1.1 The Complainant is Bayerische Motoren Werke AG, Germany, represented by Kelly IP, LLP, United States of America (“US”).
1.2 The Respondent is Emir Kurtovic, Bosnia and Herzegovina. 2. The Domain Name and Registrar
2.1 The disputed domain name 3.1 The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 2, 2021. As at the date of the Complaint, details of the underlying registrant of the Domain Name were not publicly available on the WhoIs database, although it did identify Bosnia and Herzegovina as part of the registered address of the registrant. On March 3, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On March 4, 2021, the Registrar transmitted by email to the Center its verification response disclosing underlying registrant and contact information for the Domain Name. The Center sent an email communication to the Complainant on March 10, 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 March 12, 2021. The Respondent sent an email communication to the Center on March 13, 2021. 3.2 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”). 3.3 In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on March 15, 2021. In accordance with the Rules, paragraph 5, the due date for Response was April 4, 2021. No formal Response was filed with the Center. 3.4 On April 5, 2021, the Complainant filed a supplemental filing addressing certain claims made by the Respondent in his email dated March 13, 2021. In an email dated April 8, 2021 the Center acknowledged receipt of that supplemental filing, informed the Complainant that the Rules do not provide for supplemental filings that had not been called for by a panel, but that the document would be provided to the Panel who would then determine whether to consider and/or order further procedural steps in relation to the same. 3.5 The Center appointed Matthew S. Harris as the sole panelist in this matter on April 20, 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. 4. Factual Background 4.1 The Complainant is part of BMW Group (“BMW”), a well-known automobile and motorcycle manufacturer. It is headquartered in Germany and its products are manufactured at 31 sites in 15 countries on four continents. It has 133,000 employees worldwide. BMW currently has approximately 3,500 authorized BMW dealers in locations throughout the world. 4.2 BMW has manufactured, marketed, and sold many millions of vehicles under the BMW mark. In 2019, BMW manufactured more than 2 million vehicles with worldwide sales and revenues in excess of EUR 104 billion. 4.3 BMW has since at least as early as 1917 used its BMW mark in connection with its network of websites dedicated to advertising, promoting, and/or offering its automobiles, motorcycles, and related products and services. BMW’s online network, receives many millions of hits each month. BMW’s websites are accessible via domain names comprised of the BMW mark alone and combined with relevant geographic and/or descriptive terms. Examples include 4.4 BMW is the owner of numerous registered trade marks around the world that comprise or incorporate the term BMW. 4.5 The Complainant is also the owner of various registered trade marks that comprise or incorporate the text “BMW Group”. They include: (i) German Registration No. 302016105664 for the word mark BMW GROUP, filed June 20, 2016, issued January 11, 2017, in classes 12, 2, 3, 4, 7, 9, 11, 14, 18, 21, 25, 27, 28, 35, 36, 37, 38, 39, 40, 41, 42, and 43; and (ii) US Registration No. 3,689,674 for the mark BMW GROUP in block letters, filed December 1, 2008, issued September 29, 2009, in International Classes 3 and 4. 4.6 The Domain Name was registered on July 31, 2019. 4.7 As at February 26, 2021, an Internet user entering the Domain Name into the address line of a browser would have been redirected to a page of GoDaddy’s “afternic.com” website advertising the Domain Name for sale. The Domain Name was also being offered for sale on Sedo at an asking price of USD 35,000 and seeking a minimum offer of USD 5,000. 4.8 At some point thereafter the way in which the Domain Name was being used changed. In particular, the Domain name was used to host a webpage with the heading “Yellow Pages BMW group”, below which were displayed various links. 4.9 The Respondent would appear to be an individual located in Bosnia and Herzegovina. He has been the subject of a number of other complaints in respect of various domain names that take the form <[trademark].company>. Examples of which the Panel is aware are as follows: - L’Oréal, Lancôme Parfums Et Beauté & Compagnie v. Emir Kurtovic, Agencija Raptor,WIPO Case No. D2019-2639 ( - L’Oréal v. Emir Kurtovic, Agencija RaptorWIPO Case No. D2020-0806 ( - UNIQA Insurance Group AG v. Emir Kurtovic, Agencija Raptor,WIPO Case No. D2019-2522 ( - Dell Inc. v. Emir Kurtovic, NAF Claim No. FA1909001862400 ( 4.10 In all these cases, the panel ordered the transfer of the domain name or domain names in issue to the complainant. 