WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Bayerische Motoren Werke AG v. Steven Koeppel

Case No. D2002-0795

 

1. The Parties

The Complainant in this administrative proceeding is Bayerische Motoren Werke AG, a corporation organised under the laws of the Federal Republic of Germany with a principal place of business at Petuelring 130, Munich, Germany.

The Respondent in this administrative proceeding is Steven Koeppel of Mineola, NY 11501, United States of America.

 

2. The Domain Name and Registrar

The domain name in dispute is <bmwx3.com>.

The Registrar with which the domain name is registered is Register.Com Inc, of 575 Eighth Avenue, 11th Floor, New York, NY 10018, United States of America. ("the Registrar")

 

3. Procedural History

On August 23, 2002, the Complaint was filed with the WIPO Arbitration and Mediation Center ("the Center") by e-mail and on August 28, 2002, in hard copy.

On August 23, 2002, the Center acknowledged receipt of the Complaint.

On August 23, 2002, the Center sent a Request for Registrar Verification to the Registrar, and received the Registrar's answer to the request on August 23 and 27, 2002, confirming that it is the registrar of said domain name <bmwx3.com>, the Registrar provided the contact information about the Registrant, provided details of the Administrative Contact, Technical Contact, Zone Contact, and confirmed that the Policy is in effect in respect of the said registration, and that the said registration was active at that time.

On August 28, 2002, the Center sent a Complaint Deficiency Notification to the Complainant.

On August 30, 2002, the Center received the Amendment to the Complaint, which defined the person mentioned above as the Respondent, by e-mail and on September 3, 2002, in hard copy.

Having verified that the Complainant paid the fees, and that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy ("the Policy"), 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") on September 3, 2002, the Center on the same day transmitted by e-mail and courier a Notification of Complaint and Commencement of Administrative Proceeding to the Respondent.

Paragraph 5 of the Rules requires the Respondent to submit a response to the Provider addressing the matter contained therein within 20 days of the date of Commencement of the Administrative Proceedings. As no such response was submitted, on September 25, 2002, the Center transmitted a Notification of Respondent Default to the Respondent.

On October  9, 2002, after having received a Statement of Acceptance and Declaration of Impartiality and Independence from her in accordance with Paragraph 7 of the Rules, the Center proceeded to appoint Dr. Katalin Szamosi as Administrative Panel.

In the view of the Administrative Panel, proper procedures were followed and this Administrative Panel was properly constituted.

The language of the administrative proceeding is English being the language of the registration agreement.

 

4. Factual Background

The Complainant claims to be the manufacturer and distributor of the world famous BMW motor vehicles. The trademarks "BMW" and "BMW and design" have been in use since as early as 1917 in Germany. The registration of both trademarks are enclosed as Annex C and D of the Complaint.

The Complainant is also the registered owner of BMW trademarks in over 120 countries world-wide. Due to the fact that the residence of the Respondent is the United States, the Complainant has enclosed copies of the registration certificates of United States trademark registrations for "BMW" and "BMW and design" (reg. Nos. S-12960, 611710, 1627241, 1164922, S-12961, 1450212) in Annex E of the Complaint. The Complainant has a trademark registration in Germany for "X3", (registration No. 39868709, reg. date December 21, 1998), and a pending application for USA trademark "X3" (appl. No. 76/101133, appl. date August 2, 2000). Certification of above registration and application are enclosed as Annex G of the Complaint.

The Respondent is an individual who is engaged in a business activity with the company Koeppel Auto Group, United States of America.

Respondent registered the domain name <bmwx3.com> on May 20, 2001.

The Complainant became aware of Respondent' s registration on December 18, 2001.

On January 22, 2002, the Complainant sent a "Cease and Desist" letter to the Respondent. The letter is enclosed as Annex J of the Complaint.

No written answer of the Respondent was sent to Complainant, but on June 10, 2002, a telephone conversation took place between the Complainant and the Respondent. Notes regarding this conversation made by the Complainant's authorised representative are enclosed as Annex K.

On July 17, 2002, a last reminder was sent to the Respondent with the final deadline of August 9, 2002.

The Respondent did not respond to the letter, and the Complainant has brought his case before the Center.

 

5. Partiesí Contentions

A. Complainant

The Complainant claims that the said domain name <bmwx3.com> is identical or confusingly similar to the trademarks in which the Complainant has rights; that the Respondent has no rights or legitimate interests in respect of the said domain names; and that the domain name was registered in and is being used in bad faith. The Complainant requests the Administrative Panel to direct that said domain name be transferred to the Complainant.

Complainant owns numerous trademarks consisting of "BMW" or incorporating the element BMW all over the world.

The BMW trademarks are currently also used in relation to a wide variety of goods which promote the image and life style that are associated with BMW automobiles and motorcycles. Services such as repair and maintenance of motor vehicles, leading sponsorship of sport events are also covered by various trademark registrations. Complainant also has trademark right for the X3 trademark including the motor vehicles and their constituent parts.

Complainant states that the domain name <bmwx3.com> is identical or confusingly similar to the Complainantís BMW and X3 trademarks, since the more dominant and distinctive component of the domain name at issue is "BMW", which is identical to the Complainantís registered and well-known trademark "BMW". This is used in combination with the Complainantís registered trademark "X3", which is also a distinctive component of the disputed domain name.

