WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Bayerische Motoren Werke AG v. James Vergis, Stressfree Driving School Pty Ltd
Case No. D2017-0071
1. The Parties
1.1 The Complainant is Bayerische Motoren Werke AG of Munich, Germany, represented by Kelly IP, LLP, United States of America (“United States”).
1.2 The Respondent is James Vergis, Stressfree Driving School Pty Ltd of Brunswick East, Australia, self-represented.
2. The Domain Names and Registrar
2.1 The disputed domain names <bmwdriveschool.com>, <bmwdriveschool.net>, <bmwdrivingschool.com>, <bmwdrivingschool.net> (the “Domain Names”) are registered with NetRegistryPty Ltd. (the “Registrar”).
3. Procedural History
3.1 The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 13, 2017. On January 16, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Names. On January 17, 2017, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing contact details.
3.2 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”).
3.3 In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on January 23, 2017. In accordance with the Rules, paragraph 5, the due date for Response was February 12, 2017. On February 12, 2017, the Respondent request for extension to file a Response. On February 13, 2017, the Center granted an automatic Response extension. The Response was filed with the Center on February 16, 2017.
3.4 On February 22, 2017 the Complainant filed a supplemental submission in reply to the Response and which primarily took the form of supplemental argument. The admissibility of this submission is addressed later on in this decision.
4. Factual Background
4.1 The Complainant is the well-known manufacturer of car and motorcycles. It has manufactured vehicles under the BMW name since 1917. It is incorporated in Germany and its principle place of business is in Munich, but its vehicles are manufactured at 30 sites in 14 countries. It has over 3000 authorised dealers around the world, which, in addition to marketing its vehicles, provide related products and services. Its worldwide sales and revenues in 2015 were in excess of EUR 92 billion.
4.2 The Complainant is the owner of numerous registered trade marks around the world that incorporate or comprise the BMW name. They include:
(i) German registered trade mark no. 410579 for the word mark BMW, filed on February 23, 1929, and registered on November 15, 1929, in classes 12 and 7; and
(ii) Australian registered trade mark no. 491479 for the word mark BMW, registered on July 19, 1988, in class 12; and
(iii) United States registered trade mark no. 4051522 for the word mark BMW DRIVING EXPERIENCE filed on March 8, 2011 and registered on November 8, 2011 in class 41.
4.3 The Complainant is also the owner of various domain names that incorporate the BMW mark. It operates a network of websites using these domain names, with the domain name giving some indication of the nature of the website operating from the same. So for example, the Complainant operates international portal websites from the domain names <bmw.com> and <bmwgroup.com>, a website directed at Australian consumers from the domain name <bmw.com.au>, and a website directed to US consumers from the domain name <bmwusa.com>.
4.4 The Complainant has also offered driver training and driver education services, since 1977. These are promoted, Inter alia, as the “BMW Driving Experience” on a website operating from the <bmw-performancecenter.com> domain name and on pages of the Complainant’s US and Australian websites. It also offers “BMW Performance Driving School” courses from a purpose built centre which opened in South Carolina in 1999 and from a further centre, which opened in California in 2014.
4.5 The Respondent would appear to be a company incorporated in Australia, Stressfree Driving School Pty Ltd, operated by a Mr. Vergis. Mr. Vergis is a driving instructor.
4.6 The Domain Names were all registered on May 12, 2014 by the Respondent. The Respondent has also registered the domain names, <bmwdrivingschool.com.au>, <bmwdrivingschool.net.au>, <bmwdriveschool.com.au>, and <bmwdriveschool.net.au>. These domain names are the subject of separate proceedings under the “.au” Dispute Resolution Policy.
4.7 The Respondent has also registered a large number of additional domain names that take the same form as the domain names incorporating BMW, save that in place of BMW are the names of other motor manufacturers “Honda”, “Holden”, “Mazda” and “Toyota”. Examples include <forddriveschool.com>, <holdendrivingschool.net> and <toyotadriveschool.net>.
