WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Bayerische Motoren Werke AG v. Protection of Private Person / Yurii Volneiko

Case No. D2017-2325

1. The Parties

The Complainant is Bayerische Motoren Werke AG of Munich, Germany, represented by Kelly IP, LLP, United States of America.

The Respondent is Protection of Private Person of Moscow, Russian Federation / Yurii Volneiko of Novosibirsk, Russian Federation, self-represented.

2. The Domain Name and Registrar

The disputed domain name <gs-trophy-mongolia.com> is registered with Registrar of Domain Names REG.RU LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 22, 2017. On November 23, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 27, 2017, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name, which differed from the named Respondent and contact information in the Complaint, and indicating that the language of the registration agreement is Russian. The Center sent an email communication to the Complainant on November 28, 2017, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on November 29, 2017.

On November 28, 2017, the Center notified the Parties in both English and Russian that the language of the registration agreement for the disputed domain name is Russian. On November 29, 2017, the Complainant requested for English to be the language of the proceeding. The Respondent did not comment on the language of the proceeding.

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 December 5, 2017. In accordance with the Rules, paragraph 5, the due date for Response was December 25, 2017. The Response was filed with the Center on December 24, 2018, subsequent to several messages from the Respondent to the Center, dated November 28, 2017, November 29, 2017, November 30, 2017, and December 5, 2017.

On January 9, 2018, the Complainant filed a Supplemental Filing.

The Center appointed Assen Alexiev as the sole panelist in this matter on January 18, 2018. 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. Preliminary Issues:

A. Language of the Proceeding

In respect of the language of the proceeding, the Panel notes the following. According to the information provided by the Registrar, the language of the registration agreement for the disputed domain name is Russian. Under paragraph 11 of the Rules, unless otherwise agreed by the Parties, or specified otherwise in the registration agreement, the language of the administrative proceeding shall be the language of the registration agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding.

The Complainant has submitted its Complaint in the English language, and requests the proceeding to be held in English with the arguments that the Respondent has knowledge of or proficiency in English as shown by the Respondent’s use of the disputed domain name for an English language website and the Respondent’s use of English in his correspondence with the Center in this administrative proceeding. The Center has sent its messages to the Respondent in both English and Russian, and has invited the Respondent to express its views on the language of the proceeding. The Respondent has refrained from doing so, and has thus not objected to the Complainants’ request the proceeding to be held in English.

In these circumstances, it appears to the Panel that using the English language in this proceeding will be fair and efficient and will not put either of the Parties at a disadvantage. Therefore, in exercise of its powers under paragraph 11 of the Rules, the Panel decides that the language of this administrative proceeding will be English. At the same time, the Panel will take into account all evidence in the case file available in English or Russian languages.

B. Complainant’s Supplemental Filing

The Rules allow for the submission of a complaint by the complainant and a response by the respondent, with no express provision for either party to submit any additional unsolicited filings, except in response to a deficiency notification or if requested by the Center or the Panel. In effect, paragraphs 10 and 12 of the Rules grant the Panel the sole discretion to determine the admissibility of any supplemental filings received from either party.

The Complainant submitted a supplemental filing on January 9, 2018, responding to assertions in the Response. The Panel finds the Complainant’s submission largely repeats the assertions made in the Complaint and its rebuttal is to reasonably-foreseeable arguments made by the Respondent.

Under the circumstances of this case, taking into consideration all of the facts and Parties’ submissions, the Panel has determined that the content of the Complainant’s Supplemental Filing is not necessary for the Panel’s decision in this matter, and declines to consider the Complainant’s Supplemental Filing. See section 4.6 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).

5. Factual Background

The Complainant manufactures, sells, and, distributes automobiles and motorcycles and provides services including maintenance and repair. In 2016, the Complainant manufactured more than 2,000,000 automobiles and more than 145,000 motorcycles, and had worldwide sales and revenue in excess of EUR 96 billion. The Complainant has more than 124,000 employees worldwide, and its products are manufactured at 30 sites in 14 countries on four continents.

