Complainant is Bayerische Motoren Werke AG (BMW), Germany, represented by Grau & Angulo, Spain.
Respondent is Tristram Congreve, Tricosol SL CIF: ESB9296239, Spain.
2. The Domain Name and RegistrarThe disputed domain name
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 19, 2021. On July 19, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 19, 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 Complainant on July 26, 2021, providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on July 30, 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”).
In accordance with the Rules, paragraphs 2 and 4, the Center formally notified Respondent of the Complaint, and the proceedings commenced on August 26, 2021. In accordance with the Rules, paragraph 5, the due date for Response was September 15, 2021. The Center received email communication from Respondent on July 27, 2021, and an email communication from the previous registrant of the disputed domain name on September 13, 2021. The Center received an unsolicited Supplemental Filing from Complainant on September 28, 2021.
The Center appointed Ingrīda Kariņa-Bērziņa as the sole panelist in this matter on October 19, 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 BackgroundComplainant, headquartered in Germany, is one of the world’s leading manufacturer of automobiles and motorcycles. It is the proprietor of numerous trademark registrations for its BMW mark, including the following:
- International Trademark Registration No. 663925 for BMW (word mark), registered on December 22, 1995, for goods and services in classes 12, 39, 41, and 42;
- European Union Trade Mark No. 91835 for BMW (word mark), registered on April 1, 1996, for goods and services in classes 12, 39, 41, and 41.
Complainant operates its business website at the domain name
The disputed domain name was registered on November 11, 2009. It resolves to the website of a motorcycle hire business in Spain operated by Respondent under the name “Moto Hire Spain”. The site contains the following notice: “Our site has moved!! You can reserve your BMW or Triumph motorcycle rental in Spain by visiting our great new site at […].”
The record contains extensive evidence of Complainant’s correspondence with the previous registrant of the disputed domain name regarding transfer of the disputed domain name beginning in 2018. The parties did not reach agreement on the terms of such a transfer, and these proceedings were later initiated by Complainant.
Complainant had named the previous registrant of the disputed domain name as one of the Respondents.
5. Parties’ Contentions A. ComplainantComplainant’s contentions may be summarized as follows:
Under the first element, Complainant states that BMW was founded in 1913 as a manufacturer of aircraft engines and is today one of the leading manufacturers of premium automobiles and motorcycles. Complainant’s group headquarters are located in Munich, Germany, but it has production and assembly facilities in 15 countries and a global sales network in more than 140 countries. Complainant sold over 2.5 million passenger vehicles and 175,000 motorcycles worldwide in 2019. It has a workforce of over 134,000 employees and reported revenues of EUR 97 billion in 2018. BMW is one of the most powerful brands in the world, with substantial marketing activities. The disputed domain name fully incorporates Complainant’s prior BMW trademarks, with the addition of the descriptive term “motohire”.
Under the second element, Complainant states that Respondent is not a licensee of Complainant, nor does Respondent have any consent, authorization or legitimacy to use the BMW mark. Respondents have no trademark rights in the BMW denomination. Correspondence between Complainant and the previous registrant of the disputed domain name demonstrate that this party had full knowledge of his lack of permission to use the BMW mark. The disputed domain name resolves to a website of a business renting motorcycles and offering other services for tourists in Spain, which is not a legitimate noncommercial use.
Under the third element, Complainant states that Respondent registered the disputed domain name in full knowledge of Complainant’s BMW famous mark. The correspondence with the previous registrant demonstrates that the disputed domain name was used to attract customers to the website.
Complainant states that Respondent should be identified both as the named Registrants of the disputed domain name and also the previous registrant of the disputed domain name and his wife, since those persons had initially registered the disputed domain name and had owned and operated the business that was sold to the named Registrants along with the disputed domain name. Furthermore, Complainant states its belief that the previous registrant remained involved with managing the business using the disputed domain name. Therefore, both the current registrant of the disputed domain name and the previous registrant should be named as Respondents.
In its Supplemental Filing, Complainant provides additional information on its correspondence with the previous registrant regarding the transfer of the disputed domain name and the conduct of the previous registrant.
Complainant requests transfer of the disputed domain name.
B. RespondentRespondent did not file a formal Response. In email communications with the Center, Respondent stated that he had recently purchased the business and was unaware of any outstanding issues regarding the disputed domain name.
C. Previous registrantThe record contains an email sent by the previous registrant of the disputed domain name stating that he no longer owns the domain name and that previous negotiations with Complainant regarding the transfer of the domain name had been unsuccessful. He invites Complainant to take up the matter with the current registrant of the disputed domain name.
6. Discussion and Findings 6.1. Procedural Issues A. Identity of RespondentThe Panel has considered Complainant’s request to name as Respondent both the current registrant of the disputed domain name and the previous registrant of the domain name.
Pursuant to the Rules, paragraph 1, the Respondent “means the holder of a domain-name registration against which a complaint is initiated”. Having reviewed the evidence presented by Complainant, the Panel does not find it necessary to name any additional respondents. The Panel has reviewed the materials related to the previous registrant submitted by Complainant and does not find that they would alter the outcome. There is sufficient material in the record to render a Decision without reference to the the previous registrant. Accordingly, the Panel names Respondent based on the details confirmed by the Registrar, noting these details correspond to Respondent as per the Rules, and also noting that the previous registrant has explicitly confirmed that it is no longer the registrant of the disputed domain name.
