The Complainant is Bayerische Motoren Werke AG, Germany, represented by Kelly IP, LLP, United States of America (“United States”).
The Respondent is shilin Li, China. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on May 20, 2021. On May 20, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 1, 2021, 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 June 1, 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 in English on June 4, 2021. On June 1, 2021, the Center transmitted another email communication to the Parties in English and Chinese regarding the language of the proceeding. On June 4, 2021, the Complainant submitted its request that English be the language of the proceeding. The Respondent did not comment on the language of the proceeding. 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 in English and Chinese of the Complaint, and the proceedings commenced on June 8, 2021. In accordance with the Rules, paragraph 5, the due date for Response was June 28, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 30, 2021. The Center appointed Rachel Tan as the sole panelist in this matter on July 12, 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 The Complainant is a manufacturer of automobiles and motorcycles. It is part of the BMW Group, and its headquarters are located in Germany. Its products and components are manufactured at 31 sites around the world, and it has more than 120,000 employees worldwide. The Complainant has advertised and promoted its products and services under the BMW mark since 1917. It is the owner of a range of trade mark registrations that comprise or contain the elements “BMW” or “BMW GROUP”. For example, German Registration No. 410579 for BMW registered on November 15, 1929 in classes 7 and 12, United States Registration No. 611710 for BMW registered on September 6, 1955 in class 12, German Registration No. 302016105664 for BMW GROUP registered on January 11, 2017 in classes 2, 3, 4, 7, 9, 11, 12, 14, 18, 21, 25, 27, 28, 35, 36, 37, 38, 39, 40, 41, 42 and 43, and United States Registration No. 5735995 for BMW GROUP registered on April 30, 2019 in classes 7, 12, 35, 36, 38 and 41. The Complainant is also the owner of a range of domain names that incorporate the BMW and BMW GROUP marks, such as The Respondent is shilin Li, China. The disputed domain name was registered on January 17, 2021 and resolves to an active webpage featuring pornographic and online gambling content. 5. Parties’ Contentions A. Complainant The Complainant contends that the disputed domain name is confusingly similar to the Complainant’s famous BMW and BMW GROUP marks because it contains each of these marks in its entirety. The confusing similarity of the disputed domain name is heightened by the fact that the disputed domain name communicates the Complainant’s BMW GROUP formative domain names in general and its prior ownership of the disputed domain name, as well as its company name BMW Group. The additional term “identity” that relates to the Complainant’s business through its prior ownership of the disputed domain name renders the disputed domain name confusingly similar to its mark. The Complainant further alleges that the 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. The Respondent is not and has not been commonly known by the disputed domain name. The Respondent is not a licensee of the Complainant or otherwise authorized to use the Complainant’s BMW and BMW GROUP marks. Given the fame of the Complainant’s BMW mark, the Respondent could not be known by the disputed domain name. The Complainant finally asserts that 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. The use of the disputed domain name for pornographic content disrupts the Complainant’s business and tarnishes the Complainant’s BMW mark. The Respondent uses the disputed domain name to intentionally attract, for commercial gain, Internet users by creating a likelihood of confusion with the Complainant’s famous BMW and BMW GROUP marks as to the source, sponsorship, affiliation, and endorsement of the Respondent’s website. The Respondent’s registration of the disputed domain name after the Complainant’s registration was deleted is an independent ground of bad faith under prior UDRP decisions. The Respondent has a bad faith pattern of registering trade mark related domain names. It is indisputable that the Respondent registered the disputed domain name in bad faith with knowledge of the Complainant’s rights in its BMW and BMW GROUP marks. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings 6.1. Language of the Proceeding Initially, the Panel must address the language of the proceeding. Paragraph 11(a) of the Rules provides that the language of the administrative proceeding shall be the language of the Registration Agreement unless otherwise agreed by the parties, subject to the authority of the panel to determine otherwise, having regard to the circumstances of the administrative proceeding. The panel may choose to write a decision in either language, or request translation of either party’s submissions. In this case, the Registrar has confirmed to the Center that the language of the Registration Agreement as used by the registrant for the disputed domain name is Chinese. However, the Complainant has requested that English be adopted as the language of the proceeding for the reasons summarized below: (a) the Respondent’s selection and registration of the disputed domain name which consists of Latin letters and English terms, namely, the Complainant’s BMW mark in its entirety, the Complainant’s BMW GROUP mark in its entirety which includes the English term “group”, the English term “identity”, and the English generic Top-Level Domain (“gTLD”) “.net” show the Respondent has knowledge of and/or proficiency in English; (b) a prior adverse dispute proceeding brought by a third party against the Respondent under the UDRP was conducted in English; and (c) the Complainant would be prejudiced by a Chinese language proceeding because the translation costs are burdensome and unnecessary. It is established practice to take paragraphs 10(b) and (c) of the Rules into consideration for the purpose of determining the language of the proceeding, in order to ensure fairness to the parties and the maintenance of an inexpensive and expeditious avenue for resolving domain name disputes. Language requirements should not lead to undue burdens being placed on the parties and undue delay to the proceeding. The Panel having considered the circumstances finds that English shall be the language of this proceeding. The reasons are set out below. (a) The Complainant is a company based in Germany. Requiring the Complainant to submit documents in Chinese would lead to delay and cause the Complainant to incur translation expenses; (b) The Respondent’s choice of English words for the disputed domain name indicates some familiarity with the English language; (c) English is not the native language of either Party; (d) Even if the Respondent does not possess a sufficient command of English to understand the Complaint, there were ample opportunities for the Respondent to raise an objection. The Center notified the Parties in English and Chinese of the Complainant’s request for English to be the language of the proceeding, but the Respondent did not protest against this request; and (e) The Respondent has failed to participate in the proceeding even though the Center sent the notification of the Complaint in English and Chinese, and has been notified of its default. The Complaint has been submitted in English. No foreseeable procedural benefit may be served by requiring Chinese to be used. On the other hand, the proceeding may proceed expeditiously in English. 