The Complainant is Bayerische Motoren Werke AG, Germany, represented by Kelly IP, LLP, United States of America (“United States”).
The Respondent is Chris Miranda, United States. 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 20, 2020. On October 21, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 21, 2020, 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 November 9, 2020, 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 November 9, 2020. 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 November 11, 2020. In accordance with the Rules, paragraph 5, the due date for Response was December 1, 2020. The Center received two emails from the Respondent on November 9, and November 30, 2020. The Complainant submitted an unsolicited supplemental filing on December 7, 2020. Accordingly, the Center notified the Parties of the commencement of panel appointment process on December 8, 2020. The Center appointed Steven A. Maier as the sole panelist in this matter on December 11, 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. Complainant’s Supplemental Filing The Panel did not request a supplemental filing from the Complainant in this case and finds there to be no exceptional circumstances why the supplemental filing should be accepted. Accordingly the Panel disregards the Complainant’s supplemental filing. 5. Factual Background The Complainant is a corporation organized under the laws of the Federal Republic of Germany. It is a manufacturer of motor vehicles. The Complainant is the owner of numerous registrations for the trademark BMW in territories throughout the world. Those registrations include, for example: - Germany trademark number 221388 for a word and figurative mark including the term BMW, registered on December 10, 1917, in International Classes 7, 8, 9, 11 and 12. - United States trademark number 0611710 for a word mark BMW, registered on September 6, 1955, in International Classes 12 and 19. The disputed domain name was registered on June 9, 2015. According to screen shots submitted by the Complainant dated October 19, 2020, the disputed domain name has resolved to a website at “www.bmwfairfield.com”, which appears to be operated by a car dealership named North State Auto, described as “Your Luxury Car Dealership in Walnut Creek, CA.” The website adversities used vehicles from a variety of manufacturers for sale. 6. Parties’ Contentions A. Complainant The Complainant submits that it is one of the world’s leading manufacturers of automobiles and motorcycles and that it provides a wide array of goods and services under its BMW trademark. It states that it manufactures vehicles at 31 sites in 15 counties and produced over 2.2 million motorcars in 2019, with worldwide sales revenue in excess of EUR 104 billion. The Complainant states that it spends tens of millions of dollars every year on advertising and promotion and produces evidence that its BMW mark has been recognized as one of the world’s best known brands. The Complainant states that it operates a network of over 3,500 authorized dealerships worldwide. It states that its authorized dealers are permitted to use its BMW trademarks and commonly combine this with their geographical location, resulting in URLs such as “www.weatherfordbmw.com” or “www.bmwconcord.com”. The Complainant contends that, as a result of this longstanding naming tradition, members of the public will believe that the mark BMW combined with a geographical name represents an authorized BMW dealer. The Complainant submits that the disputed domain name is confusingly similar to its BMW trademark. It states that the disputed domain name incorporates the BMW mark in its entirety and that the addition of the geographical term “fairfield” does not distinguish the disputed domain name from the Complainant’s trademark. On the contrary, the Complainant submits that the disputed domain name merely adds to the likelihood of confusion by following the Complainant’s established naming convention for its authorized dealerships. The Complainant submits that the Respondent has no rights or legitimate interests in respect of the disputed domain name. It states that it has never authorized the Respondent to use its BMW trademark, that the Respondent has not commonly been known by that name, and that the Respondent is making neither bona fide commercial use nor legitimate noncommercial or fair use of the disputed domain name. It states that the Respondent uses the disputed domain name for a website advertising cars from manufacturers who compete with the Complainant, including Mercedes, Jaguar, Lexus, Volvo and many others, and that its use of the Complainant’s trademark cannot be legitimate in these circumstances. The Complainant submits that the disputed domain name has been registered and is being used in bad faith. The Complainant contends that it is obvious that the Respondent registered the disputed domain name with the Complainant’s trademark in mind, given the worldwide reputation of the BMW trademark and the well-known convention of combining it with a geographical location in order to signify one of the Complainant’s authorized dealerships. The Complainant contends that the Respondent has used the disputed domain name in bad faith by seeking to mislead Internet users