WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Bayerische Motoren Werke AG v. Sabri Hammad
Case No. D2007-0675
1. The Parties
Complainant is Bayerische Motoren Werke AG, Munich, Germany, represented by its internal authorized representative.
Respondent is Sabri Hammad, Boca Raton, Florida, United States of America.
2. The Domain Name and Registrar
The disputed domain name <bmwhybrid.com> is registered with Dotster, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 7, 2007. On May 9, 2007, the Center transmitted by email to Dotster, Inc. a request for registrar verification in connection with the domain name at issue. On May 15, 2007, Dotster, Inc. transmitted, by email, to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details.
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 Respondent of the Complaint, and the proceedings commenced on May 30, 2007. In the interim, noting that the domain name registration was due for renewal on May 17, 2007, the Center had sought confirmation from Doster, Inc. on May 30, 2007 that the domain name could be renewed by Complainant under the provisions of Paragraph 188.8.131.52 of the ICANN Expired Domain Deletion Policy. Dotster, Inc. responded on May 31, 2007 inviting Complainant to contact them to ensure renewal of the domain name registration and, on June 14, 2007, Complainant confirmed that it renewed the domain name in due time. In accordance with the Rules, under paragraph 5(a), the due date for Response was June 19, 2007. At the Respondent’s request, and in the absence of any objection from Complainant, the Center granted a time extension for the Response. However, Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on July 18, 2007.
The Center appointed John Terry as the Sole Panelist in this matter on July 30, 2007. 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.
4. Factual Background
Complainant carries on business in the manufacture and distribution of motor vehicles. The uncontested Complaint establishes to the satisfaction of the Panel that the trademarks BMW and BMW and design (hereinafter referred to as the “BMW Trademarks”) have been in use since as early as 1917 in Germany and have become world famous. 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
Registration No. 410579
Reg. Date: November 15, 1929
Class: 7, 12
Goods: Aircraft engines, land, air, water vehicles, motorcycles, internal combustion engines for solid, liquid and gaseous operating supplies and their components.
An example of a trademark registration outside the home country of Complainant is United States of America registration 611710 dated September 6, 1955 for the mark BMW.
Complaint further establishes 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.
Over the last 83 years, Complainant and its subsidiaries, importers, dealers, and licensees have used the BMW Trademarks worldwide, directly and through appropriate licenses and permission, in connection with goods and services in the United States of America and throughout the world.
Complainant first became aware of Respondent’s domain name registration on April 25, 2007, when Respondent sent an email to Complainant offering to sell the domain <bmwhybrid.com> to Complainant.
Upon further investigation, Complainant states that it found that <www.bmwhybrid.com> was listed on Respondent’s website <www.sabrico.com> and was being offered for lease or sale. The website specifically stated “Below are some of the finest domain names on the net. If you wish to lease or buy any of my domain names, please send an email to email@example.com”. Other domains featured on this website included trademarks of other car manufacturers such as Audi, Mercedes, Mazda, Volvo, and Toyota.
Furthermore, Complainant has established that <www.bmwhybrid.com> is connected to a website which featured links to various websites titled “Sponsored Listings”, although not all of the sites were authorized by Complainant or had anything to do with BMW cars or any BMW products or services.
Complainant further provides evidence of communications with Respondent. By email dated May 3, 2007, Complainant advised Respondent that its unauthorized use of the BMW Trademark in connection with the disputed domain name violated its trademark rights. The letter requested that Respondent discontinue further use of the BMW Trademark and that the domain <bmwhybrid.com> be transferred to Complainant. On the same day, Respondent sent an email refusing to settle the matter amicably and saying that he would “fight it”. On May 4, 2007, Complainant informed Respondent again that under the circumstances of the case he would not have a chance of winning the case and that Complainant would reimburse him for his reasonable registration costs. Respondent responded on the same, stating only “Kiss my ass”.
Annexures to the Complaint support the factual statements set out above.
5. Parties’ Contentions
Complainant contends that the domain name <bmwhybrid.com> is identical to, or confusingly similar to, the BMW Trademarks, and that the dominant and distinctive component of the disputed domain name is “BMW”, which is identical to the Complainant’s registered trademarks. Complainant further contends that the addition of the generic word “hybrid” does not make the predominant element “BMW” less distinctive.
Complainant contends that in the automotive industry, the word “hybrid” refers to a vehicle which uses a mixture of technologies for power, such as electric motors and internal combustion engines.
Complainant states that Respondent is not a licensee of the Complainant’s marks and has not been authorised to use the marks, and in fact has made no legitimate non-commercial or fair use of the domain name.
Complainant relies on the fact that Respondent offered to sell the domain name to Complainant and stated that on his website the domain name in dispute was for sale, and contends this is clear evidence of bad faith registration and use within the meaning of Paragraph 4(b)(i) of the Policy. Complainant offered to reimburse Respondent his registration costs, and relies on Respondent’s refusal to transfer on this basis as demonstration of holding out for more than expenses and further demonstrates that Complainant can rely on Paragraph 4(b)(i) of the Policy.
Complainant has stated that Respondent has been running a business selling domain names from the website “www.sabrico.com”, and many of those domain names also contain Trademarks of other companies. Complainant contends that this activity constitutes a pattern of conduct within the meaning of Paragraph 4(b)(ii) of the Policy.