4.8 Prior to the commencement of these proceedings there was correspondence between the Respondent and the Complainant. In an email dated July 1, 2016, and in response to an email from the Complainant demanding the transfer of the domain name <bmwdrivingschool.com>, the Respondent stated as follows:
“… a little over two years ago I started to develop an extensive business model tailored towards developing and introducing a car maker specific driving school. A driving school that, by definition, is part of the parent company, not some remote satellite. This model differed according to the philosophies, requirements and agendas of the individual car companies. The modelling that I have done shows a unique potential for success in customer penetration and loyalty over the short and long term, as well as financial success for the chosen car company that would result in a significant competitive edge over the competitors. Part of this business modelling was to acquire essential and at times unique business aspects without which success is greatly diminished. Car company, driving school specific, domain names were an obvious component to building an intra-automotive company driving school. I lawfully, openly bought many domain names that could be of use to numerous car companies.”
4.9 Subsequently, in an email dated December 22, 2016, the Respondent stated as follows:
“Recently I was contacted about selling all of these domain names. I simply wanted to inform you of this since I predict that by the end of January 2017 the right to these domains will no longer be in my name.”
5. Parties’ Contentions
5.1 The Complainant provides a detailed description of the Complainant’s business activities and marks. It refers to the Respondent’s registrations in addition to the Domain Names and its correspondence with the Respondent.
5.2 It contends that the Domain Names are confusingly similar to the Complainant’s registered trade marks, claiming that each of the Domain Names incorporated its BMW mark with terms that relate to its business.
5.3 It asserts that the Respondent’s registration and use of Domain Name to solicit a business arrangement with the Complainant does not constitute a bona fide offering of goods or services under the Policy (citing Starbucks Corporation, Starbucks U.S. Brands LLC v. gratefulnet.com, WIPO Case No. D2006-1649). Further, it contends that the passive holding of the Domain Names does not provide a right or legitimate interest for the purposes of the Policy. It also claims that the Respondent’s threat to sell the Domain Names demonstrates a lack of rights or legitimate interests in the same.
5.4 So far as bad faith is concerned, the Complainant contends that the Respondent has engaged in a bad faith pattern of registration of the domain names incorporating the trade marks of the Complainant and other motor manufacturers falling with the scope of paragraph 4(b)(ii) of the Policy. The registration of domain names to solicit a business arrangement is also said to be in bad faith (citing, among other cases, Hermes International v. Domain Administrator, MMGA Domains, LLC, WIPO Case No. D2014-1760). Further, passive holding of the Domain Names because of its association with the Complainant is said to constitute bad faith. The Complainant also contends that the Respondent’s activities fall within the scope of paragraphs 4(b)(i) and 4(b)(iv) of the Policy.
5.5 The Respondent did not file a response in these proceedings that complied with the requirements of paragraph 5(c)(viii) of the Rules. Instead the Respondent sent an email to the Center. In that email he confirmed that he had registered the Domain Names along with others with a view to developing “an internal driving school within an auto manufacturer”. He further contended that the Domain Names were available when he registered them and that therefore the Complainant’s protests where “superficial” and possibly “malicious” and that the fact that the Complainant had not registered them demonstrated that “they form[ed] no part or intention of their business or business interests”.
5.6 In this document the Respondent also appears to claim that it would be perfectly legitimate for it to set up a driving school using a fleet of BMWs and to brand his business accordingly. It does not claim that this was the Respondent’s intention, but appears to be arguing that because of this the Complainant is over reaching its rights in commencing these proceedings.
6. Discussion and Findings
6.1 To succeed in these proceedings the Complainant must make out its case in all respects under paragraph 4(a) of the Policy. Namely, the Complainant must prove that:
(i) the Domain Names are identical or confusingly similar to a trade mark or service mark in which the Complainant has rights (paragraph 4(a)(i)); and
(ii) the Respondent has no rights or legitimate interests in respect of the Domain Names (paragraph 4(a)(ii)); and
(iii) the Domain Names have been registered and are being used in bad faith (paragraph 4(a)(iii)).
6.2 The Panel will address each of these requirements in turn. However, before it does so, it needs to address the procedural issue whether the Panel should accept the Complainant’s supplemental submission.
6.3 The circumstances in which a party can file a supplemental submission in UDRP proceedings is addressed in paragraph 4.2 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (the “WIPO Overview 2.0”). Generally, it is necessary for the filing party to demonstrate exceptional circumstances, before that submission is admitted.
6.4 The Panel is not convinced that such exceptional circumstances exist in this case. Therefore, it has not considered the supplemental submission in this case. In any event, as will become apparent, the admission or otherwise of this supplemental submission has had no material impact on the outcome of these proceedings.
