The Complainant is Bayerische Motoren Werke Aktiengesellschaft of Munich, Germany, represented by Bardehle Pagenberg, France.
The Respondent is Riera, Mini Club Provence of Carnous-en-Provence, France, self-represented. 2. The Domain Name and Registrar
The disputed domain name (the “Domain Name”) is registered with CSL Computer Service Langenbach GmbH dba J (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 24, 2018. On the same day, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On April 25, 2018, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Disputed Name which differed from the named Respondent and contact information in the Complaint. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amended Complaint on May 1, 2018.
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 May 4, 2018. In accordance with the Rules, paragraph 5, the due date for Response was May 24, 2018. On April 25, 2018, May 3, 2018, May 4, 2018 and May 25, 2018, the Respondent sent several email communications to the Center. The Response was filed with the Center on May 25, 2018. (Although the Response was filed one day late, the Panel subsequently accepted the Response for consideration in the proceeding.)
The Center appointed W. Scott Blackmer as the sole panelist in this matter on June 1, 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 is incorporated under German law and headquartered in Munich, Germany. It is one of the world’s largest manufacturers of automobiles and motorcycles, as well as of automotive parts and accessories. In 1994 the Complainant acquired the Rover Group, which had produced Mini automobiles since 1959. When the Complainant sold the Rover Group in 2000, the Complainant retained the MINI mark and continued to update and produce Mini automobiles. These remain popular in many countries, including France, where the Respondent is located. The Complainant also licenses the MINI mark for use on accessories and promotional items, including clothing, luggage, and toys.
The Complainant holds over 1500 trademark registrations consisting of, or incorporating, “MINI”. These include, for example, French Trademark No. 92433383 (registered September 10, 1992), European Union Trademark No. 000143909 (registered December 8, 1999), and European Union Trademark No. 000302406 (registered February 28, 2000).
According to the Registrar, the Domain Name was created on March 14, 2000 and is registered in the name of the Respondent, a limited company formed in 1992 in Marseille, France. The Respondent characterizes itself as a small business that has specialized in the repair of Mini automobiles since 1992 and sells new and used parts for every Mini model created from 1959 to the present. The Respondent says that it has operated a website for its business using the Domain Name since 1994. (Possibly the Respondent initially used a different registrar, but the record does not show registration before 2000, and screenshots before 2001 do not appear in the Internet Archive’s Wayback Machine.)
As the Respondent explains, the Respondent’s website associated with the Domain Name advertises and sells “mainly original MINI” parts and accessories, which the Respondent purchases from the Complainant’s Marseille franchises. In addition, however, the Respondent’s website sells performance and adaptable parts produced by third parties including Alta, Airtec, and Forge, which are designed to fit the various Mini, Austin, and Moke automobiles produced by Rover Group or by the Complainant since 1959. These are labelled with French abbreviations on the Respondent’s website (such as “PMT” and “ADP”) to indicate that they are performance or adaptable parts from other manufacturers and not produced by the Complainant. Used Mini parts are also sold on the website, along with a variety of products including Mini-branded clothing and accessories and some unrelated automotive tools and cleaning supplies. The website also carries news of the “Mini Club” sponsored by the Respondent, advertisements by Mini fans to sell or rent Mini automobiles in southern France, and links to the Respondent’s Facebook social media page with similar content.
The Complainant became aware in 2010 that the Domain Name was being used for a French-language website advertising the Respondent’s business and offering for sale both Mini-branded products and an array of other products. In November 2010 the Complainant’s counsel sent a cease-and-desist letter to the Respondent objecting to the use of the MINI word and design marks without permission and demanding the transfer of the Domain Name. The Respondent reportedly failed to reply to this letter and subsequent communications. The Complainant initiated this UDRP proceeding more than seven years later. 5. Parties’ Contentions A. Complainant
The Complainant asserts that the Domain Name is confusingly similar to its registered MINI trademark and that the Respondent has no permission to use the mark and otherwise lacks rights or legitimate interests in the Domain Name. The Complainant contends that the Respondent fails the accepted tests for legitimate use of a manufacturer’s name in a reseller’s domain name, as the Respondent does not clearly identify its relationship with the Complainant and sells products other than the Complainant’s.
The Complainant argues for a finding of bad faith on the ground that the Respondent was clearly aware of the well-known MINI mark and used it to mislead Internet users for commercial gain. B. Respondent
The Respondent states that it has had the Domain Name and used it for its legitimate business as a Mini repairer and reseller since 1994, before the Complainant even obtained the MINI mark. The Respondent denies any intent to mislead consumers and argues that its website clearly identifies its business and the origin of the products it sells. 6. Discussion and Findings
Paragraph 4(a) of the Policy provides that in order to divest a respondent of a disputed domain name, a complainant must demonstrate each of the following:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(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.
