WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Bayerische Motoren Werke AG v. Hong Hee Dong
Case No. D2011-0532
1. The Parties
The Complainant is Bayerische Motoren Werke AG of Munich, Germany, internally represented.
The Respondent is Hong Hee Dong of Daegu, Republic of Korea.
2. The Domain Name and Registrar
The disputed domain name <bmwi.com> is registered with INames corp. (Korea).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 23, 2011. On March 23, 2011, the Center transmitted by email to INames corp. (Korea) a request for registrar verification in connection with the disputed domain name. On March 24, 2011, INames corp. (Korea) transmitted by email to the Center its verification response, confirming that the Respondent is listed as the registrant and providing the contact details.
On March 24, 2011, the Center issued a Language of Proceedings notification, inviting comment from the parties. The Complainant submitted a request that English be the language of the proceedings on March 25, 2011, and the Respondent did not reply to the Center’s Language of Proceedings notification. On April 1, 2011, the Center notified the parties of its preliminary decision to 1) accept the Complaint as filed in English; 2) accept a Response in either Korean or English; and 3) appoint a panel familiar with both languages mentioned above, if available, and also advised the parties that the administrative panel (when appointed) would have the authority to determine the language of the proceeding.
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 April 1, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was April 21, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 26, 2011.
The Center appointed Thomas P. Pinansky as the sole panelist in this matter on May 6, 2011. 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
The Complainant, based in Munich, Germany, is Bayerische Motoren Werke AG, more commonly known as BMW AG. The Complainant carries on business in the manufacture and distribution of motor vehicles and parts and is the owner of the world-famous trademarks BMW, BMW and design and all other trademarks used in connection with the BMW brand of motor vehicles (hereinafter “BMW Trademarks”). The earliest BMW trademark registrations No. 410 579, registered on November 15, 1929 in Germany and No. 221 388, registered on December 10, 1917.
The Complainant is also the registered owner of BMW trademarks in over 120 countries worldwide, covering – in addition to motor vehicles and other goods – various accessories and merchandise, such as clothing, watches, sunglasses and leather goods, as well as services such as the repair and maintenance of motor vehicles, financial leasing of motor vehicles, and participation and sponsorship of sporting events.
The Complainant’s BMW trademark was duly registered as No. 140765 with Intellectual Property Office in the Republic of Korea, the residence of the Respondent, on May 21, 1987.
By letter sent by legal counsel dated December 3, 2010, the Complainant requested that the Respondent discontinue further use or reference to any BMW trademark and transfer the disputed domain name to the Complainant. The Respondent was given 12 days to reply to the letter and reimbursement of registration costs in the amount of USD 100. The Respondent did not send a reply by the given deadline of December 15, 2010, but changed his web site to one that stated “Welcome to Business Model World Infrastructure (BMWI)”.
The Respondent is apparently involved in the domain name business, as evidenced by a Reverse WhoIs report featuring 378 domains currently registered by the Respondent.
5. Parties’ Contentions
The Complainant contends that the disputed domain name <bmwi.com> is identical or confusingly similar to the trademark BMW in which the Complainant has rights.
The fame of the BMW Trademarks has been confirmed in previous UDRP decisions (see BMW AG v. Loophole, WIPO Case No. D2000-1156).
The BMW Trademarks have become unique and are identified by the public solely with the Complainant and its products and services. The Complainant enjoys an exceedingly valuable reputation and goodwill throughout the world, 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 the Complainant.
By using the BMW Trademarks as a dominant part of the disputed domain name, the Respondent exploits the goodwill and image of the trademarks, which may result in damage to the Complainant’s BMW Trademarks. This type of site created by the Respondent is a typical commercial use where the domain name owner derives income when users click on the links.
The Complainant contends that the Respondent has no rights or legitimate interests with respect to the disputed domain name, as the Respondent has never been entitled to use any BMW Trademarks (is not a licensee of the Complainant’s trademarks and has not been authorized in any way to use the marks). The Respondent has made no other legitimate noncommercial or fair use of the disputed domain name.
The Complainant further contends that the disputed domain name was registered and is being used in bad faith.
The Complainant submits that given the fame of the BMW Trademarks, the Respondent’s use in the disputed domain name may potentially mislead Internet users to believe that the web site itself or the sponsored listings may have an affiliation to the Complainant.
The Complainant contends that the Respondent has also been involved in cybersquatting, as evidenced by the inclusion of domain name registrations in the Reverse WhoIs report as domain names which have been used by the Respondent for pay-per-click sites. The Complainant further contends that the Respondent’s previous history of cybersquatting establishes “a pattern of conduct” within the meaning of paragraph 4(b)(ii), therefore rendering additional support that the disputed domain name was registered in bad faith.
