The Complainant is Bayerische Motoren Werke AG of Munich, Germany, represented by Kelly IP, LLP, United States of America.
The Respondent is Masakazu/Living By Blue Co., Ltd. of Tokyo, Japan. 2. The Domain Name and Registrar
The disputed domain name is registered with Malawi SDNP (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 22, 2015. On July 23, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 25, 2015, 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on August 5, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was August 25, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 26, 2015.
The Center appointed William R. Towns as the sole panelist in this matter on September 8, 2015. 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, headquartered in Munich, Germany, is a leading manufacturer and distributor of automobiles and motorcycles. The Complainant is the owner of the BMW mark, and holds registrations for the BMW mark in more than 140 countries around the world, including Germany, the United States of America, Japan (location of Respondent), and Malawi (location of Registrar). Since 1917 the Complainant has manufactured and sold millions of vehicles under the BMW mark, including more than 1,300,000 automobiles and more than 100,000 motorcycles annually in 2011 through 2014. The BMW mark has been recognized as a leading global brand by Interbrand and is well known, and acknowledged as a well-known or famous mark in several UDRP decisions. See, e.g., Bayerische Motoren Werke AG v. Null,WIPO Case No. D2002-0937.
The Complainant has submitted evidence that the disputed domain name has been offered for sale for USD 1,000,000 or more as a “premium domain” on the “www.a.mw” website, to which the disputed domain name resolved at the time of the filing of the Complaint. The Respondent did not submit a response to the Complaint. 5. Parties’ Contentions A. Complainant
The Complainant maintains that the disputed domain name is identical and confusingly similar to the Complainant’s BMW mark, which the Complainant submits is a well-known and famous mark. The Complainant asserts that the disputed domain name incorporates the BMW mark in its entirety, differing only by a non-distinctive punctuation mark (“.”). The Complainant cites UDRP decisions to support its position that the Top-Level Domain (“TLD”) suffix should be included in this case for purposes of comparing the Complainant’s mark to the disputed domain name.
The Complainant further submits that the Respondent has no rights or legitimate interests in the disputed domain name. According to the Complainant, the Respondent has not been commonly known by the disputed domain name, and the Complaint avers that the Respondent has not been licensed to use the Complainant’s BMW mark. The Complainant maintains that the Respondent’s registration and use of the disputed domain name for purposes of selling it for USD 1,000,000 or more does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name. The Complainant also asserts that the Respondent’s offer to sell the disputed domain name independently is evidence of the Respondent’s lack of rights or legitimate interests.
The Complainant contends that the Respondent registered and is using the disputed domain name in bad faith. According to the Complainant, it is clear the Respondent was aware of the Complainant’s famous BMW mark when registering the disputed domain name. The Complainant submits that the Respondent registered the disputed domain name primarily to sell, rent, or otherwise transfer it for valuable consideration in excess of its documented out-of-pocket expenses. The Complainant further maintains that the Respondent has engaged in the bad faith pattern of registering domain names reflecting well-known third-party marks including FERRARI, ALFA ROMEO, PEUGEOT, HONDA, PORSCHE, CARRERA, YAMAHA, LOTUS, and APPLE and seeking to sell those as “premium names” for prices significantly in excess of other one- or two-letter domain names (the latter of which are offered for several hundred to a few thousand USD). The Complainant further argues that the Respondent has used the disputed domain name to intentionally attract, for commercial gain, Internet users by creating a likelihood of confusion with the Complainant’s BMW mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s websites and activities. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Scope of the Policy
The Policy is addressed to resolving disputes concerning allegations of abusive domain name registration and use. See Milwaukee Electric Tool Corporation v. Bay Verte Machinery, Inc. d/b/a The Power Tool Store,WIPO Case No. D2002-0774. Accordingly, the jurisdiction of this Panel is limited to providing a remedy in cases of “the abusive registration of domain names”, also known as “cybersquatting”. See Weber-Stephen Products Co. v. Armitage Hardware,WIPO Case No. D2000-0187. See also Final Report of the WIPO Internet Domain Name Process, April 30, 1999, paragraphs 169 and 170.
Paragraph 15(a) of the Rules provides that the Panel shall decide a complaint on the basis of statements and documents submitted and in accordance with the Policy, the Rules and any other rules or principles of law that the Panel deems applicable.
Paragraph 4(a) of the Policy requires that the complainant prove each of the following three elements to obtain a decision that a domain name should be either cancelled or transferred:
(i) The domain name registered by the respondent is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) The respondent has no rights or legitimate interests with respect to the domain name; and
(iii) The domain name has been registered and is being used in bad faith.
Cancellation or transfer of the disputed domain name are the sole remedies provided to the complainant under the Policy, as set forth in paragraph 4(i).
Paragraph 4(b) of the Policy sets forth four situations under which the registration and use of a disputed domain name is deemed to be in bad faith, but does not limit a finding of bad faith to only these situations.
Paragraph 4(c) of the Policy in turn identifies three means through which a respondent may establish rights or legitimate interests in the disputed domain name. Although the complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, UDRP panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is primarily if not exclusively within the knowledge of the respondent. Thus, the consensus view is that paragraph 4(c) of the Policy shifts the burden of production to the respondent to come forward with evidence of a right or legitimate interest in the disputed domain name, once the complainant has made a prima facie showing. See, e.g., Document Technologies, Inc. v. International Electronic Communications Inc.,WIPO Case No. D2000-0270. B. Identical or Confusingly Similar
The Panel finds for purposes of paragraph 4(a)(i) of the Policy that the disputed domain name is confusingly similar if not identical to the Complainant’s BMW mark, in which the Complainant has established rights through registration and long and extensive use. In considering the question of identity or confusing similarity, the first element of the Policy operates essentially as a standing requirement.1 The threshold inquiry under the first element of the Policy is framed in terms of whether the trademark and the disputed domain name, when directly compared, are identical or confusingly similar.
