The Complainant is Bayerische Motoren Werke AG of Munich, Germany, represented by Kelly IP, LLP, United States of America (“U.S”).
The Respondent is Jesse Roberts of Orlando, Florida, U.S. 2. The Domain Name and Registrar
The disputed domain name is registered with 101domain GRS Limited (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 23, 2018. On May 24, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 25, 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 May 29, 2018. In accordance with the Rules, paragraph 5, the due date for Response was June 18, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 21, 2018.
The Center appointed Peter Wild as the sole panelist in this matter on June 29, 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 owns the trademark MINI in relation to cars. The trademark is registered internationally, e.g. as U.S. Registration No. 2,746,570, filed May 14, 2002, covering automobiles and structural parts therefor in International Class 12, U.S. Registration No. 3,507,903, filed February 19, 2008, covering automobiles and structural parts therefor in International Class 12 and numerous additional products, U.K. Registration No. 969678, filed January 5, 1971, issued January 5, 1971, covering motor cars in International Class 12, EUTM Registration No. 004375581, issued April 25, 2006, covering retail store services and online store services for motor vehicles and related parts and accessories in International Class 35; banking services in connection with motor vehicles in International Class 36; and paints in International Class 2.
The Disputed Domain Name has been registered on October 16, 2007. Prior to the Complaint the disputed domain name resolved to a pay-per-click website featuring advertising links including links directly related to Complainant’s MINI cars and to the Complainant’s competitors. The website at the disputed domain name is currently inactive. 5. Parties’ Contentions A. Complainant
According to the Complainant, its MINI mark enjoys fame as a result of extensive and long use and advertising and the MINI mark has become one of the most recognized brands in the world, and has consistently been ranked in many top-100 lists for years including “Best Global Brands” by Interbrand and “UK Most Valuable Brands” by Brand Finance, among many others and the worldwide reputation of the MINI mark has also been recognized by a prior UDRP Panel. See BMW and Rolls-Royce Motor Cars v. Slingsby,WIPO Case No. D2015-0268. The trademark is used for cars and as an element in local dealership domain names, such as MINI dealers in Florida which include MINI of Fort Myers , Ferman MINI of Tampa Bay , MINI of Wesley Chapel , and MINI of Daytona Beach .
The Complainant claims that it had an authorized MINI dealer in Orlando, Florida (where the Respondent is located) for many years and that its MINI dealer in Orlando opened in 2002, and is now known as Orlando MINI.
According to the Complainant, as a result of these longstanding naming traditions followed by BMW’s authorized MINI dealers in the U.S. and elsewhere, consumers encountering domain names consisting of the MINI mark combined with another term such as a geographic term will believe that the corresponding website is owned and operated by an authorized MINI dealer.
Furthermore, the Complainant alleges, supported by evidence, that the Respondent offers for sale the disputed domain name as a “premium” name on the domain- marketplace website Sedo, an offer which is also displayed on the WhoIs record and that the Respondent has used disputed domain name for a pay-per-click website featuring advertising links including links directly related to the Complainant’s MINI cars (“Mini Cooper”), the Complainant’s competitors (“Ford Dealer,” “Nissan Murano”), and the Complainant’s industry (“Cars,” “Buy Cars”).
The Complainant contends that it owns registered trade mark rights as set out above in Section 4 of the Complaint and that the disputed domain contains the Complainant’s mark in its entirety combined with the geographic term “Orlando.” On its face, the disputed domain name communicates a connection to the Complainant, its famous MINI mark, and its authorized MINI dealer in Orlando rendering the disputed domain name confusingly similar to the MINI mark.
The Complainant contends that the Respondent does not have any rights or legitimate interests in the disputed domain name. The Respondent is not and has never been a licensee of the Complainant or otherwise authorized by the Complainant to use the Complainant’s MINI mark. The Respondent previously offered the disputed domain name for sell as a “premium” name on the domain-marketplace website Sedo and also used the disputed domain name for a pay-per-click website featuring advertising links including links directly related to Complainant’s MINI cars (“Mini Cooper”), Complainant’s competitors (“Ford Dealer,” “Nissan Murano”), and Complainant’s industry (“Cars,” “Buy Cars”). The Respondent’s current non-use of the disputed domain name constitutes further evidence that the Respondent does not have any legitimate interests in the disputed domain name.
