WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Bayerische Motoren Werke AG v. Lucjan Niemiec

Case No. D2003-0240

 

1. The Parties

The Complainant is Bayerische Motoren Werke AG, more commonly referred to as BMW, a corporation organized under the laws of the Federal Republic of Germany, with a principal place of business at, Munich, Germany and represented by BMW AG of Germany.

The Respondent is Lucjan Niemiec an individual with an address at, Ilenoy, United States of America.

 

2. The Domain Name and Registrar

The disputed domain name <bmwcars.info> is registered with Go Daddy Software, Inc., 14455 North Hayden Road, Suite 226, Scottsdale, United States of America 85260.

 

3. Procedural History

The Complaint was filed via e-mail on March 26, 2003, and in hard copy on March 28, 2003, with the WIPO Arbitration and Mediation Center (the "Center").

On March 28, 2003, the Center transmitted by e-mail to Go Daddy Software a request for registrar verification in connection with the domain name at issue. On March 31, 2003, Go Daddy transmitted by e-mail to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing and technical contact. The Center verified that the Complaint satisfied 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").

In accordance with the Rules, Para. 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on April 3, 2003. In accordance with the Rules, Para. 5(a), the due date for Response was April 23, 2003. The Respondent did not submit any response. Accordingly, the Center notified the Respondentís default on April 24, 2003.

The Center appointed Angelica Lodigiani as the Sole Panelist in this matter on May 6, 2003. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, Para. 7.

The Panel finds that the payment was properly made and agrees with the Centerís assessment concerning the Complaintís compliance with the formal requirements.

Finally, in accordance with Para. 11 of the Rules, since the Parties to the present administrative proceeding have not agreed otherwise, and since the Registration Agreement that relates to the domain name in question does not specify otherwise, the language of the administrative proceeding will be the language of the relevant Registration Agreement (i.e., English).

 

4. Factual Background

According to the Complaint, the Complainant conducts business in the manufacture and distribution of motor vehicles. The trademarks BMW and BMW and design (collectively referred to as the "BMW Trademarks") are, according to the Complaint, "world-famous" and have been in use since as early as 1917 in Germany. Copies of the earliest registrations in Germany for BMW Trademarks, upon which this Complaint is primarily based, along with their English translations, were attached to the Complaint as Annex C and Annex D, respectively.

The Complainant also states in the Complaint that

"In addition to motor vehicles and other goods listed in the registrations above, the BMW Trademarks are currently used in relation to a wide variety of goods, including various accessories and merchandise, such as clothing, watches, sunglasses and leather goods, which promote the image and lifestyle that are associated with BMW automobiles and motorcycles. Services such as the repair and maintenance of motor vehicles, financial leasing of motor vehicles, and participation and sponsorship of sporting events, are also covered by various trademark registrations."

In addition, the Complainant states that it is the registered owner of BMW Trademarks in over 120 countries worldwide. Because the Respondentís residence is in the United States, the Complainant enclosed copies of the registration certificates for the following United States trademark registrations in Annex E of the Complaint:

Trademark  Country  Reg. No.  Reg. Date

BMW USA S-12960 10. Sept.1993
BMW USA 611710 06. Sept. 1955
BMW USA 1627241 11. Dec. 1990
BMW USA 1164922 11. Aug. 1981
BMW & design USA S-12961 10. Sept. 1993
BMW & design USA 1450212 04. Aug. 1987

All the aforementioned statements are uncontested and are supported by ample documents. In light of the foregoing, the Panel takes the view that the Complainantís statements are a fair representation of the Complainantís trademarks and activities.

 

5. Partiesí Contentions

A. Complainant

The Complainant states that it first became aware of the Respondentís domain name registration on September 26, 2002 and that, at that time, the subject domain name was connected to a website, which stated,

bmwcars.info
FOR SALE
Interested in purchasing this domain name?
If so, please contact:
lucjan@ameritech.net

The Complainant further contends that the Respondentís use of its trademark is "neither connected to, sponsored by, nor within the control of the Complainant," and that the Respondent has never been entitled to use the BMW Trademarks.

On September 27, 2002, the Complainant sent a letter to the Respondent informing him of its earlier trademark rights, and requested the Respondent to discontinue any further use or reference to any of the Complainantís trademarks and to transfer the domain name at stake to the Complainant. The Respondent failed to reply and the Complainant sent a reminder letter. After this letter, the Respondent removed the website offering the domain name for sale and replaced it with the Registrarís holding page. Accordingly, the Respondent has shown no willingness to comply with the Complainantís request for a transfer of the disputed domain name.

