WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Bayerische Motoren Werke AG (BMW) v. MC Company

Case No. D2000-1694

 

1. The Parties

The Complainant is Bayerische Motoren Werke AG, commonly referred to as BMW AG, a corporation organized under the laws of Germany, with its principal place of business at Petuelring 130, 80788 Munich, Germany.

The Respondent is MC Company, with its principal place of business at 5109 Anchorage Drive, Nashville, TN 37220, US. The Respondent does not communicate directly with the Center, but through the Administrative Contact, Michael Minneker, with address at 5109 Anchorage Drive, Nashville, TN 37220, USA (the "Administrative Contact").

 

2. The Domain Name and Registrar

The domain name at issue is <theultimatedrivingmachine.com> (the "Domain Name"). The Registrar is Registrars.com, 475 Sansome Street #570, San Francisco, CA 94111, USA.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") by email on December 5, 2000 and by hardcopy on December 8, 2000. The Center acknowledged receipt of the Complaint on December 6, 2000.

On December 6, 2000, the Center sent to the Registrar a request for verification of registration data. On December 22, 2000, the Registrar confirmed 1) that MC Company is the current registrant of <theultimatedrivingmachine.com>; 2) that the Registrantís address is 5109 Rochelle Drive, Nashville TN 37220, US; 3) that the Administrative Contact is Michael Minneker, 5109 Rochelle Drive, Nashville TN 37220, US, email: brandon1128@earthlink.com; 4) that the registration date is December 9, 1999 and the expiration date December 9, 2001; and 5) that the Domain Name is currently under "registrar-lock" in the Shared Registry Server pending arbitration. The Registrarís database does not contain detailed Technical and Billing Contact information. The Registrar did not mention that the Uniform Domain Name Dispute Resolution Policy applies to the Domain Name. It appears, however, from the Registrarís web site that the Service Agreement incorporates the Policy.

On December 27, 2000, the Center verified that the Complainant had complied with all formal requirements, including payment of the fee.

On December 28, 2000, the Center forwarded the Complaint to the Respondent by post/courier, fax and email, with copies to ICANN and to the Registrar. The Center formally notified the Respondent that the Complaint satisfied the formal requirements of the ICANN Uniform Domain Name Dispute Resolution Policy (the "Policy"), the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") and the Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules"); that payment of the required sum had been made by the Complainant; and that an administrative proceeding had been commenced against the Respondent. A deadline of January 16, 2001 was fixed for the Response. The email communications to the Respondent were both returned.

On January 15, 2001, the Administrative Contact announced that he had not received the Complaint until January 4, 2001, due to an incorrect mailing address. He informed the Center and the Complainant of his correct address: 5109 Anchorage Drive, Nashville, TN 37220, US and his correct email address: mcb01@msn.com. The Administrative Contact requested an extension for filing the Response. On January 16, 2001, the Center granted such extension until January 19. On January 19, 2001, the Administrative Contact requested and received an additional extension until January 22, 2001.

The Response was filed timely with the Center by email on January 22, 2001 and by hardcopy on January 29, 2001.

On February 9, 2001, the Center notified the Parties that an Administrative Panel composed of a single member, Dr. Kamen Troller, had been appointed and that the Panelist had duly submitted a Statement of Acceptance and Declaration of Impartiality and Independence to the Center. Absent exceptional circumstances, the Panelist was required to forward its decision to the Center in accordance with Paragraph 15 of the Rules by February 22, 2001.

On February 3, 2001, the Complainant made a Supplemental Filing by email with the Center.

The Panelist examined all notifications of the Center, the Complaint and the Response, and finds that they comply with the formal requirements of the Rules and Supplemental Rules, and that the Administrative Panel was properly constituted.

 

4. Factual Background

A. The Complainant

The Complainant is a large and very well-known motor vehicle manufacturer and distributor. The Complainant owns US trademark registration No. 1240182 "The Ultimate Driving Machine" in the International Class 12 (automobiles) (the "Trademark") (Complainantís Exhibit C). The Complainant asserts that it has been using the Trademark in the United States since August 1, 1975 as a slogan in advertisements featuring BMW vehicles in print, television, on the Internet and other media. The US trademark registration certificate confirms that the Trademark was used for the first time on August 1, 1975.

The Complainant asserts that BMW AG and its American subsidiary, BMW North America Inc., have used the Trademark in connection with the sale of goods and services recognized in the United States to be of the highest quality. The Complainant further asserts that during the 1999 calendar year, US $64.8 million was spent on advertising in the United States for BMW products, and that the Trademark appeared in virtually every advertisement. Copies of sample print media featuring the Trademark, sine datu, were provided.