A. Identical or Confusingly Similar
6.5 The Panel accepts that the Domain Names are confusingly similar to the Complainant’s registered trade marks. Each of the Domain Names can only be sensibly read as a reference to the Complainant’s BMW mark in combination with the words “drive school” or “driving school” and the “.com” or “.net” generic Top-Level Domain (“gTLD”). The Panel accepts that the words “drive school” and “driving school” can be said to describe activities in which the Complainant engages. However, even if they did not, they are clearly words that are associated with motoring. Further, their inclusion in the Domain Names does not so distract from or change the natural reading of the mark BMW so as to prevent a finding of confusing similarity for the purposes of the Policy.
6.6 In the circumstances, the Complaint has satisfied the requirements of paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
6.7 It does not appear to be disputed that the Domain Names were registered and have subsequently been held by the Respondent with a view to inducing the Complainant or some other company in the Complainant’s corporate group to enter into a business venture with the Respondent. The Panel accepts the Complainant’s contention that to register a domain name which incorporates the trade mark of another with that purposes in mind, does not provide a legitimate interest for the purposes of the Policy.
6.8 Further, the Panel accepts that whatever the Respondent’s initial intentions in registering the Domain Names, and having learnt that the Complainant is not interested in entering such an arrangement, the Respondent threatened to sell those Domain Names to a third party. This is the only sensible interpretation of the email sent by the Respondent on December 22, 2016. To hold a domain name that can only be sensibly understood as incorporating and seeks to take advantage of an association with the trade mark of another for the purposes of sale to a third party also does not provide a legitimate interest in that domain name. That is particularly so where the domain name is one of a series of registrations incorporating the trade marks of others (see Boehringer Ingelheim Pharma GmbH & Co. KG v. Whoisguard Protected, Whoisguard, Inc. / ESQUIRE 5, J Gates, WIPO Case No. D2015-0978).
6.9 In the circumstances, the Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
6.10 Paragraph 4(b) of the Policy sets out a series of circumstances that if found provide evidence of registration and use in bad faith. However, they are non-exhaustive and do not set out the only circumstances in which bad faith can be found. The Panel agrees with the Complainant, and the cases cited by the Complainant in this respect, that the registration and holding of a domain name that incorporates the mark of another with the purpose of encouraging a prospective business arrangement with the owner of that marks, also amounts to bad faith registration and use.
6.11 The Panel also accepts that the Respondent’s conduct, being part of a larger scheme to register domain names that incorporate the marks of motor manufacturers in combination with the words “drive school” or “driving school” falls, within the scope of paragraph 4(b)(ii) of the Policy.
6.12 Further, there is the threat of sale or disposal of the Domain Names to a third party in December 2016. The third party involved is not identified and no attempt is made to explain for what purpose the Domain Name might be used. In the circumstances, it is questionable whether such a third party really existed and it appears more likely to the Panel that this was a last attempt by the Respondent to prompt the Complainant into coming to some accommodation with the Respondent in relation to the Domain Names. Nevertheless, either way it is supportive of a finding of bad faith on the part of the Respondent. It demonstrates that the Respondent was determined in some way or another to use the Domain Names to extract some commercial advantage from either the Complainant or some third party who would take advantage of the Domain Names’ association with the Complainant.
6.13 It is no answer to this to contend (as the Complainant appears to get close to doing) that the Domain Names might be legitimately used by a driving school that used a fleet of BMWs. First, that assertion is of itself is questionable. Insofar as a domain name incorporates the mark of another there are restrictions on the way it can be legitimately used to refer to goods or services that are genuinely connected with that mark (see paragraph 2.3 of the WIPO Overview 2.0 ; Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903 and Johnson & Johnson v. Ebubekir Ozdogan WIPO Case No. D2015-1031). Second, what matters is the not what might have been done with the Domain Names but what were the Respondent’s intentions in this case.
6.14 In the circumstances the Complainant has satisfied the requirements of paragraph 4(a)(iii) of the Policy.
7.1 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, <bmwdriveschool.com>, <bmwdriveschool.net>, <bmwdrivingschool.com>, <bmwdrivingschool.net> be transferred to the Complainant.
Matthew S. Harris
Date: March 13, 2017