WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Bayerische Motoren Werke AG v. Ferhan Sungur
Case No. D2002-0719
1. The Parties
Complainant is Bayerische Motoren Werke AG, Peutelring 130, Munich, Germany. Complainant's authorised representative in this case is Aimee Gessner, BMW AG, In-house Consel, Department of Trademarks, 88788 Munich, Germany
Respondent is Ferhan Sungur, Buyukada Kivilcim, SK. 22-2, Adalar, Istanbul 81330, Turkey.
2. Domain Name and Registrar
The domain name at issue is <bayerischemotorenwerke.com>
The Registrar is Wild West Domains, 144455 North Hayden Road, Suite 219, Scottsdale AZ 85260, United States of America.
3. Procedural History
The World Intellectual Property Organization Arbitration and Mediation Center (the "Center") received a Complaint from Complainant in electronic form on July 31, 2002, and in hardcopy form on August 5, 2002. On July 31, 2002, The Center acknowledged receipt of Complaint in an e-mail to Complainant.
On July 31, 2002, The Center issued a Request for Registrar Verification, and received such a Verification on August 7, 2002. According to that Verification.
- The Registrar was in receipt of a copy of the Complaint sent by Complainant;
- The domain name <bayerischemotorenwerke.com> is registered with that Registrar;
- Respondent is the current Registrant of the domain name;
- Registrant is: Ferhan, Sungur, with Address 1 given as: Buyukada Kivilcim, Sk.22-2, and Address 2 as: Adalar, Istanbul 81330, Turkey;
- Administrative Contact, Technical Contact and Billing Contact is Ferhan, Sungur, under the same address(es);
- The Uniform Domain Name Dispute Resolution Policy ("the Policy") applies;
- The domain name will remain locked during the pending administrative proceeding;
- The language of the Registration Agreement is English, and;
- The Registrant has submitted in its Registration Agreement to the jurisdiction at the location of the principal office of the Registrar for court adjudication of disputes concerning or arising from the use of the domain name.
On August 8, 2002, the Center drew up a Formal Requirements Compliance Checklist and issued on August 14, 2002, a Notification of Complaint and Commencement of Administrative Proceeding which was communicated to the Parties as well as to the Registrar and to ICANN.
An extensive e-mail communication took place between Respondent and the Center between July 31 and August 19, 2002, which was all copied to Complainant.
On August 27, 2002, the Center received a Response in e-mail form; no Response seems to have been received in hardcopy form. On August 28, 2002, the Center issued an Acknowledgement of Receipt of Response
The Center then invited Mr. Henry Olsson to serve as Sole Panelist and received, on September 3, 2002, Mr. Olsson's Statement of Acceptance and Declaration of Impartiality and Independence. The same date, the Center appointed Mr. Olsson as Sole Panelist and issued a Notification of Appointment of Administrative Panel and Projected Decision Date, which was duly communicated to the Parties. The Projected Decision Date was September 17, 2002.
The Sole Panelist considers that the Administrative Panel was properly constituted and appointed in accordance with 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").
The Panel has also reviewed the considerable correspondence which has taken place in this case, including the ones between Respondent and the Center, and concludes that all formal requirements necessary for considering the case have been fulfilled.
4. Factual Background
Complainant in this case is Bayerische Motoren Werke AG, which is a corporation organised under the laws of the Federal Republic of Germany with its principal place of business in Munich, Germany. Complainant manufactures and distributes motor vehicles under the trademark BMW which is an acronym of Complainant's company name.
Respondent is an individual person about whose activities no particular information has been given in the case.
In accordance with Paragraph 3(b)(xiii) of the Rules, Complainant agrees to submit, only with respect to any challenge that may be made by Respondent to a decision by the Administrative Panel to transfer or cancel the domain name that is the subject of this Complaint, to the jurisdiction of the courts of the principal office of the concerned Registrar.