In this case, the disputed domain name differs from the Complainant’s BMW mark only by the addition of a punctuation mark (“.”) between the “b” and “mw” in the mark. While “.mw” is the TLD, consideration of TLDs may in appropriate circumstances be considered when evaluating identity or confusing similarity under the first element of the Policy, and the Panel finds such consideration to be appropriate in the circumstances of this case. See, e.g., Tesco Stores Limited v. Mat Feakins,WIPO Case No. DCO2013-0017; Zions Bancorporation v. Mohammed Akik Miah,WIPO Case No. D2014-0269.
Accordingly, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy. C. Rights or Legitimate Interests
As noted above, once the complainant makes a prima facie showing under paragraph 4(a)(ii) of the Policy, paragraph 4(c) of the Policy shifts the burden of production to the respondent to come forward with evidence of rights or legitimate interests in a disputed domain name. The Panel finds that the Complainant has made a prima facie showing. It is undisputed that the Respondent has not been commonly known by the disputed domain name. The Respondent, without the Complainant’s authorization or consent, has registered a domain name that is confusingly similar if not virtually identical to the Complainant’s well-known BMW mark. The Respondent has used the disputed domain name to redirect Internet users to another website where the disputed domain name has been offered for sale to the public for sums of USD 1,000,000 or more.
Pursuant to paragraph 4(c) of the Policy, a respondent may establish rights to or legitimate interests in a disputed domain name by demonstrating any of the following:
(i) before any notice to it of the dispute, the respondent’s 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) the respondent has been commonly known by the domain name, even if it has acquired no trademark or service mark rights; or
(iii) the respondent is making a 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.
It is apparent to the Panel that the Respondent was aware of the Complainant’s distinctive and well-known BMW mark when registering the disputed domain name. The Panel concludes that the Respondent did so in order to trade on the goodwill and reputation of the Complainant’s mark through the creation of Internet user confusion. Internet users could easily expect that the disputed domain name would be linked to the Complainant’s website or another website that is affiliated with, or has the endorsement or sponsorship of, the Complainant. See Levantur, S.A. v. Media Insight,WIPO Case No. D2008-0774. Instead, the Respondent has used the disputed domain name to redirect Internet visitors to another website on which the disputed domain name has been offered for sale for USD 1,000,000 or more.
The Panel concludes from the record as a whole that the Respondent registered the disputed domain name intending to exploit and profit from the goodwill and reputation of the Complainant’s BMW mark. Having regard to all of the relevant circumstances in this case, the Panel finds that the Respondent has not used or demonstrated preparations to use the disputed domain name in connection with a bona fide offering of goods or services. Use which intentionally trades on the fame of another cannot constitute a bona fide offering of goods or services. Philip Morris Incorporated v. Alex Tsypkin,WIPO Case No. D2002-0946; Madonna Ciccone, p/k/a Madonna v. Dan Parisi and “M”, WIPO Case No. D2000-0847.
In light of this, the Panel further finds that the Respondent is not making a legitimate noncommercial or fair use of the disputed domain name without intent for commercial gain to misleadingly divert consumers. As noted earlier, there is no indication that the Respondent has been commonly known by the disputed domain name within the meaning of paragraph 4(c)(ii) of the Policy. In short, nothing in the record before the Panel supports a claim by the Respondent of rights or legitimate interests in the disputed domain name.
Accordingly, the Panel finds the Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy. D. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy states that any of the following circumstances, in particular but without limitation, shall be considered evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that the respondent registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant (the owner of the trademark or service mark) or to a competitor of that complainant for valuable consideration in excess of respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) circumstances indicating that the respondent 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) circumstances indicating that the respondent registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) circumstances indicating that the respondent is using the domain name to intentionally attempt 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 its website or location.
The examples of bad faith registration and use set forth in paragraph 4(b) of the Policy are not meant to be exhaustive of all circumstances from which such bad faith may be found. See Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003. The overriding objective of the Policy is to curb the abusive registration of domain names in circumstances where the registrant seeks to profit from and exploit the trademark of another. See M, LP v. Bill Zag and NWLAWS.ORG,WIPO Case No. D2004-0230.
For the reasons discussed under this and the preceding heading, the Panel considers that the Respondent’s conduct in this case constitutes bad faith registration and use of the disputed domain name within the meaning of paragraph 4(a)(iii) of the Policy. As noted above the Panel concludes that the Respondent was aware of the Complainant’s BMW mark when registering the disputed domain name. For the reasons noted earlier, and in the absence of any explanation from the Respondent, the Panel concludes that the Respondent’s has engaged in the abusive registration and use of the disputed domain name, seeking to trade on the goodwill and reputation of the Complainant’s well-known BMW mark, and attempting to sell the disputed domain name for an amount well in excess of any out-of-pocket registration costs. This is underscored by the fact that the disputed domain name is offered for sale at a price exponentially higher than any other domain name offered for sale by the Respondent. In other words, the inescapable conclusion is that the Respondent is clearly targeting the Complainant with a view to extracting money on the back of the Complainant’s fame in its mark.
Accordingly, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(iii) 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.
William R. Towns
Sole Panelist
Date: September 22, 2015
1 See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 1.2.
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