WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Bayerische Motoren Werke AG v DLR
Case No. D2001-1231
1. The Parties
The Complainant is Bayerische Motoren Werke AG, more commonly referred to as BMW AG, a corporation incorporated under the laws of the Federal Republic of Germany, with a principal place of business at Petuelring 130, Munich, Germany.
The Respondent is DLR, an entity with an address of 710 East Valencia Street, Lakeland, Florida 33805, USA.
2. The Domain Name(s) and Registrar
The domain names in dispute are <bmwbikes.com> and <bmw-uk.com>.
These are registered with Dotster, Inc. of 11807 NE 99th Street, Suite 1100, Vancouver, WA 98682, USA.
3. Procedural History
3.1 The Complaint was made pursuant to the Uniform Domain Name Dispute Resolution Policy approved by the Internet Corporation for Assigned Names and Numbers ("ICANN") on August 26, 1999, ("the Policy") in accordance with the Rules for Uniform Domain Name Dispute Resolution Policy, also approved by ICANN on October 24, 1999, ("the Rules") and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules").
3.2 The Complaint was received by the WIPO Arbitration and Mediation Center (the "Center") on October 10, 2001, (by email) and October 15, 2001, (hardcopy). Following verification of the registration of the domain name and other details with the Registrar (Dotster, Inc.) on October 29, 2001, the Center completed its compliance checklist and then notified the Respondent of the Complaint and the commencement of administrative proceedings, together with a copy of the Complaint, on October 30, 2001, both by email and post/courier. In accordance with the Rules and Supplementary Rules, the Respondent was given until November 19, 2001, in which to file a Response.
3.3 On November 19, 2001, the Center received an email communication from Chris Belkowski "for DLR", regretting that there had been insufficient time for the preparation of a "proper response" to the Complaint and making certain assertions in relation to the Complainant. Mr. Belkowski asserted further that the Respondent had received the Complaint only "7 days ago", i.e. on November 12, 2001.
3.4 On November 20, 2001, the Center replied by email to Mr. Belkowski, stating that the Complaint and accompanying material had been forwarded electronically to the Respondent on October 30, 2001, and had been delivered in hardcopy form to the Respondentís premises by courier on November 2, 2001, (email communication dated November 20, 2001, from the Centerís Case Manager). Hard copy of an email communication from Federal Express furnished to the Panel tracks the results of the shipment and confirms that the Complaint and accompanying material were delivered to the Respondentís premises in Lakeland, Florida, on November 2, 2001. It appears, however, that the email communication of the Complaint on October 30, 2001, was not received, as there is a record of "returned mail" from the Respondentís email address.
3.5 On November 21, 2001, a further email communication from Mr. Belkowski was received by the Center, and on the same date the Center forwarded to the Respondent a Notification of Respondent Default, advising the Respondent that it had failed to comply with the requirements of the Rules and Supplemental Rules for the submission of a Response. The Center has received no further communications from Mr. Belkowski or any other person acting on behalf of the Respondent.
3.6 On November 30, 2001, the parties were notified of the appointment of the administrative panel to be composed of Staniforth Ricketson (as sole member) and the projected decision date of December 14, 2001.
3.7 In light of the above, the Panel finds that
- The Complaint was filed in accordance with the requirements of the Rules and the WIPO Supplemental Rules.
- The Respondent was properly notified of the Complaint, in accordance with paragraph 2 of the Rules.
- The Respondent was properly notified of its Default in lodging a Response in accordance with the Rules, paragraph 2(a).
- The Panel was correctly constituted.
- Apart from the communications referred to in paragraphs 3.4 and 3.5 above, no other communication has been received from the Respondent at any time during these proceedings, although the Panel would have been prepared to receive and consider such a communication up to the date of finalization of the decision.
3.8 In the absence of a formal response by the Respondent, the Panel now proceeds to determine the dispute on the basis of the Complaint under paragraph 5(e) of the Rules.
