The Complainant is Bayerische Motoren Werke AG (BMW), Germany, represented by Kelly IP, LLP, United States of America (“United States”).
The Respondent is Denis Ilyin, Russian Federation. 2. The Domain Name and Registrar
The disputed domain name, The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 14, 2020. On December 15, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On December 16, 2020, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name, which differed from the named Respondent and contact information in the Complaint, a privacy service. The Center sent an email communication to the Complainant on January 5, 2021, 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 January 6, 2021. 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”). On January 9, 2021 the Center was copied in on an email from the Respondent to the Complainant’s representative. The email is set out in section 5B below. In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on January 11, 2021. In accordance with the Rules, paragraph 5, the due date for Response was January 31, 2021. On February 9, 2021, the Respondent emailed the Center in response to an email from the Center notifying the parties that the time for a Response had expired, stating that he had already responded to the Complainant’s representative in a private email, but had not got a response from him. The Respondent added that “Site is already closed”. On the same day the Complainant submitted a request to suspend the proceeding and the proceeding was duly suspended. The proceeding was reinstituted on March 11, 2021, at the request of the Complainant. The Center appointed Tony Willoughby as the sole panelist in this matter on March 22, 2021. 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. The invitation to the Complainant to file an amended Complaint stemmed from the fact that the Domain Name was registered in the name of a privacy service. In response to the Center’s registrar verification request, the Registrar disclosed the name and address of the entity in whose name the Domain Name had been registered. The amended Complaint names Denis Ilyin, the underlying registrant, as the Respondent 4. Factual Background The Complainant is a leading manufacturer of motor vehicles. Its principal marque is BMW, which is the subject of numerous trade mark registrations including, by way of example, United States Trade Mark Registration No. 0611710 BMW (typed drawing) registered on September 6, 1955 in class 12 for inter alia automobiles and motor cycles. The navigation system software in certain BMW vehicles requires updating from time to time. This is achieved by way of car specific BMW activation codes, which the Complainant has supplied since 2007 under and by reference to the designation FSC. The Complainant is the registered proprietor of United States Trade Mark registration No. 5700616 FSC (standard character mark) registered on January 1, 2019 in class 42 for “updating of vehicle navigation software and digital vehicle navigation maps, protected through the use of activation codes, that once obtained, allow users to access and install updates to their digital vehicle navigation maps”. The Domain Name was registered on October 28, 2010 and at the date of the Complaint was connected to a website offering for sale FSC downloads for BMW’s vehicles. The website explains: “FSCMap – Remote easy-to-use solutions for BMW car refits, navigation map updates and chip tuning – both for workshop services and owners.” The Respondent’s Facebook page features prominently the BMW logo, which is covered by inter alia the above-mentioned United States Trade Mark Registration No. 0611710. 5. Parties’ Contentions A. Complainant The Complainant contends that the Domain Name is confusingly similar to the Complainant’s FSC trade mark; that the Respondent has no rights or legitimate interests in respect of the Domain Name; and that the Domain Name has been registered and is being used in bad faith. B. Respondent The Respondent did not formally reply to the Complainant’s contentions. However, on January 9, 2021 the Respondent emailed the Complainant’s representative in the following terms: “Firstly, we would like to request from you power of attorney in your name from BMW. Secondly, could you please also send us documents, where we can see that FSC registered as a trademark of BMW? We would also like to add that FSC means Fast Solutions Company, and we acted in good faith and have no intent when we registered this domain. In addition, we would like to inform you, that our domain was registered October 28, 2010, and as we discovered BMW has registered FSC as a trademark on March 19, 2019. We are looking forward to hearing from you.” As indicated in section 3 above, on February 9, 2021 the Respondent notified the Center that he had closed down the website connected to the Domain Name. 6. Discussion and Findings A. General According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the Domain Name, the Complainant must prove each of the following, namely that: (i) the Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and The Domain Name comprises the Complainant’s registered trade mark FSC, the word, “map”, and the “.com” generic Top Level Domain (“gTLD”) identifier. Section 1.7 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) explains the test for identity or confusing similarity under the first element of the Policy and includes the following passage: “While each case is judged on its own merits, in cases where a domain name incorporates the entirety of a trademark, or where at least a dominant feature of the relevant mark is recognizable in the domain name, the domain name will normally be considered confusingly similar to that mark for purposes of UDRP standing.” The Complainant’s FSC registered trade mark is readily recognizable in its entirety in the Domain Name. The Panel finds that the Domain Name is confusingly similar to a trade mark in which the Complainant has rights. In this case, the Complainant’s FSC trade mark registration post dates the date of registration of the Domain Name by several years. However, for the purpose of this element of the Policy the date of the Complainant’s trade mark registration is irrelevant, although it may very well be relevant to the second and third elements of the Policy. (Section 1.1 WIPO Overview 3.0) C. Rights or Legitimate Interests Under this element of the Policy the date of the Complainant’s acquisition of trade mark rights can be relevant. If at date of registration of the Domain Name, the Complainant had no relevant trade mark rights, it would be difficult for the Complainant to argue that at that date the Respondent was unfairly targeting the Complainant. The Complainant has produced evidence to demonstrate that since February 2007 it has been using the designation FSC in relation to its activation codes for Complainant’s navigation software updates. The Complainant has also produced evidence to show that since 2015 it has sold over 630,000 FSC activation codes. The Complainant