The Complainant is Bayerische Motoren Werke AG, Germany, represented by Kelly IP, LLP, United States of America (“United States”).
The Respondent is Domain Privacy Ltd/ DNS Admin, 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 July 23, 2021. On July 26, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 29, 2021, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name, which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on July 30, 2021 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on July 31, 2021.
The Center verified that the Complaint together with the amended Complaint satisfied the formal requirements of the .IO Domain Name Dispute Resolution Policy (the “Policy”), the Rules for .IO Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for .IO 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 August 13, 2021. In accordance with the Rules, paragraph 5, the due date for the Response was September 2, 2021.
The Respondent sent an informal email communication to the Center on August 2, 2021 in which it offered its unilateral consent to transfer the disputed domain name and indicated that it did not intend to file a Response. On August 2, 2021, the Center notified the parties that if they wished to explore settlement options then the Complainant should submit a request for suspension by latest August 7, 2021. The Complainant did not submit any such request. The Center therefore informed the Parties of the commencement of the Panel Appointment process on September 16, 2021.
The Center appointed Steven A. Maier as the sole panelist in this matter on September 20, 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. Transfer by Unilateral ConsentWhere a proceeding has not been settled but a respondent has indicated its unilateral consent to transfer the disputed domain name, the Panel may in its discretion order a transfer on that basis alone (see e.g. section 4.10 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”). In this case, however, in view of the Complainant’s non-response to the Center’s notification dated August 2, 2021, the Panel will proceed to a reasoned decision.
5. Factual BackgroundThe Complainant is a corporation organized under the laws of Germany. It is a manufacturer and supplier of motor cars and motorcycles under the name and trademark BMW and also offers maintenance, financial and other services under that mark.
The Complainant is the owner of numerous registrations throughout the world of trademarks comprising or incorporating the term BMW. Those registrations include Germany trademark registration number 410579 for the mark BMW, registered on November 15, 1929, in International Classes 7 and 12 and United States trademark registration number 0611710 for the mark BMW, registered on September 6, 1955, in International Class 12.
According to the available public WhoIs report, the disputed domain name was created on January 4, 2021. However, the Complainant has submitted evidence that it itself was the owner of the disputed domain name between 2013 and 2020 and states that it inadvertently allowed the disputed domain name to lapse in December of that year.
The Complainant produces evidence by way of screenshots dated June 21, 2021, that the disputed domain name has been used for the following purposes:
1. to redirect to a third-party website offering a “standard security check” and “Firefox add-on” before proceeding to “www.bmw.io”; and
2. to redirect to a purported Microsoft website, which generated security alerts including a “Trojan Spyware Alert” and offered an executable file for download; and
3. to redirect to a third-party website offering an “Important Firefox update” for installation.
6. Parties’ Contentions A. ComplainantThe Complainant submits that it has used the trademark BMW since 1917 and that the trademark represents one of the world’s most readily recognized brands. It states that it operates 31 manufacturing plants in countries around the world, employs more than 120,000 individuals worldwide and has sold more than 2,000,000 motor vehicles in every year since 2017, through a network of over 3,500 authorized dealers worldwide. It states that its worldwide sales revenues in 2019 exceeded EUR 100 billion. The Complainant produces evidence that its BMW mark is consistently highly rated by recognized rating agencies. It also refers to its online presence via a network of websites including “www.bmw.com” and reiterates that it also owned the disputed domain name until December 2020.
The Complainant submits that the disputed domain name is identical to its trademark BMW.
The Complainant submits that the Respondent has no rights or legitimate interests in respect of the disputed domain name. It states that it has never authorized the Respondent to use its BMW trademark, that the Respondent has no independent trademark rights in that name and that it has not commonly been known by that name. The Complainant further contends that the Respondent is not making bona fide commercial use of the disputed domain name, which targets the Complainant’s trademark and uses it to divert Internet users to the websites referred to in section 5 above. The Complainant contends that those websites offer misleading downloads which may amount to malware and/or that the Respondent obtains commissions for the redirections to the websites in question.
The Complainant submits that the disputed domain name has been registered and is being used in bad faith. The Complainant contends that the Respondent was obviously aware of its BMW trademark when it registered the disputed domain name owing to the fame of that trademark and the fact that the Complainant was the previous owner of the disputed domain name. The Complainant submits that the Respondent is using the disputed domain name to create a misleading impression of an affiliation with the Complainant and to attract Internet users to its website on the basis of that confusion. It adds that the Respondent is damaging the Complainant’s business both by diverting away Internet traffic intended for the Complainant and by offering misleading and potentially damaging software downloads.
The Complainant requests the transfer of the disputed domain name.
B. RespondentThe Respondent submitted an informal offer to transfer the disputed domain name to the Complainant but did not file a Response in the proceeding.
7. Discussion and FindingsIn order to succeed in the Complaint, the Complainant is required to show that all three of the elements set out under paragraph 4(a) of the Policy are present. Those elements are:
(i) that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) that the disputed domain name has been registered or is being used in bad faith.
A. Identical or Confusingly SimilarThe Complainant has established that it has extensive and longstanding registered trademark rights in the mark BMW. The disputed domain name is identical to that trademark and the Panel therefore finds that the disputed domain name is identical to a trademark in which the Complainant has rights.
B. Rights or Legitimate InterestsIn the view of the Panel, the Complainant’s submissions set out above give rise to a prima facie case that the Respondent has no rights or legitimate interests in respect of the disputed domain name. However, the Respondent has not filed a Response in this proceeding and has not submitted any explanation for its registration and use of the disputed domain name, or evidence of rights or legitimate interests on its part in the disputed domain name, whether in the circumstances contemplated by paragraph 4(c) of the Policy or otherwise. The Panel therefore concludes that the Respondent has no rights or legitimate interests in respect of the disputed domain name.
C. Registered or Used in Bad FaithThe Panel accepts the Complainant’s submissions and evidence that its trademark BMW is widely recognized throughout the world to refer to the Complainant and its automotive products. The Panel also accepts that the Complainant owned the disputed domain name for several years prior to an inadvertent failure to renew it, at which point it was acquired by the Respondent. The Panel finds the disputed domain name to be inherently misleading, as inevitably suggesting an affiliation with the Complainant. In the absence of any explanation from the Respondent, the Panel infers that the Respondent registered the disputed domain name in the knowledge of the Complainant’s trademark and with the intention of taking advantage of the identity of the disputed domain name with the Complainant’s trademark, which amounts in itself to registration or use in bad faith.
The Panel further accepts that the Respondent has used the inherently misleading disputed domain name to attract Internet users to a website or websites which appear to offer malware for download and/or from which the Respondent is likely to gain payment. The Panel finds in particular that, by using the disputed domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of its website or of a product or service on its website (paragraph 4(b)(iv) of the Policy).
The Panel therefore finds that the disputed domain name has been registered or is being used in bad faith.
8. DecisionFor 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,
Steven A. Maier
Sole Panelist
Date: October 1, 2021