In addition, the Respondent’s offer to sell the disputed domain name on a web site to a third party should be taken as further evidence constituting bad faith registration and use within the meaning of paragraph 4(b)(i) of the Policy.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Language of Proceedings
The Complaint was originally prepared in the English language. There has been no response from the Respondent in any language. It is noted that the language of the registration agreement for the disputed domain name is Korean.
According to paragraph 11 of the Rules, the language of the administrative proceeding shall be the language of the registration agreement unless the panel decides otherwise. The spirit of paragraph 11 is to ensure fairness in the selection of language by giving full consideration, inter alia, to the parties’ level of comfort with each language, the expenses to be incurred and the possibility of delay in the proceeding in the event translations are required and other relevant factors.
In this case, the Complainant has submitted a request that English be the language of the proceeding, on the ground that although the Complainant is a German company, it has filed numerous UDRP complaints in the English language previously through its in-house counsel and can only communicate in German and English. To submit a complaint in Korean, including translations of trademark certificates, WhoIs information, correspondence and print outs of web site content of the Respondent and UDRP case law, which are available mostly in English, would be unduly burdensome and costly for the Complainant in light of the fact that the evidence shows that the Respondent can communicate in English.
It appears that the Respondent has ability to understand in English as he participated in a previous UDRP case, Karl Ochsner v. Postech, WIPO Case No. D2001-1126, where he responded to a complaint filed communicated in English. In addition, the Respondent’s web site at the disputed domain name contains English and his domain name registration and sales platform, “www.domainbox.com”, includes web sites for his company in both Korean and English. Similarly, the Respondent received correspondence from the Complainant in English, and while he did not respond, his actions thereafter (i.e., changing his web site content) show that he understood the content of the Complainant’s email.
Therefore, in consideration of the above circumstances and in the interest of fairness to both parties, the Panel hereby decides, under paragraph 11 of the Rules, that English shall be the language of administrative proceeding in this case.
B. Substantive Elements of the Policy
Paragraph 15(a) of the Rules instructs the Panel to decide the Complaint on the grounds of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.
Moreover, under paragraph 14(b) of the Rules, it is established that: “If a Party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under, these Rules or any request from the Panel, the Panel shall draw such inferences therefrom as it considers appropriate.”
In light of the above, the Panel may draw such inferences from the Respondent’s failure to comply with the Rules as he considers appropriate (see paragraph 14(b) of the Rules; see also Talk City, Inc. v. Michael Robertson, WIPO Case No. D2000-0009).
According to paragraph 4(a) of the Policy, the Complainant must prove each of the following:
(i) that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) that the disputed domain name has been registered and is being used in bad faith.
C. Identical or Confusingly Similar
The Complainant submits that the disputed domain name <bmwi.com> wholly incorporates and is identical or confusingly similar to the Complainant’s distinctive trademark BMW. The addition of the additional letter “i” does not make the predominant element “bmw” less distinctive. Furthermore, the Complainant holds other domain names in its domain name portfolio for the trademark BMW in combination with other letters, such as “m” and “i” which designate sub-brands of the BMW brand, therefore increasing the likelihood of confusion (see Annex Q of the Complaint).
By using the BMW trademark as a dominant part of the disputed domain name, the Respondent exploits the goodwill and the image of the trademark, which may result in dilution and other damage for the Complainant’s BMW Trademark (see LEGO Juris A/S v. Chung Hong Phil, WIPO Case No. D2009-1288). The Panel also notes that it has been held in previous UDRP cases that the registration of a domain name that constitutes a common mistyping may constitute a deliberate practice known as “typosquatting.” In this case, the Panel has found that the disputed domain name and the Complainant’s mark, when directly compared, are confusingly similar for the purposes of paragraph 4(a)(i) of the Policy (see Nationwide Mutual Insurance Company v. Texas International Property Associates, WIPO Case No. D2008-1411; see also Wachovia Corporation v. American Consumers First, WIPO Case No. D2004-0150; Amazon.com, Inc. v. Steven Newman a/k/a Jill Wasserstein a/k/a Pluto Newman, WIPO Case No. D2006-0517). In the Panel’s view, it is highly likely that the disputed domain name <bmwi.com> was intended to be a form of “typosquatting” to divert consumers to the web site at the disputed domain name.
Therefore, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s trademark pursuant to the Policy, paragraph 4(a)(i).
