WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Bayerische Motoren Werke AG v. Perfect Privacy, LLC / Alexandre Antonio / Edivaldo Ferreira
Case No. D2017-1473
1. The Parties
The Complainant is Bayerische Motoren Werke AG of Munich, Germany, represented by Kelly IP, LLP, United States of America ("United States").
The Respondent is Perfect Privacy, LLC of Jacksonville, Florida, United States / Alexandre Antonio / Edivaldo Ferreira of Barueri and São Paulo, Brazil.
2. The Domain Names and Registrar
The disputed domain names <bmwbrfinanceira.com> and <bmwfinanceira.com> are registered with Network Solutions, LLC (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on July 28, 2017. On July 31, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 1, 2017, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names, which differed from the named Respondent, and contact information in the Complaint. The Center sent an email communication to the Complainant on August 2, 2017 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Respondent replied to the Center's communication on August 2, 2017, however did not produce any substantite submission. The Complainant filed an amended Complaint on August 7, 2017.
The Center verified that the Complaint together with the amended 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on August 8, 2017. In accordance with the Rules, paragraph 5, the due date for Response was August 28, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on August 31, 2017.
The Center appointed Anna Carabelli as the sole panelist in this matter on September 13, 2017. 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 has been manufacturing, marketing and selling for over 100 years well-known automobiles and motorcycles under the trademark BMW. The Complainant also provides numerous services including maintenance and repair services, financing and leasing, insurance, and warranty services, among others. The Complainant's financial services include financing for new vehicles, leasing, credit card services, and insurance, and are offered to consumers through the Complainant's authorized retailers (Annex 4 to the Complaint).
The Complainant is the owner of multiple registrations for the mark BMW throughout the world.
In particular, the Complainant owns numerous registrations for the mark BMW:
(i) In Germany, including the following registrations, which are among BMW's earliest registrations for the mark BMW:
- German trademark Registration No. 221388, registered on December 10, 1917, in classes 12, 7, 8, 9, and 11;
- German trademark Registration No. 410579, registered on November 15, 1929, in classes 12 and 7;
- German trademark Registration No. 1026571, registered on December 9, 1981, covering financial services in Class 36, namely lending in the field of motor vehicles (Annex 14 to the Complaint).
(ii) In the United States, including the following registrations:
- United States trademark Registration No. 611,710, registered on September 6, 1955, in class 12;
- United States trademark Registration No. 613,465, registered on October 4, 1955, in class 12;
- United States trademark Registration No. 3,436,270, registered on May 27, 2008, covering financial services in Class 36, including retail and whole financial services, online customers banking services for loan accounts, online credit applications and evaluations for loan accounts and loan services (Annex 16 to the Complaint); and
(iii) In Brazil, including the following registrations:
- Brazilian trademark Registration No. 007067720, registered on February 25, 1980, in Class 12;
- Brazilian trademark Registrations No. 829328173 and No. 829357025, registered respectively on December 29, 2009 and on November 3, 2009, covering financial services and insurance survives and transport services in Class 36.
The Complainant's headquarters are located in Germany but its products and components are manufactured at 30 sites in 14 countries on four continents, including in the United States. The Complainant currently has approximately 3,400 authorized dealers in locations throughout the world, including many in the United States and in Brazil where the Complainant has offered its BMW vehicles and relates services and products for decades (Annex 6 to the Complaint). The Complainant's financial services, such as new vehicle loans and leasing services, are offered and advertised in Brazil through the Complainant's wholly owned subsidiary BMW Financeira S.A. – Crédito Financiamento e Investimento ("BMW Financeira") (Annex 8 to the Complaint), also on its website available at "www.bmw.com.br".
Over the years, the Complainant has extensively and widely sold and advertised products and services under the BMW mark. In 2016, the Complainant had worldwide sales and revenue in excess of EUR 96 billion (See Annex 3 to the Complaint).