5. Parties' Contentions
As a general background, Complainant submits that it has an international presence and sells its products in over 120 countries worldwide through a network of subsidiaries, importers and dealers. In the year 2001, Complainant sold a total of 946,730 automobiles and 100,213 motorcycles, with a total annual profit of EUR 1,866,000,000.
Complainant submits that it registered the trademark "Bayerische Motoren Werke" in Chile in 1993 under numbers 406445 and 406446 in Classes 12, 35, 37 and 39. Furthermore, Complainant's name is registered as a defensive trademark in South Africa under Registration No 13/20693/DN since April 23, 1992, with validity until April 23, 2004; according to the present law in South Africa, defensive marks registered under the previous law are regarded as ordinary trademarks. To support its contentions in this respect, Complainant has submitted copies of the relevant registration certificates, as well as an excerpt of the relevant South African legislation.
Furthermore, a commercial law registration exists in Ecuador under Trademark Registration No DNPI-153-95-MICIP as from April 17, 1995. Under the law of Ecuador, the protection afforded to registered trademarks in Ecuador applies equally to registered trade names. Also, in this respect, Complainant has submitted copies of the registration certificates, as well as an excerpt of the legislation in Ecuador.
Complainant submits that the name "Bayerische Motoren Werke" has been used in Germany since 1917, first with the addition "GmbH" (which equals to "Limited Company") and, since 1918, with the addition "AG" (which is "Aktiengesellschaft" and equals to the notion "Incorporated").
Complainant contends that its company name has been used over the last 85 years in connection with products and services recognized throughout the world to be of the highest quality and that, for that reason, Complainant's name has become unique and is identified by the public solely with Complainant and its products and services. Accordingly, according to Complainant, it enjoys an exceedingly valuable reputation and goodwill throughout the world also among the general public which recognises Complainant's name as identifying and distinguishing products and services produced and rendered solely by Complainant. Complainant also refers to an earlier WIPO domain name case (WIPO Case No. D2000-1156, BMW AG v. Loophole) stating that it was, in that case, acknowledged that the BMW mark is world famous.
On the basis of these contentions, Complainant submits that it has common law rights in its name for the purposes of the Policy. As regards Germany, Complainant refers in this context to Article 1(2) and 5 of the German Trademark Act, which defines the scope of trademark protection to include company names, and to Article 4(2), which prescribes that a right in a trademark can be created also through the use of a name in the course of trade. As regards Turkey, Complainant submits that it also distributes and sells its products there and that the notion of unregistered trademark rights is recognised under Turkish trademark law; furthermore, according to Article 8 of the Paris Convention for the Protection of Industrial Property, trade names are automatically protected in Turkey without registration. To support this contention, Complainant has submitted excerpts from "World Trademark Law and Practice," Second Edition, and submits, on the basis of these contentions, that Complainant has unregistered trademark rights in Turkey for its name.
As regards Respondent's use of Complainant's trademark, Complainant alleges that Respondent has never been entitled to use Complainant's trademark and that Respondent's use is neither connected to or sponsored or authorised by Complainant.
Complainant mentions that it first became aware of Respondent's registration of the domain name on July 18, 2002, when it received an e-mail, in German, which (in English translation) stated that Respondent had acquired the domain name and that it would be possible to give or rent this domain name to Complainant. On the same day, a further e-mail stated that Respondent owned the domain name at issue and intended to use it for its web site and again suggested that it could be given or rented to Complainant.
On the date when the e-mail were received, the web site was inactive. On July 24, 2002, Complainant replied to Respondent stating that Complainant's rights in the name "Bayerische Motoren Werke" were infringed by Respondent and that Complainant would take no further action provided that the domain name remained inactive and that immediate legal action would be taken should misuse of the domain name at issue begin.
