Complainant is Bayerische Motoren Werke AG (BMW) of Munich, Germany, represented by Kelly IP, LLP, United States of America.
Respondent is Balog Sebastian of Bistrita, Romania.1 2. The Domain Names and Registrar
The disputed domain names and are registered with eNom, Inc. (the "Registrar"). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on July 20, 2017. On July 21, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On July 22, 2017, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names, which differed from the named Respondent, and contact information in the Complaint. The Center sent an email communication to Complainant on July 27, 2017 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 July 28, 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 Respondent of the Complaint, and the proceedings commenced on August 3, 2017. In accordance with the Rules, paragraph 5, the due date for Response was August 23, 2017. Respondent did not submit any response. Accordingly, the Center notified Respondent's default on August 25, 3017.
The Center appointed Roberto Bianchi as the sole panelist in this matter on September 4, 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
Complainant, a manufacturer of automobiles and motorcycles founded in 1916 and with headquarters in Munich, Germany, is well known worldwide. Under its BMW mark, Complainant manufactures, sells, and distributes automobiles and motorcycles, and provides various services including maintenance and repair services, financing, leasing, insurance, and warranty services. In addition, Complainant offers navigation software and systems for its BMW automobiles under the BMW mark and BMW-formative marks.
Complainant owns, inter alia, the following trademark registrations:
Germany:
Registration No. 221388 for the mark BMW and design, filed October 5, 1917, issued December 10, 1917, covering products in International Classes 7, 8, 9, 11, and 12 including automobiles and related parts and accessories.
Registration No. 410579 for the mark BMW in block letters, filed February 23, 1929, issued November 15, 1929, covering products in International Classes 7 and 12, including vehicles and motorcycles.
European Union:
Registration No. 000091835 for the mark BMW in block letters, filed April 1, 1996, issued February 25, 2000, covering products in International Classes 9 and 12, including software and vehicles, respectively, and various other products and services in various additional Classes.
Registration No. 014015143 for the mark BMW and design, filed April 29, 2015, issued November 23, 2015, covering products in International Class 9 for navigation, guidance, tracking, targeting and map making devices, produced in International Class 12 including vehicles, and various other products and services in various additional Classes.
United States of America:
Registration No. 611,710 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.
Registration No. 613,465 for the mark BMW and design, first used October 5, 1917, first used in commerce February 1949, filed March 10, 1954, issued October 4, 1955, covering automobiles, motorcycles, and related parts in International Class 12.
Registration No. 2,816,178 for the mark BMW, filed May 16, 2002, issued February 24, 2004, covering global positioning systems consisting primarily of computers, computer software, transmitters, receivers and network interface devices in International Class 9 and various other products and services in various additional Classes.
Registration No. 4,127,310 for the mark BMW CONNECTEDDRIVE, issued April 17, 2012, covering on-board computer hardware, software and display monitors for automotive navigation systems, and computer transmission of route-planning and travel information to the driver of a vehicle.
The disputed domain name was registered on July 24, 2015. The disputed domain name was registered on March 9, 2016. 5. Parties' Contentions A. Complainant
Complainant contends as follows:
The disputed domain names are confusingly similar to Complainant's famous and registered mark BMW because each contains Complainant's mark in its entirety. Further, the addition of the generic or descriptive terms "spot" or "cartes" does not distinguish the disputed domain names from Complainant's BMW mark. UDRP Panels have consistently held that combining a mark with a generic or descriptive term renders the domain name confusingly similar to that mark. It is well established that generic Top-Level Domains ("gTLDs") such as ".com" are irrelevant to confusing similarity analysis.
Respondent has no rights or legitimate interest in the disputed domain names for several reasons.
First, Respondent's registration and use of the disputed domain names for commercial websites advertising and/or offering unauthorized, counterfeit versions of BMW's software does not constitute a bona fide offering of goods or services nor a legitimate noncommercial or fair use under the UDRP. Respondent's advertising/offering of unauthorized, counterfeit products is alone sufficient ground to find that Respondent does not have a legitimate interest in the disputed domain names. Moreover, Respondent's advertising/offering of unauthorized, counterfeit products unfairly competes with Complainant's own offering of genuine BMW products. UDRP panels have consistently held that use of a domain name for unauthorized, counterfeit, and/or competing products demonstrates a lack of legitimate interest in the disputed domain name.
Second, Respondent's unauthorized use of Complainant's famous and registered BMW logo, its use of the disputed domain names that contain Complainant's BMW mark, and Respondent's claims to offer Complainant's products on its websites constitute passing off, in that Respondent is trying to pass off its websites as Complainant's websites or as websites affiliated with Complainant. Passing off activities have been consistently held to demonstrate a lack of legitimate interest under the UDRP.
