The Complainant is Bayerische Motoren Werke AG of Munich, Germany, represented by Kelly IP, LLP, United States of America (“United States”).
The Respondent is Hao Luc of Corona, California, United States. 2. The Domain Names and Registrar
The disputed domain names , , and are registered with GoD, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 12, 2018. On July 13, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On July 13, 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 July 19, 2018. In accordance with the Rules, paragraph 5, the due date for Response was August 8, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 9, 2018.
The Center appointed Manuel Moreno-Torres as the sole panelist in this matter on August 13, 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, Bayerische Motoren Werke AG, is a German corporation and one of the most successful manufacturers of automobiles and motorcycles in the world. The Complainant’s products and components are manufactured at 30 sites in 14 countries on four continents, including in the United States, and the Complainant has more than 129,000 employees worldwide.
The Complainant is the owner of the German trademark registration for BMW number 221388, filed on October 5, 1917 and registered on December 10, 1917.
The Complainant is the owner, between many others, of the following registrations in the United States:
a. Registration No. 0611710 for the mark BMW in block letters, first used on October 5, 1917, first used in commerce in February 1949, filed on March 10, 1954, registered on September 6, 1955, covering automobiles and motorcycles in International Class 12.
b. Registration No. 0613465 for the mark BMW and Design, first used on October 5, 1917, first used in commerce in February 1949, filed on March 10, 1954, registered on October 4, 1955, covering automobiles, motorcycles, and related parts in International Class 12.
The disputed domain name was registered on May 21, 2011 and the disputed domain names , and were registered on May 29, 2012.
The disputed domain names have been used for pay-per-click (“PPC”) websites provided by the registrar at very least during 2014. Later the disputed domain names have resolved to a “coming soon” page. 5. Parties’ Contentions A. Complainant
The Complainant alleges that the disputed domain names are confusingly similar to its registered BMW trademark because each contains the Complainant’s mark in its entirety.
The disputed domain names are also confusingly similar to the Complainant’s BMW mark because they contain the Complainant’s mark combined with additional terms, namely, “ofbuenapark”, “mpg”, “ev”, “electric”, and the letter “i”. The Complainant asserts that previous UDRP panels have consistently held that combining a mark with geographic, descriptive terms, and/or additional letters renders the domain name confusingly similar to that mark.
Further the disputed domain names are comprised of the Complainant’s BMW mark and terms that relate to the Complainant’s business. In these situations the confusing similarity of the disputed domain names is heightened, and Internet users encountering the disputed domain names will likely believe that the disputed domain names are associated with the Complainant.
With regard to the second element, the Complainant contends that the Respondent has no rights or legitimate interests in respect of the disputed domain names. Thus, the Respondent is not and has not been commonly known by the disputed domain names nor has been licensed or otherwise authorized to use the Complainant’s BMW mark.
Moreover, the Complainant asserts that the Respondent has no legitimate interest since the use of the disputed domain names for PPC websites with competing links constitutes evidence that the Respondent has no legitimate interest in the disputed domain names. In addition, the “coming soon” websites displayed in the corresponding websites of the disputed domain names, is analogous to non-use or passive holding and does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use. The Complainant produces evidence of such uses both the PPC links pages and the “coming soon” websites.
Finally, the Complainant asserts that the disputed domain names were registered and are being used in bad faith. The findings for such a conclusion a varied. Firstly, the Respondent was aware of the existence and worldwide reputation of the BMW trademark and the Complainant’s activities. The Respondent’s previous work experience reinforce such a conclusion. The Complainant states that the Respondent is an individual that has worked for several authorized BMW dealerships in various locations in California. Secondly, the Respondent’s registration and use of the disputed domain names constitute bad faith under UDRP 4(b)(iv) because the Respondent uses the disputed domain names to intentionally attract Internet users by creating a likelihood of confusion with the Complainant’s BMW mark as to the source, sponsorship, affiliation, and/or endorsement of the Respondent’s activities. Thirdly, the Respondent’s registration and use of the disputed domain names constitute bad faith under UDRP 4(b)(iii) because the Respondent disrupts the Complainant’s business by using the disputed domain names to compete with the Complainant for Internet traffic, by interfering with the Complainant’s ability to control use of its registered BMW mark, and by using the disputed domain names for PPC websites with competing links.
Moreover, the Complainant alleges that the Respondent’s registration of the four disputed domain names containing the Complainant’s BMW mark constitutes a bad faith pattern under UDRP 4(b)(ii) and the Respondent’s passive holding of the disputed domain names constitutes bad faith under prior UDRP decisions. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
In order for the Panel to decide to grant the remedy of transfer of the disputed domain name to the
Complainant, it is necessary that the Complainant proves, as required by paragraph 4(a) of the Policy, that:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the
Complainant has rights;
(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.