4. Factual Background
4.1 The Complainant carries on business as a manufacturer and distributor of motor vehicles. The relevant trademarks "BMW" and "BMW and design" (the "BMW trademarks") have been in use for over 80 years, and the extract of the earliest trademark registration in Germany for the BMW logo shows that this was first registered in that country in 1917 (Annex C of Complaint) and that the word mark was registered in that country in 1929 (Annex D). These marks are registered in respect of a wide variety of vehicles, vehicle part, accessories and the like. The Complaint goes on to state (at page 6) that the BMW marks are registered in over 120 countries, and provides details of the US registrations (the situs of the Respondent) in Annex E. The earliest of these US registrations dates back to 1955. The Complaint alleges further that, by reason of its widespread usage, together with the high quality of its products, the BMW marks have become well known world wide and that the public identify the trademarks as identifying products and services produced and rendered only by the Complainant (Complaint, p 7).
4.2 According to the Complaint, the Complainant first became aware of the Respondentís registrations of the disputed domain names on April 17, 2001, finding that the domain name <bmwbikes.com> was connected to a service provider holding page and that the domain name <bmw-uk.com> was inactive. By letter dated April 20, 2001, the Complainant advised the Respondent that the unauthorized use of the BMW trademark in relation to these domain names was an infringement of its registered trademarks, and requested that the Respondent discontinue this use and transfer the domains to the Complainant (Annex I). No reply to this letter or to a subsequent reminder letter sent on May 31, 2001, was ever received from the Respondent (Complaint, p 8).
4.3 Subsequently, by October 2001, the Complainant discovered that the domain names had been activated. <bmwbikes.com> was now connected to a website car listing which featured cars made by other manufacturers and other businesses not related to the Complainant (printout from the website contained in Annex J of Complaint). <bmw-uk.com> was connected to a website called UK Info, which featured information on various topics related to the UK (Annex J, printout from website). Following these discoveries, the present Complaint was instituted.
5. Partiesí Contentions
The Complainant seeks transfer to it of the disputed domain names <bmwbikes.com> and <bmw-uk.com>, and in support of this contention addresses each of the elements described in paragraph 4(a) of the Policy as follows.
- With respect to the element described in paragraph 4(a)(i), the Complainant submits that the disputed domain names are identical to, or confusingly similar to, the registered trademarks "BMW". In support of this, it argues that the dominant and distinctive component of the disputed domain names is "BMW", which is identical to the registered trademarks, and that the additional words "bikes" and "uk" are insufficient to remove the likelihood of consumer deception. In particular, it notes that the "bikes" refers to both motorcycles or bicycles, which are BMW products, and that the "uk" happens to be the third largest geographic market for the Complainantís products worldwide where the Complainantsís subsidiary BMW (GB)Ltd is situated. In relation to this second domain, the Complainant asserts that this can only be rightly used for a website of BMW in the UK.
- With respect to the element described in paragraph 4(a)(ii), the Complainant submits that there is no evidence of any right or legitimate interest by the Respondent in the disputed domain names. It states that the Respondent is not a licensee of the Complainantís mark and has not been authorized in any way to use the same. It asserts further that the Respondent has made no legitimate non-commercial or fair use of the domain names.
