The Complainant is Bayerische Motoren Werke AG of Munich, Germany, represented by Kelly IP, LLP, United States of America ("U.S.").
The Respondent is Yang Rongdai, Yangrongdai of Guangzhou, Guangdong, China. 2. The Domain Name and Registrar
The disputed domain name is registered with HiChina Zhicheng Technology Ltd. (the "Registrar"). 3. Procedural History
The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the "Center") on September 13, 2017. On September 13, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 14, 2017, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. On September 15, 2017, the Center transmitted an email in English and Chinese regarding the language of the proceeding. The Complainant requested that English be the language of the proceeding on the same day. The Respondent did not comment on the language of the proceeding by the specified due date.
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 and 4, the Center formally notified the Respondent in English and Chinese of the Complaint, and the proceedings commenced on September 22, 2017. In accordance with the Rules, paragraph 5, the due date for Response was October 12, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on October 13, 2017.
The Center appointed Jonathan Agmon as the sole panelist in this matter on October 19, 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, Bayerische Motoren Werke AG ("BMW") is a German multinational company and manufacturer of automobiles and motorcycles, headquartered in Munich. The Complainant's products are manufactured at 30 sites in 14 countries on four continents. The Complainant employs more than 124,000 employees worldwide.
The Complainant has produced and sold more than 1,400,000 automobiles and motorcycles under its BMW mark in each year from 2011 to 2015 and over 2,002,000 in 2016. The Complainant also enjoys high revenues from sales under its BMW trademarks. In 2016, the Complainant had a worldwide revenue of EUR 96 billion. The Complainant has for many years offered with its automobiles navigation software and systems under the BMW mark.
The Complainant is the owner of numerous trademark registrations for the mark BMW. For example: German Registration No. 410579, with the registration date of November 15, 1929; European Union Trade Mark ("EUTM") Registration No. 000091835, with the registration date of February 25, 2000; U.S. Registration No. 0611,710, with the registration date of September 6, 1955; U.S. Registration No. 2,816,178, with the registration date of February 24, 2004; and more.
The Complainant is also the owner of several domain names with its BMW trademarks, for example: , and .
Among its products, the Complainant is offering navigation software, systems and activations codes for navigation software under the BMW marks, including the Complainant's registered mark BMW CONNECTEDDRIVE, U.S. Registration No. 4,127,310, registered on April 17, 2012, covering on-board computer hardware, software and display monitors for automotive navigation systems and EUTM Registration No. 000091835 for the mark BMW in block letters, registered on February 25, 2000, covering products in International Classes 9 and 12, including computer software.
The disputed domain name was registered on January 16, 2016.
The disputed domain name previously resolved to a website selling products under the Complainant's trademark. Currently, the disputed domain name is inactive. 5. Parties' Contentions A. Complainant
The Complainant argues that the disputed domain name is confusingly similar to the Complainant's famous and registered mark BMW because it contains the Complainant's mark in its entirety.
The Complainant argues that the Respondent started using the disputed domain name long after the Complainant began using its mark and did so due to the international reputation it has acquired in the mark BMW.
The Complainant further argues that the Respondent uses the disputed domain name to offer counterfeit products and activation codes to its navigation software products and misleads Internet users to think that the origin of the products is with the Complainant.
The Complainant also argues that the Respondent is not known under the disputed domain name and is not authorized by the Complainant to use the disputed domain name, which is associated with the Complainant.
The Complainant further argues that the fame it has acquired in the BMW marks makes it impossible for the Respondent to be associated with the disputed domain name.
The Complainant claims that the Respondent registered and used the disputed domain name in bad faith.
For all of the above reasons, the Complainant requests the transfer of the disputed domain name. B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings
6.1. Language of the Proceeding
Paragraph 11 of the Rules provides that:
"(a) Unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding."
The language of the Registration Agreement for the disputed domain name is Chinese, as confirmed by the Registrar in its verification email to the Center of September 14, 2017.
The Complainant requested that the language of the proceeding be English.
The Respondent did not respond.
