The Complainant is Bayerische Motoren Werke AG of Munich, Germany, represented by Kelly IP, LLP, United States of America (“United States” or “US”).
The Respondent is Data Protected of Toronto, Ontario, Canada / L&M Foreign Cars of Brooklyn, New York, United States, internally represented. 2. The Domain Name and Registrar
The disputed domain name is registered with Tucows Inc. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 3, 2018. On August 6, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 7, 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 proceeding commenced on August 15, 2018. In accordance with the Rules, paragraph 5, the due date for Response was September 4, 2018. Upon request of the Respondent, the due date for Response was extended to September 8, 2018, in accordance with the Rules paragraph 5(b). Upon request of the Respondent, the due date for Response was further extended to September 18, 2018 in accordance with the Rules, paragraph 5(e). The Response was filed with the Center on September 18, 2018.
On September 25, 2018, the Center received an unsolicited supplemental reply submission from the Complainant.
The Center appointed Sebastian M.W. Hughes as the sole panelist in this matter on September 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.
On September 28, 2018, the Center received an unsolicited supplemental reply submission from the Respondent. 4. Factual Background A. Complainant
The Complainant is a company incorporated in Germany and the manufacturer of automobiles and motorcycles under the well-known trade mark BMW (the “Trade Mark”) since 1917. The Complainant is the owner of numerous registrations in jurisdictions around the world for the Trade Mark, including international registration number 173813, with a registration date of January 7, 1954; and US registration number 0611710, with a registration date of September 6, 1955. B. Respondent
The Respondent is a car repair business located in Brooklyn, New York in the United States. C. The Disputed Domain Name
The disputed domain name was registered on February 13, 2007. D. Use of the Disputed Domain Name
The Respondent has been using the disputed domain name since 2013 in respect of a website promoting the Respondent’s car repair business (the “Website”). 5. Parties’ Contentions A. Complainant
The Complainant contends that the disputed domain name is identical or confusingly similar to the Trade Mark, the Respondent has no rights or legitimate interests in respect of the disputed domain name, and the disputed domain name has been registered and is being used in bad faith. B. Respondent
The Respondent accepts that the disputed domain name is identical or confusingly similar to the Trade Mark, but contends it has rights or legitimate interests in respect of the disputed domain name, and the disputed domain name has not been registered and used in bad faith.
The Respondent contends as follows.
The Respondent is one of the oldest European car repair shop facilities in Brooklyn, New York, operating from the same location since 1969, and is well known as an independent European car repair shop, specializing in BMW, VW, Audi, Mini Cooper, Land Rover and Mercedes.
The Website does not make use of any of the Complainant’s word and logo trade marks and has no links to the Complainant’s own websites. The Respondent has its own unique mark, look and feel throughout the Website which make it clear to the average consumer that it is independent and unaffiliated with the Complainant.
The Respondent’s use of the Website amounts to fair use, in accordance with the Lanham Act and recent United States case law. 6. Discussion and Findings 6.1 Supplemental Filings
Panels have sole discretion, under paragraphs 10 and 12 of the Rules, whether to accept an unsolicited supplemental filing from either party, bearing in mind the need for procedural efficiency, and the obligation to treat each party with equality and ensure that each party has a fair opportunity to present its case. The party submitting its filing would normally need to show its relevance to the case and explain why it was unable to provide that information in the complaint or response (for example, owing to some exceptional circumstance).
Paragraph 12 of the Rules expressly provides that it is for the panel to request, in its sole discretion, any further statements or documents from the parties it may deem necessary to decide the case. Unsolicited supplemental filings are generally discouraged, unless specifically requested by the panel (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 4.6).
It is not usual practice, absent special circumstances and a satisfactory explanation from the party seeking to file supplementary submissions, for UDRP panels to allow reply or sur-reply submissions.
In the present proceeding, the Complainant has failed to address in its unsolicited reply any exceptional circumstances that would warrant the Panel exercising its discretion to allow the Complainant’s reply. The Respondent’s unsolicited supplemental filing has been filed in reply to the Complainant’s supplemental reply. The Panel further considers that it is not necessary for the Panel to take into account the parties’ reply submissions in order to fairly decide the present dispute.