6.2. Substantive Issues A. Identical or Confusingly Similar The Panel is satisfied that the Complainant has adduced evidence to demonstrate its established rights in the BMW and BMW GROUP marks. The Panel notes the disputed domain name is comprised of each of the BMW and BMW GROUP marks in its entirety. The positioning of the BMW and BMW GROUP marks in the front of the disputed domain name is instantly recognizable. In cases where a domain name incorporates the entirety of a trade mark, 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. See section 1.7 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”). Further, it is accepted by previous UDRP panels that the addition to the complainant’s trade mark of other words or terms whether descriptive, geographical, pejorative, meaningless, or otherwise would not affect the similarity of the domain name from the registered trade mark under the first element of the Policy. As such, the Panel finds the additional elements “-” and “identity” do not preclude a finding of confusing similarity between the BMW and BMW GROUP marks and the disputed domain name. See section 1.8 of the WIPO Overview 3.0. Lastly, it is permissible for the Panel to ignore the gTLD, in this case “.net”. See section 1.11.1 of the WIPO Overview 3.0. Accordingly, the Complainant has satisfied the first element under paragraph 4(a) of the Policy. B. Rights or Legitimate Interests In circumstances where the Complainant possesses exclusive rights to the BMW and BMW GROUP marks, whereas the Respondent seems to have no trade mark rights, the Panel is satisfied that the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name, and the burden of production shifts to the Respondent. See section 2.1 of the WIPO Overview 3.0. The Respondent has not provided evidence of a legitimate use of the disputed domain name or reasons to justify the choice of the term “bmw” and “bmwgroup” in the disputed domain name. Further, there is no indication to show that the Respondent is commonly known by the disputed domain name or otherwise has rights or legitimate interests in the disputed domain name. The Respondent is currently using the disputed domain name on a webpage featuring pornographic and gambling content. However, the Complainant has not granted the Respondent a license or authorization to use the Complainant’s BMW and BMW GROUP marks or register the disputed domain name. None of these circumstances indicates a bona fide offering of goods or services or legitimate noncommercial or fair use of the disputed domain name within the meaning of paragraph 4(c) of the Policy are present in this case. For these reasons, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name. Accordingly, the Complainant has satisfied the second element under paragraph 4(a) of the Policy. C. Registered and Used in Bad Faith The Complainant’s BMW and BMW GROUP marks had been registered well before the registration of the disputed domain name. Through extensive use and advertising, the Complainant’s BMW and BMW GROUP marks are known throughout the world. Search results using the key words “BMW” or “BMW GROUP” on the search engines direct Internet users to the Complainant and its products, which indicates that a connection between the BMW and BMW GROUP marks and the Complainant has been established. Further, the disputed domain name was previously owned by the Complainant. As such, the Respondent either knew or should have known of the Complainant’s BMW and BMW GROUP marks when registering the disputed domain name or has exercised “the kind of willful blindness that numerous panels have held support a finding of bad faith”. See eBay Inc. v. Renbu Bai,WIPO Case No. D2014-1693; Barclays Bank PLC v. Andrew Barnes,WIPO Case No. D2011-0874. Section 3.1.4 of the WIPO Overview 3.0 states that “mere registration of a domain name that is identical or confusingly similar (particularly domain names comprising typos or incorporating the mark plus a descriptive term) to a famous or widely-known trade mark by an unaffiliated entity can by itself create a presumption of bad faith”. In this case, the disputed domain name incorporates the Complainant’s famous BMW and BMW GROUP marks creating a presumption of bad faith. In addition, the disputed domain name is being used by the Respondent on a website featuring pornographic and online gambling content, which demonstrates the Respondent is making commercial gain from the website by attracting Internet users by creating a likelihood of confusion with the Complainant’s mark. See paragraph 4(b)(iv) of the Policy. Further, the pornographic materials on the website tarnish the BMW and BMW GROUP marks and this has been found by previous UDRP panels to constitute evidence of registration and use of a domain name in bad faith. See section 3.12 of the WIPO Overview 3.0. In addition, the Panel notes that the Respondent appears to be engaged in a pattern of abusive registration having registered another domain name comprising of another complainant’s trade mark. See International Business Machines v. Shilin Li,WIPO Case No. D2021-0652; SODEXO v. Zhichao Yang (杨智超),WIPO Case No. D2020-2286. The Respondent has kept silent in the face of the Complainant’s allegations of bad faith. Taking into account these circumstances, the Panel finds that the Respondent must have known of the Complainant before registering the disputed domain name and, considering the Respondent’s lack of rights or legitimate interests, and by registering and using the disputed domain name as discussed above, the Panel is led to conclude that the disputed domain name was registered and is being used in bad faith. Accordingly, the Panel finds that the Complainant has satisfied the third element under paragraph 4(a) 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 Rachel Tan
Sole Panelist
Date: July 22, 2021
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