5. Parties’ Contentions A. Complainant 5.1 The Complainant refers in its Complaint to its business and marks and how the Domain Name was being used in late February 2021 just prior to the commencement of proceedings. It contends that it is clear from the way that the Domain Name has been used that the Domain Name was registered primarily for the purpose of onward sale. 5.2 The Complainant further contends that the Domain Name is identical or confusingly similar to its BMW GROUP trade mark, that the Respondent has no rights or legitimate interests in the Domain Name, and that the Domain Name has been registered and used in bad faith. In this respect it contends that the Respondent’s activities fall within the scope of paragraph 4(b)(i) of the Policy. 5.3 In its supplemental submission the Complainant also made a number of observations regarding the form of the website then operating from the Domain Name, and responding to the Respondent’s email to the Center dated March 13, 2021. B. Respondent 5.4 No formal response was filed with the Center. Nevertheless, the email sent on to the Center on March 13, 2021, contained a number of assertions and submissions. These included assertions that (a) the Respondent had not offered the Domain Name to the Complainant, (b) the Domain Name was being used for a news website using a “news system” which “exists in one form or another” since 2001, and (c) there was no logo (presumably this was a reference to the BMW logo) being displayed on the website. 6. Discussion and Findings 6.1 There are no exceptional circumstances within paragraph 5(f) of the Rules so as to prevent this Panel from determining the dispute based upon the Complaint, notwithstanding the failure of the Respondent to lodge a formal Response. 6.2 Notwithstanding the lack of formal Response of the Respondent, it remains incumbent on the Complainant to make out its case in all respects set out in paragraph 4(a) of the Policy. Namely, the Complainant must prove that: (i) the Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights (paragraph 4(a)(i)); and (ii) the Respondent has no rights or legitimate interests in respect of the Domain Name (paragraph 4(a)(ii)); and (iii) the Domain Name has been registered and is being used in bad faith (paragraph 4(a)(iii)). 6.3 However, under paragraph 14(b) of the Rules, where a party does not comply with any provision of the Rules, the Panel shall “draw such inferences therefrom as it considers appropriate”. 6.4 Before addressing the requirements of the Policy it is also convenient to briefly address the Respondent’s email of March 13, 2021 and the Complainant’s response to the same. Given that the email did not constitute of formal response supported by a statement of truth, it would have been legitimate for the Panel to have ignored the same. Nevertheless, aspects of the assertions contained therein are recorded in this decision. 6.5 As to the Complainant’s supplemental submission, it would have been helpful if the Complainant had expressly addressed in that submission why the contentions advanced in that submission could not have been made earlier. As is recorded in section 4.6 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”): “In all such cases, panels have repeatedly affirmed that the party submitting or requesting to submit an unsolicited supplemental filing should clearly show its relevance to the case and why it was unable to provide the information contained therein in its complaint or response (e.g., owing to some “exceptional” circumstance).” 6.6 However, as best the Panel can tell, the form of the website operating from the Domain Name changed after the Complaint, and possibly the Amended Complaint, had been filed. If so, this would constitute new circumstances justifying the admission of a further submission. Further, in his email the Respondent advanced contentions such as the lack of use of the Complainant’s logo, which although strictly true were nevertheless highly misleading. Given this the Panel has decided that it is appropriate to take into account the contents of the Complainant’s supplemental submission. A. Identical or Confusingly Similar 6.7 The Complainant has satisfied the Panel that it has registered trade rights in the words “BMW Group”. In order to satisfy the first element of the Policy it is usually sufficient for a complainant to show that the relevant mark is “recognizable with the disputed domain name”; as to which see section 1.7 of the WIPO Overview 3.0. 