The Complainant is Bayerische Motoren Werke AG of Munich, Germany, represented internally.
The Respondent is Private Registrations Aktien Gesellschaft of Kingstown, Saint Vincent and the Grenadines.
The disputed domain name <bmwofoysterbay.com> is registered with Network Solutions, LLC.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 2, 2010. On June 2, 2010, the Center transmitted by email to Network Solutions, LLC a request for registrar verification in connection with the disputed domain name. On the same date, the Registrar transmitted by email to the Center its verification response confirming that the 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” or “UDRP”), 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 June 4, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was June 24, 2010. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on June 25, 2010.
The Center appointed Adam Samuel as the sole panelist in this matter on July 5, 2010. 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 Complainant is a well known manufacturer and distributor of motor vehicles. The Complainant is the owner of the German trademark no. 221388 registered on December 12, 1917, no. 410579 registered on November 15, 1929 and United States trademark no. 611,710, registered on September 6, 1955 all for BMW. The disputed domain name was originally registered by an authorized BMW dealership in Oyster Bay, New York. After the expiry of the domain registration, the Respondent registered the disputed domain name sometime between February and March 20, 2010.
This section sets out the Complainant's contentions with which the Panel may or may not agree.
The disputed domain name is confusingly similar to the Complainant's trademark BMW. The addition of the geographical term “of Oyster Bay” does not make the predominant element “BMW” less distinctive. The addition of a geographical term ot a trademark does not avoid confusion. The Complainant and its authorised licensees often use the trademark BMW in cominbation with geographic terms to indicated BMW companies, dealers or services in the area concerned.
The Complainant had an authorised BMW dealer in Oyster Bay for many years. With a new dealer taking over the business and carrying on the use of the trading name “BMW of Oyster Bay”, it is highly likely that the disputed domain name would be understood by customers to refer to the products and services of the Complainant offered in Oyster Bay.
The ending “.com” is a generic top level domain which is not sufficient to render a domain name dissimilar or to prevent consumer confusion.
The Respondent is not a licensee of the Complainant's marks and has not been authorised to use them. The Respondent has made no legitimate noncommercial or fair use of the disputed domain name.
The Respondent is in the cybersquatting business as evidenced by numerous UDRP decisions against it. The registration of the dispute domain in this and the cases concerned is evidence of a pattern of conduct. The Respondent is not a real private registration service. It is part of a larger conglomerate of cybersquatting entities.
The disputed domain name is connected to a web site with links to a search portal and other third party web sites. Such web sites earn revenue from the advertised listings. The web site connected to the dispute domain name solicits offers from third parties to buy the domain name. This evidences bad faith registration and use. By making a general statement that the disputed domain name 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 Respondent did not reply to the Complainant's contentions.
Under the Policy, the Complainant must prove that:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which it has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
The disputed domain name consists of the Complainant's trademark BMW and “of Oyster Bay”. The trademark has no independent meaning. The overall effect is that the disputed domain name suggests that it is connected to a website of or authorised by the Complainant and connected to the Complainant's products or services located in Oyster Bay. The addition of a geographic identifier that does not suggest that the website refers to anything other than the Complainant's goods and services does not change this.
For these reasons, the Panel concludes that the disputed domain name is confusingly similar to the Complainant's trademark.
The Respondent is not called “BMW” or anything similar and does not appear to trade under that or any related name. There is no evidence that the Complainant has authorized the Respondent to use its trademark. The Respondent has never asserted any rights or legitimate interests in that name. For these reasons, on the basis of the available record, notably the absence of a Response in spite of notification of the Complaint in accordance with the Rules, the Panel concludes that the Respondent has no rights or legitimate interests in respect of the disputed domain name.
The disputed domain name bears no relationship to the Respondent's name or its business. The disputed domain name has no real meaning unless it relates to the Complainant's business since the Complainant's mark BMW has no independent meaning as such. The disputed domain name was registered almost a century after the Complainant's trademark was registered in Germany. The mark is well known worldwide.
A search of the publicly available UDRP decisions reveals seven recent decisions made against the Respondent in UDRP cases covering a broad range of domain names suggesting that the Respondent is, in this Panel's opinion, a serial cybersquatter.
The website at the disputed domain name itself consists of a page with links to various traders offering vehicles for sale of a variety of different companies, not just BMW.
In the absence of any response to the Complaint, the most likely explanation for the Respondent's registration of the disputed domain name seems to be, as the Complainant says, simply to disrupt the Complainant's relationship with its customers or potential customers and attempt to attract Internet users looking for a website belonging either to the Complainant or its authorized dealers located in Oyster Bay, for potential gain. These constitute evidence of registration and use in bad faith: paragraph 4(b)(iii) and (iv) of the Policy.
This conclusion is supported by the fact that the website to which the disputed domain name resolves contains an invitation to users to buy the domain name without indicating the price. This would suggest that the Complainant registered the disputed domain name for the purposes of selling the domain name registration to the Complainant for valuable consideration in excess of the Respondent's out of pocket expenses. This also constitutes evidence of bad faith: paragraph 4(b)(i) of the Policy.
In the circumstances, it is unnecessary to deal with the Complainant's other allegations. For all the above reasons, the Panel concludes 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 <bmwofoysterbay.com> be transferred to the Complainant.
Dated: July 19, 2010