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 0148210671 of Toronto, Ontario, Canada / Satnav Updates, Navigation Updates of Goole, United Kingdom of Great Britain and Northern Ireland (“United Kingdom”). 2. The Domain Name and Registrar
The disputed 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 September 30, 2017. On October 2, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 2, 2017, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on October 5, 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 October 6, 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 October 9, 2017. In accordance with the Rules, paragraph 5, the due date for Response was October 29, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 30, 2017.
The Center appointed Martin Michaus Romero as the sole panelist in this matter on November 9, 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 is the owner of and has common law rights in the BMW trademarks, service marks, and trade name. It has continuously used the BMW trademark and service mark since 1917. As early as 1996, the Complainant has used its BMW mark in connection with its network of websites dedicated to advertising, promoting and/or offering its automobile, motorcycles and related product and services.
The Complainant’s international portal websites include its websites located at the domain name and . Such portal websites provide information regarding the Complainant’s products and services, and allow users to select their country or region to go to the Complainant’s country‑specific or region‑specific website.
The Complainant has offered for years navigation software and systems for BMW automobiles as well as updates and activation codes (also known as FSC codes) for its navigation software through authorized dealers.
The Complainant owns several trademark registrations in Germany, European Union, and United States, among other jurisdictions:
Germany:
1) Reg. No. 221388 for BMW and design, filed on October 5, 1917, granted on December 10, 1917, in Int. Classes 7, 8, 9, 11 and 12.
2) Reg. No. 410579 for BMW (block letters), filed on February 23, 1929, granted on November 15, 1929, in Int. Classes 12 and 7.
European Union:
1) Reg. No. 000091835 for BMW (block letters), filed on April 1, 1996, issued on February 5, 2000, in Int. Classes 1, 2, 3, 4, 5, 6, 7, 8, 9, 10, 11, 12, 13, 14, 15, 16, 17, 18, 20, 21, 22, 23, 24, 25, 26, 27, 28, 29, 30, 32, 33, 34, 35, 36, 37, 38, 39, 40, 41, and 42.
2) Reg. No. 014015143 for BMW and design, filed on April 29, 2015, issued on November 23, 2015, in Int. Classes 2, 3, 4, 5, 6, 7, 8, 9, 10, 11, 12, 13, 14, 15, 16, 17, 18, 19, 20, 21, 22, 23, 24, 25, 26, 27, 28, 29, 30, 31, 32, 33, 34, 35, 36, 37, 38, 39, 40, 41, 42, 43, 44, and 45.
United States:
1) Reg. No. 611710 for BMW (block letters), first used in commerce in February 1949, filed on March 10, 1954, issued on September 6, 1955, in Int. Class 12.
2) Reg. No. 613465 for BMW and design, first used in commerce on February 1949, filed on March 10, 1954, issued on October 4, 1955, in Int. Class 12.
The Complainant is well known in Germany, the European Union, the United States for automobiles, motorcycles, computer software, transmitters, receivers and network interface devices and a broad range of products and services.
The disputed domain name was registered on May 9, 2017, long after the BMW trademark and service mark has been used in commerce and registered in different jurisdictions. The disputed domain name has resolved to a website titled “BMW Navigation Updates”, on which, inter alia, navigation software were offered for sale. 5. Parties’ Contentions A. Complainant
The Complainant states in its Complaint that the Respondent:
1) Registered the disputed domain name incorporating the well-known BMW mark without the Complainant’s knowledge or authorization.
2) Uses the disputed domain name for a commercial website selling unauthorized, counterfeit versions of the Complainant’s navigation software and activation/FSC codes.
3) Offers third parties’ software falsely labeled with the Complainant’s BMW mark, e.g., “BMW ID5&6 Video In Motion” software, that interferes with and circumvents the Complainant’s software and safety controls in its vehicles.
In its Complaint, the Complainant asserts that the disputed domain name is confusingly similar to its BMW trademark and service mark. The Respondent has no rights or legitimate interests in the disputed domain name, and the disputed domain name was registered and is used in bad faith. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
Paragraph 15(a) of the Rules instructs the Panel as to the principles the Panel is to use in determining the dispute: “A Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.” Considering that the Respondent did not reply to the Complainant’s contentions, in order to determine whether the Complainant has met its burden as stated in paragraph 4(a) of the Policy, the Panel bases its Decision on the statements and documents submitted and in accordance with the Policy and Rules.
Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following: (i) that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; (ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and (iii) that the disputed domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
The Complainant has submitted unequivocal evidence of its rights in the BMW trademark and service mark. The disputed domain name is confusingly similar to the Complainant’s BMW trademark and service mark. The disputed domain name reproduces the Complainant’s trademark and service mark BMW in its entirety, with the addition of the terms “map” and “update”, which does not dispel the confusing similarity, and the generic Top-Level Domain (“gTLD”) “.com”, which can be disregarded for the assessment of the first element of the Policy..
The Panel finds that the Complainant satisfies paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
The Respondent has not received permission or authorization to use the Complainant’s trademark or service mark. The Respondent did not reply to the Complainant’s contentions, and therefore has not provided any evidence or arguments to demonstrate anything to the contrary. In addition, the Complainant’s use of its trademark and service mark precedes the registration of the disputed domain name. It should be pointed out that the Respondent is not an individual, business or corporation known by the name “BMW” or by the disputed domain name. Furthermore, the Respondent is using the disputed domain name to sell unauthorized “BMW” products, as well as competing products bearing third parties’ trademarks, which obviously does not give rise to any rights or legitimate interests in the disputed domain name.
The Panel finds that the Complainant satisfies paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
According to the statements and documents submitted, it is clear to the Panel that the registration and the use of the disputed domain name has been in bad faith, by including the well-known BMW trademark, to intentionally attract for commercial gain Internet users; it creates a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation, and/or endorsement of the Respondent’s website and the products advertised and offered for sale therein. See paragraph 4(b)(iv) of the Policy.
As noted above, the products offered at the website to which the disputed domain name resolves include unauthorized products bearing the Complainant’s BMW trademark, as well as competing products bearing third parties’ trademarks.
The Panel finds that the Complainant satisfies 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.
Martin Michaus-Romero
Sole Panelist
Date: November 23, 2017
Full & Egal Universal Law Academy