Finally, Complainant contends that the domain name in dispute was connected to a website with links to third party websites, whereby the website earns from the advertised listing, and therefore constitutes use of the domain name in a commercial manner. The Complaint states that the website does not contain any information that is specific to the Complainant’s products or services, and asserts that users who come across the website or are looking for information regarding BMW brand hybrid cars may be confused as to whether the Respondent’s site is sponsored by or affiliated with Complainant. On this basis Complainant contends that the actions of Respondent are consistent with circumstances stated in Paragraph 4(b)(iv) of the Policy, and as such this evidences bad faith registration and use within the meaning of Paragraph 4(b) of the Policy.
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
The trademarks of Complainant such as BMW differ only in immaterial detail from the distinct portion of the disputed domain name.
The Panel concludes that the present domain name <bmwhybrid.com> is confusingly similar to the BMW Trademarks in that it comprises the trademark BMW with the totally descriptive suffix “hybrid” together with the generic top-level domain name indicator “.com”.
The Panel finds Complainant has satisfied the first element of the Policy, namely paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides a non-limiting list of circumstances in which a respondent may establish it has rights and legitimate interests in the domain name.
While the overall burden of proof rests with a Complainant, previous WIPO UDRP panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is often primarily within the knowledge of a respondent. A complainant is therefore generally required to make out an initial prima facie case that a respondent lacks rights or legitimate interests. Once such prima facie case is made, a respondent then carries the burden of demonstrating rights or legitimate interests in the domain name. If a respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy. (cf. Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455).
In the present case, Respondent has filed no Response. The Panel has therefore considered whether the material in the Complaint is sufficient to establish a prima facie case that Respondent lacks rights or legitimate interests in the disputed domain name.
Of the three alternative subparagraphs in paragraph 4(c) of the Policy, clearly paragraph 4(c)(i) of the Policy is not relevant as there is no evidence before the Panel that Respondent has made any bona fide offering of goods or services under the domain name in dispute. Furthermore, there is no evidence that supports any finding under paragraph 4(c)(ii) of the Policy because Respondent has not established it has been commonly known by the domain name in dispute. Under paragraph (4)(c)(iii) of the Policy, the only evidence of activity of Respondent, with respect to the domain name in dispute, is the evidence of Complainant with regard to the Respondent’s website.
The evidence in the Complaint indicates that the website at the disputed domain name is commercial in the sense that it appears to provide links to other sites being apparent competitors of Complainant, and of an apparently commercial nature from which Respondent presumably derives or intends to derive profit.
Such use does not constitute a legitimate non-commercial or fair use of the disputed domain name by Respondent within the meaning of paragraph 4(c)(iii) of the Policy.
The Panel finds that Complainant has established a prima facie case that none of the three circumstances potentially available to Respondent under paragraph 4(c) of the Policy are applicable, and that Respondent lacks rights or legitimate interests in the disputed domain name. As Respondent has failed to file a Response, this has not been rebutted.
The Panel finds accordingly that Complainant has established the second element of the Policy.
C. Registered and Used in Bad Faith
Paragraph 4(a)(iii) of the Policy provides that Complainant must prove that the domain name has been registered and is being used in bad faith. In view of the longstanding and famous nature of the trade marks reflected in the domain name in dispute, and the nature of use by Respondent, the Panel finds a clear case of both initial registration and use of the domain name in bad faith.
Furthermore, paragraph 4(b) of the Policy lists four specific, non-limiting circumstances, which, if established by Complainant, are deemed to lead to a conclusion of registration and use of a domain name in bad faith.
Paragraph 4(b)(i) of the Policy lists the following as evidence of bad faith: “circumstances indicating that [the Respondent] has 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 that complainant, for valuable consideration in excess of [Respondent’s] documented out-of-pocket costs directly related to the domain name.”
The panel finds Complainant has made its case under this paragraph on the basis of the factual circumstances contained in the Complaint, in the absence of a rebuttal response from Respondent.
A further basis for decision is that arising under Paragraph 4(b)(ii) of the Policy, namely if it is shown that Respondent registered the domain name in order to prevent the owner of the trademark from reflecting in a corresponding domain name, provided that Respondent engaged in a pattern of such conduct.
The Panel is satisfied Complainant has proven that Respondent has a business of selling domain names, and that is a pattern of conduct and the present domain name prevents Complainant from reflecting its trademark BMW in relation to its hybrid class of automobiles. Accordingly, the Panel is satisfied Complainant has proved the applicability of the circumstances in Paragraph 4(b)(ii) of the Policy.
A further basis for decision are the circumstances of 4(b)(iv) of the Policy, which is in the following terms:
“(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 Complainant’s mark as to the source, sponsorship, affiliation or endorsement of your website or location of a product or service on your website or location.”
The Panel accepts that the Complainant’s trademarks are demonstrated to be internationally famous when characterized by the word BMW, and the website operated by Respondent creates a likelihood of confusion in relation to the goods or services to which links occur, or creates a likelihood that the website is sponsored by Complainant or is in some way affiliated with Complainant, which is not true.
The Panel accordingly finds that the circumstances of Paragraph 4(b)(iv) of the Policy are made out by Complainant, and the Panel finds accordingly that the disputed domain name was registered and is 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 name <bmwhybrid.com> be transferred to Complainant.
Dated: August 20, 2007