The Panel cites the following with approval:
"Thus, the general rule is that the parties may agree on the language of the administrative proceeding. In the absence of this agreement, the language of the Registration Agreement shall dictate the language of the proceeding. However, the Panel has the discretion to decide otherwise having regard to the circumstances of the case. The Panel's discretion must be exercised judicially in the spirit of fairness and justice to both parties taking into consideration matters such as command of the language, time and costs. It is important that the language finally decided by the Panel for the proceeding is not prejudicial to either one of the parties in his or her abilities to articulate the arguments for the case." (Groupe Auchan v. xmxzl,WIPO Case No. DCC2006-0004).
The Panel finds that in the present case, the following should be taken into consideration upon deciding on the language of the proceeding:
(i) The disputed domain name consists of Latin letters, rather than Chinese characters;
(ii) The Respondent used the English language in the website under the disputed domain name;
(iii) The Complainant may be unduly disadvantaged by having to conduct the proceeding in the Chinese language;
(iii) The Respondent did not object to the Complainant's request that English be the language of the proceeding.
Upon considering the above, the Panel determines that English be the language of the proceeding.
6.2. Substantive Issues A. Identical or Confusingly Similar
Paragraph 4(a)(i) of the Policy requires the Complainant to show that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.
A registered trademark provides a clear indication that the rights in the mark shown on the trademark certificate belong to its respective owner. The Complainant is the owner of numerous trademark registrations for the BMW mark. For example: German Registration No. 410579, with the registration date of November 15, 1929; EUTM Registration No. 000091835, with the registration date of February 25, 2000; U.S. Registration No. 611,710, with the registration date of September 6, 1955; U.S. Registration No. 2,816,178, with the registration date of February 24, 2004; and more.
The disputed domain name integrates the Complainant's BMW trademark in its entirety. The disputed domain name and the Complainant's trademark differ in the addition of the component "navipro".
The additional component "navipro" does not serve sufficiently to distinguish or differentiate the disputed domain name from the Complainant's trademark. The term "navipro" is comprised of two abbreviations: "navi", which stands for the word "navigation", and "pro", which stands for the word professional. These abbreviations are descriptive terms for navigation services and are also connected to the Complainant and its field of business of marketing navigation software in connection with its automobile products. Previous UDRP panels have ruled that the mere addition of a descriptive element does not serve to avoid a finding of confusing similarity between the domain name and the registered trademark: "The only difference between the Disputed Domain Name and the trademark JACK WOLFSKIN is the addition of a suffix 'jackets'. This is directly descriptive of the goods of the Complainant. In line with established practice of past UDRP panels, the Panel accepts the Complainant's submission that the additional word 'jacket' does not assist to distinguish the Disputed Domain Name from the Complainant's trademark JACK WOLFSKIN" (Jack Wolfskin Ausrüstung für Draussen GmbH & Co. KGaA v. Huang Yan Jin,WIPO Case No. D2012-0128; Jack Wolfskin Ausrüstung für Draussen GmbH & Co. KGaA v. lin feifang,WIPO Case No. D2012-1042). See also Bayerische Motoren Werke AG v. RC a/k/a Sami Salem,WIPO Case No. D2012-0366; Bayerische Motoren Werke AG v. Sabri Hammad,WIPO Case No. D2007-0675; and Bayerische Motoren Werke AG v. (This Domain is For Sale) Joshuathan Investments, Inc.,WIPO Case No. D2002-0787.
The addition of the generic Top-Level Domain ("gTLD") ".com" to the disputed domain name does not avoid confusing similarity (see F. Hoffmann-La Roche AG v. Macalve e-dominios S.A.,WIPO Case No. D2006-0451, and Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003). The gTLD ".com" iswithout significance in the present case since the use of a TLD is technically required to operate a domain name.
Consequently, the Panel finds that the Complainant has shown that the disputed domain name is confusingly similar to a trademark in which the Complainant has rights. B. Rights or Legitimate Interests
Once the Complainant establishes a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name, the burden of production shifts to the Respondent to show that it has rights or legitimate interests in respect to the disputed domain name. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0"), section 2.1.