Also on July 24, 2002, Respondent sent an e-mail to Complainant stating – in summary – that it had received an offer of USD 450,000 for the domain name by a company which did not want to be mentioned and that Respondent was prepared to sell the domain name to Complainant for EUR 2,000,000 and costs; the offer would have to be accepted within seven days. In that mail Respondent also suggests that it acquired the domain name at issue in order to protect it from any kind of misuse, and that the offer to Complainant to sell the domain name was made "out of the goodness of my heart."
The following day, Respondent sent another e-mail stating that Complainant's suggestion about legal action hurt Respondent's feelings and that it would inform the American press and post a statement on the web site <bayerischemotorenwerke.com> regarding Complainant's statements in this respect.
Copies of the e-mails have been submitted in the case.
Identity or Confusing Similarity
Complainant contends in this respect that the dominant and distinctive component of the domain name at issue is "bayerischemotorenwerke" which is identical to Complainant's registered trademarks and that the addition of ".com" is not sufficient to render a domain name dissimilar from a trademark or to prevent consumer confusion.
As regards trademark rights, Complainant refers to certain previous WIPO cases (D2000-0569, Universal City Studios, Inc. v. Antonio Paez, and D2000-1321, Société des Bains de Mer v. Worldnet Companies Inc.) where it was found, basically, that trademarks registered in other jurisdictions are sufficient to meet the requirements of Paragraph 4(a)(i) of the Policy. Additionally or alternatively, Complainant submits the domain name at issue is identical or confusingly similar to Complainant's name in which Complainant has common law or unregistered trademark rights. Complainant adds that it is a well-established practice that trademark rights need not be registered in order to meet the requirements under that Paragraph of the Policy.
According to Complainant, it has unregistered trademark rights in Germany and in Turkey and, therefore, submits that the application of either jurisdictional law would be in Complainant's favour. Alternatively, Complainant seeks to apply general common law principles; as recognised in, for instance UDRP Case No. AJ-0824, Meetingvenice.it R.r.l. v. VENICEONE s.n.c, common law rights were recognized even in a jurisdiction where they otherwise did not exist. Complainant, therefore, submits that basic common law principles be applied in this case and, consequently, would satisfy the "rights" requirement under the Policy.
Rights and Legitimate Interests
In this respect, Complainant submits that Respondent has no rights or legitimate interests in the domain name at issue. According to Complainant, Respondent is not a licensee of Complainant's mark and has not been authorised in any way to use that mark; furthermore, Respondent has made no legitimate non-commercial or fair use of the domain name.
Registration and Use of the Domain Name in Bad Faith
Complainant submits in this respect that Respondent has registered and acquired the domain name primarily for the purpose of selling, renting or otherwise transferring the domain name registration to Complainant for a valuable consideration in excess of the out-of-pocket costs related to the domain name. In this context, Complainant refers to the e-mails sent by Respondent to Complainant offering to sell the name, mentioning also the price of EURO 2,000,000 which is well in excess of any of Respondent's out of pocket costs with respect to the domain name at issue. Furthermore, Respondent's threats of spreading negative press about Complainant is, according to Complainant, equivalent to blackmail and a further evidence of bad faith on the side of Respondent.
For the reasons described and summarised above, Complainant requests that the Administrative Panel issue a decision that the contested domain name be transferred to Complainant.
As mentioned above, Respondent has been engaged in an extensive e-mail exchange with Complainant and with the Center concerning the case. In the formal e-mail Response of August 27, 2002, Respondent contests Complainant's allegations and submits that it has not infringed any of Complainant's rights. Basically, Respondent alleges that it established the domain name by its "mentally creative thinking and by paying the related fees to the respected bodies." Consequently, according to Respondent, Complainant has no right to use Respondent's mental products without paying, just because of a similarity of name.
Respondent submits, among other matters, that names and brands on the Internet are not existing in reality but only in cyberspace which in turn would mean that domain names should be considered as "cyber-intellectual art products" and do not indicate the name of any company, product or name. This is, according to Respondent, the reason why companies create all kinds of variants of their names in order to prevent others from using them for other purposes. The term "bayerischemotorenwerke" was never used by Complainant in or for their domain names; only after Respondent's Response has Complainant created other domain names, such as <bayerischemotorenwerke.info> etc., in order to "increase the power of defending themselves."