D. Rights or Legitimate Interests
According to paragraph 4(a)(ii) of the Policy, the Complainant must prove that the Respondent has no rights or legitimate interests in the disputed domain name. In connection with the burden of proof, several UDRP decisions have held that once a complainant establishes prima facie evidence showing that none of the three circumstances establishing legitimate interests or rights applies, the burden of production of this factor shifts to the Respondent to rebut the showing (see, among others, Universal City Studios, Inc. v. David Burns and Adam-12 Dot Com, WIPO Case No. D2001-0784; see also International Hospitality Management - IHM S.p.A. v. Enrico Callegari Ecostudio, WIPO Case No. D2002-0683).
In accordance with paragraph 4(c) of the Policy, the Complainant has asserted that the Respondent has no rights or legitimate interests in respect of the disputed domain name that is the subject of the Complaint. The Panel notes that the Respondent is not a licensee of the Complainant’s marks and has not been authorized in any way to use the same. The Respondent has never made a legitimate noncommercial or fair use of the disputed domain name.
The Respondent has failed to produce evidence of any rights or legitimate interests in respect of the disputed domain name. The current use of the disputed domain name to stand for “Business Model World Infrastructure” only occurred after being contacted by the Complainant. Prior to this, the disputed domain name was implicitly offered for sale (see 2004 archived sites in Annex P of the Complaint) and as a pay-per-click site that was specifically targeting customers looking for information about BMW products or products competing with BMW (see Annex I of the Complaint).
The Respondent has not submitted any response. Therefore, he has failed to invoke any circumstance that could have demonstrated any rights or legitimate interests in respect of the disputed domain name under paragraph 4(c) of the Policy.
Accordingly, the Panel holds that the Respondent has no rights or legitimate interests in respect of the disputed domain name pursuant to paragraph 4(b) of the Policy.
E. Registered and Used in Bad Faith
Both under past UDRP decisions (see, for instance, Nike, Inc. v. B. B. de Boer, WIPO Case No. D2000-1397 and Carolina Herrera, Ltd. v. Alberto Rincon Garcia, WIPO Case No. D2002-0806) and under the Policy (see paragraph 2), a well-established principle is that when someone registers a domain name, he or she represents and warrants to the registrar that, to his or her knowledge, the registration of the domain name will not infringe the rights of any third party. In the case at issue, the Panel reasonably finds that since the Complainant’s trademarks are very widely known worldwide, it is very likely that the Respondent, at the time of registration of the disputed domain name, was aware that he was infringing the Complainant’s trademarks.
Bad faith can be presumed based on the fame of the Complainant’s marks, such that the Respondent was aware or should have been aware of the Complainant’s widely known marks and claims of rights thereto. Furthermore, any trademark check of the records of the patent and trademark offices in various jurisdictions would have made the Complainant’s registration known to the Respondent. As the disputed domain name is so obviously connected to widely known marks and products, its use by someone with no connection to the products is evidence of opportunistic bad faith (see Parfums Christian Dior v. Javier Garcia Quintas and Christiandior.net, WIPO Case No. D2000-0226; see also Balenciaga v. Zhihu Fan, WIPO Case No. D2010-2083).
Bad faith is also shown as the disputed domain name <bmwi.com> was connected to sponsored links to third-party web sites, including a search web site for “related searches” to BMW. Such pay-per-click web sites are financed with revenue from the sponsored listings and therefore constitute use of the disputed domain name in a commercial manner. Such web sites potentially mislead Internet users to believe that the web site itself or the sponsored listings may have an affiliation to the Complainant. The mere fact of diverting users in this misleading manner is further evidence of bad faith (see Nationwide Mutual Insurance Company v. Texas International Property Associates, WIPO Case No. D2008-1411).
The Panel also notes that the Respondent is in the cybersquatting business and has a history of involvement in a previous UDRP decision granted against it (see Karl Ochsner, supra). The registration of domain names containing the trademarks of other parties in that case and the others found in a Reverse WhoIs report (see Annexes M and N of the Complaint) is evidence constituting “a pattern of conduct” within the meaning of paragraph 4(b)(ii) further constituting bad faith on the part of the Respondent.
In addition, the Panel also considers the fact that the Respondent provided a “contact us” link offering parties interested in the purchase of the disputed domain name to make an offer, thus indicating that the disputed domain name was for sale (see Annex P of the Complaint). The offer to sell the disputed domain name on a web site to a third party is taken as further evidence constituting bad faith registration and use within the meaning of paragraph 4(b)(i) of the Policy.
The conduct described above falls squarely within paragraph 4(a)(iii) of the Policy and accordingly the Panel concludes that the Respondent registered the disputed domain name in bad faith.
In light of the above, the Panel concludes that the Complainant has proven bad faith in the registration and use on the part of the Respondent.
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 <bmwi.com> be transferred to the Complainant.
Thomas P. Pinansky
Dated: May 20, 2011