In the present case, the Complainant has demonstrated prima facie that the Respondent lacks rights or legitimate interests in respect of the disputed domain name and the Respondent has failed to assert any such rights or legitimate interests.
The Panel finds that the Complainant has established a prima facie case in this regard, inter alia, due to the fact that the Complainant has not licensed or otherwise permitted the Respondent to use the Complainant's trademarks or a variation thereof and the evidence presented indicates that the Respondent is not engaged in a bona fide offering of goods or services. Notably, the goods previously for sale on the Respondent's website, while clearly unauthorized by the Complainant, seek to take unfair advantage of the Complainant's trademark.
The Respondent has not submitted any Response to the Complaint and did not provide any explanation or evidence to show any rights or legitimate interests in the disputed domain name sufficient to rebut the Complainant's prima facie case. Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name C. Registered and Used in Bad Faith
The Complainant must show that the Respondent registered and is using the disputed domain name in bad faith (Policy, paragraph 4(a)(iii)). Paragraph 4(b) of the Policy provides circumstances that may evidence bad faith under paragraph 4(a)(iii) of the Policy.
The Complainant has submitted evidence, which shows that the Respondent registered the disputed domain name long after the Complainant registered its trademark. According to the evidence filed by the Complainant, the Complainant has owned a registration for the BMW trademark since the year 1917. In view of the evidence filed by the Complainant, and the widespread use of the BMW trademarks, it is suggestive of the Respondent's bad faith in these particular circumstances that the trademark, owned by the Complainant, was registered long before the registration of the disputed domain name (Sanofi-Aventis v. Abigail Wallace,WIPO Case No. D2009-0735).
Furthermore, the disputed domain name includes the Complainant's trademark in its entirety with the term "navipro". Previous UDRP panels ruled that "a likelihood of confusion is presumed, and such confusion will inevitably result in the diversion of Internet traffic from the Complainant's site to the Respondent's site" (see E, Inc v. Triple E Holdings Limited,WIPO Case No. D2006-1095). To this end, prior UDRP panels have established that attracting Internet traffic by using a domain name that is identical or confusingly similar to a registered trademark may be evidence of bad faith under paragraph 4(b)(iv) of the UDRP.
The Respondent has been using the disputed domain name to promote the sale of goods bearing the Complainant's mark, while using the Complainant's name and logo mark on the website under the disputed domain name. The evidence provided by the Complainant shows that the Respondent has also been offering what appear to be counterfeit navigation software systems for the Complainant's automobiles as well as unauthorized activation codes for the Complainant's navigation software systems. The evidence also shows that the Respondent is using the disputed domain name to promote similar or identical goods to the goods being offered by the Complainant alongside goods of unrelated third parties. The Respondent's behavior is clear evidence that the Respondent registered and is using the disputed domain name with knowledge of the Complainant and the Complainant's trademark, and indicates that the Respondent's primary intent with respect to the disputed domain name is to trade off the value of these. Such actions by the Respondent constitute clear indications of bad faith registration and use of the disputed domain name. See Herbalife International, Inc. v. Surinder S. Farmaha,WIPO Case No. D2005-0765, stating that "the registration of a domain name with the knowledge of the Complainant's trademark registration amounts to bad faith," The Panel also finds that the Respondent's attempt to attract, for commercial gain, Internet users to its website with the intent to creating a likelihood of confusion with the Complainant's trademarks and its affiliation with the Respondent's website falls under paragraph 4(b)(iv) of the Policy.
Based on the evidence presented to the Panel, including the registration of the disputed domain name long after the registration of the Complainant's marks, the confusing similarity between the disputed domain name and the Complainant's mark and the Respondent's use of the disputed domain name, the Panel draws the inference that the disputed domain name was registered and is being used in bad faith.
Accordingly, having regard to the circumstances of this particular case, the Panel finds that the Complainant has met its burden under 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 disputed domain name be transferred to the Complainant.
Jonathan Agmon
Sole Panelist
Date: October 30, 2017
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