Respondent contends that once generated in cyberspace, domain names are considered to be the intellectual property of their owner and that to claim otherwise would be to infringe the intellectual property rights. Among other contentions in this context, Respondent alleges that it would be totally against human rights to prevent the economic rights in relation to a product for which legal ownership is granted. Respondent suggests that Complainant accepted Respondent's legal rights on the domain name at issue by sending the e-mail of July 24, 2002, but has tried to detain Respondent from using the product by threatening to take legal action. The proceeding under way in relation to the domain name at issue has created a loss for Respondent and this would, according to Respondent, not be "legal, ethical or goodwilling" as Respondent considers that it was not informed in time.
Respondent, furthermore, states that conventional business of commercialization of products in cyberspace is a normal activity and that preventing this to happen may cause the "fall of intellectual property" and people would be afraid to create new domain names which would, in turn, affect the development of the Internet negatively and limit the use of it.
As regards the similarity between the domain name at issue and Complainant's trademark or trade name, Respondent contends that this is purely a matter of similarity of syntax of a name. "Bayerische Motorenwerke" has a certain meaning at which Respondent aimed when creating the domain name at issue. Respondent states: "I had nothing to do with "Bayerische Motoren Werke" and also states: "While one company can introduce itself under the name Bayerische Motoren Werke another one can introduce its computer serving under Internet with the name of Bayerische Motorenwerke." The dispute is in fact, according to Respondent, similar to a decision by the Hamburg Supreme Court on "emergency.de" of 1998 and a decision by the Swiss Federal Court on "berneroberland.ch" of 2000.
In summary, Respondent alleges that Complainant could not and should not prevent Respondent from using its product or have that product transferred to it without paying.
6. Discussions and Findings
Paragraph 15 of the Rules prescribes that the Panel shall decide a Complaint on the basis of the statements made and documents submitted and in accordance with the Policy, the Rules and any principles of law that it deems applicable.
From the Registrar Verification, it follows that the Policy is applicable in this case. Consequently, Respondent is required to submit to a mandatory administrative proceeding as now initiated in respect of the domain name at issue.
Paragraph 4(a) of the Policy directs that Complainant must prove each of the following:
- that the domain name registered by Respondent is identical or confusingly similar to a trademark or a service mark in which Complainant has rights;
- that Respondent has no rights or legitimate interests in the domain name, and;
- that the domain name has been registered and is being used in bad faith.
In the following part of this Decision the Panel discusses each of those elements.
In view of Respondent's statements about the nature of domain names and intellectual property rights in such names, the Panel would like to clarify at the outset, that, of course, such domain names can be, and, in fact, sometimes are, the result of intellectual creativity and, therefore, may enjoy intellectual property protection. This does not, however, mean that the results of intellectual creativity, be they domain names, films, music, computer programs, trademarks or industrial designs or others, can be created in a way that infringes the rights of other persons. Intellectual property rights of others always have to be respected, which is why the intellectual property system at national and international levels has been set up, i.e. basically to stimulate creativity, protect investments and ensure an orderly and secure environment for trade in intellectual property products. Consequently, the creators of domain names also have to respect the intellectual property rights of others. This is one of the reasons why the system of dispute resolution in the domain name field has been established.
The Panel therefore cannot accept Respondent's statements about the nature of domain names in this context.
Identity or Confusing Similarity
Complainant has, according to Paragraph 4(a)(i) of the Policy, to prove that the domain name at issue is identical or confusingly similar to a trademark or a service mark in which Complainant has rights.
The domain name at issue is <bayerischemotorenwerke.com>.
