The Complainant is Bayerische Motoren Werke Aktiengesellschaft of Munich, Germany, represented by Vondst Advocaten N.V., the Netherlands.
The Respondent is Linus Geerts of Sellingen, the Netherlands, of whom the legal successor under general title is Mr. R.S.H. Geerts, in this matter represented by Mr. B. Amsing, the Netherlands, through a written proxy. 2. The Domain Names and Registrar
The disputed domain names and are registered with SIDN through PuurIdee. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 24, 2012. On May 25, 2012, the Center transmitted by email to SIDN a request for registrar verification in connection with the disputed domain names. On May 30, 2012, SIDN 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 Dispute Resolution Regulations for .nl Domain Names (the “Regulations”).
In accordance with the Regulations, articles 5.1 and 16.4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on May 31, 2012. In accordance with the Regulations, article 7.1, the due date for Response was June 20, 2012. On June 18, 2012, the Respondent filed a Response in the Dutch language. The Center acknowledged receipt on the same day, and informed the Respondent that the language of proceedings is English. On June 20, 2012, the Center extended the Response due date to June 22, 2012. The Response in English was filed with the Center on June 22, 2012.
On June 26, 2012, SIDN commenced the mediation process. On July 23, 2012, SIDN extended the mediation process until August 25, 2012. On August 21, 2012, SIDN further extended the mediation process until September 24, 2012. On September 24, 2012, SIDN informed parties that the dispute had not been solved in the mediation process.
The Center appointed Alfred Meijboom as the panelist in this matter on October 8, 2012. The Panel finds that it was properly constituted. The Panelist has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required to ensure compliance with the Regulations, article 9.2.
On October 10, 2012, the Panel issued a Procedural Order permitting the Respondent’s representative to submit evidence regarding the legal succession of the late Mr. Linus Geerts in respect of the disputed domain names, within a period of seven calendar days from the issuance of the Procedural Order, and inviting the Complainant to file a brief reply within seven calendar days from receipt of a submission by the Respondent’s representative. The Respondent’s representative submitted evidence on October 17, 2012. The Complainant did not submit a reply.
Taking into account the submissions in response to the Panel Order, the Panel for purposes of this case accepts that Mr. R.S.H. Geerts is the successor under general title of the late Mr. Linus Geerts, and that Mr. R.S.H. Geerts is represented by Mr. B. Amsing through a written proxy. In this decision, the term “Respondent” is used for this collective arrangement. 4. Factual Background
The following facts, taken from the Complaint and its annexes, remain uncontested.
The Complainant is one of the largest manufacturers of high-performance automobiles and motorcycles in the world and is the registered proprietor of numerous word and device marks for BMW and MINI in more than 140 countries worldwide, dating back to 1917 in Germany. Under the BMW and MINI marks, the Complainant manufactured, marketed and sold many millions of vehicles.
The Complainant registered the domain names and in May 2007. The disputed domain names have been registered by the Respondent in May 2009 respectively June 2009.
The Respondent has been operating websites under the disputed domain names, on which the Respondent offers BMW and MINI vehicles for sale. 5. Parties’ Contentions A. Complainant
The Complainant claims a very substantial international reputation in its trademarks BMW and MINI (hereinafter: the “Trademarks”). It further alleges that the disputed domain names differ from the Trademarks merely in the addition of the descriptive word “kopen”, which means “buy” in Dutch, and the top level domain “.nl”, neither of which detracts from the distinctive Trademarks. For that reason, according to the Complainant, the disputed domain names are confusingly similar to the Trademarks.
The Complainant alleges that the Respondent has no rights or legitimate interests in the disputed domain names, as the Respondent has not received any license, permission or authorization to use the Trademarks.
The Complainant alleges that the Respondent has registered and has been using the disputed domain names in bad faith because:
1. the Trademarks have previously been found to be very well-known and the Respondent was or at least must have been aware of the Trademarks due to said extensive reputation;
2. the Respondent is intentionally trying to attract Internet users to its websites for commercial gain by creating confusion and by creating unauthorized association with the Complainant and its trademarked products; and
3. registration of a domain name containing the well-known Trademarks, of which the Respondent must have been aware, is of itself sufficient to proof bad faith. B. Respondent
The Respondent alleges that the disputed domain names are merely registered and used because the clients of the Respondent are loyal to their brand and do not wish to be confronted with other brands, and that the disputed domain names are not used for selling car brands other than BMW and MINI, respectively. Further, the Respondent alleges that it does not use the Trademarks in an offensive or competing manner. 6. Discussion and Findings A. Identical or Confusingly Similar
It is established case law that the top level domain “.nl” may be disregarded in assessing the similarity between the Trademarks on the one hand, and the disputed domain names on the other hand (see, e.g., Roompot Recreatie Beheer B.V. v. Edoco LTD,WIPO Case No. DNL2008-0008).