In 1980, the Complainant unveiled its first GS all-terrain motorcycle, which delivered a combination of touring and sport capabilities. GS motorcycles now account for more than 65 percent of the Complainant’s annual motorcycle production. In 2016, the Complainant produced more than 95,000 GS motorcycles. To showcase and promote its GS motorcycles, the Complainant offers an adventure motorcycle event under the mark GS TROPHY that is held biennially in various locations around the world. Owners of the Complainant’s GS motorcycles compete in qualifying contests in their respective countries for the GS TROPHY event, with only the top three drivers from each country invited by the Complainant to participate in the GS TROPHY event. Qualifying contests are held during odd-numbered years, and the main competition is held during even-numbered years. Contestants are invited only through these qualifying contests. The Complainant has offered the GS TROPHY event since 2008, when it was held in North Africa with 5 teams. In the following years, the Complainant held its GS TROPHY event in South Africa (in 2010, with 10 teams), in Patagonia (in 2012, with 12 teams), in Canada (in 2014, with 14 teams), and in Southeast Asia (in 2016, with 19 teams). The Complainant’s 2018 GS TROPHY event will be held in Mongolia. The Complainant selected Mongolia for its 2018 event and publicized the selection on February 22, 2017.

The Complainant advertises and promotes its GS TROPHY competition online via its domain names <gs‑trophy.com> and <gstrophy.com>.

The Complainant owns the following trademark registrations (collectively referred to as the “GS trademarks”):

- the German trademark GS, with registration No. 39603966, registered on September 25, 1996, for goods in International Classes 12 and 28;

- the European Union trademark GS, with registration No. 000082495, registered on July 26, 1999, for goods in International Classes 12 and 28; and

- the South African trademark GS TROPHY, with registration No. 2014/34727, registered on July 31, 2017, for goods in International Class 12.

The disputed domain name was registered on September 9, 2017. It resolves to a website that offers bike travels to and in Mongolia, including participation in the “gs-trophy adventure 2018”.

6. Parties’ Contentions

A. Complainant

The Complainant submits that the Respondent registered the disputed domain name well after the Complainant began using its GS trademarks, became famous in the field of motorcycles, and announced that its 2018 GS TROPHY event will be held in Mongolia. The disputed domain name is comprised of the Complainant’s GS trademarks in their entirety and the geographic term “Mongolia” which is the location of the Complainant’s 2018 GS TROPHY event. On its face, the disputed domain name communicates connections to the Complainant and its GS trademarks and official event that do not exist.

The Complainant points out that the Respondent uses the disputed domain name for a commercial website that gives the false and misleading appearance of being the Complainant’s official website for its GS TROPHY event in Mongolia or a website that the Complainant sponsors or endorses. The Respondent’s website prominently displays the Complainant’s GS TROPHY logo on numerous pages and uses the Complainant’s famous and registered BMW logo on the home page. On its website, the Respondent falsely identifies itself as the Complainant in the website title, the copyright notice, and in website text. The Respondent’s website advertises and/or offers travel packages to the Complainant’s GS TROPHY event that give the misleading and false appearance of being travel packages that (a) allow consumers to ride in the Complainant’s GS TROPHY event in 2018, (b) allow consumers to ride on the Complainant’s GS TROPHY course, and/or (c) are sponsored/endorsed by the Complainant for consumers and/or contest participants. The Respondent’s website invites users to “BE A PART OF GS-TROPHY ADVENTURE 2018” and offers packages such as “Solo Rider Shared Room / If you want to feel the spirit of Mongolia as a solo rider being a part of international team, just let us know. We have an offer for you!” and “Solo Rider Single Room / Never be alone biking with us during GS Trophy in Mongolia. We have all you need to feel the spirit of endless freedom.” These statements are misleading, because riders must qualify in local contests to participate in the Complainant’s GS TROPHY event, and team placements cannot be purchased. Further, by using the disputed domain name for a website that uses the Complainant’s intellectual property and provides content regarding the Complainant’s GS TROPHY event, the Respondent directly and unfairly competes with the Complainant’s own online offering of information regarding the Complainant’s GS TROPHY event.

The disputed domain name is confusingly similar to the Complainant’s registered GS trademarks because it contains the Complainant’s GS trademarks in their entirety and the geographic term “Mongolia”, and Internet users are likely to believe that the disputed domain name relates to the Complainant’s GS TROPHY event that will be held in 2018.

