The Complainant is Bayerische Motoren Werke AG, Germany, represented by Kelly IP, LLP, United States of America.
The Respondent is Domain May Be for Sale, Check Afternic.Com, Czech Republic / Hulmiho Ukolen, Poste restante, Finland. 2. The Domain Name and Registrar
The disputed domain name is registered with Gransy, s.r.o. d/b/a (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 30, 2019. On May 31, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 4, 2019, 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 June 4, 2019 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 5, 2019.
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 11, 2019. In accordance with the Rules, paragraph 5, the due date for Response was July 1, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 3, 2019.
The Center appointed Taras Kyslyy as the sole panelist in this matter on July 8, 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 a German manufacturer of automobiles and motorcycles, which also provides maintenance and repair services, as well as consumer and dealer financing, leasing, insurance, and warranty services such as new vehicle warranties and extended warranties.
The Complainant’s products and components are manufactured in 15 countries located in four different continents.
The Complainant also owns several registrations for the BMW trademark in more than 140 countries, such as German registrations No. 221388 registered since December 10, 1917; and No. 410579, registered since November 15, 1929.
The Complainant owns the domain name , and its authorized dealer in Atlanta, Georgia owns the domain name used while operating under the trade name Global Imports BMW.
The disputed domain name was registered on May 27, 2014 and redirected to the web site of another car manufacturer Volvo at . At the time of drafting this Decision, the disputed domain name redirects to a parking web page. 5. Parties’ Contentions A. Complainant
The disputed domain name is identical or confusingly similar to the Complainant’s trademark. The disputed domain name contains the Complainant’s trademark in its entirety combined with generic and/or descriptive terms that relate to the Complainant’s business. The gTLD “.com” is irrelevant for the confusing similarity analysis. The disputed domain name corresponds to the trade name of the Complainant’s authorizes dealer and its domain name.
The Respondent has no rights or legitimate interests in the disputed domain name. The Respondent’s registration and use of the disputed domain name to redirect Internet users to a directly competing web site operated by Volvo does not constitute a bona fide offering of goods or services or noncommercial fair use. The same applies to the Respondent’s commercial use of the disputed domain name to generate advertising/pay-per-click commissions from the redirecting activity. The Respondent offers to sell the disputed domain name for the price starting at USD 500, which demonstrates that the Respondent has no legitimate interest in the disputed domain name. The Respondent is not commonly known by the disputed domain name. The Respondent is not licensee or otherwise authorized by the Complainant to use the Complainant’s trademark.
The disputed domain name was registered and is being used in bad faith. The Respondent registered the disputed domain name primarily to sell, rent or otherwise to transfer it for valuable consideration in excess of its documented out-of-pocket expenses. The Respondent disrupts Complainant’s business by using the disputed domain name for a directly competing web site. The Respondent disrupts Complainant’s business by using the disputed domain name to compete with the Complainant for Internet traffic and by interfering with the Complainant’s ability to control use of its registered trademark. The Respondent has used the disputed domain name to intentionally attract, for commercial gain, Internet users by creating likelihood of confusion with the Complainant’s famous and registered mark as to the source, sponsorship, affiliation, and/or endorsement of the disputed domain name and associated web site. The Respondent has a bad faith pattern of registering trademark-related domain names being subject of many UDRP decisions involving third party trademarks. The Respondent knew of the Complainant’s trademark rights when registering the disputed domain name. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Identical or Confusingly Similar
The Panel finds that the Complainant has rights in its registered trademark.
According to section 1.11.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (the “WIPO Overview 3.0”) the applicable gTLD in a domain name (e.g., “.com”, “.club”, “.nyc”) is viewed as a standard registration requirement and as such is disregarded under the first element confusing similarity test.
According to section 1.7 of the WIPO Overview 3.0, in cases where a domain name incorporates the entirety of a trademark the domain name will normally be considered identical or confusingly similar to that mark for purposes of UDRP standing.
The Panel finds that in the present case the disputed domain name contains the Complainant’s trademark in its entirety combined with descriptive terms that relate to the Complainant’s business and also corresponds to the Complainant’s dealer’s name.
According to 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.
Considering the above the Panel finds the disputed domain name is confusingly similar to the Complainant’s trademark, therefore, the Complainant has established its case under paragraph 4(a)(i) of the Policy.. B. Rights or Legitimate Interests
The Complainant has established prima facie that the Respondent has no rights or legitimate interests in the disputed domain name.
Furthermore, the Respondent provided no evidence that it holds a right or legitimate interest in the disputed domain name.
The Respondent is not commonly known by the disputed domain name, which could demonstrate its right or legitimate interest (see, e.g., World Natural Bodybuilding Federation, Inc. v. Daniel Jones TheDotCafe,WIPO Case No. D2008-0642).
The Complainant did not license or otherwise agree for use of its registered trademarks by the Respondent, thus no actual or contemplated bona fide or legitimate use of the disputed domain name could be reasonably claimed (see, e.g., Sportswear Company S.P.A. v. Tang Hong,WIPO Case No. D2014-1875).
According to section 2.5.3 of the WIPO Overview 3.0 a respondent’s use of a complainant’s mark to redirect users (e.g., to a competing site) would not support a claim to rights or legitimate interests. The Panel finds this applies to the present case where the disputed domain name redirected Internet users to Volvo website, which is Complainant’s competitor.
Considering the above the Panel finds the Respondent does not have rights or legitimate interests in the disputed domain name. Therefore, the Complainant has established its case under paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
At the time of the registration of the disputed domain name the Respondent knew, or at least should have known about the existence of the Complainant’s priory registered and known trademark, which confirms the bad faith (see, e.g., The Gap, Inc. v. Deng Youqian,WIPO Case No. D2009-0113).
Addition of the terms corresponding directly to the Complainant’s authorized dealer’s name suggests bad faith (see, e.g. Bayerische Motoren Werke AG v. WhoIs Agent, WhoIs Privacy Protection Service, Inc. / Jaroslaw MatulaWIPO Case No. D2016-1526).
According to section 3.1 of the WIPO Overview 3.0 bad faith under the UDRP is broadly understood to occur where a respondent takes unfair advantage of or otherwise abuses a complainant’s mark. To facilitate assessment of whether this has occurred, and bearing in mind that the burden of proof rests with the complainant, UDRP paragraph 4(b) provides that any one of the following non-exclusive scenarios constitutes evidence of a respondent’s bad faith:
(i) circumstances indicating that the respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) the respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its website 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 the respondent’s website or location or of a product or service on the respondent’s website or location.
In this regard, the Panel finds that at least the first and the fourth of the above scenarios apply to the present case confirming the Respondent’s bad faith.
Considering the above the Panel finds the disputed domain name was registered and is being used in bad faith. Therefore, the Complainant has established its case under paragraph 4(a)(iii) 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.
Taras Kyslyy
Sole Panelist
Date: July 13, 2019
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