The Complainant is Bayerische Motoren Werke AG, Germany, represented by Kelly IP, LLP, United States of America.
The Respondent is Kui Li, China.
2. The Domain Name and RegistrarThe disputed domain name
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 8, 2021. On September 10, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On September 13, 2021, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact
The Center verified that the 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 September 21, 2021. In accordance with the Rules, paragraph 5, the due date for Response was October 11, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 13, 2021.
The Center appointed Mathias Lilleengen as the sole panelist in this matter on October 25, 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 BackgroundThe Complainant is a manufacturer of automobiles and motorcycles, and part of the BMW Group. The Complainant sells and distributes automobiles and motorcycles, and provides numerous services including maintenance and repair services, financing, leasing, insurance, and warranty services, among others. The Complainant also licenses its BMW mark on a variety of automobile and motorcycle parts and accessories and numerous collateral products. For example, in each year from 2017 through 2020, BMW sold more than 2,028,000 automobiles and more than 162,000 motorcycles, under the BMW mark. The Complainant’s headquarters are located in Germany. BMW’s products and components are manufactured at 31 sites in countries around the world, and BMW has more than 120,000 employees worldwide.
The Complainant owns trademark registrations for marks that incorporate the term “BMW” in Germany, the earliest German registration is No. 221388 from December 10, 1917. The Complainant also owns numerous trademark registrations worldwide. The Complainant has for years used its BMW mark in connection with its network of websites dedicated to advertising. The network receives many millions of hits each month.
According to the Registrar, the Domain Name was registered on June 4, 2020. At the time of the Complaint and the time of drafting the Decision, the Domain Name resolved to a click-per-view web page that features ads for gambling.
5. Parties’ Contentions A. ComplainantThe Complainant provides evidence of trademark registrations. The Complainant argues that the Domain Name is confusingly similar to the Complainant’s trademark. The Domain Name contains the Complainant’s trademark combined with the terms “capital city”. The addition of an obvious geographic identifier to a distinctive mark is not sufficient to distinguish the Domain Name from the trademark.
The Complainant asserts that the Respondent is not authorized to use the Complainant’s trademark. The Respondent is not commonly known by the Domain Name. The Respondent cannot establish rights in the Domain Name, as it has not made any use of, or demonstrable preparations to use, the Domain Name in connection with a bona fide offering of goods or services. The Domain Name does resolves to a website that features ads for gambling websites. The Respondent undoubtedly receives commissions when such ads are viewed and/or clicked.
The Complainant believes the Respondent must have known of the Complainant’s well-known and distinctive BMW trademark when the Respondent registered the Domain Name. The Domain Name mimics the long-established naming conventions for domain names used by the Complainant and its authorized dealers. Furthermore, the Respondent uses the Domain Name to intentionally attract, for commercial gain, Internet users by creating a confusing similarity with the Complainant and its famous BMW mark as to the source, sponsorship, affiliation, and/or endorsement of the Respondent’s website.
B. RespondentThe Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings A. Identical or Confusingly SimilarThe Complainant has established that it has rights in the trademark BMW. The test for confusing similarity involves the comparison between the trademark and the Domain Name. In this case, the Domain Name incorporates the Complainant’s trademark with the addition of the terms “capital city”. The addition does not prevent a finding of confusing similarity; see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.8. For the purpose of assessing under paragraph 4(a)(i) of the Policy, the Panel may ignore the generic Top-Level Domain (“gTLD”) “.com”; see WIPO Overview 3.0, section 1.11.
The Panel finds that the Domain Name is confusingly similar to a trademark in which the Complainant has rights in accordance with paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate InterestsThe Complainant has made unrebutted assertions that it has not granted any authorization to the Respondent to register the Domain Name containing the Complainant’s trademark or otherwise make use of its mark. There is no evidence that the Respondent has registered the Domain Name as a trademark or acquired unregistered trademark rights. The Respondent cannot establish rights in the Domain Name, as it has not made use of, or demonstrable preparations to use, the Domain Name in connection with a bona fide offering of goods or services. On the contrary, the Respondent uses the Domain Name for a website that features ads for gambling websites through which the Respondent presumably earns click-through revenue. The Respondent’s use of the Domain Name is not bona fide, but rather evidence of bad faith.
The Panel finds that the Complainant has made out an unrebutted prima facie case. Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name in accordance with paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad FaithThe Domain Name is confusingly similar to the Complainant’s well-known trademark. The Respondent must have been aware of the Complainant when the Respondent registered the Domain Name. The Panel finds that it is likely that the Respondent has registered the Domain Name to resell it, and/or to attract Internet users to the Respondent’s website by creating a likelihood of confusion with the Complainant’s trademark.
The Respondent uses the Domain Name to attract, for commercial gain, Internet users by creating a likelihood of confusion with the Complainant and its trademark as to the source, sponsorship, affiliation, and/or endorsement of the Respondent’s website. Moreover, the Respondent has not provided any evidence of actual or contemplated good faith use, nor provided any response at all in justification of the registration of the Domain Name.
For the reasons set out above, the Panel concludes that the Domain Name was registered and is being used in bad faith, within the meaning of paragraph 4(a)(iii) 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 Domain Name
Mathias Lilleengen
Sole Panelist
Date: November 6, 2021