The Respondent has no rights or legitimate interest in the disputed domain name. It has not been commonly known by the disputed domain name. The Respondent’s registration and use of the disputed domain name for a commercial website that uses the Complainant’s intellectual property without authorization does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name. Rather, the Respondent is trying to pass its website off as the Complainant’s website or as a website affiliated with the Complainant.

The Respondent registered and has used the disputed domain name in bad faith. Given the fame of the Complainant’s GS trademarks and the explicit references to BMW on the Respondent’s website, the Respondent opportunistically registered the disputed domain name in bad faith with knowledge of the Complainant’s rights in its GS trademarks, in an attempt to take advantage of the Complainant’s goodwill and of the obvious connection between the Complainant’s GS trademarks and the Complainant’s upcoming GS TROPHY event in Mongolia. The Respondent uses the disputed domain name to intentionally attract, for commercial gain, Internet users by creating a likelihood of confusion with the Complainant’s GS trademarks as to the source, sponsorship, affiliation, and/or endorsement of the Respondent’s website. The Respondent disrupts the Complainant’s business by using the disputed domain name to compete with the Complainant for Internet traffic, to take advantage of the Complainant’s goodwill in its GS trademarks, and to advertise and promote the Respondent’s own commercial business in opposition to the Complainant, which qualifies the Respondent as a competitor of the Complainant under the UDRP.

B. Respondent

In the proceeding, the Respondent has made the following statements in its Response and other communications to the Center:

- the Respondent is ready to sell the disputed domain name to the Complainant for EUR 3,000. This amount is calculated to refund the Respondent’s business, not the registration costs, which are lower;

- the disputed domain name does not contain the term “bmw”, and the other words in it are only a coincidence;

- the phrase “GS Trophy” doesn't belong to the Complainant, but has a holder in the Republic of Korea;

- the Respondent has set up the disputed domain name to run its touristic business with Mongolia;

- the disputed domain name deals with Mongolia, not with the Complainant; and

- the Complainant announced its event in February 2017, while the Respondent registered the disputed domain name six months later.

7. Discussion and Findings

Pursuant to the Policy, paragraph 4(a), the Complainant must prove each of the following to justify the transfer of the disputed domain name:

(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and

(iii) the Respondent has registered and is using the disputed domain name in bad faith.

In this case, the Center has employed the required measures to achieve actual notice of the Complaint to the Respondent, in compliance with the Rules, paragraph 2(a), and the Respondent was given a fair opportunity to present its case.

By the Rules, paragraph 5(c)(i), it is expected of a respondent to: “[r]espond specifically to the statements and allegations contained in the complaint and include any and all bases for the Respondent (domain-name holder) to retain registration and use of the disputed domain name”.

In this proceeding, the Respondent has submitted an informal Response addressing only some of the contentions of the Complainant.

A. Identical or Confusingly Similar

The Complainant has provided evidence for its registrations of the GS trademarks. The Panel is not convinced by the Respondent’s allegation that the GS trademarks belong to a third party. As evident from the evidence submitted by the Complainant, the Complainant owns valid registrations of the GS trademarks, with priority as early as 1996. This satisfies the Panel that the Complainant has established its rights in the GS trademarks for the purposes of the Policy.

The Panel notes that a common practice has emerged among UDRP panels under the Policy to disregard in appropriate circumstances the generic Top-Level Domain (“gTLD”) section of domain names for the purposes of the comparison under the Policy, paragraph 4(a)(i). The Panel sees no reason not to follow the same approach here, so it will disregard the “.com” gTLD section of the disputed domain name.

The relevant part of the disputed domain name is therefore “gs-trophy-mongolia”, which contains the elements “gs”, “trophy”, and “Mongolia”, linked by hyphens. The “gs” element is identical to the GS trademark, while the combination between the “gs” element and the “trophy” element is identical to the GS TROPHY trademark, except for the hyphen separating the “gs” and “trophy” elements. The “mongolia” element is identical to the country name “Mongolia”. In the Panel’s view, the inclusion of this combination in the disputed domain name may lead Internet users to believe that the disputed domain name represents an official online location of the Complainant dedicated to its GS TROPHY event organized in Mongolia in 2018.

In view of the above, the Panel finds that the disputed domain name is confusingly similar to the GS trademarks in which the Complainant has rights.

B. Rights or Legitimate Interests

While the overall burden of proof in UDRP proceedings is on the complainant, UDRP panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the often-impossible task of “proving a negative”, requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element. See section 2.1 of the WIPO Overview 3.0.

