WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Bayerische Motoren Werke AG v. Domain Name Services
Case No. D2008-0147
1. The Parties
Complainant is Bayerische Motoren Werke AG, Munich, Germany, represented internally.
Respondent is Domain Name Services, Las Vegas, United States of America.
2. The Domain Name and Registrar
The disputed domain name <bmwaudiobooks.com> (“Disputed Domain Name”) is registered with Melbourne IT trading as Internet Names Worldwide (“Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 30, 2008. On January 31, 2008, the Center transmitted by email to Registrar a request for registrar verification in connection with the domain name at issue. On February 1, 2008, Registrar 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 February 6, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was February 26, 2008. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on February 27, 2008.
The Center appointed Mark Ming-Jen Yang as the sole panelist in this matter on March 4, 2008. 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 has registrations for the trademarks BMW and BMW and design (collectively, “BMW Trademarks”) in Germany and many countries worldwide, including:
Trademark: BMW and design
Country: Germany 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.
Country: Germany 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.
Country: United States of America Registration No. 611710
Reg. Date: September 6, 1955
Goods: Automobiles and motorcycles.
The Disputed Domain Name was registered in 2005.
5. Parties’ Contentions
Complainant contends that the Disputed Domain Name is confusingly similar with the BMW Trademarks in which it has rights, that Respondent has no rights or legitimate interests in the Disputed Domain Name, and that Respondent registered and uses the Disputed Domain Name in bad faith.
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
One requirement of fundamental due process is that a respondent has notice of proceedings that may substantially affect its rights. The Policy, Rules and Supplemental Rules establish procedures intended to assure that a respondent is given adequate notice of proceedings commenced against it, and a reasonable opportunity to respond (See, e.g., Rules, paragraph 2(a)).
In this case, the Panel is satisfied that the Center took all steps reasonably necessary to notify Respondent of the filing of the Complaint and initiation of these proceedings, and that the failure of Respondent to furnish a Response to the Complaint is not due to any omission by the Center. There is sufficient evidence in the case file for the Panel to conclude that the Center discharged its obligations under Rules, paragraph 2(a) (See Procedural History, supra).
In case of default, under paragraph 14(a) of the Rules, “the Panel shall proceed to a decision on the complaint”, and under paragraph 14(b) of the Rules, “the Panel shall draw such inferences [from the default] as it considers appropriate”. Furthermore, paragraph 15(a) of the Rules provides that “A Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems appropriate”. Since Respondent has not submitted any evidence, the Panel must render its decision on the basis of the uncontroverted evidence supplied by Complainant.
To succeed in accordance with paragraph 4(a) of the Policy, Complainant must meet three requirements that will be considered in turn below.
A. Identical or Confusingly Similar
Complainant contends that it has rights in the BMW Trademarks and that the Disputed Domain Name is confusingly similar thereto.
In particular, the Panel accepts Complainant’s contentions, set out next, as reasoned and as supported by its evidence.
Complainant is a manufacturer and distributor of motor vehicles with the BMW Trademarks starting as early as 1917. In addition to motor vehicles, the BMW Trademarks are currently used in relation to a wide variety of products 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 registrations.
For many decades, Complainant and its subsidiaries, importers, dealers, and licensees have used the BMW Trademarks throughout the world, directly and through appropriate licenses and permission, in connection with goods and services recognized in the United States of America and worldwide, to be of the highest quality.
By reason of these efforts and care, and the quality of BMW products and services, the BMW Trademarks have become unique and are identified by the public solely with Complainant and its products and services. Accordingly, Complainant enjoys an exceedingly valuable reputation and goodwill in the United States of America and worldwide, not only among purchasers of their products and users of their services, but also among other members of the public. The public has long recognized the BMW Trademarks as identifying and distinguishing products and services produced and rendered only by Complainant.
Complainant also refers to BMW AG v. Loophole, WIPO Case No. D2000-1156 (Domain Name: <bmw.org>), where the panel therein, acknowledged that the BMW Trademarks are well-known.
Complainant submits that the Disputed Domain Name is identical or confusingly similar to its BMW Trademarks. The dominant and distinctive component of the Disputed Domain Name is “bmw”, which is identical to Complainant’s BMW Trademarks. The addition of the generic words “audio books” does not make the dominant element “bmw” less distinctive. The ending “.com” is a generic top level domain, which is not sufficient to render a domain name dissimilar or to prevent consumer confusion. Confusion is particularly likely in this case because Complainant offers BMW Audio Books via its website “www.bmw-audiobooks.com”, in which Complainant, in conjunction with the publisher Random House, offers a series of specially-commissioned short stories under the title “BMW Audio Books”.
As indicated above, the Panel accepts Complainant’s contentions.
The Panel concludes that the first requirement of the Policy is met.
B. Rights or Legitimate Interests
Complainant contends (and the Panel accepts as uncontroverted and convincing) that Respondent has no rights or legitimate interests in the Disputed Domain Name.
Respondent is not a licensee of Complainant’s BMW Trademarks and has not been authorized in any way to use the same. Respondent has made no legitimate non-commercial or fair use of the Disputed Domain Name.
Respondent has provided no arguments or evidence of rights or legitimate interests to counter Complainant’s contentions on this issue. By virtue of the legal rights in the BMW Trademarks (and in particular, those provided by its trademark registrations – see section 4, Factual Background, supra), Complainant convincingly argues that Respondent has no rights or legitimate interests in the Disputed Domain Name. The Panel, especially in the absence of any response from Respondent, considers that the circumstances described in paragraph 4(c) of the Policy, of proof of rights or legitimate interests by Respondent in the Disputed Domain Name, do not exist either.
The Panel concludes that the second requirement of the Policy is met.
C. Registered and Used in Bad Faith
Complainant contends that Respondent registered and uses the Disputed Domain Name in bad faith.
Paragraph 4(b)(i) of the Policy lists the following as evidence of registration and use of a domain name in bad faith: “…circumstances indicating that [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.”
Respondent offered to sell the Disputed Domain Name to Complainant for €2,500, a price which is clearly higher than the usual registration fees for a “.com” domain name. This is evidence of circumstances within the meaning of paragraph 4(b)(i) of the Policy.
Additionally, Complainant submits that Respondent is, as under paragraph 4(b)(iv) of the Policy, intentionally attempting “to attract, for commercial gain, Internet users to [the] web site [...] by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of [the] web site or location or of a product or service on [the] web site or location”. The Disputed Domain Name was connected to Respondent’s website with links to the third party websites and likely earns revenue from the advertised listings, and therefore constitutes use of the Disputed Domain Name in a commercial manner. This website does not contain any information that is specific to Complainant’s products or services and is being used merely to attract Internet users searching for information about BMW products on the Internet. Those who accidentally come across the website or who are looking for information about BMW Audio Books may be confused as to whether Respondent’s website is sponsored or affiliated by Complainant.
It is very likely that Respondent chose the Disputed Domain Name for the opportunity to gain traffic on its own website from Internet users who are looking for Complainant’s website at “www.bmw-audiobooks.com”. The underlying registry data for the Disputed Domain Name shows that Respondent chose as Meta Keywords, “BMW Audio Books” and also the authors featured in Complainant’s book series, such as “Karin Slaughter” and “Simon Kernick” in order to get traffic intended for Complainant’s website.
The Panel accepts Complainant’s contentions, set out above, as reasoned and as supported by its evidence.
The Panel concludes that the third requirement of the Policy is met.
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Disputed Domain Name <bmwaudiobooks.com> be transferred to Complainant.
Mark Ming-Jen Yang
Dated: March 17, 2008