- With respect to the element described in paragraph 4(a)(iii) of the Policy, the Complainant submits that the Respondent has registered and used the domain names in bad faith, in particular in the circumstances outlined in paragraph 4(b)(iv). In relation to the <bmw-uk.com> domain, it notes that this is connected to the website for UK Info, an information site for topics related to the UK, which is financed with revenue from advertising on the website. In this regard, the Complainant points to a hyperlink that leads users to a domain registration site which enables users to obtain their own registrations (Annex J). The Complainant asserts that this advertising constitutes use of the domain name in a commercial manner. In addition, the <bmw-uk.com> website does not contain any information that is specific to the Complainantís products, and Complainant asserts that it is being used merely to attract Internet users searching for information regarding BMW in the UK to its website. Where others come across the website accidentally, they are also likely to be confused as to whether the UK Info site is sponsored by, or affiliated with, the Complainant or its UK subsidiary. Similar arguments are advanced with respect to the domain <bmwbikes.com>, which is used as a search listing for cars called <newauto.com> (print out in Annex J). The Complainant asserts that such a search listing, in effect, involves the sale of space on the website by the Respondent to parts suppliers and garages who want to appear in the listing, thus constituting use of the domain name in a commercial manner. None of the businesses appearing on the website are related in any manner to the Complainant as official dealers, repairers or part suppliers. In addition, the Complainant argues that, while the domain <bmwbikes.com> suggests to users a site that includes product information exclusively about BMW bikes, the main focus of the Respondentís website is cars and there is no specific information regarding BMW bikes. There are hyperlinks for motorcycles, but again this is not to a BMW product specific website. In the light of these facts, the Complainant therefore argues that the circumstances referred to in paragraph 4(b)(iv) of the Policy are made out. In relation to the requirement of bad faith, it refers also to the Respondentís large number of domain name registrations for other well known trademarks (see list n Annex K). Finally, the Complainant refers to the failure of the Respondent to respond to the Complainantís correspondence and to provide any explanation as to why the domain names were registered. In this regard, the Complainant notes that the current websites were only activated after the warning letters were sent, "fully disregarding the rights of the Complainant".
As noted above, the Respondent has not filed a formal Response to the Complaint, although there were two brief communications received by the Center. These were from "Chris Belkowski for DLR". The first of these (dated November 19, 2001) objected that to the shortness of time provided for the preparation of a response and made certain other objections, while the second (dated November 21, 2001) repeated the objection to the shortness of the notice given and referred to the falsity of the evidence submitted by the Complainant.
In relation to the question of notice and time lines, the Panel has already found above that the Complaint and accompanying material were given in accordance with the requirements of the Rules.
In relation to the other objections raised in the first of Mr. Belkowskiís communication, it is asserted that the Respondent is "aware" of several companies unassociated with BMW AG in the UK who have expressed an interest in the domain name <bmw-uk.com> which the Respondent would "happily transfer to them without charge". With respect to the domain <bmwbikes.com>, it is asserted that this is
"Öintended to allow consumers to buy, sell, discuss BMW bikes and other matters. It also enables users [sic] browse all the manufacturers official sites simultaneously. Since this is what the <bmwbikes.com> name suggests, it is not being used in bad faith. There is also a disclaimer on the site (omitted from the hardcopy of <newauto.com>)."
Finally, there is an assertion that the information submitted by BMW AG is "inaccurate and out dated", in that there is another site <www.bmwbike.com> that has been "running apparently without incurring their interest and they are happy for <www.bmwbikes.net> to be owned by a dealer."
Under paragraph 5(e) of the Rules, it is provided that if a Respondent does not submit a response, in the absence of exceptional circumstances, the Panel shall decide the dispute based on the Complaint. As no exceptional circumstances have been brought to the Panelís attention, it proceeds to make the findings below on the basis of the material contained in the Complaint. However, in the interests of fairness, it refers, where appropriate, to the matters raised in the Mr. Belkowskiís communication.
6. Discussion and Findings
In accordance with paragraph 4(a) of the Policy, the Complainant has the burden of demonstrating three elements.
6.1 That the complainant has rights in a trade or service mark with which the respondentís domain name is identical or confusingly similar
As noted in paragraph 4.1 above, the Complainant has provided evidence of its trademark registrations within Germany and the United States of America. It has also provided some limited evidence of the history of its business, and of the world wide usage and reputation of the BMW brand. Accordingly, the Complainant has satisfied the first part of paragraph 4(a)(i) of the Policy, namely that it has rights in a trade or service mark.