According to the Complainant, the disputed domain name is confusingly similar to a trademark in which the Complainantís has rights for the following reasons:

- "The dominant and distinctive component of the disputed domain name is BMW, which is identical to the Complainantís registered trademarks."

- "The addition of the generic word "cars" does not make the predominant element BMW less distinctive."

The Complainantís main products are cars, and therefore the addition of the word "cars" to the name "BMW" is even more likely to create confusion rather than alleviate any confusion.

- "The Complainant does offer its products and services under the second level domain name "bmwcars" under various top level domains. These domain names, such as <bmwcars.com>, <bmwcars.org>, and <bmwcars.de> are used as official websites of the Complainant" (Annex L). "Therefore, the likelihood of confusion between the Respondentís and the Complainantís domain names is very high."

The Complainant enclosed as Annex L the print out of the whois registration of <bmwcars.com> as evidence that the Complainant has been using the second level domain "bmwcars" since August 14, 1995, i.e., several years before the Respondentís registration of <bmwcars.info> on October 2, 2001.

- "The ending Ď.infoí is a generic top level domain, which is not sufficient to render a domain name dissimilar or to prevent consumer confusion."

The Complainant also alleges that the Respondent has no rights or legitimate interests in respect of the domain name that is the subject of the Complaint because "the Respondent is not a licensee of the Complainantsí marks and has not been authorized in any way to use the same. The Respondent has made no legitimate non-commercial or fair use of the domain name."

According to the Complainant, "the fact that the Respondent has not listed a specific sale price on its website is also irrelevant, since by making a general statement that the domain is for sale, the Respondent is in effect asking potential buyers to make an offer and is holding out for more than out-of pocket expenses."

The Complainant submits that the offer to sell the domain name on a website to a third party should be taken as evidence constituting bad faith registration and use within the meaning of Para. 4(b) of the Policy.

Prior ICANN decisions have found that advertising at large that the domain name is for sale is evidence of bad faith and is properly regarded as an offer to sell the domain name to the Complainant or a competitor. It is therefore irrelevant that the Respondent did not contact the Complainant directly with an offer for sale and that the Respondent did not list a specific price on its website. Indeed, by making a general statement that the domain is for sale, the Respondent is in effect asking potential buyers to make an offer and is requesting more than out-of-pocket expenses.

B. Respondent

The Respondent did not submit any response and is considered in default. The Panel, in compliance with Para. 14 of the Rules, shall therefore proceed to a decision on the Complaint and shall draw such inferences therefrom as it considers appropriate.

 

6. Discussion and Findings

According to Para. 4(a) of the Policy, in an administrative proceeding, the Complainant must prove that each of following three elements are present: (1) the domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and (2) the Respondent has no rights or legitimate interests in respect of the domain name; and (3) the domain name was registered and is being used in bad faith.

A. Identical or Confusingly Similar

The Panel believes that the domain name at issue, <bmwcars.info>, is confusingly similar to a trademark in which the Complainant has rights.

As mentioned above, the Complainantís trademarks cited in the Complaint either consist of the word BMW per se, or of the word BMW accompanied by a device. As far as the disputed domain name is concerned, the Panel shares the Complainantís view that the distinctive part of <bmwcars.info> lies in the BMW component, while the word "cars" is a generic term for English speaking people, as the Respondent is, and also for the citizens of many other countries where people have knowledge of the English language (at least of the basic English language to which the word "car" certainly belongs). As far as the ".info" ending is concerned, it refers to a gTLD which is not capable of avoiding confusion with the Complainantís BMW Trademarks.

Therefore, the addition of the term "cars" to the BMW component is not sufficient to avoid a confusing similarity between the disputed domain name and the Complainantís BMW trademark (See also Bayerische Motoren Werke AG v. bmwcar.com, WIPO Case No. D2002-0615; Toyota France and Toyota Jidosha K.K.d/b/a v. Computer-Brain, WIPO Case No. D2002-0002; Prisma Presse v. Buy Domains. Com, WIPO Case No. D2001-1073).