The Complainant submits that there is overwhelming evidence that the Respondent registered the disputed domain name in bad faith with knowledge of the Complainant’s rights in its MINI mark, considering the fame of the Complainant’s MINI mark and the Respondent’s offer for sale of the disputed domain name which constitutes bad faith under paragraph 4(b)(iii) of the Policy. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Identical or Confusingly Similar
The Complainant’s registrations are sufficient to establish the Complainant’s rights in the MINI mark, as recognized by earlier panels, see e.g., BMW v. Portillo,WIPO Case No. D2012-1937. The disputed domain name uses this trademark as one element, combined with the geographic term “Orlando” and the generic Top-Level Domain (“gTLD”) “.com”. None of these two additional elements can have an influence on the overall impression that would diminish confusing similarity. See section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“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.” Also see section 1.11 of the WIPO Overview 3.0.
The Panel therefore holds that the first element of the Policy is met. B. Rights or Legitimate Interests
The complainant must establish a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, the respondent carries the burden of demonstrating rights or legitimate interests in the disputed domain name. If the respondent fails to do so, the complainant is deemed to have satisfied paragraph 4(a)(ii) of the UDRP.
The Respondent is not known by the disputed domain name and claims no connection with or authorization from the Complainant. The Complainant claims that it did not grant a license or any other right to use and register the disputed domain name to the Respondent. The Respondent did not comment on the Complaint.
Moreover, the Respondent’s offer for sale and use of the disputed domain name for a pay-per-click website with competing links constitute further evidence that the Respondent has no rights or legitimate interests in the disputed domain name. UDRP panels have consistently found no rights or legitimate interests in the use of trademark-related domain names for pay-per-click websites and similar websites featuring advertising/affiliate links, including in cases involving domain names comprised of the Complainant’s marks. See, e.g., BMW v. Whois Protection,WIPO Case No. D2007-1142 (no rights or legitimate interests where respondent used the domain name for a pay-per-click website); BMW v. Private Registrations,WIPO Case No. D2010-0898 (no legitimate interest where respondent used the domain name for a pay-per-click website).
With the evidence on file, this Panel is satisfied that the second element of the Policy is met. C. Registered and Used in Bad Faith
On October 16, 2007, the date of the registration of the disputed domain name, the Complainant’s domain name and trademark MINI were already registered and well-known. Given the well-known character of the Complainant’s trademark, it is inconceivable that the Respondent did not know or at least could have known with very little research of the existence of the Complainant’s earlier rights. The Respondent knew or should have known the Complainant’s earlier well-known trademark. In the circumstances of this case, the Panel finds, there is bad faith pursuant to the Policy when Respondent “knew or should have known” of Complainant’s trademark rights at the time of registration of the disputed domain name. Myer Stores Limited v. Mr. David John Singh,WIPO Case No. D2001-0763; L’Oréal v. Li Qian, Fast Hand Limited and Lisa, WIPO Case No. D2011-0868; NBC Universal Inc. v. S,WIPO Case No. D2007-0077; and Alstom v. Domain Investments LLC, WIPO Case No. D2008-0287. The Panel therefore decides that the disputed domain name was registered in bad faith.
As it is stated in WIPO Overview 3.0, section 3.5, “Particularly with respect to “automatically” generated pay-per-click links, panels have held that a respondent cannot disclaim responsibility for content appearing on the website associated with its domain name (nor would such links ipso facto vest the respondent with rights or legitimate interests). Neither the fact that such links are generated by a third party such as a registrar or auction platform (or their affiliate), nor the fact that the respondent itself may not have directly profited, would by itself prevent a finding of bad faith.”, see also SAP SE v. Domains by Proxy, LLC / Kamal Karmakar,WIPO Case No. D2016-2497, . The disputed domain name links to a website with a link farm, the links pointing to offers of competing products of the Complainant. It is also clear that the Respondent’s use of the disputed domain name creates commercial gain as a pay-per-click site. Moreover the Panel notes the disputed domain name copies the established naming system for domain names and trade mark commonly used by the Complainant’s authorized MINI dealers described above, namely, domain names comprised of the MINI mark and a geographic term identifying the dealer’s location. By using the Complainant’s established trademark as a disputed domain name, the Respondent tries to attract clients for commercial gain.
It also appears from the record that the Respondent registered the disputed domain name primarily to sell, rent, or otherwise transfer it for valuable consideration in excess of his documented out-of-pocket expenses. Such registration and use of the disputed domain name constitutes bad faith under UDRP paragraph 4(b)(i).
The fact that the disputed domain name does not currently resolve to an active website does not prevent a finding of bad faith.
For all these reasons, the Panel sees the third element of the Policy fulfilled. 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.
Peter Wild
Sole Panelist
Date: July 10, 2018
Full & Egal Universal Law Academy