There is no evidence on the record, including the WhoIs information, to demonstrate that Respondent is commonly known by the disputed domain names. In addition, Respondent neither is a licensee of Complainant nor is otherwise authorized to use Complainant's BMW mark. Moreover, given the fame of Complainant's BMW mark, Respondent could not be known by the disputed domain names.
Respondent's registration and use of the disputed domain names constitute bad faith under UDRP paragraph 4(b)(iv) because Respondent has used the disputed domain names 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 websites and the products advertised/offered therein.
Respondent's registration and use of the disputed domain names constitute bad faith under UDRP paragraph 4(b)(iii) because Respondent disrupts Complainant's business by using the disputed domain names to advertise and/or offer unauthorized, counterfeit versions of BMW's products and unfairly competing with BMW.
Respondent's "passing off" activities constitute further evidence of its bad faith under UDRP paragraph 4(b)(iv) and 4(b)(iii) as well as an independent ground of bad faith under prior UDRP decisions.
Respondent's registration of the disputed domain names constitutes a bad-faith pattern under UDRP paragraph 4(b)(ii) as shown by Respondent's registration of two domain names containing Complainant's BMW mark.
Finally, there is overwhelming evidence that Respondent registered the disputed domain names in bad faith with knowledge of BMW's rights in its BMW mark, given the fame of the BMW mark and Respondent's use of the disputed domain names to advertise/offer unauthorized, counterfeit versions of BMW's products. Registration of a domain name with knowledge of the trademark owner's rights has been consistently found to constitute bad faith under the UDRP. B. Respondent
Respondent did not reply to Complainant's contentions. 6. Discussion and Findings A. Identical or Confusingly Similar
By submitting printouts of the corresponding trademark databases, Complainant has shown that it owns multiple trademark registrations for the BMW mark in Germany, the European Union and the United States of America. See section 4 above. Thus, Complainant has evidenced to the satisfaction of the Panel that it owns rights in the BMW mark for purposes of Policy paragraph 4(a)(i).
The Panel notes that the disputed domain name contains the BMW mark followed by the generic/descriptive term "spot", while the disputed domain name incorporates the BMW mark after the generic/descriptive French term "cartes" (meaning "maps" or "cards" in English) as a suffix.
The Panel further notes that in both disputed domain names the relevant element is the BMW mark. It is well established that the addition in a domain name of a descriptive or geographic term to a mark generally is inapt to distinguish the resulting domain name from the mark. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0") (1.8 Is a domain name consisting of a trademark and a descriptive or geographical term confusingly similar to a complainant's trademark? Where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element. The nature of such additional term(s) may however bear on assessment of the second and third elements.")
The Panel concludes that the disputed domain names are confusingly similar to Complainant`s BMW mark. B. Rights or Legitimate Interests
Complainant contends that Respondent has used the disputed domain names and for two commercial websites selling unauthorized, counterfeit versions of BMW's navigation software and codes, and unauthorized, counterfeit versions of BMW's ISTA and E-SYS diagnostic software. Complainant contends that this use of the disputed domain names constitutes passing off, in that Respondent is trying to pass off its websites as websites belonging to, or affiliated with, Complainant. This use of the disputed domain names, says Complainant, cannot give rights or be evidence of legitimate interests in the disputed domain names. In support of these contentions Complainant provides printouts of Respondent's websites at the disputed domain names showing the prominent use of the BMW mark. Complainant further explains that following its complaints to PayPal, requesting the termination of the payment services on the websites at the disputed domain names, Respondent ceased to use the BMW mark on the websites but did not transfer the disputed domain names to Complainant. Instead, Respondent began to offer clothing on the website at one of the disputed domain names.
The Panel notes that the evidence of the case file supports Complainant's contentions. For its part, on September 14, 2017, the Panel, in exercise of its general powers under Rules, paragraph 10(a), visited both websites and found as only contents in each case a page stating, "You have reached a domain that is pending ICANN verification.", and explaining that the corresponding domain name has been suspended pending the verification of Respondent`s WhoIs data such as first name, last name and/or email address.2
Thus, based on the record the Panel finds that Respondent has used the disputed domain names either to offer counterfeit, illegitimate goods (software) under the BMW mark, or other third party goods (such as ladies' sportswear), or instead offered nothing at all. The Panel notes that in either case, this use (and lack of use) of the disputed domain names is neither a bona fide offering under Policy paragraph 4(c)(i), nor a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue, under Policy paragraph 4(c)(iii). Further, the Panel notes that, as disclosed by the Registrar of the disputed domain names, the name of Respondent is "Balog Sebastian". This means that – absent any evidence to the contrary – Respondent is not commonly known by any of the disputed domain names under Policy paragraph 4(c)(ii). In the opinion of the Panel, these facts and circumstances suffice for Complainant to make out a prima facie case that Respondent lacks rights or legitimate interests in the disputed domain names.
