WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Bayerische Motoren Werke AG v. RC a/k/a Sami Salem
Case No. D2012-0366
1. The Parties
The Complainant is Bayerische Motoren Werke AG of Munich, Germany, represented by Finnegan, Henderson, Farabow, Garrett & Dunner, LLP, United States of America.
The Respondent is RC a/k/a Sami Salem of Yonkers, New York, United States of America, self represented.
2. The Domain Names and Registrar
The disputed domain names <bmwbrakes.com>, <bmwclub.net> and <hybridbmw.com> are registered with GoDaddy.com, LLC
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 23, 2012. On February 24, 2012, the Center transmitted by email to GoDaddy.com, LLC a request for registrar verification in connection with the disputed domain names. On February 24, 2012,
GoDaddy.com, LLC 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 February 29, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was March 20, 2012. The Response was filed with the Center on March 15, 2012.
On March 26, 2012, the Complainant made a supplemental submission to the Center replying to the Respondent’s Response.
The Center appointed Lana I Habash as the sole panelist in this matter on April 12, 2012. 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 is a corporation organized under the laws of the Federal Republic of Germany and manufactures and sells an array of automobiles (regular and hybrid), and motorcycles, as well as parts for such vehicles. The Complainant has 24 manufacturing facilities in 13 countries (including the United States where the Respondent is located) around the world, and has 3,000 authorized dealers in more than 140 countries worldwide.
The Complainant owns numerous trademark registrations in the trademark BMW, in use since 1917 and has been ranked number 15 among the top 100 brands and valued at more than USD 24 billion by Interbrand in 2011.
The disputed domain names <bmwbrakes.com>, <bmwclub.net> and <hybridbmw.com> were registered by the Respondent in 2010, 2011 and 2011 respectively.
The disputed domain names resolve to ‘parking’ websites displaying pictures of BMW cars and parts, and links to articles about BMW vehicles and their parts and links to third party sites in the automotive industry.
5. Parties’ Contentions
The Complainant contends the following:
- The disputed domain names are confusingly similar to the Complainant’s trademark BMW. The addition of the generic terms to the Complainant’s Trademark does not take away the likelihood of confusion, to the contrary the generic words that are added in this case are likely to heighten the likelihood of confusion, as they might be perceived to indicate that these are specialized websites of the Complainant’s;
- The disputed domain names revolve to websites that include content that infringes on the Complainant copyrights as well as trademarks rights;
- Given the fame of the Complainant’s trademark and the fact that the disputed domain names resolve to websites displaying content infringing on the Complainant’s copyrights and trademark rights, it is evident that the Respondent has knowledge of the Complainant’s rights in the disputed domain names;
- The Respondent is not commonly known by the disputed domain names, nor has it been authorized by the Complainant to use its trademarks;
- The Respondent is using the Complainant’s trademarks to capitalize on the fame of the Complainant’s trademarks through generating pay-per-click revenue from sponsorships and advertisement on its websites
- The Respondent is offering the disputed domain names for sale for higher than the out of pocket cost of registration;
- The Respondent has been engaged in a pattern of acquiring domain names that are confusingly similar to the Complainant’s websites and that the Complainant has settled with the Respondent in the past in relation to other domain names;
- The Respondent had also acquired names including third party trademarks, such as APPLE for the purpose of selling them back to their owners for more than out of the pocket costs associated with registration, which demonstrates that the Respondent is engaged in a pattern of cybersquatting.
The Respondent contends the following:
- The Complainant has failed to demonstrate its trademarks rights in the disputed domain names;
- The Complainant has failed to establish bad faith registration and use on part of the Respondent;
- The Complainant is abusing the UDRP process by filing such unsubstantiated complaints (and that the Complainant is attempting to own the World Wide Web through acquiring domain names to which it has no rights);
- The Complainant has provided false evidence as to the ownership of the Respondent of alleged third party domain names;
- The Complainant has failed to prove that the Respondent has attempted to sell the disputed domain names to the Complainant;
- The Respondent is not engaged in any unlawful use of the disputed domain names;
- The Respondent was willing to stop using content that caused problems to the Complainant and that the Respondent states that it is sustaining cost and losing money for keeping such websites active.