B. The Respondent

The Respondent is alleged to be MC Company, with its principal place of business in Nashville, Tennessee, United States. The WHOIS information for the Domain Name lists MC Company as the Registrant. The legal status of MC Company is, however, unknown. Therefore, the Panel is not in a position to ascertain whether or not the Respondent exists. Mr. Michael Minneker, the Administrative Contact, acts as if he were the Respondent and owner of the Domain Name.

The domain name <theultimatedrivingmachine.com> was registered on

December 9, 1999. The Respondent asserts that it has registered the Domain Name "for the sole purpose of owning a Ďsiteí that contains information and entertainment of [sic] automobiles past and present, not focusing on any particular marque." The Respondent has not provided any proof of commercial or other use of the Domain Name.

On May 10, 2000, the disputed Domain Name was found to be placed for sale on www.greatdomains.com (Complainantís Exhibit E).

The Respondent has not alleged that it has registered the "the ultimate driving machine" as a trademark in any jurisdiction.

B. Complainantís cease and desist letters

On July 24, 2000, the Complainant sent a registered letter to the Respondent at the address: 5109 Rochelle Drive, Nashville TN 37220, US, advising the Respondent that its unauthorized use of the trademark "The Ultimate Driving Machine" in connection with the Domain Name violated the Complainantís trademark rights. The letter requested that the Respondent discontinue further use and transfer the Domain Name to the Complainant. A reminder letter was sent by registered mail on August 31, 2000. Both letters were returned to the Complainant, the first being marked "Unclaimed" and the second being marked "Insufficient address". On September 19, 2000, the Complainant sent an email to the Administrative Contact address: brandon1128@earthlink.com. Complainant asserts that it did not receive any answer.

 

5. Partiesí Contentions

A. The Complainant

The Complainant contends that each of the three elements specified in paragraph 4(a) of the Policy are applicable to the disputed Domain Name. More precisely, the Complainant submits that:

(1) the domain name <theultimatedrivingmachine.com> is identical or confusingly similar to the trademark "The Ultimate Driving Machine" in which the Complainant has rights. The Complainant claims that the trademark "The Ultimate Driving Machine" has become unique and is identified by the public solely with the Complainant and its products and services, by reason of the efforts and care of the Complainant and its American subsidiary, the excellent quality of BMW products and services, and the large amount of advertising money spent in relation to this Trademark;

(2) the Respondent was not authorized to use the trademark "The Ultimate Driving Machine" and has no rights or legitimate interests in the Domain Name; and

(3) the Domain Name was registered and is being used in bad faith, because the Respondent targeted the sale of the Domain Name to those searching for domain names that referred to BMW or its products or services. The Complainant also submits that the Respondentís failure to respond to the correspondence from the Complainant should be taken as an inference of bad faith within the meaning of paragraph 4(b) of the Policy.

The Complainant requests the Administrative Panel to issue a decision that the Domain Name be transferred to the Complainant.

In its Supplemental Filing, the Complainant refers to WIPO Administrative Panel Decision Bayerische Motoren Werke AG v. JMXTRADE.com (WIPO Case No. 2000-1693), stating that the facts of this case are very similar to the facts of the present case.

B. The Respondent

The Respondent takes issue with the Complainantís contentions as follows:

(1) The Respondent acknowledges that the domain name <theultimatedrivingmachine.com> is similar to the trademark "The Ultimate Driving Machine", in which the Complainant has rights. But, the Respondent contends that the Complainantís claim of trademark infringement is invalid, due to the fact that the trademark "The Ultimate Driving Machine" is a "descriptive non-source identifying phrase, comprised of generic words", which is "not unique or defining of BMW products and services";

(2) The Respondent asserts that it has rights and legitimate interests in the Domain Name derived from "owning a site that contains information and entertainment of automobiles past and present, not focusing on any particular marque";

(3) The Respondent asserts that the Domain Name was not registered in bad faith. The Respondent contends that placing a descriptive non-source identifying domain name for sale on www.greatdomains.com is not an act of bad faith, but rather exercising "the right of free enterprise in a capitalistic society". Furthermore, the Respondent argues that it made no specific offer to the Complainant to sell the Domain Name.

In relation to the failure to reply to the Complainantís cease and desist letters and email, the Respondent asserts that because of its recent move it inadvertently combined its present and past address when registering the Domain Name. The Respondent admits failing to update its registration information with a new email address, but notes that the telephone number remained the same and as a result Fed Ex was able to effect delivery. It asserts that the Complainant was also "at default" for failing "to exhaust all obvious methods of contact".

The Respondent raises the possibility of Reverse Domain Name Hijacking based on the Complainantís alleged failure to maintain its trademarkís integrity.