On the contrary, the Panel finds that the addition of the term "cars" in the domain name at stake, increases, rather than diminishes the possibility of confusion among Internet users. The addition of the term "cars" makes reference to the Complainantís main activity, i.e., that of car manufacturing, an activity that undoubtedly the Complainant wants to promote, as the Panel reasonably infers from the Complainantís registrations, as early as 1995, of "bmwcars" as second level domain names under the gTLDs ".com," ".org" and ".net." Accordingly, by specifically mentioning BMWís main products - albeit in a generic sense - in the disputed domain name, the confusing similarity between the BMW trademark and the disputed domain name is enhanced (See in this respect, Bellsouth Intellectual Property Corporation v. Freeworld and/or Luis, WIPO Case No. D2000-1807 Volvo Trademark Holding AB v. e-motordealer Ltd.,WIPO Case No. D2002-0036; Nintendo of America, Inc. v. Tyasho Industries and Thomas G. Watson, WIPO Case No. D2001-0976).

Also the device accompanying some of the BMW Trademarks does not prevent the disputed domain name to be confusingly similar to the BMW device marks. Indeed, the most distinctive component of the BMW and device trademarks certainly lies in the word BMW. Furthermore, a device is an element which cannot be reproduced in a domain name.

In light of the foregoing, the Panel finds that the domain name <bmwcars.info> is confusingly similar to a trademark in which the Complainant has rights.

B. Rights or Legitimate Interests

The Panel finds that the Respondent has neither rights nor legitimate interests in respect of the domain name.

It is an established principle that the burden of proof lies with the Complainant. However, satisfying the burden of proving a lack of the Respondentís rights or legitimate interests in respect of the domain name according to Para. 4(a)(ii) of the Policy is quite onerous, since proving a negative circumstance is always more difficult than establishing a positive one. Accordingly, and in line with other prior decisions, the Panel holds that it is sufficient that the Complainant provides prima facie evidence in order to shift the burden of proof to the Respondent (See among others, Anti Flirt S.A. and Mr. Jacques Amsellem v. WCVC, WIPO Case No. D2000-1553, Intocast AG v. Lee Daeyoon, WIPO Case No. D2000-1467; Marie Claire Album v. Geoffrey Blakely, WIPO Case No. D2002-1015).

Under Para. 4(c) of the Policy, the Respondent may demonstrate that he has rights to and legitimate interests in the domain name by proving that:

(i) before any notice of the dispute to the Respondent, the Respondent used, or made demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods and services; or

(ii) the Respondent has been commonly known by the domain name, even if the Respondent has acquired no trademark or service mark rights; or

(iii) the Respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the Complainant's trademark.

The Respondent failed to prove any of the above-mentioned circumstances as it did not reply to the Complaint. According to Para. 14 of the Rules, in case of default, the Panel shall proceed to a decision on the Complaint.

The Panel did not find in the Complaint and in the enclosed documents any element attesting that the Respondent has been commonly known by the domain name, even if the Respondent has acquired no trademark or service mark rights. On the contrary, as the Complainant underlines, the Respondent is not a Complainantís licensee and was never authorized to use the BMW Trademarks.

Furthermore, the circumstances as known by the Panel, do not indicate anything which would induce one to believe that before any notice of the dispute to the Respondent, the Respondent used, or made demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods and services. On the contrary, before any notice of the dispute, the only activity carried out was Respondentís offer for sale of the domain name at stake, activity which however should be compared with the subsequent removal of the indication "For Sale" after having received a second letter from the Complainant objecting to the registration of the domain name. In the Panelís opinion, such a removal is inconsistent with a bona fide offering of goods and services.

Furthermore, independently assessed, the offer for sale of a domain name which is confusingly similar to a worldwide renown trademark as BMW, cannot be considered in itself a use of the domain name in connection with a bona fide offering of goods and services. The disputed domain name is rather unique and specific to the Complainant and there is no apparent legitimate reason justifying the offer for sale of the disputed domain name to third parties (Bayerische Motoren Werke AG v. (This Domain is For Sale) Joshuathan Investments, Inc., WIPO Case D2002-0787).

Finally, given the circumstances of the case, the Panel does not believe that the Respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the Complainant's trademark, as required by Para. 4(c)(iii) of the Policy.

Based on all of the above, the Panel concludes that the Respondent has no rights or legitimate interests in the domain name <bmwcars.info>.

C. Registered and Use in Bad Faith

Under Para 4(a) (iii) of the Policy, the Complainant must prove two additional requirements, (i) that the disputed domain name was registered in bad faith; and (ii) that said domain name is being used in bad faith.

