WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Bayerische Motoren Werke AG (BMW) v. Atom Corolla
Case No. D2011-0630
. The Parties
Complainant is Bayerische Motoren Werke AG of Munich, Germany, represented internally.
Respondent is Atom Corolla of Singapore, Singapore.
2. The Domain Name And Registrar
The disputed domain name is <bmwxdrive.com> which is registered with Wild West Domains, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 11, 2011. On April 12, 2011, the Center transmitted by email to Wild West Domains, Inc. a request for registrar verification in connection with the disputed domain name. On April 12, 2011, Wild West Domains, 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” 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 Respondent of the Complaint, and the proceedings commenced on April 15, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was May 5, 2011. On May 4, 2011, the Center received an email communication from Respondent stating that the domain registrant was a Mr. Liu Nanqi and providing new contact information. However, Respondent did not submit a proper response. Accordingly, the Center notified Respondent’s default on May 6, 2011.
The Center appointed Gerardo Saavedra as the sole panelist in this matter on May 18, 2011. This Panel finds that it was properly constituted. This 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.
On May 31, 2011, the Center received an email communication from Liu Nan Qi.
4. Factual Background
Complainant is Bayerische Motoren Werke AG, more commonly referred to as BMW AG, a company organized under the laws of the Federal Republic of Germany, engaged in the manufacture and distribution of motor vehicles.
Complainant has rights over the BMW and XDRIVE trademarks, for which it holds several registrations around the world, including, among others: (i) BMW and design, registration No. 221388 with the German Patent and Trademark Office, registered in 1917, under class 12; (ii) BMW, registration No. 410579 with the German Patent and Trademark Office, registered in 1929, under classes 7 and 12; (iii) BMW, registration No. 40738 with the Registry of Trade Marks Intellectual Property of Singapore, registered in 1966, under class 12; (iv) XDRIVE, registration No.2756625 with the Trade Mark and Designs Registration Office of the European Union, registered in 2004, under classes 9, 12 and 28; and (v) XDRIVE, registration No. 795021 with the World Intellectual Property Organization, registered in 2002, under class 12.
The disputed domain name was created on January 1, 2005.
5. Parties’ Contentions
Complainant’s assertions may be summarized as follows:
Complainant carries on business in the manufacture and distribution of motor vehicles.
In addition to motor vehicles, Complainant’s 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 84 years, Complainant and its subsidiaries, importers, dealers, and licensees have used Complainant’s BMW trademarks throughout the world, directly and through appropriate licenses and permission, in connection with goods and services recognized throughout the world to be of the highest quality.
By reason of these efforts and care, and the excellent quality of Complainant’s products and services, Complainant’s 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 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 trademark BMW as identifying and distinguishing products and services produced and rendered only by Complainant.
Complainant first became aware of Respondent’s disputed domain name registration on December 14, 2010, when it checked the availability of the domain name and came across Respondent’s registration.
Complainant discovered that the disputed domain name was connected to a website which featured information about an event which took place in Singapore in 2006, where Complainant’s subsidiary, BMW Asia and the authorized BMW importer in Singapore, Performance Motors Limited sponsored the IMF and World Bank Annual Meeting by providing a large fleet of BMW 7 Series Limousines for transporting the event delegates.
The content of the website, while non commercial in nature, has not been updated since 2006 and has nothing to do with Complainant’s XDrive product.
Upon further research into the web site, Complainant also discovered through ”www.archive.org” from pages that were captured at 3 separate times in 2007 that there had also been uses of the disputed domain name in 2007 as a parked web site with pay-per-click ads and links.
After checking with BMW Asia whether Respondent was known to them or authorized by BMW Asia or Performance Motors Limited to register or use the disputed domain name, which was not the case, Complainant wrote an email to Respondent on January 24, 2011, informing Respondent of Complainant’s trademark rights and requested a transfer of the disputed domain name. The email was immediately returned as undeliverable.
Complainant then requested BMW Asia to check if the telephone and fax numbers of Respondent were valid numbers, listed in the WhoIs as both being +1.6565422510, but BMW Asia confirmed that the numbers did not work and were invalid. Complainant also checked North American postal codes due to the +1 country code given under the WhoIs registration contact details, but the number did not match any existing state area code in the United States of America or Canada.
On January 25, 2011, Complainant tried to send a letter to Respondent via facsimile, but this failed as well. The courier service DHL also returned the letter as undeliverable.
Because it was impossible for Complainant to contact Respondent to try to settle this matter amicably due to false registration details, Complainant had no alternative but to issue this Complaint.
The disputed domain name <bmwxdrive.com> is identical or confusingly similar to Complainant’s trademarks BMW and XDRIVE, in particular because Complainant uses the two marks together as BMW XDRIVE.
Complainant has rights over the world-famous trademarks BMW and BMW and design, registered in over 120 countries worldwide, including Singapore. Complainant’s trademarks have been in use since 1917 in Germany.