The Complainant has contended that the Respondent has no rights or legitimate interests in the disputed domain name, stating that the Respondent uses the disputed domain name for a commercial website with a false and misleading appearance of being the Complainant’s official website for its 2018 GS TROPHY event in Mongolia. The Respondent falsely identifies itself as the Complainant in the website, which features misleading offers of travel packages to the Complainant’s GS TROPHY event and attempts to attract business from the Complainant’s clients. Thus, the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name.

The Respondent has alleged that it is has rights and legitimate interests in the disputed domain name, stating that the disputed domain name does not contain the term “bmw”; the other words in it are only a coincidence; the Respondent has set up the disputed domain name to run its touristic business in Mongolia; and the disputed domain name deals with Mongolia, not with the Complainant.

The Respondent admits that it is using the disputed domain name for business purposes, which is clear for the Respondent’s statement that the disputed domain name was registered for the Respondent’s touristic business in Mongolia. The Panel is not convinced by the Respondent’s arguments that the elements in the disputed domain name are only a coincidence. The disputed domain name incorporates the GS trademarks entirely with the addition of the element “mongolia”, which represents the country name of Mongolia. This makes it likely that Internet users may regard the disputed domain name as being an official online location for the Complainant’s 2018 GS TROPHY event that will take place in Mongolia. This likelihood of confusion is further increased by the design and content of the Respondent’s website at the disputed domain name, which features the BMW trademark and logo on the website, offers travel packages and participation in the Complainant’s 2018 GS TROPHY event in Mongolia, and falsely identifies the owner of the website as the Complainant in the website title and copyright notice.

On the basis of the above, the Panel is satisfied that the Respondent, being well aware of the Complainant, is likely to have registered and used the disputed domain name in an attempt to exploit the goodwill of the GS trademarks to mislead Internet users that the Respondent is the Complainant and that the disputed domain name hosts the Complainant’s website for its 2018 GS TROPHY event in Mongolia, and thus to attract business from these Internet users. In the Panel’s view, such use of the disputed domain name is not legitimate.

On the basis of the above, the Panel finds that the Respondent has not rebutted the Complainant’s prima facie case, and does not have rights or legitimate interests in the disputed domain name.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy lists four illustrative circumstances that shall be evidence of the registration and use of a domain name in bad faith by a respondent, namely:

“(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 website or location or of a product or service on your website or location.”

The provisions of paragraph 4(b) of the Policy are without limitation, and bad faith registration and use may be found on grounds otherwise satisfactory to the Panel.

As discussed above, the disputed domain name incorporates the GS trademarks entirely with the addition of the element “mongolia”, which represents the name of Mongolia. The Respondent’s website at the disputed domain name features the BMW trademark and logo on the website, offers travel packages and participation in the Complainant’s 2018 GS TROPHY event in Mongolia, and falsely identifies the owner of the website as the Complainant in the website title and copyright notice.

On the basis of the above, and in view of the considerations of the Panel set out in the section related to rights and legitimate interests, the Panel finds that the Respondent is likely to have registered the disputed domain name with knowledge of the Complainant and targeting the GS trademarks and the Complainant’s 2018 GS TROPHY event in Mongolia in an attempt to attract business by confusing Internet users into believing that they are dealing with the Complainant. The Respondent’s statement that the disputed domain name was registered six months after the announcement of the Complainant’s 2018 GS TROPHY event does not contradict this finding. Therefore, the Panel accepts that the Respondent has registered the disputed domain name in bad faith.

The Respondent has not denied that the disputed domain name is being used for its touristic business in Mongolia. The content of the Respondent’s website may confuse Internet users that it contains genuine offers from the Complainant for participation in its 2018 GS TROPHY event in Mongolia. In view of this, the Panel accepts that by using the disputed domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the disputed domain name, by creating a likelihood of confusion with the Complainant’s GS trademarks as to the source, sponsorship, affiliation, or endorsement by the Complainant of the disputed domain name and the affiliated website. Therefore, the Panel finds that the disputed domain name has been used in bad faith.

8. Decision

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 name <gs-trophy-mongolia.com> be transferred to the Complainant.

Assen Alexiev
Sole Panelist
Date: February 14, 2018