The Complainant is Bayerische Motoren Werke AG of Munich, Germany, represented by Kelly IP, LLP, United States of America (“United States”).
The Respondent is Perfect Privacy, LLC of Jacksonville, Florida, United States / Codesoft Technologies of Surprise, Arizona, United States. 2. The Domain Name and Registrar
The disputed domain name is registered with R (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 24, 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 24, 2018, 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 May 28, 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 June 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 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 5, 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.
The disputed domain name was registered on March 14, 2017 and resolves to a commercial website that advertises and/or offers what the Complainant alleges are unauthorised, counterfeit “BMW” diagnostic products. 5. Parties’ Contentions A. Complainant
The Complainant submits that it owns registered trade mark rights as set out above and that the disputed domain name wholly contains its BMW mark. It says that the disputed domain name is confusingly similar to its mark because it contains the Complainant’s mark in its entirety combined with the words “code” and “soft,” which can are either generic or descriptive terms and do not distinguish the disputed domain name. In addition, it says that the terms “code” and “soft” have an obvious connection to the software offered by the Complainant under its BMW mark which only serves to heighten the degree of confusing similarity of the disputed domain name to the Complainant’s BMW mark. The Complainant submits that combining the Complainant’s BMW mark with the Respondent’s “Codesoft” name falsely communicates that the Respondent’s website is an authorized BMW website, especially because the disputed domain name mimics the naming conventions commonly and widely used by the Complainant’s authorised dealers.
The Complainant asserts that the Respondent is not and has not been commonly known by the disputed domain name and in view of the degree of fame attaching to the Complainant’s BMW mark could not be known by the disputed domain name. 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 name. 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.
It says that the Respondent’s registration and use of the disputed domain name for a commercial website advertising/offering unauthorized, counterfeit “BMW” products does not constitute a bona fide offering of goods or services nor a legitimate noncommercial or fair use under the Policy and alone constitutes sufficient grounds to find that the Respondent has no legitimate interest in the disputed domain name. 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 name 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 name to advertise/offer unauthorized, counterfeit “BMW” products.
It then asserts that the Respondent’s registration and use of the disputed domain name constitute bad faith under paragraph 4(b)(iv) of the Policy because the Respondent uses the disputed domain name 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 name, 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 name 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 name to advertise or offer unauthorised, counterfeit, and/or competing products. 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 061170 for BMW that was registered many decades prior to the disputed domain name. 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).
The disputed domain name wholly contains the Complainant’s BMW mark. It also contains after the BMW mark, the words “code” and “soft” or, if read together, the term “codesoft”. On a side-by-side comparison, the Panel finds that the Complainant’s trade mark is recognizable within the 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”). Moreover, the additional words “code” and “soft” do not prevent a finding of confusing similarity. See section 1.8 of the 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 the disputed domain name is confusingly similar to the Complainant’s BMW mark and the Complaint 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 name and in view of the degree of fame attaching to the Complainant’s BMW mark could not have been known by the disputed domain name. 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 name. 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 the disputed domain name for a commercial website advertising/offering unauthorized, counterfeit “BMW” products, as further described under Part C below, does not constitute a bona fide offering of goods or services, nor a legitimate noncommercial or fair use under the Policy. This is not a bona fide or legitimate use of the Complainant’s mark and accordingly the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name and that the Complaint also succeeds under this element of the Policy. C. Registered and Used in Bad Faith
The disputed domain name was registered on March 14, 2017. The Respondent clearly knew of the Complainant’s BMW mark at this time as it set about creating a website, to which the disputed domain name resolves, that features the Complainant’s mark and logo and attempts to misrepresent itself as being endorsed by or affiliated with the Complainant in order to sell what the Complainant asserts are fake or counterfeit “BMW” diagnostic hardware and coding solution tools. Indeed, the words “code” and “soft” in the disputed domain name, which could be seen as relating to software, could heighten the likelihood of confusion for Internet users seeking the Complainant’s software and coding solution tools.
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 the disputed domain name to confuse Internet users into thinking that the Respondent has some affiliation or connection with the Complainant such that it is authorised to sell BMW branded diagnostic hardware and software. Internet users who are confused in this way and are diverted to the Respondent’s website to which the disputed domain name resolves are likely to think that the products being promoted have been authorised or approved by the Complainant when this is not the case. The Complainant submits that it has no relationship with the Respondent and 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 the disputed domain name to resolve to a website on which it is selling unauthorised or fake BMW marked products, the Respondent is disrupting the Complainant’s business and unfairly competing with the Complainant.
Accordingly, the Panel finds that the disputed domain name 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 name be transferred to the Complainant.
Alistair Payne
Sole Panelist
Date: July 15, 2018
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