The disputed domain names consist of the Trademarks in their entirety, with the addition of the non-distinctive and descriptive word “kopen”. The use of the word “kopen” after the relevant Trademarks in the disputed domain names rather adds to the confusion between the Trademarks and disputed domain names as it emphasizes the availability of the products sold under the Trademarks (see, e.g., BVBA Alterego v. TweeJ,WIPO Case No. DNL2009-0028; Aktiebolaget Electrolux v. Buisman-Rosbergen V.O.F, WIPO Case No. DNL2012-0004).
Accordingly, the Panel finds that the disputed domain names are confusingly similar to the Trademarks for which reason the requirement of article 2.1(a) of the Regulations has been met. B. Rights or Legitimate Interests
Article 3.1 of the Regulations sets out examples of circumstances through which a respondent may demonstrate that it has rights or legitimate interests in a domain name for purposes of article 2.1(b) of the Regulations. Taking into account that the Regulations are to a large extent based on the Uniform Domain Name Dispute Resolution Policy (the “UDRP”), cases decided under both the Regulations and the UDRP are relevant to this proceeding (see, e.g., Aktiebolaget Electrolux v. Beuk Horeca B.V.,WIPO Case No. DNL2008-0050).
In Oki Data Americas, Inc. v. ASD, Inc.,WIPO Case No. D2001-0903 the panel set out four criteria in which an authorized sales or service agent of trademarked goods can use the trademark at issue in its domain name. This decision has been confirmed to be of relevance for the Regulations inter alia in Seiko EPSON Corporation v. ANEM Computers / ANEM,WIPO Case No. DNL2010-0024 and Maison Louis Latour v. Jos Beeres Wijnkoperij,WIPO Case No. DNL2011-0074.
The Panel notes that these considerations may be equally applicable to circumstances such as those in which a person is offering genuine goods of a trademark owner, or services related to those goods, but is not an authorized reseller or in an authorized relationship with the trademark owner as such. The essential issue addressed by the Oki Data decision is whether, in these circumstances, there is a bona fide offering of relevant goods or services, and an absence of any associated deception.
The criteria set out in the Oki Data decision are:
1. the respondent must actually be offering the goods or services under the trademark; and
2. the respondent must only be offering those goods or services; and
3. the respondent must not try to take all of the relevant domain names so as to deprive the trademark owner of the ability to register its trademark as a domain name; and
4. the website must accurately describe the relationship between the respondent and the trademark owner.
In Dr. Ing. h.c. F. Porsche AG v. Del Fabbro Laurent,WIPO Case No. D2004-0481, the respondent conducted a website on which it offered second-hand PORSCHE cars for sale. The panel in that case referred to the Oki Data case, noting that the situation in the Porsche case was different, as in the Porsche case the complainant had not authorized the respondent as a distributor or in any other way. Nevertheless, the panel found that the respondent was offering only PORSCHE cars for sale. The respondent in that case had furthermore made it clear that he was not affiliated with the complainant. Further, the respondent had not tried to register a large number of domain names incorporating “porsche” so as to deprive the trademark holder of the ability to register a domain name or names incorporating its trademark.
In SingTel Optus Pty v. Xnet,WIPO Case No. D2004-0734, the panel found that a mere disclaimer of connection with a trademark owner will not suffice to overcome the initial confusion suffered by virtue of having been taken to a website, which the visitor wrongly believed belonged to the complainant.
In the present case, it appears that the Respondent offers for sale BMW and MINI vehicles via its websites under the respective disputed domain names. No products of other brands than BMW respectively MINI are offered on such websites. There is no evidence of record in these proceedings that the Respondent has attempted to acquire many BMW and MINI domain names, thereby preventing the Complainant from registering domain names incorporating its Trademarks.
The Panel, however, observes that the Respondent did not provide details on the websites under the disputed domain names that adequately inform potential purchasers about the fact that the Respondent is not an authorized reseller and has no authorized relationship with the Complainant. The mere fact that the home page of the websites under the disputed domain names mentions that “BMW kopen” and “MINI kopen”, respectively, are part of “H” is insufficient to be regarded as the required information with respect to the (absence of the) relation with the Complainant.
Having regard to the foregoing, the Panel holds that the Respondent has not established rights or legitimate interests in the disputed domain names. The requirement of paragraph 2.1(b) of the Regulations is therefore met. C. Registered or Used in Bad Faith
It is obvious to the Panel that the Respondent has registered the disputed domain names with a view to the Trademarks. Indeed, the Respondent has not disputed the statements of the Complainant put forward in the Complaint regarding knowledge of the Trademarks at the moment of registration of the disputed domain names.
The evidence submitted by the Complainant is sufficient to show that the disputed domain names have been registered and used in bad faith by the Respondent, for the purpose of attracting Internet users to the websites under the disputed domain names, for commercial gain, through the likelihood of confusion with the Trademarks as to the source, sponsorship, affiliation or endorsement of the websites under the disputed domain names.
Consequently, the requirement of paragraph 2.1(c) of the Regulations is also met. 7. Decision
For all the foregoing reasons, in accordance with articles 1 and 14 of the Regulations, the Panel orders that the disputed domain names and be transferred to the Complainant.
Alfred Meijboom
Panelist
Dated: November 2, 2012
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