In all the circumstances, the Panel therefore determines that it will not admit the Complainant’s supplemental reply and the Respondent’s supplemental reply. 6.2 Substantive Elements of the Policy
The Complainant must prove each of the three elements in paragraph 4(a) of the Policy in order to prevail. A. Identical or Confusingly Similar
The Panel finds that the Complainant has rights in the Trade Mark acquired through use and registration.
The disputed domain name incorporates the entirety of the Trade Mark (see WIPO Overview 3.0, section 1.7) together with the word “brooklyn”.
Where a relevant trade mark is recognisable within a disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) does not prevent a finding of confusing similarity under the first element (see WIPO Overview 3.0, section 1.8).
The Panel therefore finds that the disputed domain name is confusingly similar to the Trade Mark. B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides a list of non-exhaustive circumstances any of which is sufficient to demonstrate that a respondent has rights or legitimate interests in a disputed domain name:
(i) Before any notice to the respondent of the dispute, the respondent’s use of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; or
(ii) The respondent (as an individual, business, or other organization) has been commonly known by the disputed domain name even if the respondent has acquired no trade mark or service mark rights; or
(iii) The respondent is making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.
The Complainant has not authorised, licensed, or permitted the Respondent to register or use the disputed domain name or to use the Trade Mark. The Panel finds on the record that there is therefore a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name, and the burden is thus on the Respondent to produce evidence to rebut this presumption.
As a provider of car repair services relating to the Trade Mark, the Respondent must satisfy each of the following cumulative requirements in order to establish rights or legitimate interests in the disputed domain name under the Policy:
(1) The Respondent must be actually offering the Complainant’s goods or services at issue;
(2) The Respondent must be using the Website to provide only the Complainant’s trademarked goods or services;
(3) The Website must accurately and prominently disclose the Respondent’s relationship with the Complainant; and
(4) The Respondent must not try to “corner the market” in domain names that reflect the Trade Mark, (see WIPO Overview 3.0, section 2.8.1).
The Panel accepts that the Respondent has, for many years, been offering legitimate car repair services, including repair services relating to the Complainant’s cars marketed and sold under the Trade Mark. Although the Respondent is apparently not a licensed or authorised repairer of the Complainant’s vehicles, the Panel accepts that it is commonplace in the automotive repair industry for businesses to offer car repair services in respect of several different car brands; that it is not uncommon for such car repair services not to be licensed or authorised by the relevant brand owners; and that in certain circumstances such conduct might amount to a fair use of the relevant trade marks.
In the present proceeding, the Panel considers that, although the Respondent is not the Complainant’s licensed mechanic for the Brooklyn, New York area, the Respondent likely meets the first requirement listed above, in providing car repair services relating to the Complainant’s cars. There is also no evidence before the Panel to suggest that the Respondent is trying to corner the market in domain names that reflect the Trade Mark.
In providing, and promoting on the Website, car repair services relating not just to the Complainant’s cars, but also in relation to competitors of the Complainant, namely VW, Audi, Mini Cooper, Land Rover and Mercedes, the Panel finds that the Respondent has not met the second requirement listed above.
Furthermore, although the Panel accepts that the Website has its own distinctive look and feel, the Website does not accurately and prominently disclose the Respondent’s relationship with the Complainant. Accordingly, the Panel finds that the Respondent has also not met the third requirement listed above.
There has been no evidence adduced to show that the Respondent has been commonly known by the disputed domain names; and there has been no evidence adduced to show that the Respondent is making a legitimate noncommercial or fair use of the disputed domain names.
For the foregoing reasons, the Panel finds that the Respondent has failed to rebut the Complainant’s prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain names. C. Registered and Used in Bad Faith
In light of the evidence of the Respondent’s clearly commercial and unauthorised use of the Website in the manner described above, in order to promote car repair services relating not just to the Complainant’s cars, but also relating to competing brands, the Panel finds the requisite element of bad faith has been satisfied, under paragraph 4(b)(iv) of the Policy.
The Panel therefore finds that the disputed domain name has been 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 disputed domain name be transferred to the Complainant.
Sebastian M.W. Hughes
Sole Panelist
Dated: October 12, 2018
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