The Complainant is Bayerische Motoren Werke AG, Germany, represented by Kelly IP, LLP, United States of America (“United States”).
The Respondent is Rui Qin Zhu, Zhu Rui Qin, China. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 2, 2020. On October 5, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 5, 2020, 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. On October 12, 2020, the Center received an email communication from the Registrar confirming that the disputed domain name will be placed in Registrar Lock status, and that the domain name will remain in such status after the lapse of the expiry date until the UDRP proceedings are concluded. 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 October 13, 2020. In accordance with the Rules, paragraph 5, the due date for Response was November 2, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 3, 2020. The Center appointed Rodrigo Azevedo as the sole panelist in this matter on November 9, 2020. 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 world-renowned German automobile and motorcycle manufacturer BMW. The Complainant obtained registrations for the trademark BMW in numerous regions of the world, such as the United States Trademark Registration Number 611,710, registered on September 6, 1955 (first use in commerce on February 1949); and the German Trademark Registration Number 221388, registered on December 10, 1917. The Complainant also registered and uses variations of its main trademark BMW, such as BMW Assist and BMW Assist Plus. The Respondent registered the disputed domain name The Panel accessed the disputed domain name on November 20, 2020, at which time the disputed domain name pointed to a website containing pornographic content, together with commercial advertisements. 5. Parties’ Contentions A. Complainant The Complainant makes the following contentions: - The disputed domain name is identical or confusingly similar to a trademark in which the Complainant has rights. Panels have consistently held that domain names containing a mark in its entirety are confusingly similar to that mark, and that generic Top-Level Domain ("gTLD") such as “.com” are irrelevant to confusing similarity analysis. The disputed domain name is also confusingly similar to the Complainant’s BMW mark because it contains the Complainant’s mark combined with the additional terms “assist” and “offer.” Panels have consistently held that the addition of additional terms is not sufficient to distinguish a domain name from the mark at issue. Moreover, the confusing similarity of the disputed domain name is heightened because “assist” has an obvious connection to the Complainant’s BMW Assist marks and services described above. - The Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent’s registration and use of the disputed domain name for a pornographic website does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use under the UDRP. It is well established under the UDRP that the use of a trademark-related domain name for adult or pornographic content fails to demonstrate any legitimate interest of the respondent in the disputed domain name. The Respondent is not and has not been commonly known by the disputed domain name. In addition, the Respondent is not a licensee of the Complainant or otherwise authorized to use the Complainant’s BMW mark. Moreover, given the fame of the Complainant’s BMW mark, the Respondent could not be known by the disputed domain name. - The disputed domain name was registered and is being used in bad faith. The Respondent’s registration and use of the disputed domain name for a pornographic website constitutes an independent ground for bad faith under prior UDRP decisions. It is well established under the UDRP that use of a trademark-related domain name for a pornographic website constitutes bad faith. The Respondent’s use of the disputed domain name for pornographic content also disrupts the Complainant’s business and tarnishes the Complainant’s BMW mark. Also, the Respondent has used the disputed domain name to intentionally attract, for commercial gain, Internet users by creating a likelihood of confusion with the Complainant’s famous BMW mark as to the source, sponsorship, affiliation, and endorsement of the Respondent’s website. Finally, it is indisputable that the Respondent registered the disputed domain name in bad faith with knowledge of the Complainant’s rights in its BMW mark, given the fame of the Complainant’s BMW mark and the Respondent’s selection and use of a disputed domain name that contains the Complainant’s BMW mark in its entirety. Registration of a domain name with knowledge of the trademark owner’s rights has been consistently found to constitute bad faith under the UDRP. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings Paragraph 4(a) of the Policy provides that in order to be entitled to a transfer of the disputed domain name, a complainant shall prove the following three elements: (i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and (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. A. Identical or Confusingly Similar The Panel has no doubt that “BMW” is a term directly connected with the Complainant’s notorious automobiles and motorcycles. Exhibits 7 and 8 to the Complaint show trademark registrations for BMW obtained by the Complainant as early as in 1917. The trademark BMW is wholly encompassed within the disputed domain name. The disputed domain name differs from the Complainant’s trademark BMW merely by the addition of the term "assistoffer”, as well as of the gTLD extension “.com”. Previous UDRP panels have found that the mere addition of terms (such as “assist” and “offer”) to a trademark in a domain name do not avoid a finding of confusing similarity. This has been held in many UDRP cases (see, e.g., The British Broadcasting Corporation v. Jaime Renteria,WIPO Case No. D2000-0050; Volvo Trademark Holding AB v. SC-RAD Inc.,WIPO Case No. D2003-0601; Wal-Mart Stores, Inc. v. Lars Stork,WIPO Case No. D2000-0628; America Online, Inc. v. Dolphin@Heart,WIPO Case No. D2000-0713; AltaVista Company v. S. M. A., Inc.,WIPO Case No. D2000-0927). It is already well established that the addition of a gTLD extension such as “.com” is typically irrelevant when determining whether a domain name is confusingly similar to a complainant’s trademark. As a result, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s trademarks, and that the Complainant has satisfied the first element of the Policy. B. Rights or Legitimate Interests Paragraph 4(c) of the Policy provides some examples without limitation of how a respondent can demonstrate a right or legitimate interest in a domain name: (i) before receiving any notice of the dispute, the respondent used or made demonstrable preparations to use the domain name in connection with a bona fide offering of goods or services; or (ii) the respondent has been commonly known by the domain name; or (iii) the respondent is making a legitimate noncommercial or fair use of the domain name without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark at issue. Based on the Respondent’s default and on the prima facie evidence in the Complaint, the Panel finds that the above circumstances are not present in this particular case and that the Respondent has no rights or legitimate interests in the disputed domain name. The Panel notes that the present record provides no evidence to demonstrate the Respondent’s intent to use or to make preparations to use the disputed domain name in connection with a bona fide offering of goods or services. Indeed, the disputed domain name is currently connected to a website containing pornographic content, which does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use under the UDRP. The Complainant has not licensed or authorized the usage of its trademarks to the Respondent, and it does not appear from the present record that the Respondent is commonly known by the disputed domain name. Actually, the Respondent has not indicated any reason to justify why the specific term “bmwassistoffer” was chosen to compose the disputed domain name. Consequently, the Panel is satisfied that the Respondent has no rights or legitimate interests in the disputed domain name, and the Complainant has proven the second element of the Policy. C. Registered and Used in Bad Faith Paragraph 4(b) of the Policy states that the following circumstances in particular, but without limitation, shall be evidence of registration and use of a domain name in 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 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 documented out-of-pocket costs directly related to the domain name; or (ii) the respondent 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 online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of its website or location or of a product or service on its website or location. When the disputed domain name was registered by the Respondent in 2019, the trademark BMW was already well known and directly connected to the Complainant’s automobiles and motorcycles for more than a century. The disputed domain name encompasses the trademark BMW. The addition of the terms “assist” and “offer” even enhances the risk of confusion in the present case, suggesting that the disputed domain name refers to an official BMW services assistance. Also, according to the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, section 3.1.4, UDRP panels have consistently found that the mere registration of a domain name that is identical or confusingly similar to a famous or widely known trademark by an unaffiliated entity can by itself create a presumption of bad faith. The Panel concludes that it is unlikely that the Respondent was not aware of the Complainant’s trademarks and that the adoption of the disputed domain name was a mere coincidence. Furthermore, the use of the disputed domain name in connection with a pornographic website containing commercial advertisements also indicates the Respondent’s intent to disrupt the Complainant’s business, as well as to attract, for commercial gain, Internet users to its website, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of such website. Accordingly, the Panel finds that the disputed domain name was registered and is being used in bad faith, and the Complainant has also satisfied 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 name Rodrigo Azevedo
Sole Panelist
Date: November 25, 2020
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