The next question is whether the disputed domain names isare identical or confusingly similar to the Complainantís marks. In this regard, it cannot be said that the domain names and registered trademarks are identical, given the addition of the suffixes "bikes" and "-uk" in the case of the domain names. On the other hand, there can be little doubt that the latter are confusingly similar to these marks, on the basis submitted by the Complainant, namely that the letters "BMW" are the dominant and distinctive component of each of the domain names. In addition, the letters "BMW" come first in each of the domain names, meaning that the overwhelming impression is that the domain name in question is linked in some way to the owner of the BMW trademarks. The Panel is therefore satisfied that each of the disputed domain names is confusingly similar to trademarks in which the Complainant has rights. In this regard, the Panel refers, with approval, to the statement of principles governing the question of confusing similarity that were made by the Panel in Jordan Grand Prix Ltd v Garry Sweeney, WIPO Case No. D2000-0233.
6.2 That the Respondents must be shown to have no rights or legitimate interests in the Domain Name
Paragraph 4(c) of the Policy sets out certain matters to which a Respondent can point as demonstrating rights or legitimate interests in a disputed domain name for the purposes of paragraph 4(a)(ii). These include:
"(i) before any notice to you [the Respondent] 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 organisation) 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 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."
In the present proceeding, there is no evidence that the Respondent has used either of the disputed domain names in connection with any bona fide offering of goods and services (subparagraph (i)). As noted above, the domain <bmwbikes.com> resolves to a site which appears to accommodate advertising for a wide variety of vehicles, with little information that relates to "bikes" (either motorcycles or bicycles) and very little that is specific to the Complainantís products. Likewise, the domain <bmw-uk.com> resolves to Info UK which appears to have nothing to do with cars and bikes, let alone the Complainantís products. Nor is there any evidence of "demonstrable preparations" to use the domain name in relation to a bona fide offering of goods or services (subparagraph (i)), while it is clear that there has been no licence or authorization given by the Complainant to the Respondent to use the name or mark "BMW" or any of the other trademarks containing this name.
Likewise, there is no evidence before the Panel that indicates that the Respondent has ever carried on a business under the name "BMW" or any variant of this expression, or that it has been commonly known by that name (subparagraph (ii)). Indeed, it seems clear that the domain name is used simply as a means of diverting Internet users to view other sites that appear to be controlled by, or associated with, the Respondent.
Finally, there is no evidence before the Panel that indicates whether any of the factors referred to in subparagraph (iii) are applicable. Although Mr. Belkowskiís communication refers to the intention of the Respondent to "allow consumers to buy, sell, discuss BMW bikes and other makes" as well as enabling them to "browse all the manufacturers official sites simultaneously", he has not provided the Panel with any evidence against which to test these assertions. In the absence of such evidence, the Panel cannot act on bare assertions of intention where there is nothing otherwise to point to a contrary conclusion.
The matters referred to in paragraph 4(c) are not an exhaustive statement of what may constitute rights or legitimate interests in a domain name, and it is therefore open to a Respondent to point to other evidence that may show this. In the present proceeding, there has been no Response or evidence presented by the Respondent on these matters, and the Panel, under Paragraph 14(b) of the Rules, is entitled to draw from such default such inferences as it considers appropriate. The Panel therefore concludes that the Complainant has established this element of Paragraph 4(a) of the Policy, namely that the Respondent has no rights or legitimate interests in the disputed domain name.
6.3 That the Respondent registered and is using the Domain Name in bad faith
Paragraph 4(b) of the Policy lists certain factors which, if found by the Panel to be present, shall be evidence of registration and use of a domain name in bad faith. This is not an exclusive list, and includes:
"(i) circumstances indicating that you [the Respondent] 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 website 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 website or location or of a product or service on your website or location."
