The Complainant is Bayerische Motoren Werke AG, Germany, represented by Kelly IP, LLP, United States of America (“United States”).
The Respondent is Charles Foran Jr, United States.
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 10, 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 details.
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 27, 2021. In accordance with the Rules, paragraph 5, the due date for Response was October 17, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 18, 2021.
The Center appointed Nicholas Smith as the sole panelist in this matter on October 23, 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 German company that has since 1917 offered automobiles, motorcycles and related products under a mark consisting of the abbreviation (an abbreviation of the Complainant’s business name) “BMW” (the “BMW Mark”). The Complainant sells more than 2 million vehicles annually, employs more than 120,000 people and has annual revenues of between 90 and 110 billion EUR. The Complainant uses a network of dealers to market new and second-hand BMW vehicles, with more than 3,500 dealers worldwide. Both the Complainant and a number of the Complainant’s dealers (with permission from the Complainant) utilise websites from domain names consisting of the BMW mark and a geographical term such as (in Texas)
The Complainant holds numerous trademark registrations for the BMW Mark in the United States, including trademark registration number 611,710 registered on September 6, 1955 for motorcycles and automobiles in class 12 and listing a date of first use in commerce of 1949.
The Domain Name was registered on August 17, 2010 and does not resolve to an active and accessible website.
5. Parties’ Contentions A. ComplainantThe Complainant makes the following contentions:
(i) that the Domain Name is identical or confusingly similar to the Complainant’s BMW Mark;
(ii) that the Respondent has no rights nor any legitimate interests in respect of the Domain Name; and
(iii) that the Domain Name has been registered and is being used in bad faith.
The Complainant is the owner of the BMW Mark, having registered the BMW Mark in the United States. The Domain Name is confusingly similar to the BMW Mark, wholly incorporating the BMW Mark and adding the geographical location “plano”.
There are no rights or legitimate interests held by the Respondent in respect of the Domain Name. The Complainant has not granted any license or authorization for the Respondent to use the BMW Mark nor is the Respondent commonly known by the Domain Name. The Respondent does not use the Domain Name for a bona fide purpose or legitimate noncommercial purpose. Indeed the Domain Name does not resolve to an active webpage at all.
The Respondent has registered and uses the Domain Name in bad faith. There is no possible use of the Domain Name, which combines the BMW Mark and the geographical location “plano”, other than in bad faith. Given the reputation of the highly distinctive BMW Mark, the Respondent must have been aware of the mark at the time of registration. In such circumstances, the Respondent’s passive holding of the Domain Name amounts to use of the Domain Name in bad faith.
B. RespondentThe Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings A. Identical or Confusingly SimilarTo prove this element the Complainant must have trade or service mark rights and the Domain Name must be identical or confusingly similar to the Complainant’s trade or service mark.
The Complainant is the owner of the BMW Mark, having a registration for the BMW Mark as a trademark in the United States.
The Domain Name incorporates the BMW Mark in its entirety with the addition of the geographical location “plano” (a city in Texas, on the outskirts of Dallas) (and the “.com” generic Top-Level Domain (“gTLD”), which can be discounted as an essential element of any domain name). Other UDRP panels have repeatedly held that 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 section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”). See also The Bank of Nova Scotia v. Whois Protection,WIPO Case No. D2007-0884; and Valero Energy Corporation, Valero Marketing and Supply Company v. Domain Name Proxy, LLC, Navigation Catalyst Systems, Inc.,WIPO Case No. D2011-1227.
The Panel finds that the Domain Name is confusingly similar to the Complainant’s BMW Mark under paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate InterestsTo succeed on this element, a complainant may make out a prima facie case that the respondent lacks rights or legitimate interests in the disputed domain name. If such prima facie case is made out, the respondent then has the burden of demonstrating rights or legitimate interests in the domain name.
Paragraph 4(c) of the Policy enumerates several ways in which a respondent may demonstrate rights or legitimate interests in a disputed domain name:
“Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.”
The Respondent is not affiliated with the Complainant in any way. It has not been authorized by the Complainant to register or use the Domain Name or to seek the registration of any domain name incorporating the BMW Mark or a mark similar to the BMW Mark. There is no evidence that the Respondent is commonly known by the Domain Name or any similar name.
There is no evidence that the Respondent has used or made demonstrable preparations to use the Domain Name in connection with a bona fide offering of goods or services or for a legitimate noncommercial use.
The Panel finds that the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the Domain Name. The Respondent has chosen not to respond substantively to the Complaint and thus has failed to provide any evidence of rights or legitimate interests in the Domain Name.
The Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name under paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad FaithFor the purposes of paragraph 4(a)(iii) of the Policy, 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 the Domain Name in bad faith:
(i) circumstances indicating that the Respondent has registered or has acquired the Domain Name primarily for the purpose of selling, renting, or otherwise transferring the Domain Name registrations to the Complainant who is the owner of the trademark or service mark or to a competitor of the Complainant, for valuable consideration in excess of its documented out-of-pocket costs directly related to the Domain Name; or
(ii) the Respondent has registered the Domain Name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the Respondent has engaged in a pattern of such conduct; or
(iii) the Respondent has registered the Domain Name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the Domain Name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website or location or of a product or service on the Respondent’s website or location.
The Panel finds that the Respondent must have been aware of the Complainant and its reputation in the BMW Mark at the time the Respondent registered the Domain Name. The BMW Mark is a well-known mark that has been in use in the United States since 1949. There is no obvious reason, nor has the Respondent offered an explanation, for the Respondent (located in Texas) to register a domain name incorporating the BMW Mark and the geographical term “plano” unless there was an intention to create a likelihood of confusion between the Domain Name and the Complainant and the BMW Mark. An Internet user viewing the Domain Name may be confused into thinking that the Domain Name refers to a website in some way connected to the Complainant. The registration of the Domain Name in awareness of the BMW Mark and in the absence of rights or legitimate interests amounts under these circumstances to registration in bad faith.
The Panel is prepared to infer, based on the conduct of the Respondent, including the passive holding of the Domain Name and the failure by the Respondent to provide a substantive explanation of its conduct in registering a domain name that combines the BMW Mark and the geographical term “plano”, that the Domain Name is most likely being held pending sale or use as website (or email address) that, without the license of the Complainant, will offer or make reference to the Complainant or its dealers’ goods or services. As such, the Panel finds that the passive holding of the Domain Name does not prevent a finding of use in bad faith.
Accordingly, the Panel finds that the Respondent has registered and is using the Domain Name in bad faith under 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,
Nicholas Smith
Sole Panelist
Date: October 28, 2021