Considering that Respondent failed to contest any of Complainant's contentions, or to provide any explanations whatsoever for his registration and use of the disputed domain names, the Panel finds that the second requirement of the Policy is met. See WIPO Overview 3.0 (2.1 How do panels assess whether a respondent lacks rights or legitimate interests in a domain name? (…) While the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the often impossible task of "proving a negative", requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element.") C. Registered and Used in Bad Faith
Complainant has shown to the satisfaction of the Panel that its registrations for the BMW mark in, inter alia, Germany, the United States of America and the European Union, and its use of the BMW mark, predate the registration of the disputed domain names by decades. See section 4 above. In addition, the Panel recognizes –as several other prior panels– that the BMW mark is famous or well known worldwide in the field of automobiles and motorcycles.3 Further, the Panel notes that Respondent's former use of the disputed domain names included offering navigation software, presumably counterfeiting Complainant's authentic software. All these facts and circumstances strongly indicate that Respondent knew perfectly well of Complainant, its products and BMW marks, and that it targeted them at the time of registering the disputed domain names. Given the circumstances of this case, this means that the registration of the disputed domain names was in bad faith.
The Panel notes that previously, as seen in section 6.B above, Respondent has used the disputed domain names to offer counterfeit, illegitimate goods (software) under the BMW mark, and that subsequently, after Complainant complained to PayPal about Respondent's illegal use, Respondent suspended such offerings and replaced one of them by third party goods (ladies' sportswear). This means that by using the disputed domain names as shown above, Respondent has intentionally attempted to attract, for commercial gain, Internet users to his websites or other online location, by creating a likelihood of confusion with Complainant's BMW mark as to the source, sponsorship, affiliation, or endorsement of his websites or location or of a product or service on his website or location. This is a circumstance of registration and use in bad faith, pursuant to Policy paragraph 4(b)(iv).
Presently, the websites at the disputed domain names appear to be inactive. This does not mean that they are not being used in bad faith. The Panel, applying the doctrine of Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003, finds that the present absence of active use of the disputed domain name amounts to passive holding within the meaning of bad faith use under the Policy. To reach such finding to Panel has considered the following relevant circumstances:
a) Complainant's BMW mark and products are famous or well known globally;
b) Respondent has no rights or legitimate interests in the disputed domain name;
c) Respondent failed to reply to the Complaint, and to provide any explanation for his registration and use of the disputed domain names;
d) After Complainant complained to PayPal (see above), Respondent ceased to offer counterfeit software on the websites at the disputed domain names. However, Respondent continued to use one of the disputed domain names to offer third-party products (ladies' sportswear), and thus to profit from the confusion with Complainant and its mark BMW.
e) Presently, Respondent appears to contemplate no use for the disputed domain names other than profiting from the confusion with Complainant's BMW mark. However, there is no conceivable circumstance of use of the disputed domain names that would not be in prejudice of Complainant's rights in the BMW mark,
Accordingly, the third element of the Policy is 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 names, and , be transferred to Complainant.
Roberto Bianchi
Sole Panelist
Date: September 18, 2017
1 The Respondent was originally named in the Complaint as "Whoisguard Protected / Whoisguard, Inc." which was indicated to be the holder of the disputed domain name in the publicly available WhoIs database consulted by the Complainant. Further to the Center's email communication of July 27, 2017 to the Complainant, providing the registrant and contact information disclosed by the Registrar, the Complainant filed an amended Complaint that identified "Balog Sebastian" as the Respondent. The Panel therefore determines that the Respondent in this case is "Balog Sebastian".
2 See WIPO Overview 3.0 (" 4.8 May a panel perform independent research in assessing the case merits? Noting in particular the general powers of a panel articulated inter alia in paragraphs 10 and 12 of the UDRP Rules, it has been accepted that a panel may undertake limited factual research into matters of public record if it would consider such information useful to assessing the case merits and reaching a decision. This may include visiting the website linked to the disputed domain name in order to obtain more information about the respondent or its use of the domain name, consulting historical resources such as the Internet Archive in order to obtain an indication of how a domain name may have been used in the relevant past, reviewing dictionaries or encyclopedias (e.g., Wikipedia), or accessing trademark registration databases").
3 See, for instance, Bayerische Motoren Werke AG v. Whois privacy services provided by DomainProtect LLC / N.a, Vlad Chernov, WIPO Case No. D2013-0452 ("The Complainant BMW is one of the world's best known, largest and most prestigious car and motorcycle manufacturers"); see also Bayerische Motoren Werke AG v. Fundacion Private Whois, WIPO Case No. D2012-1808 ("Complainant is owner of many registrations worldwide for its famous BMW mark.")
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