Under paragraph 15(a) of the Rules, “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.” A. Identical or Confusingly Similar
As in most cases, the generic Top-Level Domain “.com” is not a distinguishing feature in this instance. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.11. The second-level Domain Name incorporate the Complainant’s registered MINI mark and adds a geographic term, which does not avoid confusion as it is to be expected that the Complainant itself could sponsor a site relating to a geography in which it does business.
The first element of a UDRP complaint “functions primarily as a standing requirement” and entails “a reasoned but relatively straightforward comparison between the complainant’s trademark and the disputed domain name”. See WIPO Overview 3.0, section 1.3. The Panel concludes under this test that the Domain Name is confusingly similar to the Complainant’s registered MINI mark for purposes of the first element of the Policy. B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy gives non-exclusive examples of instances in which the Respondent may establish rights or legitimate interests in the Domain Name, by demonstrating any of the following:
(i) before any notice to it of the dispute, the Respondent’s use of, or demonstrable preparations to use, the Domain Name or a name corresponding to the Domain Name in connection with a bona fide offering of goods or services; or
(ii) that the Respondent has been commonly known by the Domain Name, even if it has acquired no trademark or service mark rights; or
(iii) the Respondent is making a legitimate noncommercial or fair use of the Domain Name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
Since a respondent in a UDRP proceeding is in the best position to assert rights or legitimate interests in a disputed domain name, it is well established that after a complainant makes a prima facie case, the burden of production on this element shifts to the respondent to come forward with relevant evidence of its rights or legitimate interests in the domain name. See WIPO Overview 3.0, section 2.1.
Here, the Complainant has established a prima facie case by demonstrating confusing similarity and denying that the Respondent had permission to use the mark, while pointing out the Respondent’s deficiencies in implying an interest in using the mark as a reseller of Mini parts. This shifts the burden to the Respondent. To make fair use of the manufacturer’s mark in a domain name, a reseller or distributor must limit it to a necessary, nominative use, avoiding inherent confusion where possible, and on the site associated with the domain name the reseller must accurately disclose its relationship (or lack thereof) with the trademark holder and refrain from selling other products on the site. See WIPO Overview 3.0, section 2.8. The Respondent in this proceeding fails to meet these conditions. The Domain Name itself does nothing to suggest it is associated with a reseller rather than the manufacturer, and the Respondent’s website does not plainly disclaim affiliation with the Complainant. Importantly, the website sells products by other manufacturers, at least some of which compete with the Complainant’s products. Simply put, it cannot be considered a fair or legitimate use of a trademark to incorporate it in a domain name intended to attract customers in order to sell them a competitor’s products. The fact that the Respondent has been using the Domain Name in this fashion for a long time does not confer legitimacy on the practice. By contrast, a domain name such as () for example, combined with a disclaimer at a related site devoted wholly to Mini products, would more likely demonstrate a reseller’s legitimate interest and a fair use of the mark.
The Panel concludes, therefore, that the Complainant prevails on the second element of the Complaint. C. Registered and Used in Bad Faith
The Policy, paragraph 4(b), furnishes a non-exhaustive list of circumstances that “shall be evidence of the registration and use of a domain name in bad faith”, including the following (in which “you” refers to the registrant of the domain name):
(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.
This is an apt description of the circumstances here. The Respondent claims to have registered the Domain Name before the Registrar shows that it was created, and before the Complainant acquired the MINI mark. This is possible if the Domain Name was first created by another registrar, but it is immaterial. The MINI trademark was held by Rover Group before it was acquired by the Complainant; it was already a well-known and long-established trademark whenever the Respondent first started using the Domain Name, deliberately referring to that mark. The Domain Name incorporates the registered MINI mark and adds a geographic term that appears to be relevant to the business of the trademark owner. The Respondent’s awareness of the trademark is reinforced by the Respondent’s website, which displays the Complainant’s design marks, includes photos of Mini cars, and advertises Mini-branded parts and accessories for sale. The Domain Name exploits the Complainant’s mark for gain, without permission and disregarding the Complainant’s trademark policies. The Respondent uses the attention it gains to advertise the products of other manufacturers as well as the Complainant’s. Despite the Respondent’s manifest, long-term interest in Mini automobiles, this conduct must be deemed bad faith within the meaning of the Policy.
The Respondent questions the Complainant’s lengthy delay in bringing this UDRP proceeding, more than seven years after sending the first legal objection. However, the Policy is designed to prevent future abuses rather than to compensate for past injuries, so panels do not normally deny belated complaints. See WIPO Overview 3.0, section 4.17. The Respondent failed to reply to the Complainant’s communications, and it assumed a risk in continuing to ignore the Complainant’s demands. In any event, the Respondent would be better advised to select a domain name that meets its business needs and satisfies the conditions outlined, for example, in WIPO Overview 3.0, section 2.8. 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.
W. Scott Blackmer
Sole Panelist
Date: June 15, 2018
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