The Complainant is Bayerische Motoren Werke AG, Germany, represented by Kelly IP, LLP, United States of America.
The Respondent is Registration Private, Domains By Proxy, LLC, United States of America / Jugrawute Thongsiriratna, Thailand. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 19, 2019. On August 20, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 20, 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 August 23, 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 August 26, 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 August 27, 2019. In accordance with the Rules, paragraph 5, the due date for Response was September 16, 2019. On September 16, 2019, the Center received an email from the Respondent. On September 24, 2019, the proceedings were suspended for purposes of settlement discussions between the Parties. Upon the Complainant’s request, the proceedings were reinstituted on October 31, 2019. In accordance with the Rules, paragraph 5, the due date for Response was October 5, 2018. The Respondent did not submit any formal response. Accordingly, the Center notified the Parties about the Commencement of Panel Appointment Process. The Center appointed Tuukka Airaksinen as the sole panelist in this matter on November 20, 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 the owner of the trademark BMW, used since 1917 for vehicles and related products and services. The Complainant’s sales in 2018 were in excess of 97 billion euros. The Complainant’s trademark BMW has been registered in various countries in the world, such as in Germany under No. 410579, filed on February 23, 1929, and registered on November 15, 1929. The disputed domain name was registered on June 21, 2018. 5. Parties’ Contentions A. Complainant The disputed domain name includes the Complainant’s trademark in its entirety combined with general English words “navigation” and “update”. These terms, combined with the Complainant’s trademark are not sufficient to remove the confusion between the Complainant’s trademark and the disputed domain name. The Complainant has not authorized or otherwise allowed the Respondent to use its trademark in the disputed domain names. The Respondent is not commonly known by the disputed domain name and has not rights or legitimate interests thereto. The Respondent must have been aware of the Complainant’s trademark when registering the disputed domain names. The Respondent’s website is offering unauthorized and counterfeit products bearing the Complainant’s trademark. The Respondent has intentionally misappropriated the Complainant’s trademark as a way of directing Internet users to the Respondent’s website for commercial gain. B. Respondent A part from the email of September 16, 2019 where the Respondent stated: “Hello all sir and madam No response was submitted. 6. Discussion and Findings In order to obtain the transfer of a domain name, a complainant must prove the three elements of paragraph 4(a) of the Policy, regardless of whether the respondent files a response to the complaint. The first element is that the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights. The second element a complainant must prove is that the respondent has no rights or legitimate interests in respect of the domain name. The third element a complainant must establish is that the domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar Paragraph 4(a)(i) of the Policy requires that the Complainant establish that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights. Consequently, the Complainant must prove that it has rights to a trademark, and that the disputed domain name is identical or confusingly similar to this trademark. The disputed domain name includes the Complainant’s trademark BMW in its entirety combined with the words “navigation” and “update”. These terms convey the image that the Respondent’s website is offering software updates to e.g., maps used in the Complainant’s vehicles sold under the Complainant’s trademark. These additions are therefore not sufficient to remove the similarity between the disputed domain name and the Complainant’s trademark. Accordingly, the Panel finds that the disputed domain name is similar to the Complainant’s respective trademark and hence the first element of the Policy has been fulfilled. B. Rights or Legitimate Interests Paragraph 4(a)(ii) of the Policy requires that the Complainant establish that the Respondent has no rights or legitimate interests to the disputed domain name. It is widely accepted among UDRP panels that once a Complainant has made a prima facie showing indicating the absence of the Respondent’s rights or legitimate interests in a disputed domain name the burden of production shifts to the Respondent to come forward with evidence of such rights or legitimate interests. If the Respondent fails to do so, the Complainant is deemed to have satisfied the second element of the Policy. See, e.g., Document Technologies, Inc. v. International Electronic Communications Inc.,WIPO Case No. D2000-0270 and section 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”). The Complainant has credibly submitted that the Respondent is neither affiliated with the Complainant in any way nor has he been authorized by Complainant to use and register the disputed domain name, that the Respondent has no prior rights or legitimate interests in the disputed domain name, and that the Respondent has not made and is not making a legitimate noncommercial or fair use of the disputed domain name and is not commonly known by the disputed domain name in accordance with paragraph 4(c)(ii) of the Policy. Accordingly, the Panel finds that the Complainant has made a prima facie case that has not been rebutted by the Respondent. Considering the Panel’s findings below, the Panel finds that there are no other circumstances that provide the Respondent with any rights or legitimate interests in the disputed domain name. Therefore, the Panel finds that the second element of the Policy is fulfilled. The Respondent also in effect consented to the transfer. C. Registered and Used in Bad Faith Paragraph 4(a)(iii) of the Policy requires that the Complainant establish that the disputed domain name has been registered and is being used in bad faith. Paragraph 4(b) of the Policy provides that the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith: “(i) circumstances indicating that [the Respondent has] registered or has acquired the domain name primarily for the purpose of selling, renting or otherwise transferring the domain name registration 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 or competitor; or (iv) by using the domain name, [the Respondent has] intentionally attempted to attract, for commercial gain, Internet users to [the Respondent’s] 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 [the Respondent’s] website or location or of a product or service on [the Respondent’s] website or location.” The Panel agrees with the Complainant and with earlier UDRP panels and finds that the Complainant’s trademark is well-known around the world. It is therefore inconceivable that the Respondent would not have been aware of the Complainant and its rights to the trademark BMW when registering the disputed domain name, The Complainant has submitted, and provided evidence thereof, that the Respondent’s website is used for offering unauthorized and counterfeited products that are in competition with the Complainant’s corresponding products. The disputed domain name is used to pass of the Respondent’s goods as those of the Complainant. As the Complainant has not permitteded the Respondent to use the Complainant’s trademark or the disputed domain name, it is evident that the disputed domain name is used to attract, for commercial gain, Internet users to the Respondent’s website by creating likelihood of confusion with the Complainant’s trademark and the online locations of the Complainant’s authorized services providers. Hence, the Panel finds that the disputed domain name was registered and is being used in bad faith. Therefore, the Panel finds that the third element of the Policy is fulfilled. 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, Tuukka Airaksinen
i need transfer domain to the Complainer
Thanks”
Sole Panelist
Date: December 4, 2019
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