Complainant has rights over the XDRIVE trademark, which is used for BMW vehicles that include BMW’s 4-wheel drive technology marketed under that name. Cars are marked with the XDRIVE mark in the form of a badge. Communications and promotional materials refer to the technology as “xDrive” and as “BMW xDrive”.
Respondent has no rights or legitimate interests in the disputed domain name.
Respondent has never been entitled to use any of Complainant’s trademarks. Respondent’s use of Complainant’s trademark is neither connected to, sponsored, authorized by, nor within the control of Complainant. Respondent is not a licensee of Complainants’ marks and has not been authorized in any way to use the same.
Respondent has never made a legitimate non commercial or fair use of the disputed domain name. The use by Respondent of the disputed domain name in the past as a parked page with pay-per-click sites is not a bona fide offering of goods and services under the Policy.
Also the current use of the website for as an editorial report about a non-current BMW event and one that has nothing to do with BMW xDrive products is not a legitimate non commercial or fair use of the disputed domain name.
Respondent registered and is using the disputed domain name in bath faith.
Respondent has used the disputed domain name in a manner as to intentionally attempt to attract, for commercial gain, Internet users to the website or other on-line location, by creating a likelihood of confusion with Complainant’s marks as to the source, sponsorship, affiliation, or endorsement of the website or location of a product or service on the website or location.
The disputed domain name was connected to sponsored links to third party websites in 2007. Such websites, also referred to as pay-per-click sites, are financed with revenue from the sponsored listings and therefore constitutes use of the disputed domain name in a commercial manner. Such websites potentially mislead Internet users to believe that the website itself or the sponsored listings may have an affiliation to Complainant.
In anticipation of any response by Respondent that the sponsored links are from the registrar or other service provider and not the owner, Complainant points out that this is of no relevance in a finding of bad faith under the Policy.
Furthermore, the fact that Respondent has used false contact details in the registration of the disputed domain name is an indication of bad faith that must be taken into account.
Finally, the evidence available from “www.archive.org” shows that Respondent initially used the disputed domain name for commercial purposes, pay-per-click sites, and then sometime as early as late 2007 or later changed the content to a non commercial editorial site for an event that took place in 2006.
Such content has not been updated since being posted to contain any other editorial information, nor did the website ever contain content that had anything to do with the subject of the disputed domain name, which was Complainant’s BMW xDrive technology. It would not be completely far-fetched to assume in these circumstances that the new website about the 2006 BMW event was merely a half-hearted attempt to falsify a “legitimate” non commercial use of the disputed domain name and to attempt to obtain an offer from the Complainant for a high sum of money. By registering and using the disputed domain name in this manner, Respondent is merely blocking Complainant from promoting its products and services under its trademarks.
Complainant requests that the disputed domain name be transferred to Complainant.
Respondent did not reply to Complainant’s contentions.
6. Discussion And Findings
Paragraph 15(a) of the Rules instructs the Panel to “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 applicable”.
Even though Respondent’s email communication of May 4, 2011 was filed with the Center within the 20 calendar day period to submit a response, it cannot be deemed as an official response since it does not address any of the allegations contained in the Complaint, nor does it comply with any of the other requirements set forth in the Rules, paragraph 5(b).
The Center received an email communication from Liu Nan Qi on May 31, 2011. This e-mail communication did not address any of the allegations contained in the Complaint and the Rules do not explicitly provide for supplemental filings. Paragraph 10 of the Rules enjoins the Panel to conduct the proceeding “with due expedition” and empowers the Panel to “determine the admissibility, relevance, materiality and weight of the evidence”. Therefore, some UDRP panels are reluctant to encourage delay through additional rounds of pleadings and typically accept supplemental filings only to consider new evidence or provide a fair opportunity to respond to new arguments1. In the case at hand it is clear that Respondent received the Center’s Notification of Complaint and chose not to file a proper response.
Thus this Panel has decided not to take into account such email communication from Liu Nan Qi 2. In any event, if this Panel had taken into consideration such email communication, that would not have changed the outcome of this proceeding.
As regards who is the proper Respondent in this case, pursuant to paragraph 1 of the Rules “Respondent means the holder of a domain-name registration against which a complaint is initiated”. Since the concerned registrar confirmed in due course that the name of the holder of the disputed domain name registration was Atom Corolla, in this case, this Panel decides to have the named Respondent as the proper respondent, notwithstanding Respondent’s email communication of May 4, 2011 referred to above.
The lack of a proper response from Respondent does not automatically result in a favorable decision for Complainant3. The burden for Complainant, under paragraph 4(a) of the Policy, is to show: (i) that the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; (ii) that 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.
A. Identical or Confusingly Similar
It is undisputed that Complainant has rights over the BMW and XDRIVE trademarks, which have been registered in numerous jurisdictions around the world.
The disputed domain name entirely incorporates Complainant’s trademarks BMW and XDRIVE without any additional element.4
Therefore, this Panel finds that the disputed domain name is (i) confusingly similar to each of those trademarks taken separately, and (ii) identical to such trademarks taken altogether.