It will be noted that, under paragraph 4(a)(iii) of the Policy, both registration and use of the domain name in bad faith are required. Of the factors listed in paragraph 4(b) above, (i)-(iii) relate specifically to registration (and acquisition) of the name, while (iv) relates to use following registration. However, in view of the fact that these factors are stated to be inclusive, it follows that there can be other factors that can be relied upon to point to bad faith, both in registration and in use. In this regard, it is worth noting an early decision of an Administrative Panel to the effect that registration in bad faith followed by a passive holding of a domain name, when there is no way in which it could be used legitimately, can amount to use in bad faith (Telstra Corporation Ltd v Nuclear Marshmallows WIPO Case No. D2000-0003. In addition, it would be both mistaken and artificial to confine paragraphs (i)-(iii) solely to the time of registration: presumably, it would also be a use of a disputed domain name in bad faith to do so, after registration, with one of the purposes outlined in those paragraphs. Support for this view is to be found in several early Panel decisions: see, for example, Estee Lauder Inc v estelauder.com, estelauder.net and Jeff Hanna, WIPO Case No. D2000-0869 and E & J Gallo Winery v Hanna Law Firm, WIPO Case No. D2000-0615.
In the present proceeding, the Complainant raises a number of matters that go to the questions of registration and use in bad faith under paragraph 4(a)(iii) of the Policy, namely the factors referred to in paragraph 4(b)(iv). These matters can be dealt with briefly.
In the absence of any submissions by the Respondent, the Panel accepts the contention of the Complainant that the domain name here is being used in a commercial way, namely to attract users to the site and then to encourage them to purchase domain names. It is unclear whether the Respondent controls or operates this particular operation, but it is equally clear that the Respondent, as registered owner of the domain <bmw-uk.com> is allowing the domain to be used for the purpose of gaining access to this particular service. The following conclusions are therefore open on the evidence before the Panel:
- Consumers browsing the Internet will be led to believe that there is some sort of association with the Complainant where they see and access the domain <bmw-uk.com> .
- Given that there appears to be little, if any, product information specific to the Complainant on the UK Info website, consumers will be disappointed, if not frustrated.
- One of the purpose of the UK Info website is to sell existing domain names to persons accessing the website. Accordingly, there has been a commercial use of the domain <bmw-uk.com> to bring Internet users to the website where they can then access this particular service.
- In light of the foregoing, it follows that there has been an intentional use of the BMW trademark with the purpose of attracting for commercial gain Internet users to the website by creating a likelihood of confusion with the Complainant. This therefore satisfies the requirement for a showing of registration and use in bad faith within the meaning of paragraph 4(b)(iv).
- It is beside the point for the Respondent to assert (as in Mr. Belkowskiís communication) that there are other companies unassociated with BMW AG in the UK that are ready to buy the domain name and that the Respondent will "happily transfer" it to them without charge. If anything, this confirms the lack of good faith on the part of the Respondent, as does the fact that the UK Info connection was only activated after the Respondent had been given notice of the Complainantís objection to its registration of the domain name.
Similar findings are open here in relation to conduct falling within the terms of paragraph 4(b)(iv). The domain name resolves to a listing of various cars, manufacturers, services, etc., and it appears that this is part of a search listing for cars called <NewAuto.com>, which, in effect, involves the sale of space on the website to companies that wish to advertise their products and services on the website. It is unclear whether this operation is controlled or operated by the Respondents, but it is equally clear that Internet users will be diverted to this website through the use of the domain <bmwbikes.com> and it is difficult to characterise this usage as being other than "commercial". If the Respondent had put in a proper Response, it might have been possible for it to make out an argument that this was part of some overall non-commercial service for consumers, but the argument has not been made and certainly there is no evidence to support it. Accordingly, the Panel reaches the following conclusions on the evidence before it:
- Consumers browsing the Internet will be led to believe that there is some sort of association with the Complainant where they see and access the domain <bmwbikes.com> .
- Given that there appears to be little, if any, product information specific to the Complainant on the <bmwbikes.com> website, consumers will be disappointed, if not frustrated, by this.