The Panel finds that the Complainant has offered and supplied enough evidence of the fact that the domain name <bmwcars.info> was registered and is being used in bad faith.

As also recognized in other decisions (Bayerische Motoren Werke AG and Williams Grand Prix Engineering Limited v. Neil Malkhandi, WIPO Case D2000-1172; BMW AG v. Loophole, WIPO Case D2000-1156; Bayerische Motoren Werke AG v. DLR, WIPO Case D2001-1231; Bayerische Motoren Werke AG v. (This Domain is For Sale) Joshuathan Investments, Inc., WIPO Case D2002-0787; Bayerische Motoren Werke AG v. Steven Koeppel, WIPO Case D2002-0795; Bayerische Motoren Werke AG v. Partinbank, WIPO Case D2002-0892; Motoren Werke AG v. Null, WIPO Case D2002-0937; Bayerische Motoren Werke AG v. Quality Services, WIPO Case D2003-0077), the BMW mark enjoys a worldwide reputation.

It is inconceivable that the Respondent was not aware of the existence and worldwide reputation of the BMW trademark and of the Complainantís activities when he registered the domain name <bmwcars.info>. Even more so, the registration of a domain name like <bmwcars.info>, where the BMW trademark is coupled with the term "cars," making clear reference to the Complainantís principal activity, eliminates any doubt as to the fact that the Respondent knew the BMW mark and the Complainantís activities at the time of the registration of the disputed domain name.

As explained in the Complaint and supported by evidence, the Respondent offered for sale the domain name <bmwcars.info>. The Complainant removed its "offer for sale" of the disputed domain name only after having received two letters from the Complainant.

According to Para. 4(b)(i) of the Policy, circumstances indicating that the Respondent registered or 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 the Complainant, for valuable consideration in excess of the Respondentís documented out-of-pocket costs directly related to the domain name, constitute evidence of bad faith registration and use of the domain name.

It is unclear from the Complaint whether the offer for sale of the disputed domain name was made from the time of its registration, or subsequently. The domain name <bmwcars.info> was registered in October 2001, and Annex H to the Complaint shows that the domain name was advertised for sale in November 2002. However, considering the renown of the BMW mark and the fact that the Respondent removed the offer for sale only after having received two cease and desist letters from the Complainant, absent any Respondentís contrary statement, the Panel concludes that the domain name at issue was primarily registered for the purpose of selling it for valuable consideration in excess of the Respondentís documented out-of-pocket costs directly related to the domain name.

The fact that the offer for sale was not specifically addressed to the Complainant or to its competitors does not legitimate the registration and use of the domain name at stake. Para. 4(b) of the Policy only indicates circumstances which, without limitation, shall be evidence of the registration and use of a domain name in bad faith. Therefore, nothing prevents the Panel from finding other circumstances supporting the conclusion that the domain name was registered and has been used in bad faith.

The nature of the domain name and the manner in which the domain name has been advertised for sale coupled with the Respondentís lack of rights and legitimate interests in the domain name are indisputable evidence that the domain name <bmwcars.info> was registered and has been used in bad faith (Bayerische Motoren Werke AG v. (This Domain is For Sale) Joshuathan Investments, Inc., WIPO Case D2002-0787; United Artists Theatre Circuit, Inc. v. Domains for Sale Inc., WIPO Case D2002-0005).

Finally, as also underlined in the Complaint, the fact that the Respondent did not list a specific price on its website is irrelevant. Making a general statement that the domain name is for sale implies that the Respondent is asking potential buyers to make an offer and is holding out for more than out-of-pocket expenses (Toroc & Ioc v. Peter Hufschmid, WIPO Case D2001-0604).

Under the factual and legal circumstances of the present case and absent any contrary indication from the Respondent, the Panel concludes that the offering for sale of the <bmwcars.info> domain name on the home page of the corresponding website is clear evidence that the disputed domain name has been registered and is being used in bad faith.

 

7. Decision

In light of the foregoing, the Panel finds that the Respondentís disputed domain name <bmwcars.info> is confusingly similar to a trademark in which the Complainant has rights, that the Respondent has no legitimate rights or interests in the disputed domain name, and that the Respondent has registered and made use of the domain name in bad faith.

Accordingly, pursuant to Para. 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name <bmwcars.info> be transferred to the Complainant.

 


 

Angelica Lodigiani
Sole Panelist

Dated: May 20, 2003