The Complainant is Bayerische Motoren Werke AG of Munich, Germany, represented by Kelly IP, LLP, United States of America.
The Respondent is Patrick White of Huntsville, Alabama, United States of America (“United States” or “U.S.”), represented by The Law Offices of Steven C. Vondran, P.C., United States. 2. The Domain Names and Registrar
The disputed domain names and are registered with GoD, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 12, 2018. On January 15, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On January 16, 2018, 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.
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 of the Complaint, and the proceedings commenced on January 18, 2018. In accordance with the Rules, paragraph 5, the due date for Response was February 7, 2018. After a request from the Respondent, the Center extended the due date for the Response to February 11, 2018, in accordance with paragraph 5(b) of the Rules. The Response was filed with the Center on February 11, 2018. Subsequent to the filing of the Complaint and the Response the parties filed supplementary submissions; the Complainant on February 16, 2018, the Respondent on February 19, 2018.
The Center appointed Zoltán Takács as the sole panelist in this matter on February 22, 2018. 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, predominantly known as “BMW” is one of the most successful manufacturers of automobiles and motorcycles in the world.
BMW’s products and components are manufactured at 30 sites in 14 countries, including the United States. BMW currently has over three thousand authorized dealers worldwide, including many in the United States.
The Complainant owns numerous trademark registrations throughout the world consisting of or comprising BMW.
Among others, the Complainant owns the US Trademark Registration No. 0611710 for the word mark BMW, first used on October 5, 1917 and registered on September 6, 1955 for automobiles and motorcycles of Class 12 of the Nice Agreement Concerning the International Classification of Goods and Services for the Purpose of the Registration of Marks.
The Complainant also owns and uses numerous BMW formative domain names for its international, region and country specific websites, e.g., BMW’s website for U.S. consumers is located at the domain name registered since May 14, 1995 and its online store for U.S. customers at the domain name registered since January 11, 2011.
The disputed domain name was registered on February 21, 2017 while the disputed domain name was registered on October 9, 2014.
The Respondent uses the domain name to redirect Internet users to its “www.” website which among others advertises and offers used cars manufactured by BMW but also by its competitors including ACURA, LAND ROVER, MERCEDES and FORD, as well as financial advertisement related services thereto. 5. Parties’ Contentions A. Complainant
The Complainant contends that the disputed domain names and are confusingly similar to its famous BMW trademark because both contain the Complainant’s BMW trademark in its entirety and are combined with additional geographic and descriptive terms “Huntsville”, “USA” and “search” which is not sufficient to distinguish them from its BMW trademark.
The Complainant alleges that the Respondent has no rights or legitimate interests in respect of the disputed domain names since its unable to rely of any of the circumstances set out in paragraphs 4(c)(i), (ii) or (iii) of the Policy.
The Complainant claims that the Respondent has registered and is using the disputed domain names in bad faith for several reasons.
- First, the Respondent has registered and uses the disputed domain names to intentionally attract, for commercial gain, Internet users to his website by creating a likelihood of confusion with the Complainant and its famous BMW trademark as to the source, sponsorship, affiliation, and/or endorsement of the Respondent’s website and the directly competing products and services advertised and offered therein.
- Second, the Respondent’s registration and use of the disputed domain names constitute bad faith under paragraph 4(b)(iii) of the Policy because the Respondent disrupts the Complainant’s business by using the disputed domain names to advertise and/or offer products and services directly competing with those of the Complainant.
- Third, the Respondent’s registration of two domain names containing its BMW trademark constitutes a bad faith pattern under paragraph 4(b)(ii) of the Policy.
- Finally, given the fame of the Complainant’s BMW mark and using the disputed domain names for advertising competing automotive-related products and services it is evident that the Respondent registered the disputed domain names with knowledge of the Complainant’s rights in the its BMW mark.
On February 16, 2018 the Complainant submitted to the Center new exhibits showing use of the disputed domain names following filing of the Complaint.
Downloads dated February 12 and 13, 2018 from the website under the disputed domain name to which the other disputed domain name is redirected show the Respondent identifying himself as a BMW Huntsville broker operating under the business name BMWHuntsville from Huntsville specializing in, but not limited to BMW.
The website under the contains links with articles concerning a number of vehicle brands other than BMW, namely Mercedes-Benz, Land Rover and Tesla. Under the link titled BMWHuntsville Broker – “Be Strategic” there is information that the Respondent “also offers services to dealers to better manage their advertising budget via precision customer targeting using Facebook”. B. Respondent
The Respondent contends that while the Complainant argues that its BMW trademark and the disputed domain names are confusingly similar, that alone is not ground for a claim of infringement or dilution or grounds to cancel a pre-existing domain name registration.