- On the other hand, once consumers have arrived at the website, they are able to access a wide variety of websites for other manufacturers, products and services. In effect, the latter are able to use the website for the purpose of advertising their products and services, meaning that there has been a commercial use of the domain <bmw-uk.com> to bring Internet users to the website where they can then access this particular service. There is nothing in the evidence to suggest any other purpose lying behind the registration and use of the domain <bmw-uk.com>. In particular, there is nothing to support the suggestion in Mr. Belkowskiís communication that the purpose of the site is "to allow consumers to buy, sell, discuss BMW bikes and other makes". If such an assertion is to be made out, it would need clear evidence to this effect, and the Respondent has furnished nothing in this regard. Furthermore, little, if any weight can be given to the further assertion in the Belkowksi communication that the domain name <bmwbikes.com> enables users to "browse all the manufacturers official sites simultaneously" and this is "what the <bmwbikes.com> name suggests". The expectation that such a domain name gives rise to is exactly the opposite, namely that the website will be in some explicit way either operated by or associated with the Complainant. The assertion by the Respondent that this suggests the domain name is not being used in bad faith therefore is without foundation.
- In light of the foregoing, it follows that there has been an intentional use of the BMW trademark with the purpose of attracting for commercial gain Internet users to the website by creating a likelihood of confusion with the Complainant. This therefore satisfies the requirement for a showing of registration and use in bad faith within the meaning of paragraph 4(b)(iv). As in the case of <BMW-uk.com>, the fact that the <BMWbikes.com> connection was only activated after the Respondent had been given notice of the Complainantís objection to its registration of the domain name confirms this conclusion.
Other matters relevant to registration and use in bad faith
While the matters discussed above are sufficient for the disposition of the present Complaint, brief mention should be made of two other matters that are relevant to the question of bad faith.
- It is asserted in Mr. Belkowskiís communication that there are other website <www.bmbikes.com> and < www.bmwbikes.net> controlled by entities other than the Complainant and in respect of which the Complainant has not taken any action. As there is no evidence before the Panel on these matters, they are of no relevance to the present proceeding and the Panel has therefore disregarded this assertion of the Respondent.
- The Complainant provides some evidence of a large number of domain name registrations made and held by the Respondent which include many trademarked names, e.g. <newpeugeot.com>, <mtv-uk.com>, <yellowpages.com> and the like (see Complaint, Annex K). Such a bundle of apparently unrelated registrations can be relevant to the kind of bad faith registration and use referred to in paragraph 4(b)(i) of the Policy. This would be on the basis that this is evidence from which it can be inferred that there was a general purpose on the part of the Respondent to register and sell such names at a profit to third parties who might be assumed to have a more legitimate interest in them, ie because they represent or resemble names under which they carry on trade: see further Club Mediteranee v Yosi Hasidim, WIPO Case No. D2000-1350 (December 15, 2000) and JP Morgan v Resource Marketing, WIPO Case No. D2000-0035 (March 23, 2000). In the present case, the list of domain names registered by the Respondent is certainly suggestive of such an intent, but it is by no means clear which of those names contain trade or service marks that would satisfy the requirements of paragraph 4(ab)(i) and (ii) of the Policy. The stockpiling of domain names for sale is not, in itself, evidence of bad faith, although little more by way of evidence may be needed to establish this. In the present proceeding, it is unnecessary for the Panel to have regard to the Respondentís purpose in registering and holding these domain names and it therefore makes no findings in this regard, except to say that it is left with the lingering suspicion that the Respondentís registration and use in bad faith of the BMW domain names in the present proceeding is probably not the only instance of such conduct.
The Panel finds that the Complainant has established its case with respect to each of the elements stated in paragraph 4(a) of the Policy.
The Administrative Panel accordingly directs that the registration of the domain names <bmwbikes.com> and <bmw-uk.com> be transferred to the Complainant.
Dated: December 14, 2001