contends that it has built up a significant reputation and goodwill in respect of the FSC designation with the result that it has unregistered trade mark rights in respect of FSC in addition to its registered trade mark rights. The FSC sales figures provided by the Complainant do not go back far enough to cover the date of registration of the Domain Name. However, the unchallenged evidence of the Complainant is that it has used the FSC designation continuously since 2007 and between 2007 and registration of the Domain Name in 2010 it is more likely than not, in the view of the Panel, that the Complainant’s use of the term would have been substantial. There is no evidence before the Panel to show that the term has been used in relation to any marque other than BMW. Finally, had there been any doubt in the matter, if the term FSC had not been a sufficient indicator of BMW as the trade source of BMW activation codes, the Respondent would not have used the term plus, rather tellingly, the word “map” for his Domain Name, a domain name which was until recently connected to a website offering for sale activation codes generated by the Respondent (not the Complainant) for Complainant’s BMW vehicles. The Panel finds on the balance of probabilities that by the date of registration of the Domain Name the Complainant had, to the knowledge of the Respondent, acquired trade mark rights in respect of the designation FSC. The Complainant asserts that it has no connection with the Respondent and has never authorized the use by the Respondent of any of the Complainant’s trade marks. The Complainant recites the circumstances set out in paragraph 4(c) of the Policy, any of which if found by the Panel to be present shall demonstrate rights or legitimate interests for the purposes of this element of the Policy, and contends that none of them is applicable. Essentially, The Complainant’s contention is that by selecting and using the Domain Name the Complainant is passing himself off as the Complainant in order to sell counterfeit products in competition with the Complainant’s genuine products. The Complainant contends that that cannot give rise to rights or legitimate interests in respect of the Domain Name in the hands of the Respondent. The Panel is satisfied that the Complainant has made out a prima facie case under this element of the Policy, in other words a case calling for an answer from the Respondent. The Respondent has not formally responded to the Complaint. From the Respondent’s email of January 9, 2021 the Panel concludes that the Respondent’s argument is that (a) registration of the Domain Name preceded by several years the acquisition by the Complainant of trade mark rights in respect of FSC and (b) that the Respondent has being making fair use of the term as it is an acronym for “Fast Solutions Company”. The first of those arguments ignores the Complainant’s claim to unregistered trade mark rights in respect of FSC, which the Respondent has not challenged and the second – importantly – is not supported by any evidence of use by the Respondent of the name “Fast Solutions Company”. Indeed, it appears to the Panel to be an excuse dreamt up by the Respondent. The Panel finds on the balance of probabilities that the Respondent has no rights or legitimate interest in respect of the Domain Name. D. Registered and Used in Bad Faith The Complainant contends that the Respondent has been using the Domain Name to sell counterfeit versions of the Complainant’s FSC activation codes and has produced a screenshot of a webpage from the Respondent’s website, which states “We generate FSC codes for BMW Navigation systems (NBT, NBT EVO, CarPlay) retrofit, map updates (Motion, Move, Next, Route, Premium, Evo) and offer solutions for BMW chip-tuning and feature unlocks. Stay tuned!” and below that a message in bold type reading “New FSCMap portal for all BMW workshop services and owners?”. The screenshot is dated August 28, 2020, but the Complainant’s contention is that this is the purpose for which the Domain Name was registered back in 2010. The Panel believes it probable that BMW vehicle owners wishing to unlock or update their navigation systems will be attracted to the Respondent’s website from the very nature of the Domain Name. Whether or not Internet users will realize when they visit the Respondent’s website that it is not a website of the Complainant, the Panel cannot say. They may conclude from the absence of any other BMW signage and text that it is not a BMW website; alternatively they may conclude that only an authorized BMW dealer would have access to BMW’s FSC activation codes. Either way the Domain Name, which by its very nature proclaims itself to be a domain name of the Complainant, is deceptive. By the use of the Complainant’s FSC trade mark in association with the word “map” (a word particularly apt to indicate a navigational system) the Respondent proclaims to BMW owners that it will lead to a website offering for sale FSC activation codes purporting to be those of or authorized by the Complainant, thereby providing the Respondent with the opportunity for commercial gain. The Panel notes that the screenshot provided by the Complainant of the Respondent’s Facebook page “fscmap.com” featuring prominently the Complainant’s well-known logo makes very clear the Respondent’s intention to represent himself as or as authorized by the Complainant. The Complainant contends that the Respondent is acting in bad faith within the meaning of paragraphs 4(b)(iii) and 4(b)(iv) of the Policy, which provide as follows: “4b. Evidence of Registration and Use in Bad Faith. For the purposes of Paragraph 4(a)(iii), 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: (iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or (iv) 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.” As to 4(b)(iii) the Complainant contends that in selling products competing with the Complainant’s FSC activation codes the Respondent is a competitor and by labeling his products as FSC codes he is competing unfairly with the Complainant and disrupting the Complainant’s business. As to 4(b)(iv) the Complainant contends that the Respondent registered the Domain Name for the purpose for which he has been using it, namely intentionally to attract Internet users to his website by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of his website. The Panel doubts that the Respondent’s primary purpose was to disrupt the Complainant’s business, although some level of disruption of the Complainant’s business was an inevitable result. The Panel concludes that the Complainant’s contention under paragraph 4 (b)(iv) is well-founded and that the Domain Name has been registered and is being used in bad faith within the meaning of 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 Domain Name Tony Willoughby
(ii) the Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) the Domain Name has been registered and is being used in bad faith. B. Identical or Confusingly Similar
Sole Panelist
Date: April 5, 2021
Full & Egal Universal Law Academy