WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Bayerische Motoren Werke AG v. Peter Carrington also trading as Party Night Inc.
Case No. D2003-0367
1. The Parties
The Complainant is Bayerische Motoren Werke AG, Petuelring Munich, Germany, represented by Aimee Gessner of Germany.
The Respondent is Peter Carrington also trading as Party Night Inc., Jan Luykenstraat Amsterdam, Netherlands.
2. The Domain Names and Registrar
The disputed domain names<bmwfillms.com>
are registered with Key-Systems GmbH dba domaindiscount24.com
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on May 13, 2003. On May 13, 2003, the Center transmitted by email to Key-Systems GmbH dba domaindiscount24.com a request for registrar verification in connection with the domain names at issue. On May 22, 2003, Key-Systems GmbH dba domaindiscount24.com transmitted by email 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 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").
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on May 26, 2003. In accordance with the Rules, paragraph 5(a), the due date for Response was June 15, 2003. The Respondent did not submit any response. Accordingly, the Center notified the Respondentís default on June 16, 2003.
The Center appointed Arne Ringnes as the sole panelist in this matter on July 4, 2003. The Panel finds that it was properly constituted. 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, paragraph 7. The Panelist, in accordance with the Rules paragraph 10 (c) extended the decision due date to July 22, 2003.
4. Factual Background
The Complainant carries on business in the manufacture and distribution of motor vehicles and is commonly known as BMW AG. The trademarks "BMW" and "BMW and design" have been in use since as early as 1917 in Germany. The details of these registrations are summarized as follows:
Trademark: BMW and design
Registration No. 221388
Reg. Date: December 10, 1917
Goods: Land, air, water vehicles, automobiles, bicycles, accessories for automobiles and bicycles, vehicle parts; stationary engines for solid, liquid and gaseous operating supplies and their components and accessory parts.
Valid until: October 31, 2007Trademark: BMW
Valid until: February 28, 2009
The Complainant is the registered owner of BMW Trademarks in over 120 countries worldwide, and over the last 83 years, the Complainant and its subsidiaries, importers, dealers, and licensees have used the BMW Trademarks throughout the world, directly and through appropriate licenses and permission.
Complainantís trademark registrations includes Community Trademark "BMW" (Community Registration No. 91835), as well as the following US trademarks:
|Trademark||Country||Reg. No.||Reg. Date|
|BMW||USA||611710||September 6, 1955|
|BMW||USA||1627241||December 11, 1990|
|BMW||USA||1164922||August 11, 1981|
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.
By e-mail dated September 17, 2002, the Complainant advised the Respondent that the unauthorized use of the BMW trademark in his domain registrations, especially in association with pornography, tarnished and violated its trademark rights. Respondent has failed to respond to the Complainant.
5. Partiesí Contentions
The Complainant submits that the domain names at issue are identical or confusingly similar to the Complainantís BMW trademark. The more dominant and distinctive component of the disputed domain names is "BMW", which is identical to the Complainantís registered and well-known trademark "BMW". The addition of any further terms to a well-known trademark does not preclude similarity to the mark and is not sufficient to render a domain name dissimilar or to prevent consumer confusion. As support for this general proposition Complainant refers to General Electric Company v. Forddirect.com, Inc. WIPO Case No. D2000-0394, as support for this general proposition.
In addition or in the alternative, the Complainant submits that the domain names <bmwfillms.com>, <bmwfils.com>, <bmwfimls.com>, <bmwfims.com> and <bmwflim.com> are confusingly similar to the mark "bmwfilms.com", for which the Complainant has common law rights by way of its use and advertising of its "www.bmwfilms.com" website. Similarly, the Complainant also submits that the domain name <bmwuas.com> is confusingly similar to the mark "bmwusa.com", for which the Complainant has common law rights by way of its use and advertising of its "www.bmwusa.com" website.
Complainant alleges that the Respondent deliberately has positioned himself to take advantage of typographical errors by the Internet user when entering the URL of a known mark or domain name, a practice that is known as typosquatting.
Complainant further submits that the Respondent has no rights or legitimate interests in respect of the domain name that is the subject of the Complaint. The Respondent is not a licensee of the Complainantís 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.
The use of typosquatting to divert Internet users to pornographic websites does not demonstrate any legitimate interest.