6. Discussion and Findings
- In order for the Complainant to prevail and have the disputed domain names <bmwbrakes.com>, <bmwclub.net> and <hybridbmw.com> transferred to it, the Complainant must prove the following under the Policy, paragraph 4(a)(i-iii):
- The disputed domain names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
- The Respondent has no rights or legitimate interests in respect of the disputed domain names; and
- The disputed domain names were registered and are being used in bad faith.
A. Identical or Confusingly Similar
The Panel finds it indisputable that the Complainant has trademark rights in BMW and that the said trademark is a renowned trademark worldwide. Also, the Panel finds that the disputed domain names are confusingly similar to the Complainant’s trademark, and that the mere addition of the generic words does not negate the confusing similarity.
Paragraph 4(a)(i) of the Policy is therefore satisfied.
B. Rights or Legitimate Interests
According to paragraph 4(c) of the Policy the following circumstances, if proved, demonstrate a respondent’s rights or legitimate interests in a domain name:
(i) the respondent used or demonstrably prepared to use the domain name or corresponding name in connection with a bona fide offering of goods or services prior to notice of the dispute;
(ii) the respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if it has not acquired trademark rights; or
(iii) the respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the complainant’s marks.
In a UDRP Proceeding, once the complainant makes a prima facie case that the respondent has no rights or legitimate interests, the burden of production shifts to the respondent to show one of the three circumstances under paragraph 4(c) of the UDRP, or any other basis for rights or legitimate interests. The Panel is convinced that the complainant has made such prima facie showing. In this case, the Respondent made assertions in its Response that it is not engaged in any illegitimate use of the disputed domain names, and attempted to claim that the Complainant is attempting to acquire numerous domain names without legitimate interest. Furthermore, the Respondent accused the Complainant of abuse of the UDRP process. The Panel finds that the Respondent’s generic defense does not amount to an establishing legitimate interest in the disputed domain names. The Respondent has failed to establish that he is commonly known by the disputed domain names, that he is using the disputed domain names in connection with a bona fide offering of goods or services, or that he is making fair use of the disputed domain names. The mere allegation of the Respondent that he is losing money for maintaining the websites, to which the disputed domain names resolve, does not make the use noncommercial.
Paragraph 4(a)(ii) of the Policy is therefore satisfied.
C. Registered and Used in Bad Faith
For the purposes of paragraph 4(a)(iii) of the Policy, the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
“(i) circumstances indicating that you have registered or you have 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 your documented out-of-pocket costs directly related to the domain name; or
(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site 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 web site or location or of a product or service on your web site or location.”
It is undisputed that Complainant is known worldwide and that the Respondent must have had knowledge of the Complainant’s trademark rights in BMW. Moreover, the fact that the three concerned websites include content that infringes on the Complainant’s copyrights and trademarks supports a finding of bad faith registration and use. All websites display the trademarks of the Complainant in some form, in addition to pictures of BMW cars, spare parts, all bearing the BMW Logo likely confusing Internet user’s as to the source of the material. The Panel finds the respondent has done so intentionally, for commercial gain.
The Respondent defense that the Complainant has failed to show bad faith registration and use is not substantiated and does not prove otherwise.
The Panel would like to state that the Respondent allegations that the Complainant is abusing the UDRP process are frivolous, and do not adequately refute the Complainant’s contentions nor do they negate any of the three elements under the UDRP. Conversely, the Complainant has succeeded in making the case for cybersquatting under each of the elements.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain names, <bmwbrakes.com>, <bmwclub.net> and <hybridbmw.com> be transferred to the Complainant.
Lana I Habash
Date: April 27, 2012