B. Rights or Legitimate Interests
Complainant has alleged and Respondent has failed to deny that Respondent has no rights or legitimate interests in respect of the disputed domain name.
Complainant asserts that Respondent has never been entitled to use any of Complainant’s trademarks, and that it has never licensed or authorized Respondent the use of the BMW and XDRIVE trademarks. Likewise, Complainant contends that Respondent’s use of such trademarks is neither connected to nor sponsored by Complainant.
Those trademarks are used by Complainant for motor vehicles that include 4-wheel drive technology, thus an Internet user viewing the disputed domain name is likely to assume that Complainant is the sponsor of or is associated with the website identified by the disputed domain name.
Complainant contends that Respondent used in 2007 the disputed domain name as a parking website with pay-per-click ads and links, and provided evidence thereof. Even though the website associated to disputed domain name was modified and now features information about an event which took place in Singapore in 2006, it clearly shows Complainant’s trademarks (including the BMW design) and products, and also shows what appears to be a press note on Complainant’s products, which conveys to any Internet visitor the wrong idea that such website is Complainant’s or, at least, sponsored by Complainant. It is clear that Respondent is taking advantage of Complainant’s trademarks reputation with the purpose of diverting Internet users to its own website (and in the past to other websites) unrelated to Complainant’s official website. Such use of Complainant’s trademarks by Respondent does not establish rights or legitimate interests of Respondent in the disputed domain name.5
In this Panel’s view, the lack of a proper response is also indicative that Respondent either has no interest in the disputed domain name or is short of arguments and evidence to support its holding of the disputed domain name.
In the absence of any proper explanation from Respondent as to why it might consider it has a right or legitimate interest in using a domain name which entirely incorporates Complainant’s well-known trademarks, this Panel considers that Complainant has established prima facie that Respondent has no rights or legitimate interests in the disputed domain name6.
Based on the aforesaid, this Panel concludes that Respondent has no rights or legitimate interests in the disputed domain name.
C. Registered and Used in Bad Faith
Complainant contends that Respondent’s registration and use of the disputed domain name is in bad faith.
It is undisputed that Complainant has international presence, and that Complainant’s trademarks are widely known internationally. This Panel considers there is no coincidence where a domain name incorporates two trademarks. Thus this Panel is of the view that Respondent should have been fully aware of the existence of Complainant and Complainant’s trademarks at the time it acquired the disputed domain name.
While the intention to earn click-through-revenue is not in itself illegitimate, the use of a domain name that is identical to very-well known trademarks to obtain click-through-revenue is found to be bad faith use7.
Even though the content of the website was modified and now it has what appears to be informative in nature, although as regards an event that took place back in 2006, this Panel considers that in using the disputed domain name Respondent has sought to take advantage of, and create a likelihood of confusion with Complainant’s trademarks as to the source, sponsorship, affiliation or endorsement of such website. Such use constitutes an improper use of Complainant’s marks and is indicative of Respondent’s bad faith.
Complainant contends that its BMW trademark is famous, which Respondent did not rebut. Prior panel decisions have found that registration and use in any form of a famous trademark which belongs to somebody else, without proving any rights or legitimate interests in it, can represent bad faith registration and use8.
Respondent’s failure to respond to Complainant’s cease and desist communications is indicative of bad faith as well.9
In light of the above, this Panel concludes that the disputed domain name was registered and is being used in bad faith.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, this Panel orders that the disputed domain name <bmwxdrive.com> be transferred to Complainant.
Dated: June 1, 2011
1 See Metropolitan Life Insurance Company v. HLP General Partners Inc., WIPO Case No. D2005-1323: “panels... typically accept supplemental filings only to consider new evidence or provide a fair opportunity to respond to new arguments”.
3 See Berlitz Investment Corp. v. Stefan Tinculescu, WIPO Case No. D2003-0465: “[…]the panel finds that as a result of the default, Respondent has failed to rebut any of the factual assertions that are made and supported by evidence submitted by Complainant. The panel does not, however, draw any inferences from the default other than those that have been established or can fairly be inferred from the facts presented by Complainant and that, as a result of the default, have not been rebutted by any contrary assertions or evidence”.
4 See Vivendi S.A., The Seagram Company Ltd., Joseph E. Seagram & Sons, Inc., Universal Studios, Inc., and Universal City Studios, Inc. v. Yu Fu Zhao (aka Tyou Star) ("Zhao"), WIPO Case No. D2000-0717.
6 See Intocast AG v. Lee Daeyoon, WIPO Case No. D2000-1467: “For methodical reasons it is very hard for the Complainant to actually prove that Respondent does not have rights or legitimate interests in respect of the domain name, since there is no strict logical means of verifying that a fact is not given... Many legal systems therefore rely on the principle negativa non sunt probanda. If a rule contains a negative element it is generally understood to be sufficient that the complainant, by asserting that the negative element is not given, provides prima facie evidence for this negative fact. The burden of proof then shifts to the respondent to rebut the complainant’s assertion”.