 

6. Discussion and Findings

Pursuant to paragraph 4(a), the Complainant must prove that each of the following three elements are present:

(i) the Respondentís domain name 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 in respect of the domain name; and

(iii) the domain name has been registered and is being used in bad faith.

(a) Identical or confusingly similar

The Complainant asserts that the domain name <theultimatedrivingmachine.com> is identical or confusingly similar to the trademark "The Ultimate Driving Machine". The Respondent does not deny this allegation, instead asserting that the words are descriptive, non-source identifying, generic and not unique.

The only differences between the Domain Name and the Trademark are: (1) the words in the Domain Name are merged to produce one word; and (2) the Domain Name has ".com" at the end. Such differences are minor and do nothing to cause any real distinction between Complainantís Trademark and Respondentís Domain Name (Footnote 1).

The evidence establishes that, descriptive though they may be separately, the words "THE ULTIMATE DRIVING MACHINE" were first used together by the Complainant as a trademark in United States commerce on August 1, 1975 and, through use, had come by May 31, 1983 to be distinctive of the Complainantís automobiles, so as to qualify for registration as a trademark on the Principal Register of the United States Patent and Trademark Office in respect of automobiles in international Class 12. The Trademark has been: 1) used in the United States since August 1, 1975; 2) registered in the United States since May 31, 1983; 3) used in connection with the Complainantís well known goods and services; and 4) associated with very important advertising costs. The commercial value of the trademark "The Ultimate Driving Machine" is well established and the Complainant has rights in those words as a trademark. The words "the ultimate driving machine", while once perhaps merely descriptive or not unique, have long since taken on another meaning. Taken together, they have aquired distinctiveness and come to identify and be associated uniquely by the relevant public with the Complainantís products. The fact that the Complainant did not register <theultimatedrivingmachine.net> or <theultimatedrivingmachine.org> is not in the least relevant. There is no obligation to register or protect every conceivable TLD.

The Panel concludes that the Domain Name is identical or confusingly similar to a trademark in which the Complainant has rights (Footnote 2).

(b) Rights or legitimate interests

Paragraph 4(c) of the Policy defines the circumstances required for the Respondent to demonstrate "rights to and a legitimate interest in the domain name". The Respondent is only required to demonstrate any one of the following circumstances (in particular and without limitation) to prove its rights to or legitimate interest in the domain name:

(i) before any notice to you of the dispute, your 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) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or

(iii) you are making a legitimate non-commercial 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.

With respect to paragraph 4(c)(i) of the Policy, the Respondent does not allege nor submit credible evidence that the Domain Name, or a corresponding name, has ever been used in connection with a bona fide offering of goods or services. The Domain Name appears never to have been used, nor has any evidence been introduced showing preparation for use.

With respect to paragraph 4(c)(ii), no credible evidence has been offered that MC Company, or Mr. Minneker, have been commonly known by the Domain Name.

With respect to paragraph 4(c)(iii), the Respondent claims that its legitimate interest in the Domain Name consists in "owning a site that contains information and entertainment of automobiles past and present, not focusing on any particular mark". While this may have been a plausible means of demonstrating a legitimate interest under other circumstances, it fails for the following reasons in this case:

(1) The Respondent has made no legitimate non-commercial use of, or demonstrable preparations to use, the Domain Name;

(2) Given the wide recognition of the Complainantís Trademark, it is difficult to imagine how, if the Domain Name had been set-up for the proposed purpose, such use could be deemed fair use. Such use by the Respondent would inevitably have taken unauthorised and therefore unfair (parasitic) advantage of the Complainantís Trademark. Furthermore, associating, portraying or describing automobiles other than BMWs on a web site using a name identical to the Complainantís Trademark, would have created a risk or even a likelihood of misleading consumers and tarnishing the Trademark; and

(3) The attempt to sell the Domain Name on www.greatdomains.com further evidences that the Respondentís goal did not correspond to a legitimate non-commercial or fair use.

The Panel concludes that the Respondent has no rights or legitimate interests in the Domain Name.

(c) Bad faith

Paragraph 4(a)(iii) of the Policy requires the Complainant to prove use in bad faith as well as registration in bad faith.

Paragraph 4(b) of the Policy sets forth a non-exclusive list of circumstances which shall be evidence that the registration and use of a domain name is in bad faith:

(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or

(ii) you have 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 you have engaged in a pattern of such conduct; or

(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainantís mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.

The Complainant relies on the first element, alleging that the Domain Name was registered and used in bad faith because the Respondent listed the Domain Name for sale with Greatdomains.com, a company that specialises in selling domain names for more than out-of-pocket expenses. The Respondent seeks to defend its action by arguing it never contacted the Complainant directly to solicit the sale.