B. Supplemental FilingThe Panel has a duty to “ensure that the Parties are treated with equality and that each Party is given a fair opportunity to present its case”, Rules, paragraph 10(b). To this end, pursuant to paragraph 12 of the Rules, “the Panel may request, at its sole discretion, further statements or documents from either of the Parties”.
At the same time, however, pursuant to Paragraph 10(c) of the Rules, “[t]he Panel shall ensure that the administrative proceeding takes place with due expedition”. Accordingly, unsolicited supplemental filings are generally discouraged. Exceptionally, they may be accepted to consider material new evidence or to provide a fair opportunity to respond to arguments that could not reasonably have been anticipated. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 4.6, and cases cited thereunder.
Complainant’s supplemental filing constitutes a reply to an email sent by the previous registrant of the disputed domain name, regarding negotiations to transfer the disputed domain name. In the view of the Panel, this email repeats much of what is already on the record and therefore provides no relevant new evidence to support the assertions in the Complaint.
The Panel therefore shall not take into consideration the supplemental filing made by Complainant.
6.2. Substantive IssuesParagraph 4(a) of the UDRP requires Complainant to make out all three of the following:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) Respondent has registered and is using the disputed domain name in bad faith.
A. Identical or Confusingly SimilarComplainant has provided evidence establishing that it has trademark rights in the BMW mark through registrations in the European Union and internationally. Complainant thereby satisfies the threshold requirement of having trademark rights for purposes of standing to file a UDRP case. See WIPO Overview 3.0, section 1.2.1.
In comparing Complainant’s marks with the disputed domain name, the Panel finds that the disputed domain name is confusingly similar to Complainant’s mark. The disputed domain name comprises Complainant’s BMW mark followed by dictionary terms, namely, “moto hire”. It is the consensus view of UDRP panels that, where a domain name incorporates the entirety of a trademark, the domain name will normally be considered confusingly similar to that mark. Moreover, where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element. See WIPO Overview 3.0, sections 1.7 and 1.8.
It is the well-established view of UDRP panels that the generic Top-Level Domain “.com” is viewed as a standard registration requirement and as such is disregarded under the first element confusing similarity test (see WIPO Overview 3.0, section 1.11.1, and cases cited thereunder).
Accordingly, the Panel finds that Complainant has established the first element under paragraph 4(a) of the Policy.
B. Rights or Legitimate InterestsThe circumstances stated in the Complaint and evidence in support set forth in the annexes thereto indicate that Respondent has no rights or legitimate interests in the disputed domain name.
The Panel finds that the evidence submitted by Complainant establishes a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name. Respondent is not authorized by Complainant and has no trademark rights in the BMW mark. The disputed domain names contain Complainant’s mark in its entirety, thereby suggesting sponsorship or endorsement by the trademark owner. Such use cannot confer rights or legitimate interests. See, for example, WIPO Overview 3.0, section 2.5.1.
Pursuant to WIPO Overview 3.0, section 2.1, and cases thereunder, where Complainant makes out a prima facie case that Respondent lacks rights or legitimate interests, the burden of production on this element shifts to Respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the disputed domain names.
Respondent has not provided evidence of any rights or legitimate interests. There is no evidence that Respondent is commonly known by the disputed domain name, or that there are any circumstances or activities that would establish Respondent’s rights therein. The disputed domain name resolves to the website of a motorcycle hire business. Even considering the evidence in the light most favorable to Respondent, the circumstances do not indicate that the cumulative requirements of the “Oki Data test” have been met. Under this test, a reseller, distributor or service provider may be making a bone fide offering of goods and services and thus have a legitimate interest in the disputed domain name. The Panel notes that Respondent is using the disputed domain name to sell services other than the rental of BMW motorcycles, and the site does not disclose the registrant’s relationship with the trademark holder. See WIPO Overview 3.0, section 2.8. Rather, the evidence demonstrates that Respondent is using the disputed domain name to attract Internet users by using Complainant’s trademark. Such use cannot confer rights or legitimate interests on Respondent. See WIPO Overview 3.0, section 2.5.3, and cases cited thereunder.
Accordingly, the Panel finds that Complainant has established the second element under paragraph 4(a) of the Policy.
C. Registered and Used in Bad FaithThe Panel finds that Complainant has demonstrated Respondent’s bad faith registration and use of the disputed domain name. Complainant’s rights in its distinctive and well-known BMW mark significantly predate the registration of the disputed domain name. The disputed domain names reflect Complainant’s mark together with dictionary terms. UDRP panels have consistently found that the mere registration of a domain name that is identical or confusingly similar (particularly domain names incorporating the mark plus a descriptive term) to a famous or widely-known trademark by an unaffiliated entity can by itself create a presumption of bad faith on the part of Respondent. See WIPO Overview 3.0, section 3.1.4.
Respondent, in failing to provide a substantive Response or any evidence, has not rebutted the presumption of bad faith. The fact that the disputed domain name resolves to a website of a business offering BMW and third-party motorcycles for rent demonstrates that Respondent was seeking to attract Internet users by using Complainant’s mark in the disputed domain name, thereby improving Respondent’s visibility among Internet users seeking information about motorcycle rentals. Such conduct does not correspond to any of the possible exceptions for legitimate noncommercial use, but rather demonstrates bad faith. See WIPO Overview 3.0, sections 3.1.3 and 3.1.4.
The Panel therefore finds that Complainant has established the third element under paragraph 4(a) of the Policy.
7. DecisionFor 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
Ingrīda Kariņa-Bērziņa
Sole Panelist
Date: November 2, 2021