The Complainant is Bayerische Motoren Werke AG of Munich, Germany, represented by Kelly IP, LLP, United States of America (“United States”).
The Respondent is Jonathan Stephens of Saginaw, Michigan, United States. 2. The Domain Name and Registrar
The disputed domain name (“Disputed Domain Name”) is registered with Hosting Concepts B.V. d/b/a Openprovider (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 17, 2018. On December 18, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On December 19, 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 December 20, 2018. In accordance with the Rules, paragraph 5, the due date for Response was January 9, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 10, 2019.
The Center appointed Jane Lambert as the sole panelist in this matter on January 18, 2019. 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 one of the world’s largest motor manufacturers. In 2017, it produced nearly 2.09 million motor cars and nearly 186,000 motor cycles under the BMW mark as well as nearly 372,000 Minis and 3,362 Rolls Royces. In that year it employed nearly 130,000 workers at 30 plants in 14 countries. It distributes its vehicles through some 3,400 authorized dealerships around the world. Its turnover in 2017 was over EUR 98 billion. It spends many millions of euros every year on advertising, sponsorship and promotion.
It has registered the initials BMW as a trade mark either simpliciter or in combination with a blue and white roundel in all the countries in which it does business. For example, the initials BMW are registered as a trade mark with the United States Patent and Trademark Office for automobiles, motorcycles, motor driven tricycles for transporting passengers and goods in class 12, registered on September 6, 1955, under registration number 0611710.
The Respondent registered the Disputed Domain Name on February 8, 2018. According to screen dumps annexed to the Complaint, he has used that Disputed Domain Name as a URL for a site advertising clothing and footwear with links to such sites as Adidas, Converse, Nike and Puma. 5. Parties’ Contentions A. Complainant
The Complainant asks for the Disputed Domain Name to be transferred to it.
It animadverts that the Disputed Domain Name incorporates the BMW mark in its entirety and that its combination with the particles “discount” and “auto parts” does nothing to distinguish the Disputed Domain Name from the Complainant’s mark. On the contrary, those words are likely to lead Internet users to believe that the Disputed Domain Name is an URL for a site that advertises or sells parts for the Complainant’s motor cars as a discount.
The Complainant discusses the circumstances in which a right or legitimate interest in the Disputed Domain Name could be claimed and contends that none applies to this case. In particular, it denies that the Respondent has been authorized, licensed or permitted to use the Disputed Domain Name.
It submits that the Respondent has used the Disputed Domain Name intentionally to attract, for commercial gain, Internet users to his web site by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of his web site or his products or services. Alternatively, the Complainant contends that the Respondent has registered the Disputed Domain Name primarily for the purpose of disrupting the Complainant’s business. Further, it argues that the registration of a domain name that incorporates a trade mark as well-known as the Complainant’s is by its very nature evidence of the registration and use of that domain name in bad faith. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
The registration agreement for the registration of the Disputed Domain Name incorporated paragraph 4(a) of the Policy:
“You are required to submit to a mandatory administrative proceeding in the event that a third party (a "complainant") asserts to the applicable Provider, in compliance with the Rules of Procedure, that
(i) your domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) you have no rights or legitimate interests in respect of the domain name; and
(iii) your domain name has been registered and is being used in bad faith.
In the administrative proceeding, the complainant must prove that each of these three elements are present.” A. Identical or Confusingly Similar
The Panel finds that the first element is present.
There is no doubt that the Disputed Domain Name incorporates the Complainant’s BMW mark in its entirety. The Disputed Domain Name is therefore similar to a trade mark in which the Complainant has rights. The Complainant is a motor manufacturer. The combination of the words “auto parts” and “discount” with the letters “bmw” suggests a site where the Complainant’s parts can be obtained at a discount. The addition of these terms does not prevent a finding of confusing similarity. B. Rights or Legitimate Interests
The Panel finds that the second element is present.
The second paragraph of section 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) states:
“While the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the often impossible task of “proving a negative”, requiring information that is often primarily within the knowledge or control of the respondent. As such, where 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. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element.”
Paragraph 4(c) of the Policy sets out a number of circumstances that can demonstrate rights or legitimate interests in the Disputed Domain Name for the purposes of paragraph 4(a)(ii). The Complainant denies that any of those applies. There is nothing in the evidence to the contrary. The Respondent had an opportunity to adduce evidence or explain why it might have rights or legitimate interests in the Disputed Domain Name and has not taken advantage of that opportunity.
In view of the extent of the Complainant’s trade mark portfolio and its volume of sales and expenditure on advertising under the BMW mark, it is hard to see how the Respondent or anyone else could trade under the BMW mark without the Complainant’s consent. Had it done so, it would have risked proceedings for trade mark infringement, passing off or some similar cause of action. C. Registered and Used in Bad Faith
The Panel finds that the third element is present.
Paragraph 4(b) of the Policy lists a number of circumstances which, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith. The fourth of those circumstances is as follows:
“by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.”
The Panel finds that the Disputed Domain Name creates a likelihood of confusion with the Complainant’s mark as to the source of discounted BMW parts. Internet users would be attracted to the Respondent’s site through the use of the Disputed Domain Name. Once on the site, users will be tempted to click the links to sites labeled “Adidas”, “Puma” or some other well-known brand for which the Respondent would expect payment or there would be some other commercial gain. It follows that the circumstances of paragraph 4(b)(iv) are present.
Paragraph 4(b) requires the Panel to treat such circumstances as evidence of the registration and use of a domain name in bad faith. That is enough to dispose of the case.
The Complainant also relies on paragraph 4(b)(iii) which applies where a respondent has registered a domain name primarily for the purpose of disrupting the business of a competitor. The Panel is not persuaded that that paragraph applies. It requires evidence of the purpose of the registration and none has been adduced.
Finally, the Panel is not persuaded that the registration and use of a well-known trade mark as a domain name without more ado necessarily betokens registration and use of a domain name 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.
Jane Lambert
Sole Panelist
Date: January 31, 2019
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