UDRP. The Respondent’s registration and use of the Domain Name constitute bad faith because the Respondent disrupts the Complainant’s business and unfairly competes with the Complainant by using the Domain Name to advertise and/or offer unauthorized, counterfeit, and/or competing product. Also pointing to bad faith, the Respondent’s website features pay-per-click advertisements for various commercial websites including competitive automobile-related websites, from which the Respondent is likely to receive pay-per-click commissions. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Identical or Confusingly Similar
The Complainant has established that it has rights in the trademark BMW.
The test for confusing similarity involves the comparison between the trademark and the Domain Name. In this case, the Domain Name consists of the Complainant’s trademark BMW sandwiched in between the terms “cheap” and “parts” with a hyphen between each of these terms and the Complainant’s trademark. This addition of descriptive terms does not dispel any confusing similarity. On the contrary, it adds to the confusion.
For the purpose of assessing confusing similarity under paragraph 4(a)(i) of the Policy, it is permissible for the Panel to ignore the generic Top-Level Domain (“gTLD”) “.com”.
The Panel finds that the Domain Name is confusingly similar to a trademark in which the Complainant has rights in accordance with paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
The Complainant has made unrebutted assertions that it has not granted any authorization to the Respondent to register a domain name containing its trademark or otherwise make use of its mark. Based on the evidence, the Respondent is not affiliated or related to the Complainant in any way, and the Respondent is not using the Domain Name in connection with any bona fide offering of goods or services. The Respondent uses the Domain Name for a commercial website that offers unauthorized, counterfeit, and/or competing vehicle parts. The website displays the Complainant’s BMW logo. This is not a bona fide offering of goods or services nor a legitimate noncommercial or fair use.
There is no evidence on the record to show that the Respondent is generally known by the Domain Name.
The Panel finds that the Complainant has made out an unrebutted prima facie case. Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name in accordance with paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
The Panel finds that the Respondent must have been aware of the Complainant’s trademark and its business when the Respondent registered the Domain Name.
The Panel finds that on the balance of probabilities the Respondent registered and holds the Domain Name with the intention of confusing Internet users into believing that the Domain Name is associated with the Complainant, or otherwise disrupting its business. The use of the Domain Name to advertise and/or offer unauthorized, counterfeit, and/or competing products constitutes bad faith under UDRP Policy, in particular knowing that the Respondent is likely to receive pay-per-click commissions and other revenue from the website.
For the reasons set out above, the Panel concludes that the Domain Name was registered and is being used in bad faith, within the meaning of the 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.
Mathias Lilleengen
Sole Panelist
Date: May 31, 2017
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