There are no exceptional circumstances within paragraph 5(e) of the Rules so as to prevent this Panel from determining the dispute based upon the Complaint, notwithstanding the failure of the Respondent to lodge a response. Under paragraph 14(a) of the Rules in the event of such a “default” the Panel is still required “to proceed with a decision on the complaint”, whilst under paragraph 14(b) it “shall draw such inferences there from as it considers appropriate”. This dispute resolution procedure is accepted by the domain name registrant as a condition of registration. Therefore, a registrant should not gain any evidentiary benefit from its failure to participate. A. Identical or Confusingly Similar
The Complainant has made continuous use of its registered and incontestable marks since 1917. The Panel is satisfied that the Complainant has rights in the BMW trademark.
The addition of a descriptive term such as “mpg” (miles per gallon), “ev” (electric vehicle), “electric” or the letter “i” (BMW’s “i” mark) does not serve to avoid a finding of confusing similarity. Likewise, such a conclusion can be met when combining BMW with a geographic term “ofbuenapark”.
Previous UDRP panels have decided that “essential” or “virtual” identity is sufficient to meet the first element. In this respect, La Caixa D’Estalvis I Pensions de Barcelona v. Molina Georgesen,WIPO Case No. D2006-1615. Therefore, the Panel accepts the submission of the Complainant that the addition of descriptive and geographical terms to the Complainant’s BMW trademark to form the disputed domain names , , and is insignificant and consequently the disputed domain names are confusingly similar to the Complainant’s trademark.
The Panel, therefore, concludes that the Complainant has satisfied the requirement of paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
Pursuant to paragraph 4(a)(ii) of the Policy, the Panel finds that the Complainant has made a prima facie showing that the Respondent does not have rights or legitimate interests in the disputed domain names. As such, the Respondent is not and has not been commonly known by the disputed domain names nor has been licensed or otherwise authorized to use the Complainant’s BMW mark.
The Panel also notes that earlier use of the disputed domain names to host PPC websites with competing links does not provide rights or legitimate interests. Similarly, the Panel is of the opinion that the “coming soon” websites recently displayed in the corresponding websites of the disputed domain names is tantamount to non-use or passive holding and does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use.
According to the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 2.1.: “[W]here a complainant makes out 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.” However the Respondent did not file an answer to the Complaint. Thus, the Respondent did not come forward with such appropriate allegation or evidence before the Panel.
The Complainant has therefore demonstrated that the Respondent lacks rights or legitimate interests in the disputed domain names to the satisfaction of the Policy, paragraph 4. C. Registered and Used in Bad Faith
The BMW mark enjoys substantial fame as a result of extensive and long use and advertising. As such BMW is a well-known trademark for the purpose of the UDRP. See BMW v. Anthony Edwards,WIPO Case No. D2008-1624; BMW v. RC,WIPO Case No. D2012-0124; BMW v. Ryan G Foo, PPA Media Services,WIPO Case No. D2015-0213. The addition of the terms “mpg”, “ev”, “electric” or “i” evokes the services offered by the Complainant and associated with its marks and heighten the inference of the Respondent’s knowledge of the BMW mark. Besides the Complainant has produced evidence of previous work experience of the Respondent as an authorized BMW dealer. Accordingly, it is reasonable to conclude that the Respondent was familiar with the mark and what it stands for when registering the disputed domain names.
Besides, bad faith use and registration also have been established under paragraph 4(b)(iv) of the Policy, which provides that it shall be evidence of bad faith use and registration if the Respondent “intentionally attempted to attract, for commercial gain, Internet users to [its] 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 [its] web site or location or of a product or service on [its] web site or location”. Here, the automatically generated PPC links on the Respondent’s website refer to competitors of the Complainant as the Panel has verified. Therefore, the Panel concludes that the registration and use of the disputed domain names were in bad faith.
The Panel also notes that such findings have been met in previous UDRP cases. As such, BMW v. Sabri Hammad,WIPO Case No. D2007-0675 where the Panel held that the respondent’s use of the domain name for a PPC website constitutes bad faith because “Complainant’s trademarks are demonstrated to be internationally famous when characterized by the word BMW, and the website operated by Respondent creates a likelihood of confusion in relation to the goods or services to which links occur, or creates a likelihood that the website is sponsored by Complainant or is in some way affiliated with Complainant, which is not true.”.
The Panel looks at how the disputed domain names are being used. Currently the four disputed domain names resolve to “coming soon” websites. In these circumstances registration and use in bad faith may also be found according to the principles established at Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003 in case of “passive holding”.
Upon the above mentioned, the Complainant has established the third 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.
Manuel Moreno-Torres
Sole Panelist
Date: August 16, 2018
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