In use since 1917, the Complainant's BMW mark enjoys worldwide recognition. Interbrand, one of the world's leading branding firms, has ranked the BMW brand in its "Top 100" report for global brands for many years, and in 2016, ranked the BMW mark 11th of the "Best Global Brands" with a value of more than USD 41.5 billion (see Annex 5 to the Complaint). Previous UDRP panels have recognized the value of the trademark BMW and its association with the Complainant's products and services (see Bayerische Motoren Werke AG and Williams Grand Prix Engineering Limited v. Neil Malkhandi, WIPO Case No. D2000-1172; BMW AG v. Loophole, WIPO Case No. D2000-1156; Bayerische Motoren Werke AG v. DLR, WIPO Case No. D2001-1231; Bayerische Motoren Werke AG v. (This Domain is For Sale) Joshuathan Investments, Inc., WIPO Case No. D2002-0787; Bayerische Motoren Werke AG v. Steven Koeppel, WIPO Case No. D2002-0795; Bayerische Motoren Werke AG v. Partinbank, WIPO Case No. D2002-0892; Motoren Werke AG v. Null, WIPO Case No. D2002-0937; Bayerische Motoren Werke AG v. Quality Services, WIPO Case No. D2003-0077; Bayerische Motoren Werke AG v. Lucjan Niemiec, WIPO Case No. No. D2003-0240).
The Complainant has also registered the trademark BMW as a domain name under several generic Top-Level Domains ("gTLDs") and country code Top-Level Domains ("ccTLDs") among these: <bmw.de>, <bmw.com>, <bmw.com.br>, and <bmwgroup.com>.
The disputed domain names <bmwfinanceira.com> and <bmwbrfinanceira.com> were registered on June 6, 2017 and on July 4, 2017, respectively. The disputed domain names appear to have been used to impersonate the Complainant's Brazilian subsidiary, BMW Financeira, and to obtain consumer financial information (Annexes 17-20 to the Complaint). The second mentioned disputed domain name <bmwbrfinanceira.com> appears to have been registered shortly after the Complainant took action to take down the website under the first disputed domain name.
5. Parties' Contentions
The Complainant contends that the disputed domain names are confusingly similar with its registered trademark BMW since they incorporate the Complainant's well-known mark in its entirety. The Complainant argues that the addition of the dictionary term "financeira" (a Portuguese word which in English means "financial"), of the geographic abbreviation BR for Brazil, and of the gTLD ".com" does not eliminate the confusingly similarity. Moreover, the addition of the terms "financeira" and "BR" to the Complainant's BMW mark heightens the confusingly similarity of the disputed domain names because such terms relate directly to the Complainant's business and in fact mimics the name of BMW's business specifically, its subsidiary BMW Financeira in Brazil and the Complainant's financial services offered under its BMW mark in Brazil and elsewhere.
The Complainant also asserts that the Respondent has no rights or legitimate interests in the disputed domain names because the Respondent is not commonly known by the disputed domain names and is making neither a bona fide offering of goods and services, nor a legitimate noncommercial or fair use of the disputed domain names, by phishing for personal information.
The Complainant states that the disputed domain names were registered and are being used in bad faith since: (i) the Respondent cannot have ignored the existence of the Complainant when the disputed domain names were registered, given the strong reputation and the distinctive character of the Complainant's mark BMW worldwide and (ii) the Respondent is using the disputed domain names to fraudulently acquire financial information from consumers, with the intent to mislead them for commercial gain, by creating a likelihood of confusion with the Complainant's mark and activities as to the source, sponsorship, affiliation or endorsement of the Respondent's website.
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
6.1. Preliminary Procedural Issue: Consolidation
The Complainant has filed its Complaint against multiple Respondents. For the reasons below, the Panel grants this request and will proceed to consider the merits as to both disputed domain names in this decision.
As recorded in section 4.11 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0"), UDRP panels have allowed for the consolidation of complaints against multiple respondents where there are similarities in or relevant aspects of, inter alia, "(iv) the content or layout of websites corresponding to the disputed domain names, (v) the nature of the marks at issue (e.g., where a registrant targets a specific sector), (vi) any naming patterns in the disputed domain names (e.g., <mark-country> or <mark-goods>)".
The circumstances of this case clearly point to common control of the disputed domain names in that the disputed domain names, which are nearly identical, were registered within a short period of time and resolve to similar websites. In these circumstances, consolidation is also fair and equitable to all parties.
Given the evidence of common control in this case, the Panel will refer to a single Respondent for the remainder of the decision.
6.2 Discussion and Findings
Paragraph 15(a) of the Rules instructs the Panel to decide the Complaint on the basis 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.
Under paragraph 4(a) of the Policy, the Complainant must prove each of the following:
(i) The disputed domain name is identical or confusingly similar to the Complainant's trademark or service mark; 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.
