The Complainant is Bayerische Motoren Werke AG of Munich, Germany, represented by Kelly IP, LLP, United States of America (“United States”).
The Respondent is Domain Administrator, See PrivacyG of Phoenix, Arizona, United States / Chris Pointon of Congleton, United Kingdom of Great Britain and Northern Ireland (“United Kingdom”). 2. The Domain Names and Registrar
The disputed domain names , , and are registered with NameSilo, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 23, 2018. On May 23, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On May 23, 2018, 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 the Complainant on May 25, 2018 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 May 30, 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 June 6, 2018. In accordance with the Rules, paragraph 5, the due date for Response was June 26, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 27, 2018.
The Center appointed Alistair Payne as the sole panelist in this matter on July 3, 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 German head quartered Complainant manufactures and sells automobiles and motorbikes worldwide under the BMW trade mark and has done so since 1917. It operates its business through a very substantial international network of dealers and through a range of international portal websites and country specific websites, including its websites located at the domain names and and . It offers the members of its authorised dealer network proprietary diagnostic systems (comprised of hardware and software) for the maintenance, repair, servicing, and programming of BMW automobiles and maintains various trade mark registrations in class 9 for diagnostic software and hardware and related products. It owns numerous trade mark registrations worldwide for its BMW trade mark, including, in particular, United States trade mark registration 0611710 for the mark BMW in block letters, first used in commerce February 1949, filed on March 10, 1954 and registered on September 6, 1955. It also owns the United States trade mark INPA which is used in relation to the Complainant’s diagnostic software and is registered under number 5296554, was first used on January 1, 2010 and was registered on September 26 2017. The Complainant also offers diagnostic tools to its dealer network under the marks BMW GT1 and BMW DIS.
The disputed domain names were registered as follows:
(i) was registered on June 18, 2011;
(ii) was registered on August 10, 2010;
(iii) was registered on June 18, 2011.
All of the disputed domain names resolve to commercial websites that advertise and/or offer what the Complainant alleges are unauthorised, counterfeit “BMW” diagnostic software products which directly compete with the Complainant’s own offering of its diagnostic software. 5. Parties’ Contentions A. Complainant
The Complainant submits that it owns registered trade mark rights as set out above and that each of the disputed domain names wholly contains its BMW mark. It says that each of the disputed domain names is confusingly similar to its mark because they each contain the Complainant’s mark in its entirety. The degree of confusion is only exacerbated says the Complainant as a consequence of the Complainant’s use in each of the disputed domain names respectively of the words “inpa”, “dis” and “gt1”. These says the Complainant are each marks that the Complainant uses in relation to its proprietary diagnostic software systems. It notes that INPA is a registered trade mark of the Complainant as set out above and is used in relation to diagnostic software offered by the Complainant to its authorised dealers and the BMW GT1 and BMW DIS marks are also used by the Complainant in relation to its diagnostic systems software and tools.
The Complainant asserts that the Respondent is not and has not been commonly known by the disputed domain names and in view of the degree of fame attaching to the Complainant’s BMW mark could not be known by the disputed domain names. It says that there is no evidence on the record, including the WhoIs information, to demonstrate that the Respondent is commonly known by the disputed domain names. In addition, the Respondent is not a licensee of the Complainant and neither is it authorised to use the Complainant’s marks, including its BMW mark.
The Complainant says that the Respondent’s registration and use of each of the disputed domain names for a commercial website advertising/offering unauthorized, counterfeit “BMW” products and in the case of also in order to generate advertising pay-per-click commissions through a link leading to other products, does not constitute a bona fide offering of goods or services nor a legitimate noncommercial or fair use under the Policy. It says that the Respondent’s offer of BMW products on its websites constitutes passing-off and alone constitutes sufficient grounds to find that the Respondent has no legitimate interest in each of the disputed domain names. The Complainant further says that the Respondent’s advertising/offering of unauthorized, counterfeit, products unfairly competes with the Complainant.
The Complainant submits that there is overwhelming evidence that the Respondent registered the disputed domain names in bad faith with knowledge of the Complainant’s rights in its BMW mark, considering the fame of the Complainant’s BMW mark and the Respondent’s use of the disputed domain names to advertise/offer unauthorized, counterfeit “BMW” products.
It then asserts that the Respondent’s registration and use of the disputed domain names constitute bad faith under paragraph 4(b)(iv) of the Policy because the Respondent uses the disputed domain names to intentionally attract, for commercial gain, Internet users by creating a likelihood of confusion with the Complainant’s famous BMW mark as to the source, sponsorship, affiliation, and/or endorsement of the disputed domain names, the Respondent’s website, and the products advertised, or offered on it.
The Complainant also says that the Respondent’s registration and use of the disputed domain names constitutes bad faith under paragraph 4(b)(iii) of the Policy because the Respondent disrupts the Complainant’s business and unfairly competes with the Complainant by using the disputed domain names to advertise, or to offer unauthorised, counterfeit, and/or competing products.