The Complainant states that the Respondent has never been entitled to use any of the Complainant's BMW and X3 trademarks. Therefore the Respondent is an unauthorised user of the Complainant's trademarks.

It also states that the BMW X3 model is expected to be launched officially in 2003, however it has been reported widely in the trade press since 1999.

The Complainant states that the Respondent registered the domain name with complete knowledge of the Complainant's rights, since the Respondent is involved in the car dealership, his activity is connected to Koeppel Auto Group, which sells Mitsubishi cars.

Complainant further states that Respondent has registered the domain name without any legitimate interest. Since the actual BMW X3 model is not available to the public, the intent of the Respondent to buy this model for his wife and set up the web-site for the BMW X3 is without any likelihood. It is more likely that Respondent was using this domain name <bmwx3.com> for his Mitsubishi dealership web-site which is an obvious attempt to mislead consumers looking for information about the BMW X3 model.

Complainant states that Respondent registered <bmwx3.com> hoping to receive a car from the Complainant or a discount on a lease in exchange for the transfer of the domain name. According to the Complainantís standpoint, this indicates the bad faith of the Respondent. The Complainant stated that it could only provide him with a reimbursement for his registration costs and offered an amount of USD 300 for this purpose.

The Complainant stated that the Respondent is involved in selling Mitsubishi cars, which is a competing car brand. Therefore the registration and use of the domain name was for the purpose of disrupting the business of the Complainant, since it hinders the Complainant from promoting or advertising its new product under the suitable domain name.

In support of its claims the Complainant refers to the decisions of the administrative panels in BMW AG v. Loophole, WIPO Case No. D2000-1156 (October 26, 2000), (domain name: <bmw.org>), Farmaka s.r.l. v. Robert Capps, WIPO Case No. D2001-0148 (October 18, 2002), Helen Fielding v. Anthony Corbert aka Anthony Corbett, WIPO Case No. D2000-1000 (September 25, 2000).

B. Respondent

The Respondent has not filed any submission.

 

6. Discussion and Findings

6.a.

Paragraph 4(a) of the Policy directs that Complainant must prove each of the following:

(i) the domain name in issue is identical or confusingly similar to Complainant's trademark, 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.

Paragraph 4(b) of the Policy sets out, by way of example, four circumstances, each of which, if proven, shall be evidence of the registration and use of the domain name in bad faith for the purpose of Paragraph 4(a)(iii) above.

Paragraph 4(c) of the Policy sets out, by way of example, three circumstances, each of which, if proven by Respondent, shall demonstrate Respondent's rights or legitimate interests to the domain name for the purpose of Paragraph 4(a)(ii) above.

6.b.

Due Process

As Respondent has not submitted a response to the Center and the file has only contained a notice from the Complainant from the telephone call of June 10, 2002 (Annex K). The Rule of the due process required the Panel to verify as much as possible that the Respondent is aware of the present proceedings. The Panel is satisfied with the documents that this is the case and the evidence is sufficient in all respect to support a decision.

Trademark Rights

Complainant has provided sufficient evidence of its rights to the trademarks BMW, X3 and that BMW is well-known.

Identical or Confusingly Similar

The domain name <bmwx3.com> is clearly confusingly similar to Complainant's trademarks BMW and X3. The domain name <bmwx3.com> incorporates both trademarks "BMW" and "X3" with suffix ".com", which indicates that the domain name is registered under the ".com" gTLD. It is clear that the well-known and more distinctive trademark BMW is the most prominent element in the combination. The domain name <bmwx3.com> is confusingly similar to and identical with the trademarks in which the Complainant has rights.

Rights or Legitimate Interests

Under Paragraph 4(c) of the Policy, Respondent may demonstrate that it has rights or legitimate interests in a domain name for the purpose of Paragraph 4(a)(ii) of the Policy inter alia by providing evidence of any of the following circumstances:

(i) before any notice to you of the dispute, your use of, or demonstrable preparation 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.

The Respondent has no license or other legal rights in respect of the domain name.

Respondent has used the domain name for his Mitsubishi dealership web-site which is neither legitimate nor fair use. The Panel finds also substantiated that Respondent has used the domain name <bmwx3.com> for his Mitsubishi dealership web-site in an obvious attempt to mislead consumers looking for information regarding BMW cars or the new model BMW X3.

Registered and Used in Bad Faith

The Complainant contents the Respondent has violated Paragraph 4(b)(i) of the Policy in that he attempted to sell the domain name back to the Complainant for a car or for a discounted lease price for a BMW. Respondent did not accept the offer from the Complainant in the amount of USD 300.

Mitsubishi cars are currently competing with BMW, therefore Respondent can be judged as a competitor. As far BMW X3 is not to be launched until the year 2003, it can be established that the registration and use of the disputed domain name disrupts the business of the Complainant, since it prevents the Complainant from appropriately promoting or advertising its product under a suitable domain name. Therefore the registration and use of the disputed domain name violates the bad faith action of the Policy.

The Panel finds that the registration and use of the domain name at issue has been made in bad faith.

 

7. Decision

With specific reference to Paragraph 4(i) of the Policy and Paragraph 15 of the Rules, it is the decision of this Administrative Panel that the Complainant has proven each of the three elements of Paragraph 4(a) of the Policy.

This Administrative Panel therefore directs that the said domain name <bmwx3.com> shall be transferred to Complainant.

 


 

Dr. Katalin Szamosi
Sole Panelist

Dated: October 16, 2002