who are looking for the Complainant’s authorized services and, in particular, that the Respondent has used the Domain Name to intentionally attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant and its famous BMW mark as to the source, sponsorship, affiliation, and/or endorsement of the Respondent’s website. The Complainant requests the transfer of the disputed domain name. B. Respondent The Respondent did not file a formal Reply to the Complainant’s contentions. However, the Panel directs that the Respondent’s email dated November 30, 2020, shall stand as his Response in this proceeding. The Respondent states that he purchased the disputed domain name five years ago with the intention that it be used for a non-profit website named “Black Men and Women of Fairfield”. He says that the disputed domain name was forwarded to North State Auto “inadvertently”, that he did not know that this was inappropriate and that he terminated the forwarding when so notified. The Respondent contends that he does not see any conflict with the Complainant as there is no BMW dealership in Fairfield. The Respondent states that the Complainant has offered him only USD 500 for the disputed domain name and has threatened legal action against him. He alleges that the Complainant is a large corporation seeking to intimidate a black minority group and references the Black Lives Matter movement. The Respondent says that he has been offered USD 5,000 for the disputed domain name by a third party and is not willing to sell it for less, because a replacement site for his minority group will cost about the same. 7. Discussion and Findings In order to succeed in the Complaint, the Complainant is required to show that all three of the elements set out under paragraph 4(a) of the Policy are present. Those elements are: (i) that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; (ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and (iii) that the disputed domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar The Complainant has established that it is the owner of numerous trademark registrations comprising or including the mark BMW. The disputed domain name comprises the term “bmw” together with the term “fairfield”, to which both parties refer as a geographical indication. The Panel finds in the circumstances that the Complainant’s mark BMW is recognizable within the disputed domain name and that the additional term “fairfield” does not distinguish the disputed domain name from the Complainant’s trademark. The Panel therefore concludes that the disputed domain name is confusingly similar to a trademark in which the Complainant has rights. B. Rights or Legitimate Interests In the view of the Panel, the Complainant’s submissions establish a prima facie case that the Respondent has no rights or legitimate interests in respect of the disputed domain name. In answer to that case, the Respondent has claimed that he registered the disputed domain name for the purposes of a minority interest website to be called “Black Men and Women of Fairfield.” The Respondent implies that such use of the disputed domain name would constitute legitimate noncommercial or fair use under paragraph 4(c)(iii) of the Policy. However, the Respondent has produced no evidence of any preparations to use the disputed domain name for any such purpose during the five-year period since the disputed domain name was registered, and has used it instead to resolve to a car dealership website offering vehicles including those manufactured by the Complainant’s competitors. The Panel does not therefore find the Respondent’s submissions to be credible. As to the Respondent’s actual use of the disputed domain name, it does not represent bona fide commercial use of a domain name which incorporates a third-party trademark to use that domain name to sell goods or services which compete with those of that third party. Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name. C. Registered and Used in Bad Faith For the reasons given above, the Panel does not accept the Respondent’s submission that he registered the disputed domain name for the purposes of a non-profit minority interest website. Nor does the Panel understand how the direction of the disputed domain name to a motor dealership can be “inadvertent”. The Panel considers the Respondent’s evidence to be unreliable and finds that the Respondent is further discredited by his demand for USD 5,000 to transfer the disputed domain name and his baseless allegation that the Complainant is seeking to intimidate a minority group by bringing this proceeding. The Panel finds that the Respondent registered and has used the disputed domain name in order to take unfair advantage of the Complainant’s BMW trademark by combining it with a geographical indication in order to give the impression of an authorized BMW dealership and that, by using the disputed domain name, the Respondent has intentionally attempted 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 its website or of a product or service on its website (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. 8. 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, Steven A. Maier
Sole Panelist
Date: December 25, 2020
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