Finally, argues the Complainant, the Respondent’s registration of three disputed domain names containing the Complainant’s BMW mark constitutes a bad faith pattern of conduct under the Policy and that considering the degree of fame attaching to the BMW mark the Respondent must have been aware of it upon the registration of each of the disputed domain names. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Identical or Confusingly Similar
The Complainant has demonstrated that it owns United States registered trade mark 0611710 for BMW that was registered many decades prior to each of the disputed domain names. The Panel acknowledges the evidence provided by the Complainant of the very significant goodwill and reputation attaching to the Complainant’s BMW mark consistent with the decisions of past panels in cases concerning the Complainant’s BMW word mark (for example see the recent decision in Bayerische Motoren Werke AG v. Domains by Proxy, LLC / Alfred Kolinz, bmwupdate, WIPO Case No. D2017-2450).
Each of the disputed domain names wholly contains the Complainant’s BMW mark and on a side-by-side comparison the Panel finds that the Complainant’s trade mark is recognizable within each disputed domain name. See section 1.7 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”). The additional elements of each of the disputed domain names, namely “inpa”, “dis” and “gt1” respectively, do not prevent a finding of confusing similarity. See section 1.8 of WIPO Overview 3.0: “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.” As a result, the Panel finds that each of the disputed domain names are confusingly similar to the Complainant’s BMW mark and that the Complaint therefore succeeds under this element of the Policy. B. Rights or Legitimate Interests
The Panel accepts, as asserted by the Complainant, that the Respondent is not and has not been commonly known by the disputed domain names and in view of the degree of fame attaching to the Complainant’s BMW mark could not have been known by the disputed domain names. The Complainant has submitted that there is no evidence on the record, including the WhoIs information, to demonstrate that the Respondent is commonly known by the disputed domain names. In addition, the Complainant has confirmed that the Respondent is not a licensee of the Complainant and neither is it authorised to use the Complainant’s marks, including its BMW mark.
The Panel finds, as asserted by the Complainant, that the Respondent’s registration and use of each of the disputed domain names for a commercial website advertising/offering unauthorized, counterfeit “BMW” products and in the case of also in order to generate other product sales or advertising pay-per-click commissions, does not constitute a bona fide offering of goods or services, as further described under Part C below. Nor is this conduct a legitimate, noncommercial, or fair use under the Policy. In the case of each of the disputed domain names there is no apparent bona fide use of the Complainant’s mark and accordingly the Panel finds that the Respondent has no rights or legitimate interests in each of the disputed domain names and that the Complaint also succeeds under this element of the Policy. C. Registered and Used in Bad Faith
The disputed domain names were registered between August 2010 and June 2011. The Respondent clearly knew of the Complainant’s BMW mark at the time of registration of each of the disputed domain names. Not only was the Complainant’s mark extremely well-known by 2010, but the Respondent set about creating websites to which each of the disputed domain names resolves that feature the Complainant’s mark and refer to the Complainant’s respective diagnostic software products. The Complainant has provided evidence that the additional elements of each of the disputed domain names, namely “inpa”, “dis” and “gt1” respectively, are each marks used by the Complainant in relation to BMW diagnostic software products and in this regard the Panel notes that the Complainant even has a United States trade mark registration for INPA as set out above. In these circumstances the additional elements in each of the disputed domain are very likely to heighten the likelihood of confusion for Internet users because they each relate to the Complainant’s own products of the same name.
The Panel notes that the Respondent has not challenged the Complainant’s characterization of the Complainant’s products as being unauthorised or fake. Under paragraph 4(b)(iv) of the Policy there is deemed evidence of registration and use of a domain name in bad faith where it is found that the Respondent has intentionally attempted to attract Internet users for commercial gain to its website by creating a likelihood of confusion as to source, sponsorship, affiliation or endorsement. The Respondent in this case has used each of the disputed domain names to confuse Internet users into thinking that the Respondent has some affiliation or connection with the Complainant such that it is authorised or at the least has some arrangement with the Complainant that enables it to sell BMW branded diagnostic products suitable for BMW vehicles. Internet users who are confused in this way and are diverted to the Respondent’s website at each of the disputed domain names are likely to think that the products being promoted have been authorised or approved by the Complainant, or that the site is endorsed by the Complainant, when this is not the case. The Complainant submits that it has no such relationship with the Respondent and the Panel therefore finds that the Respondent’s conduct in confusing and diverting Internet users in this way is therefore in bad faith.
Further, the Panel finds that the Respondent’s registration and use of the disputed domain name constitutes bad faith under paragraph 4 (b)(iii) of the Policy because in using each of the disputed domain names to resolve to a website on which it is selling unauthorised or fake BMW marked products or to sell third party products, the Respondent is disrupting the Complainant’s business and unfairly competing with the Complainant.
Accordingly, the Panel finds that each of the disputed domain names was registered and has been used in bad faith and the Complaint also succeeds under this element 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 names, , , and be transferred to the Complainant.
Alistair Payne
Sole Panelist
Date: July 15, 2018
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