The Complainant is Bayerische Motoren Werke AG of Munich, Germany, represented by Kelly IP, LLP, United States of America.
The Respondent is Jose Fernando, Jose Fernando of Cariacica, Brazil. 2. The Domain Name and Registrar
The disputed domain name (the “Domain Name”) is registered with D, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 29, 2018. On May 30, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On May 31, 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 June 1, 2018. In accordance with the Rules, paragraph 5, the due date for Response was June 21, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 22, 2018.
The Center appointed Gareth Dickson as the sole panelist in this matter on June 27, 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 a manufacturer of cars and motorcycles. The Complainant is the owner of numerous trade mark registrations for BMW around the world, including in Brazil where the Respondent is located. Among the registrations owned by the Complainant in Brazil is Registration No. 829328173 for the word mark BMW, which was filed on August 30, 2007 and was registered in Brazil on December 29, 2009, covering financial services, insurance services, and transport services in International Class 36 (the “Mark”).
The Respondent registered the Domain Name on April 15, 2018. The term “financeiras” is the Portuguese word for the English word “financial”. The Domain Name has been used to offer loan and credit facilities on websites which make use of the BWM sign and, latterly, to offer pay-per-click links for financial and automobile services. 5. Parties’ Contentions A. Complainant
The Complainant contends that the Domain Name is confusingly similar to its famous BMW trade mark because it contains that trade mark in its entirety. It points to Bayerische Motoren Werke AG v. Perfect Privacy, LLC / Alexandre Antonio / Edivaldo Ferreira,WIPO Case No. D2017-1473, where the domain names and were held to be confusingly similar to BMW. It adds that the term “financeiras” does not distinguish the Domain Name from the BMW mark since it is a generic or descriptive term: indeed, it submits that the inclusion of “financeiras” in the Domain Name heightens the confusing similarity of the Domain Name to the Mark because such term relates directly to the Complainant’s business and specifically imitates its subsidiary BMW Financeira, whose address in Brazil is very similar to that used on the website accessed via the Domain Name.
The Complainant also argues that the Respondent has used the Domain Name to fraudulently impersonate BMW Financeira and to solicit or phish for consumers’ financial information. It submits that the Respondent currently uses the Domain Name for pay-per-click websites which constitutes further evidence that the Respondent’s activities do not constitute a bona fide offering of goods or services or noncommercial fair use.
The Complainant has also asserted that the Respondent is not and has not been commonly known by the Domain Name, nor is it a licensee of the Complainant or otherwise authorized to use the Complainant’s BMW mark.
The Complainant alleges that the Respondent has used the Domain Name in bad faith to intentionally attract, for commercial gain, Internet users by creating a likelihood of confusion with the Complainant’s BMW trade marks as to the source, sponsorship, affiliation, and/or endorsement of the Respondent’s associated websites and the services/products offered or advertised therein. The Complainant also submits that the Respondent’s use of the Domain Name is unfairly disrupting the business of the Complainant. It contends that the Respondent’s registration of the Domain Name must have been in bad faith given: the longstanding and worldwide fame of the BMW trade mark; the Respondent’s decision to adopt within the Domain Name the name of a subsidiary of the Complainant in the Respondent’s own country; and the use on the website of a postal address that so closely resembles that of the same subsidiary. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
Under paragraph 4(a) of the Policy, the Complainant bears the burden of proving that:
(i) the Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights;
(ii) the Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) the Domain Name has been registered and is being used in bad faith.
These criteria are cumulative. The failure of the Complainant to prove any one of them means the Complaint must be denied. A. Identical or Confusingly Similar
The Panel accepts that the Complainant is the owner of, and therefore has rights in, the Mark.
The Panel also accepts that the Domain Name is confusingly similar to the Mark. In particular, BMW is instantly recognisable as the dominant and distinctive element of the Domain Name and neither the addition of the term “financeiras”, which is the Portuguese word for the descriptive term “financial”, nor the use of the generic Top-Level Domain suffix “.com”, alters that conclusion in any way. Section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) permits a finding of confusing similarity in circumstances such as this, stating that: “Where the relevant trade mark 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.”
Accordingly, the Panel finds that the Domain Name is confusingly similar to a trade mark in which the Complainant has rights. B. Rights or Legitimate Interests
Although a complainant is required to demonstrate that a respondent has no rights or legitimate interests in respect of the domain name, as explained in section 2.1 of the WIPO Overview 3.0, the consensus view of previous UDRP panels is that where a complainant establishes a prima facie case that the respondent lacks rights or legitimate interests the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element.
In the current proceeding, the Complainant has established its prima facie case and the Respondent has failed to respond to the Complaint. In particular, the Complainant alleges that the Respondent has not been licensed or authorised to use the BMW mark, whether in the Domain Name or otherwise, and there is no evidence that the Respondent has acquired any common law rights to use BMW or that it is commonly known as “BMW”. Although the Complainant has alleged that the Respondent is engaged in phishing, the evidence is insufficient to support that allegation and the Panel makes no finding in respect of it. Nonetheless, the evidence of the Respondent’s bad faith use of the Domain Name, as set out below, supports the Complainant’s arguments that the Respondent has no rights or legitimate interests in respect of the Domain Name.
The Panel therefore finds that the Respondent has no rights or legitimate interests in respect of the Domain Name. C. Registered and Used in Bad Faith
The Panel accepts that the Domain Name was registered due to the clear reference it makes to the Mark. On the evidence before the Panel, “bmw” does not have any meaning aside from the Complainant’s trade marks nor has any argument for the independent selection of the Domain Name been made by the Respondent. As a result, the Panel must conclude that the Respondent knew of the Complainant’s rights in the globally recognised BMW trade mark when it registered the Domain Name, and that it also knew that it had not been authorised to use that mark when it registered the Domain Name. In the circumstances of this case, the Panel therefore finds that the Respondent’s registration of the Domain Name was in bad faith.
The Panel also finds that the Domain Name is being used in bad faith. The use of the world famous BMW together with “financeiras” in the Domain Name, and the use on the associated website of a postal address that is inexplicably similar to that of the Complainant’s subsidiary BMW Financeiras, strongly suggests that the use of BMW is in bad faith. Furthermore, although the evidence submitted by the Complainant does not substantiate the claim that the Respondent is engaged in phishing, the preponderance of evidence is sufficient for the Panel to find that the Respondent has attempted to impersonate the Complainant’s subsidiary in Brazil and has done so for its own commercial profit. Such use of the Mark is inconsistent with the Complainant’s exclusive rights in it, and amounts to a bad faith use of the Domain Name.
As a result of the above, the Panel finds that the Domain Name was registered and is being used in bad faith. 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.
Gareth Dickson
Sole Panelist
Date: July 12, 2018
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