6.8 The Domain Name can only be sensible understood as “BMW Group”, without a space (which cannot form part of a domain name) and the “.company” generic Top-Level Domain. The Complainant’s mark is, therefore, clearly recognisable in the Domain Name. 6.9 The Complainant has, therefore, satisfied the Panel that the Domain Name is identical or confusing similar to its trade mark and has thereby made out the requirements of paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests 6.10 For reasons that are discussed in greater detail in this decision in respect of the question of bad faith, the Panel accepts the Complainant’s contention that the Domain Name was registered for the purpose of selling, renting, or otherwise transferring the Domain Name to the Complainant or to a competitor of the Complainant, for valuable consideration in excess of the Respondent’s out-of-pocket costs. 6.11 Such activity does not provide a legitimate interest in a domain name for the purposes of the Policy and provides prima facie evidence that the Respondent has no such right or legitimate interest. 6.12 The Panel, for reasons it will also explain in the context of bad faith, also rejects the Respondent’s contention that the Domain Name was registered for use in connection with a news website. But even if that were true, it would not assist the Respondent. The Domain Name takes the form <[trademark].company>. Given this, regardless of the content of the website, the Panel is of the view that the Domain Name inherently involves an impermissible and illegitimate impersonation of the Complainant that does not provide rights or legitimate interests recognized by the Policy (as to which also see sections 2.5.1, 2.6.2, and 2.7.2 of the WIPO Overview 3.0). 6.13 The Complainant has therefore made out the requirements of paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith 6.14 The Domain Name can only be understood as involving a reference to the Complainant and its marks and there is no attempt on the part of the Respondent to deny that he was aware of the Complainant when he registered the Domain Name. 6.15 Further, the evidence that the Complainant has brought forward that the Domain Name was for sale is highly persuasive. Particularly compelling is the evidence that by typing the Domain Name into an Internet browser an Internet user was taken to a page where the Domain Name was offered for sale. 6.16 There is also the fact that in at least one of the previous UDRP decisions involving the Respondent, the panel recorded that the Respondent had offered the relevant domain names for sale to the complainant. The Panel notes the Respondent’s claim in his email in the present proceedings that he has not positively offered the Domain Name for sale directly to the Complainant. That may be so, but the fact that there has on this occasion been no direct contact, does not preclude a finding that the Domain Name was registered with that intention, particularly where (as here) there has been a generalised offer to sell on a third-party platform (see the last paragraph of section 3.1.1 of the WIPO Overview). 6.17 In the circumstances, the Panel concludes that the Domain Name was registered with the intention of selling either to the Complainant or a competitor of the Complainant for a sum exceeding the Respondent’s out-of-pocket expenses. This falls within the scope of the example of circumstances indicating bad faith registration and use set out in paragraph 4(b)(i) of the Policy. 6.18 The Panel also rejects the Respondent’s claim that the Domain Name was registered for use in connection with some sort of news website. First, the Panel is not prepared to give any evidential weight to a mere assertion of this sort unsupported by even a statement of truth. The Panel is also highly sceptical that the website recently displayed from the Domain Name can in any sensible sense be said to be a news site about the Complainant. There appears to be no news about the Complainant on the screenshot of this website provided by the Complainant, notwithstanding that the Complainant’s mark is prominently displayed. Further, the timing of the website’s appearance suggests that this is pre-textual and was created in response to the Complaint rather than reflecting the Respondent’s real intentions either now or at the time of registration. 6.19 Finally, even if this was a genuine news site and it was for such a site that the Domain Name was registered, the Panel does not think this would assist the Respondent. The Domain Name takes the form <[trademark].company>. As such and in the opinion of the Panel the Domain Name inherently involves an impermissible and illegitimate impersonation of the Complainant such that registration and use for that purpose would be in bad faith (see for example 1066 Housing Association Ltd. v. Mr. D. Morgan,WIPO Case No. D2007-1461). 6.20 The Complainant has therefore made out the requirements of paragraph 4(a)(iii) of the Policy. 7. Decision 7.1 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 Matthew S. Harris
Sole Panelist
Date: April 23, 2021
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