Paragraph 4(b) of the Policy sets out four illustrative circumstances which for the purposes of paragraph 4(a)(iii) shall be evidence of registration and use of a domain name in bad faith.
Paragraph 4(c) of the Policy sets out three illustrative circumstances any one of which, if proved by the Respondent, shall be evidence of the Respondent's rights to or legitimate interests in the disputed domain name for the purpose of paragraph 4(a)(ii) above.
A. Identical or Confusingly Similar
The Complainant has proved that it owns numerous trademark registrations for the mark BMW in several countries.
The disputed domain names are confusingly similar to the Complainant's trademarks, as they entirely incorporate the Complainant's mark BMW. On the other hand, the addition of the dictionary term "financeira", and/or of the geographical abbreviation "BR" for Brazil, and/or of the gTLD ".com" does not diminish the confusingly similarity when comparing the disputed domain names and the Complainant's trademark (Bayerische Motoren Werke AG v. Ryan G Foo, PPA Media Services, WIPO Case No. D2015-0213; Bayerische Motoren Werke AG v. RC a/k/a Sami Salem, WIPO Case No. D2012-0366; Bayerische Motoren Werke AG v. Nikan Engineers Group, WIPO Case No. D2015-2114; Goyard St-Honoré v. Domain ID Shield Service / Arif Cahyono, WIPO Case No. D2012-1158; Sanofi-Aventis v. Conciergebrain.com, WIPO Case No. D2005-0660; GA Modefine SA v. Riccardo Bin Kara-Mat, WIPO Case No. D2002-0195).
In the light of the above, the Panel finds that the Complainant has established element 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
It is well established that, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name (see WIPO Overview, 3.0, section 2.1).
The Complainant asserts that the Respondent is not commonly known by the disputed domain names and cannot demonstrate any legitimate noncommercial or fair use of the disputed domain names, particularly because the Respondent is using the disputed domain names to fraudulently acquire financial information from consumers.
The Panel finds that the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain names. By not submitting a Response, the Respondent has failed to invoke any circumstance, which could have demonstrated any rights or legitimate interests in the disputed domain names under paragraph 4(c) of the Policy.
Accordingly, the Panel finds that the Complainant has established element 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
The Complainant has provided evidence that its BMW mark is widely known. The reputation of the BMW mark has been established in previous UDRP decisions (Bayerische Motoren Werke AG v. Pix UK Limited, WIPO Case No. D2004-0125; Bayerische Motoren Werke AG v. Whois Protection, WIPO Case No. D2007-1142; Bayerische Motoren Werke AG v. Lucjan Niemiec, supra; Bayerische Motoren Werke AG v. Sabri Hammad, WIPO Case No. D2007-0675).
The Panel further notices that the term "financeira" added to the disputed domain names can likely be associated with the Complainant's business, and, therefore, the combination of such term with the Complainant's mark BMW clearly is confusing (Hermes International v. BAG12, Nick Kim, WIPO Case No. D2010-2290; Christian Dior Couture v. Carl Lim, WIPO Case No. D2008-1038; Hermes International, SCA v. cui zhenhua, WIPO Case No. D2010-1743; Yahoo! Inc. v. Jorge O. Kirovsky, WIPOCase No. D2000-0428).
Given the international reputation of the BMW mark, it is unconceivable that the Respondent was not aware of the Complainant's trademark at the time it registered the disputed domain names. Such fact shows that the disputed domain names were registered in bad faith (see Revlon Consumer Products Corporation v. Domain Manager, PageUp Communications, WIPO Case No. D2003-0602; Microsoft Corporation v. Superkay Worldwide Inc., WIPO Case No. D2004-0071; Revlon Consumer Products Corporation v. Easy Weight Loss Info , Augustinus Ferry Yonatan, WIPO Case No. D2010-0936; Hermes International, SCA v. cui zhenhua, supra).
The evidence shows that the Respondent has used the disputed domain names to impersonate the Complainant's Brazilian subsidiary BMW Financeira and to obtain financial information from Internet users and from the Complainant's potential customers. By doing this, the Respondent intentionally attempted to attract, for commercial gain, Internet users to its web site and tarnished the Complainant's trademark BMW.
The Panel finds that the evidence submitted supports a finding of bad faith under paragraph 4(b)(iv) of the Policy.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain names, <bmwbrfinanceira.com> and <bmwfinanceira.com> be transferred to the Complainant.
Date: September 22, 2017