The Complainant submits that the Respondent was, as under Paragraph 4(b)(iv) of the Policy, intentionally attempting "to attract, for commercial gain, Internet users to [the] website....by creating a likelihood of confusion with the complainantís mark as to the source, sponsorship, affiliation, or endorsement of [the] website or location or of a product or service on the website or location." The Respondentís domain names were connected to commercial pornographic websites, and it can also be inferred that the Respondent commercially benefits from diverting consumers to the numerous advertisements for other pornographic sites that automatically appear when typing in the domain names at issue. Such a use carries with it the likelihood of confusing Internet users, who mistype the Complainantís URL while searching for the Complainantís websites.
In fact, the actions of the Respondent (i.e. the use of the domain names to divert Internet traffic to pornographic sites) has been held in previous decisions involving the Respondent to represent bad faith use of the domain names. (America Online, Inc. v. Peter Carrington d/b/a Party Night, Inc., NAF Case No. FA0208000118314.)
VI. Remedies Requested
[Rules, para. 3(b)(x)]
The Complainant requests the Administrative Panel to issue a decision that the contested domain name be transferred to the Complainant.
The Respondent did not reply to the Complainantís contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
The Panel finds that the Complainant has proved that the domain names in question are confusingly similar to Complainants trademark rights. This finding is based on the following grounds:
Complainant has submitted evidence that shows that Complainant is the owner of the trademark "BMW" in Germany and the United States as well as the owner of the Community Trademark "BMW". The Community Trademark is also effective in the Netherlands Ė which is the country in which Respondent has its address. It is further the Panelís understanding that "BMW" is a well known trademark in many parts of the world.
In Respondentís domain names certain letters are added to "BMW", all of them being misspellings of the word "film", i.e. "films", "fils", "fimls", "fims" and "flim" or a misspelling of "USA" i.e. "UAS". The Panelist is in no doubt that these additions do not distance the domain names from Complainantís trademarks sufficiently to avoid confusion. Clearly, the dominant parts of the names are "BMW".
Accordingly, the Panel concludes that the first condition under the Rules is satisfied.
B. Rights or Legitimate Interests
It is submitted by Complainant that the Respondent has never been entitled to use any of the Complainantís trademarks. Respondentís use of the trademark "BMW" is neither connected to, sponsored or authorized by, nor within the control of the Complainant.
There is no evidence in the matter that refutes this submission, and the Panelist finds that Complainant has proved the second condition under the Rules.
C. Registered and Used in Bad Faith
The relevant question to consider with respect to this third condition under the Rules, is whether the Respondent by using the domain name, has intentionally attempted to attract, for commercial gain, Internet users to his website or other on-line location by creating a likelihood of confusion with the Complainantís mark.
Complainant has submitted that he first became aware of the Respondentís registrations on August 8, 2003, after trying to reach its official American website at "www. bmwusa.com". Instead, a typographical error was made while typing the URL ("www.bmwuas.com") and the Complainant was redirected to a pornographic website at "www. Hanky-panky-college.com". A series of other pornographic pages and other advertising banners or pages were automatically generated after being redirected to the Respondentís websites. The domain name <bmwuas.com> was found to have been registered by the Respondent on June 3, 2002. After further research, the Complainant also found further registrations by the Respondent that mimic the Complainantís domain name <bmwfilms.com> namely <bmwfims.com>, <bmwflim.com>, <bmwfillms.com>, <bmwfils.com>, <bmwfimls.com>. These domain names also pointed to the same pornographic content and were registered by the Respondent on November 17, 2002.
Complainant points out that the websites at "www.bmwusa.com" and "www.bmwfilms.com" are popular official "BMW" websites. The domain name <bmwusa.com> is used as that main website of the Complainantís BMW products and is aimed primarily at the American market. The domain name <bmwfilms.com> is used by the Complainant in connection with a series of short films which center on the BMW driving experience and has enjoyed great success worldwide.
Based on these facts, which has not been countered by Respondent, the Panel finds that the Respondent uses the domain names in order to divert Internet users from Claimantís sites to pornographic sites which carries on commercial activities. In order to achieve this the Respondent uses typical typographical errors of the word "film" and name "USA" which are part of Complainantís domain names <bmwfilms.com> and <bmwusa.com>. Accordingly, the Panelist is of the opinion that Complainant has proved the third condition under the Rules, namely that Respondentís domain names have been registered and are being used in bad faith.
For all the foregoing reasons, in accordance with Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain names:
are transferred to the Complainant.
Date: July 22, 2003