As regards Complainant's trademark rights in "Bayerische Motoren Werke" the Panel finds it to be established both that registered trademark rights exist in Chile, Ecuador and South Africa and that such rights exist in Germany, according to the German Trademark Act, on the basis of use of the mark in accordance with the provisions of the German Trademark Act. This Panel considers, like previous Panels have done, that trademark rights need not be registered in order to be taken into account for the purposes of the Policy.
As regards the notion "Bayerische Motoren Werke" the Panel also finds it to be established that the same notion has become unique and well-known and is identified solely with Complainant and its products and services and has acquired a considerable reputation and goodwill also among members of the public. Evidence in the case supports Complainant's contention that it has trademark rights in the company name also in Turkey.
Respondent has not, in any specific way, contested Complainant's allegations in respect of Complainant's trademark rights as such.
On the basis of these considerations, the Panel concludes that Complainant, in fact, has trademark rights in the name "Bayerische Motoren Werke" for the purposes of Paragraph 4(a) of the Policy.
There are some differences between the domain name at issue and Complainant's trademark, both in the sense that there is, in the domain name, no space between the words in "Bayerische Motoren Werke" and that the domain name also contains the gTLD ".com". The overall impression when comparing the trademark and the domain name is, however, that they contain the same dominant elements. The Panel, therefore, concludes that confusing similarity exists between the domain name at issue and Complainant's trademark.
Rights or Legitimate Interests
In this respect, Complainant has, according to Paragraph 4(a)(ii) of the Policy, to prove that Respondent has no rights or legitimate interests in the domain name at issue.
In this respect, Complainant has basically alleged that Respondent is not a licensee of Complainant's mark and has not been authorised in any way to use it and, also, that Respondent has made no legitimate non-commercial use of the domain name.
Complainant's allegations in this respect have basically remained uncontested by Respondent who has, instead, invoked his own independent intellectual property rights in the domain name at issue as a result of Respondent's creative activity. Respondent has also, in the various e-mails to Complainant explained why it acquired the domain name, i.a. to protect against misuse.
As regards Respondent's allegations in respect of its rights in the domain name and the reasons why it acquired it, the Panel has already discussed these and rejected them and the Panel does not find that what Respondent has alleged concerning the reasons for its acquisition of the domain name creates rights or legitimate interests under the Policy.
On the basis of these considerations and of the statements made and evidence submitted, the Panel finds it to be established that Respondent has no rights or legitimate interests in the domain name in the sense of the Policy.
Registration and Use in Bad Faith
In this respect, Complainant has, according to Paragraph 4(a)(iii) of the Policy, to prove that the domain name at issue has been registered and is being used in bad faith. Paragraph 4(b) then sets out the circumstances which, in particular but without limitation, shall, if found to be present, be considered as evidence of registration and use in bad faith. One of these, invoked by Complainant, is the provision under Paragraph 4(b)(i) referring to: "circumstances indicating that you (Respondent) have registered or you (Respondent) 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 (Respondent's) documented out-of-pocket costs related to the domain name."
Complainant has, in support of its contentions in this respect, referred to the e-mails from Respondent offering to sell the domain name and to the price mentioned in one of those e-mails of EUR 2,000,000.
Respondent has not contested that these offers have been made but instead referred to, inter alia, business in, and commercialization of, domain names as a natural matter.
The evidence submitted in this case, in particular that relating to Respondent's offers to Complainant to transfer the domain name at issue, brings the Panel to the conclusion that Respondent has, in fact, registered and is using the domain name at issue in bad faith within the meaning of Paragraph 4(a)(iii) of the Policy.
On the basis of the foregoing, the Administrative Panel concludes that it has been proved that confusing similarity exists between the domain name at issue and Complainant's trademark, that Respondent has no rights or legitimate interests in the domain name and that the domain name has been registered and is being used in bad faith.
In accordance with Complainant's request and with reference to Paragraph 4(i) of the Policy, the Panel requires the domain name <bayerischemotorenwerke.com> to be transferred to Complainant.
Dated: September 10, 2002