The Complainant is Bayerische Motoren Werke Aktiengesellschaft of Munich, Germany, represented by MSA IP – Milojevic Sekulic & Associates, Serbia.
The Respondent is Irena Milacic of Podgorica, Montenegro, self-represented. 2. The Domain Name and Registrar
The disputed domain name is registered with GoD, LLC (the "Registrar"). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on August 25, 2017. On August 25, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 28, 2017, 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 15, 2017. In accordance with the Rules, paragraph 5, the due date for Response was October 5, 2017. The Respondent submitted informal email communications on September 19 and September 26, 2017 but did not submit any formal response. Accordingly, the Center notified the Parties that it would proceed to the Panel appointment on October 11, 2017.
The Center appointed Alistair Payne as the sole panelist in this matter on November 10, 2017. 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 manufactures and sells motor vehicles worldwide under the BMW name and mark and provides numerous services in relation to its products including servicing and repair services through authorised agents and distributors in many countries including in Montenegro. The Complainant owns numerous trade mark registrations for its BMW mark and in particular European Union trade mark registration No. 00091835 for its BMW word mark which was registered on February 25, 2000. The Complainant also owns various domain names incorporating its BMW mark including registered in 1996 and which was registered in 2008.
The Respondent, based in Montenegro, who is not an authorised agent or distributor of the Complainant's products, registered the disputed domain name on January 23, 2012. The disputed domain name resolves to a website that offers services and spare parts for BMW motor vehicles and features the Complainant's word and device marks. 5. Parties' Contentions A. Complainant
The Complainant notes that it owns numerous trade mark registrations for its BMW mark and as noted above European Union trade mark registration 00091835 for its BMW word mark which was registered on February 25, 2000. According to the Complainant, the disputed domain name is confusingly similar to the BMW mark as it reproduces the trademark in its entirety. The Complainant submits that the disputed domain name also contains the family surname "Grebovic" as the second element after BMW and that this element does not distinguish it as it is a common family name in the Balkans. It says that the risk of confusion with the Complainant or its mark is only heightened because the website to which the disputed domain name resolves features the Complainant's BMW word and device marks. The Complainant also submits that its BMW mark is truly a well-known or famous mark that has been recognized as such by panels in previous decisions.
The Complainant submits that the Respondent is not affiliated with it in any way and has not been authorised to use its name, or mark, whether as a dealer or distributor or otherwise and has no prior rights or legitimate interests in the disputed domain name. The Complainant submits that the Respondent's BMW mark was widely known well before the registration of the disputed domain name and in any event the website to which it resolves features unauthorised uses of the BMW mark. As a result, says the Complainant, the Respondent must have been aware of its BMW mark and business when the Respondent registered the disputed domain name.
The Complainant submits that the Respondent is not commonly known by the BMW name or mark and in addition that the Respondent's surname is "Milacic" and not "Grebovic". Further there is no legitimate noncommercial or fair use here as the Respondent is clearly using it for unauthorized commercial gain. The Complainant notes in this connection that the Respondent is not using the website to which the domain name resolves to sell only the Complainant's products and neither is there any notice on the website disclosing the Respondent's relationship with the Complainant as required under the test often applied in relation to authorised resellers, repairers or distributors from the Oki Data Americas, Inc. v. ASD, Inc decision, WIPO Case No. D2001-0903.
The Complainant submits for the reasons set out above and particularly because of the notoriety of the BMW mark, it is not credible to consider that the Respondent was not aware of the Complainant's BMW mark and products when the Respondent registered the disputed domain name and in any event a very quick online search would have revealed the Complainant's marks at the date of registration of the disputed domain name.
