The Complainant is Bayerische Motoren Werke AG of Munich, Germany, represented by Finnegan, Henderson, Farabow, Garrett & Dunner, LLP, United States of America.
The Respondent is Dipen Vyas of Ahmedabad, Gujarat, India, self-represented. 2. The Domain Name and Registrar
The disputed domain name, (the “Domain Name”), is registered with Melbourne IT Ltd (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 26, 2013. On October 28, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On October 28, 2013, 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. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amended Complaint on November 9, 2013.
On November 5, 2013, the Respondent sent a pre-commencement email communication to the Center seeking information as to the procedure for responding to the Complaint. The Center responded on the same day.
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(a) and 4(a), the Center formally notified the Respondent of the Complaint with the amended Complaint, and the proceedings commenced on November 12, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was December 2, 2013. The Response was filed with the Center on November 27, 2013.
The Center appointed Tony Willoughby as the sole panelist in this matter on December 9, 2013. 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 the well-known manufacturer of BMW automobiles and motorcycles. It has been using the BMW trade mark for over 90 years. In February 2011 it announced the introduction of a new range of BMW vehicles which it denominated the “BMW i series”. It is the registered proprietor of a number of trade mark registrations for BMW (dating back several decades) and some more recent registrations for BMW i. For present purposes it is sufficient to mention one of those registrations, namely Indian Registration No. 2145168 for the mark BMW i dated May 16, 2011 for vehicles and parts thereof in international class 12.
The Complainant is also the registrant of the domain names, , which it registered in January 2011, and , which it registered in July 2011.
The Domain Name was registered on May 16, 2012 and has been connected to a parking page of net4 India, the Respondent’s web host, advertising net4 India’s web hosting and email services.
The Respondent is also the registrant of other domain names including and , which resolve to the same pay-per-click parking page of the Respondent’s web host.
The Complainant wrote to the Respondent on March 13, 2013 and again on July 31, 2013 seeking cancellation or transfer of the Domain Name, but received no reply to either letter. 5. Parties’ Contentions A. Complainant
The Complainant contends that the Domain Name is identical or confusingly similar to the Complainant’s BMW and BMWi trade marks, that the Respondent has no rights or legitimate interests in respect of the Domain Name and that the Domain Name was registered and is being used in bad faith.
The Complainant asserts that the Respondent receives pay-per-click revenue via the advertising links on the webpage to which the Domain Name is connected, points to the fact that the Respondent has not responded to the Complainant’s letters and points also to the Respondent’s “Lexus”-related domain names. B. Respondent
The Response is short and can conveniently be quoted verbatim:
“I am responding for the Statements and Allegations Made in Complaint.
1) Paragraph 6 (A) d 20. Complainant alleges that i am currently uses the Domain Name to re-direct internet users to a parked website featuring advertising links sponsored by Respondent’s web hosting company. Respondent undoubtedly receives “click-through” commissions when Internet users click on the advertisements displayed on its website.
But this allegation is baseless. It is a default page of my domain registrar Net 4 India. Here i am attaching screenshot of this website in ANNEXE 1. In which clearly written that ‘This Web page is parked FREE, courtesy of N’. I have not parked this domain to any click-through or pay per click website. Thus i am not receiving any type of money or rewards from anybody.
2) I have never upload any webpage or website for this domain. How can Complainant alleges about my faith ?
3) BMWI is 4 different letters. In near future i want to make a website related to my family, which short form is BMWI.
4) I am not linking any website related to BMW cars or any car company’s website. Thus i am not having any bad faith for this domain.
These are my responses against complain. I hope panel will consider my responses as good faith. If panel wants further responses, i am agree to do so.
Thank you.” 6. Discussion and Findings A. General
According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the Domain Name, the Complainant must prove each of the following, namely that:
(i) The Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights;
(ii) The Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) The Domain Name has been registered and is being used in bad faith. B. Identical or Confusingly Similar
The Domain Name comprises the Complainant’s trade mark BMW i (absent the space) and the generic “.co” country code top level domain identifier. For the purposes of assessing identity and confusing similarity under this element of the Policy it is permissible for panels to ignore spaces and top level domain identifiers.
The Panel finds that the Domain Name is identical to the Complainant’s BMW i trade mark and confusingly similar to the Complainant’s BMW trade mark.
Accordingly, the Panel finds that the Domain Name is identical or confusingly similar to trade marks in which the Complainant has rights. C. Rights or Legitimate Interests
The Complainant contends that the Respondent registered the Domain Name with knowledge of the Complainant’s new “BMW i” series automobiles, only a year after the series was launched and with a view to exploiting the trade mark value of the Domain Name. The Complainant points to the fact that the Respondent has also registered domain names featuring the Lexus name (see section 4 above), Lexus being a competitor of the Complainant, and that all the domain names (including the Domain Name) are connected to a pay-per-click parking page of net4 India, the Respondent’s web host. The Complainant contends that the Respondent’s registration and use of the Domain Name cannot give to the Respondent any rights or legitimate interests in respect of the Domain Name.
The Panel is satisfied that the Complainant has made out a prima facie case, calling for an answer from the Respondent.
The Respondent contends that he is not making any use of the Domain Name such as to give rise to any rights or legitimate interests. His case is that it is his web host who is making commercial use of the Domain Name, not him. Instead he argues that his registration of the Domain Name was for a bona fide purpose: “In near future i want to make a website related to my family, which short form is BMWI.”
The Respondent provides no supporting evidence. The Panel is given no information as to how “BMWI” can be a short form for his family.
In the absence of a credible, properly formulated response, the Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name. D. Registered and Used in Bad Faith
The Complainant contends that the Respondent intentionally targeted the Complainant’s “BMW i” brand when registering the Domain Name. The Panel agrees that the evidence supports that contention. The Domain Name was registered not long after the Complainant launched its “BMW i” series, the Respondent has used the name of another automobile manufacturer (Lexus) for other of his domain names and the Respondent has come forward with no credible explanation for registering the Domain Name.
That deals with bad faith registration of the Domain Name, but what about use in bad faith? To succeed the Complainant needs to demonstrate on the balance of probabilities, not only bad faith registration, but also bad faith use.
The Complainant contends that the Respondent is attracting Internet users to his webpage by virtue of the Complainant’s trade mark present in the Domain Name and is earning pay-per-click revenue from the advertising links (paragraph 4(b)(iv) of the Policy). The Respondent denies that he is receiving any revenue. He states that the web page connected to the Domain Name is a default page of his web host and that any revenue is going to the web host.
The Complainant further contends that the Domain Name constitutes a blocking registration and is part of a pattern along with the Respondent’s “Lexus” domain name registrations (paragraph 4(b)(ii) of the Policy).
The Panel prefers to deal with the case on a broader basis. The Respondent registered the Domain Name, as the Panel has found, for no reason other than that it is the brand of the Complainant. A similar point can be made in respect of the Respondent’s “Lexus” domain name registrations. How the Respondent intended to make use of the Domain Name is not known. The Panel does not accept as credible the unsupported reason given by the Respondent (see paragraph C above). The fact that the Respondent was unwilling or unable to come forward with a proper explanation leads the Panel to believe that his purpose was abusive.
The Panel finds that the Domain Name in the hands of the Respondent constitutes an abusive threat hanging over the head of the Complainant and, as such, constitutes a continuing abusive, bad faith use of the Domain Name.
The Panel finds that the Domain Name was registered and is being used in bad faith. 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 Domain Name, , be transferred to the Complainant.
Tony Willoughby
Sole Panelist
Date: December 11, 2013
Full & Egal Universal Law Academy