Both bad faith registration and use must be proven in addition to the requirements of the relevant provision, in this case 4(b)(i). The evidence in the record more than amply supports such a finding. The requirements of paragraph 4(b)(i) are satisfied if the domain name is acquired primarily for the purpose of selling the domain name registration to the complainant who is the owner of the trademark or to a competitor of that complainant for more than out-of-pocket costs.

The Panel finds it significant that the Domain Name chosen is that of an internationally well-known mark. The Respondent, who admits having an interest in automobiles, must have been aware of this mark when he registered the Domain Name. The Panel also finds it significant that the Respondent never used the Domain Name for what the Respondent claims was the intended purpose. It is noteworthy that the Domain Name was registered on December 9, 1999 and that within approximately five months,

May 10, 2000, the Respondent had already offered it for sale through the services of one of the most well-known domain name vendors. The Complainant has not provided information as to when the Respondent first offered the name for sale, nor has the Respondent provided this information, but Complainantís Exhibit E does support an inference that the name was offered for sale before May 10, 2000. If the requirements of 4(b)(i) are met, the Panel believes that the short period of time that has elapsed between the registration and offer to sell the Domain Name (five months and probably much less) further supports a finding that the name was registered and used in bad faith.

It may be expected from a bona fide registrant, who chooses a well-known trademark as domain name, that he establishes his good faith by preparing and using a site in a way which leaves no doubt that he does not intend to take any undue (commercial or otherwise economical) advantage of the trademarkís reputation. In the present case, the Respondent has not made any effort to prove his good faith - to the contrary, by offering the Domain Name for sale, it showed that it had no personal interest in that name, except to obtain some financial advantages.

Turning to the purported offer of sale, an important factor in paragraph 4(b)(i), Exhibit E reveals that no price is listed for the disputed Domain Name -- instead the phrase "Make Offer" appears. Had the Respondent merely sought out-of-pocket expenses, these expenses would have been listed. The Panel finds that by seeking an offer, the Respondent was holding out for more than out-of-pocket expenses. This should come as no surprise given the likely value of this Domain Name to the Complainant.

It is not necessary that there be evidence of a specific offer to the Complainant (or its competitor) (Footnote 3). Although the Respondent has not directly contacted the Complainant to sell the Domain Name, use of the services of a third party vendor, Greatdomains.com, is sufficient.

The Panel has reviewed the case of General Machine Products Company, Inc. v. Prime Domains (FA0001000092531) relied upon by the Respondent and found it not to be relevant. General Machine involved the registration of a very generic word as opposed to the registration of an internationally well-known mark. Furthermore, in General Machine, the evidence supported the Panelís conclusion that the complainant made an offer to purchase the name, while in the case before the Panel the Respondent offered the name for sale on the Internet.

Furthermore, the Panel notes that the criteria for finding bad faith set forth in paragraph 4(b) of the Policy are not exclusive. The Panel observes that the Respondentís contact details in the Registrarís registry were incorrect. The Administrative Contact has himself acknowledged that the mailing address given was erroneous and that he had neglected to update his email address. The Service Agreement obliges the Registrant (MC Company) to: "provide and maintain updated information at all times with Registrars.com". The Panel is of the opinion that the Respondent failed to fulfil this obligation, making it difficult for third parties to contact the Respondent. The failure of Respondent to abide by the provisions of the Service Agreement strengthens the Panelís conclusion that the Respondent acted in bad faith.

Based on the above, the Panel finds that the requirements of paragraph 4(b) of the Policy are met.

Reverse Domain Name Hijacking

The Complainant proved all three elements set forth in paragraph 4(a) of the Policy. The Complainant therefore did not act in bad faith by bringing its Complaint. The Respondentís claim of reverse domain name hijacking is therefore rejected.

 

7. Decision

The Panel decides that:

(1) the domain name <theultimatedrivingmachine.com> is confusingly similar to the trademark "The Ultimate Driving Machine";

(2) the Respondent has no rights or legitimate interest in respect of the Domain Name;

(3) the Domain Name has been registered and is being used in bad faith by the Respondent.

Pursuant to paragraphs 4(i) of the Policy and 15 of the Rules, the Panel requires that the Registrar, Registrars.com, transfer the name <theultimatedrivingmachine.com> to the Complainant.

 


 

Kamen Troller
Sole Panelist

Dated: 19 February, 2001

 


 

Footnotes:

1. See also: The Journal Newspapers Inc. v. DomainForSale 980dollars (FA95395).

2. See also Bayerische Motoren Werke AG v. JMXTRADE.com (D2000-1693).

3. The Journal Newspapers Inc. v. DomainForSale 980dollars (FA95395).