The Respondent claims that the Complainant has not submitted any significant evidence that its BMW mark is deserving of a global monopoly of protection in every top-level domain that may bear the letters “BMW” as well as that there is no likelihood of confusion between the two Parties’ use of the domain names at issue. The Respondent submits that websites under the disputed domain names clearly show the use of a disclaimer to inform and educate buyers that BMW and the Respondent are not connected.
The Respondent argues that the Complainant cannot show that he lacks legitimate rights in the disputed domain names.
Regarding the disputed domain name , the Respondent submits that he in fact lives in Huntsville, and is in process of brokering cars there and providing legitimate services for local clients, while the other disputed domain name, is a “search” and informational tool for people looking form services of a car broker who may help them find the right vehicle they are looking for.
The Respondent also contends that the Complainant cannot show any bad faith registration indication applying to unique facts of this case. The Respondent states that he has legitimate needs in acquiring these domain which he purchase one and three years ago, respectively, and the website is currently providing information services.
The Respondent requests that the Panel make a finding regarding reverse domain name hijacking pursuant to paragraph 15(e) of the Rules.
In response to the Complainant’s supplemental filing of February 16, 2018 the Respondent submitted its supplemental filing dated February 19, 2018. The Respondent attached his business license to conduct business in the City of Huntsville, Alabama, and claims to have received “a call from an owner of a BMW dealership (possibly at the behestof Complainant in this case) asking him if he wanted to sell his domain. We consider this complaint to be reverse domain hijacking”. Preliminary Procedural Issues A. Language of the proceedings
The language of this administrative proceeding is English, that being the language of the Registration Agreement. B. Consolidation of Multiple Domain Names
According to paragraph 3(c) of the Rules “a UDRP complaint can be filed against more than one domain name [a multiple domain name complaint] provided all domains are owned by the same domain-name holder”. Both disputed domain names are owned by individual named Patrick White and the Panel finds that the Complainant’s filing of this multiple domain name Complaint is consistent with the Rules. C. Unsolicited Supplemental Filings of the Parties
Subsequent to filing of the Complaint and the Response and prior to the Panel appointment, both the Complainant and the Respondent filed unsolicited supplemental filings, the Complainant on February 16, 2018 and the Respondent on February 19, 2018, respectively.
Paragraph 12 of the Rules allows a panel in its discretion to either request or allow supplemental filings from either party provided they are treated fairly and the proceeding is conducted expeditiously. Applying these principles the Panel accepted both supplemental filings. 6. Discussion and Findings
In order to succeed on the Complaint, a Complainant must evidence each of the three elements required by paragraph 4(a) of the Policy, namely that;
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights;
(ii) the respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
Under paragraph 4(a)(i) of the Policy, there are two requirements which the Complainant must establish, first that it has rights in a trademark or service mark, and second that the disputed domain name is identical or confusingly similar to the trademark or service mark.
It has been a consensus view among UDRP panels that if the Complainant owns a trademark, then it generally satisfies the threshold requirement of having trademark rights.
The Complainant produced adequate evidence that it holds registered rights in the trademark BMW, and for the purpose of this proceeding, the Panel establishes that the Complainant’s U.S. Trademark registration No. 0611710 for the word mark BMW satisfies the requirement of having trademark rights for the purpose of the Policy.
Having determined that the Complainant has trademark rights in the BMW mark, the Panel next assessed whether the disputed domain names and are identical or confusingly similar to the BMW trademark of the Complainant.
According to section 1.2 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), the first element of the UDRP serves essentially as a standing requirement.
According to section 1.7 of the WIPO Overview 3.0, the standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between the complainant’s trademark and the disputed domain name. This test typically involves a side-by-side comparison of the disputed domain name and the textual components of the relevant trademark to assess whether the mark is recognizable within the disputed domain name, with the addition of common, dictionary, descriptive, or negative terms typically being regarded as insufficient to prevent threshold Internet user confusion.
According to section 1.11.1 of the WIPO Overview 3.0, the applicable Top Level Domain (“TLD”) in a domain name (e.g., “.com”, “.club”, “.nyc”) is viewed as a standard registration requirement and as such is disregarded under the first element confusingly similar test.
The disputed domain names contain the Complainant’s BMW trademark in its entirety. The applicable gTLD suffix in the disputed domain names, “.com”, as well as geographical and descriptive terms “Huntsville”, “USA” and “search” should, in relation to this administrative proceeding, be disregarded.
On the basis of facts and circumstance discussed above, the Panel finds that the disputed domain names and are confusingly similar to the BMW trademark of the Complainant and that the requirement of paragraph 4(a)(i) of the Policy is satisfied. B. Rights or Legitimate Interests
Under paragraph 4(c) of the Policy, a respondent may demonstrate its rights or legitimate interests in a domain name by showing any of the following circumstances, in particular but without limitation:
(i) its use of, or demonstrable preparation to use the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods and services;
(ii) it has been commonly known by the domain name;
(iii) it is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert customers or to tarnish the trademark or service mark at issue.