In sum the Complainant submits that the Respondent registered the disputed domain name in opportunistic bad faith for the Respondent's own commercial purposes and has subsequently used it to resolve to a webpage where the well-known BMW logo is used purporting to offer the repair of BMW vehicles and sale of aftermarket parts as a direct importer from the Complainant, as if the Respondent was affiliated with, or authorised by, the Complainant, when this is not the case and with no disclaimer on the website. The Complainant says that this supports the inference that the Respondent both registered and used the disputed domain name in bad faith under paragraph 4(a)(iii) of the Policy. B. Respondent
The Respondent did not reply to the Complainant's contentions. In the Respondent's email communication of September 19, 2017, the Respondent stated, inter alia, that "This domain is used because of this car-service name in Montenegro is bwm grebovic, as you can view on pictures on site. I am sorry if we did mistake, it was not our intention." In the Respondent's email communication of September 26, 2017, the Respondent stated, inter alia, "I would like to inform you that BMW Grebovic doo Podgorica will within 2 business days remove trademark BMW from its domain name as well as from all its email addresses. Furthermore, the procedure of its cancellation has been already started. Within given deadline, we will cancel domain and we will restrain for any future use of it … Please note that BMW Grebovic doo Podgorica is willing to settle this dispute in the most amicable manner." 6. Discussion and Findings A. Identical or Confusingly Similar
The Complainant has demonstrated that it owns various trade mark registrations for its BMW word mark and in particular European Union trade mark registration which was registered on February 25, 2000. The Panel finds that the Complainant's BMW word mark is of the category of mark that is very well-known as has been recognized by numerous previous panels, including for example,WIPO Case No. D2016-0906, Bayerische Motoren Werke AG v. Gipol Kaip andWIPO Case No. D2000-1156, Bayerische Motoren Werke AG v. Loophole.
The disputed domain name wholly incorporates the Complainant's BMW mark. The Panel finds that the addition of the surname "Grebovic" does not distinguish the disputed domain name from the Complainant's mark. The Panel also does not consider that the ".me" top-level domain functions as a distinguishing factor in this context.
As a consequence, the Panel finds that the disputed domain name is confusingly similar to the Complainant's mark and the Complaint succeeds under this element of the Policy. B. Rights or Legitimate Interests
The Complainant has submitted that the Respondent is not affiliated with it in any way and has not been authorised to use its name, or mark, whether as a dealer or distributor, or otherwise and has no prior rights or legitimate interests in the disputed domain name. The Complainant has also submitted that the Complainant's BMW mark was widely known prior to the registration of the disputed domain name. It says that the website to which the disputed domain name resolves features unauthorised uses of the BMW mark and therefore the Respondent must have been aware of its BMW mark and business when the Respondent registered the disputed domain name and did so and has used it for the Respondent's own commercial purposes which is neither bona fide or legitimate.
The Complainant has also submitted that the Respondent is not commonly known by the BMW name or mark and in addition that that the Respondent's surname is "Milacic" and not "Grebovic". Further, it says that there is no legitimate noncommercial or fair use here as the Respondent is clearly using it for unauthorized commercial gain. The Complainant notes in this connection that the Respondent is not using the website to which the domain name resolves to sell only the Complainant's products and neither is there any notice on the website disclosing the Respondent's relationship with the Complainant as required under the test often applied in relation to authorised resellers, repairers or distributors from the decision in Oki Data Americas, Inc. v. ASD, Inc, WIPO Case No. D2001-0903. The Panel notes its agreement with the Complainant that the Respondent's website and use of the disputed domain name does not satisfy the Oki Data factors.
The Panel finds that the Complainant has made out a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name. The Panel finds that the Respondent's email communications of September 19 and September 26, 2017, do not rebut this case and therefore the Panel therefore finds, also for the reasons set out under Part C below, that the Respondent has no rights or legitimate interests in the disputed domain name. C. Registered and Used in Bad Faith
At the date of registration of the disputed domain name in 2012 the Complainant's BMW mark was so extremely well-known worldwide that it is not credible to consider that the Respondent, also involved in the motor vehicle business, was not well aware of it. The fact that the website to which the disputed domain name resolves contains representations of the BMW word and logo marks is indicative that the Respondent must have been aware of the Complainant's mark and registered the disputed domain name regardless and for the purposes of attracting Internet users to the Respondent's business.
The Complainant has submitted in evidence copies of the webpages at the disputed domain name showing that the Respondent has used the disputed domain name to resolve to a webpage at which it purports to offer repair and other services for BMW vehicles. This webpage features the BMW word mark and various representations of the BMW logo as if the Respondent and the site had been authorised to do so by the Complainant, when this is clearly not the case.
Under paragraph 4(b)(iv) of the Policy using a domain name to intentionally attract Internet users to your website for commercial gain by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation or endorsement of the website, or of the services offered from it, amounts to evidence of registration and use in bad faith. The Respondent has clearly used the disputed domain name in this case to intentionally attract Internet users to the Respondent's website for the purposes of commercial gain by creating a likelihood of confusion with the Complainant's BMW mark as to the source, sponsorship, affiliation or endorsement of the website, or of the services offered from it. As a result, the Panel finds that this amounts to evidence of registration and use in bad faith under the third element of the Policy and consequently the Complainant also succeeds under this element 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 be transferred to the Complainant.
Alistair Payne
Sole Panelist
Date: November 21, 2017
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