The Complainant has submitted extensive and sufficient evidence that it holds registered rights in the mark BMW, one of the most recognized trademarks in the world.
The Complainant has never authorized the Respondent to use its BMW trademark in any way, and the Complainant’s prior rights in the BMW trademark long preceded the date of registration of the disputed domain names nor has he been commonly known by the domain names.
In support of his rights and legitimate interests in the disputed domain names, the Respondent argues that he has real and legitimate need for the domain names at issue to accurately advertise his services. In relation to the disputed domain name , the Respondent claims that the fact that he lives in Huntsville and references it in the disputed domain name is needed. Furthermore, not allowing him to obtain and own a domain name that accurately describes what he does is akin to not allowing him to work in his chosen field.
The Panel finds these assertions do not assist the Respondent for purposes of the Policy.
There is nothing to suggest that using the Complainant’s BMW trademark without any authorization by incorporating the mark into the disputed domain names is necessary for the Respondent to conduct his business. As a matter of fact, the Respondent is essentially using the disputed domain names to advertise and/or offer not only vehicles manufactured by the Complainant but also those of the Complainant’s competitors as well as competing automobile financing services and there has been consensus among UDRP panels that competing activities do not provide rights or legitimate interests under UDRP.
As to the matter of his potential rights and legitimate interests to the other disputed domain name at issue, , the Respondent did not provide convincing arguments. However, it is the Respondent who asserts in his response that he obtained the two disputed domain names “to try to enhance his online search engine marketing efforts” which can’t establish rights and legitimate interests in and to the disputed domain names, based on the use to which he has made of them.
In view of the Panel, the Respondent’s use of the disputed domain name to redirect Internet users to his website and advertise and offer vehicle related products and services competing with those of the Complainant does not constitute a bona fide offering of goods or services nor a legitimate noncommercial fair use under the UDRP.
The Panel finds that the Respondent has no rights or legitimate interests in the disputed domain names in accordance with paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy lists a number of factors which, if found by the panel to be present, shall be evidence of registration and use of a domain name in bad faith. This non-exclusive list includes:
“(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location.”
As a result of lengthy use, worldwide advertising and recognition the BMW mark undisputedly ranks among the leading brands in the world carrying strong consumer acceptance and exceptional value.
The Respondent identifies himself as an auto broker from Huntsville who operates under the business name BMWHuntsville specialized in, but not limited to BMW. As stated by the Respondent on his website to which the other disputed domain name is redirected: “I chose BMW automobiles due to my enthusiasm for the brands attention to the driving experience and quality”.
The Respondent is using the disputed domain names to advertise and/or offer not only vehicles manufactured by the Complainant but also those of the Complainant’s competitors as well as competing automobile financing and advertisement services. Out of all relevant automobile brands he is doing business with, the Respondent chose BMW. On the basis of facts and circumstances summarized above, the Panel finds conceivable that the Respondent choose to incorporate the famous BMW trademark of the Complainant into the disputed domain names with intent to capitalize on the BMW trademark recognition and value through directing Internet traffic to his websites.
In his response, the Respondent submitted screenshots from his website including a disclaimer that BMW and the Respondent are not connected or affiliated, with a link to the BMW’s website. Since these screenshots do not indicate the time they were made, the Panel exercised its rights in line with paragraphs 10 and 12 of the Rules and undertook limited factual research to obtain information about the Respondent’s use of the domain name prior to filing of the Complaint.
The Panel consulted the Internet Archive and was able to recover three snapshots of the Respondent’s website predating the filing of the Complaint. None of the snapshots of the Respondent’s website dated October 3 and 23, 2016 and July 8, 2017 include any disclaimer notice. The Panel finds it fair to assume that the Respondent added disclaimers to his website after the Complainant filed its Complaint, which does not support the Respondent’s claim of use of a clear and honest disclaimer. In any event, according to section 3.7 of the WIPO Overview 3.0, where the overall circumstances of a case point to the Respondent’s bad faith, the mere existence of a disclaimer cannot cure such bad faith.
On the basis of facts and matters summarized above the Panel finds that the Complainant has established the circumstances set out in paragraph 4(b)(iv) of the Policy, namely that the Respondent has intentionally attempted to attract, for commercial gain, Internet users to his websites by creating a likelihood of confusion with the Complainant’s BMW trademark and that paragraph 4(a)(iii) of the Policy is satisfied. 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 the Complainant.
Taking into account that the Complainant succeeded with its Complaint, the Respondent’s request for finding Reverse Domain Name Hijacking is rejected.
Zoltán Takács
Sole Panelist
Date: March 8, 2018
Full & Egal Universal Law Academy