WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Bayerische Motoren Werke AG v. WhoisGuard Protected, WhoisGuard, Inc. / Ejgil Poulsen

Case No. D2018-1047

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 WhoisGuard Protected, WhoisGuard, Inc. of Panama / Ejgil Poulsen of Odense, Denmark.

2. The Domain Name and Registrar

The disputed domain name <minibilen.com> is registered with NameCheap, Inc. (the "Registrar").

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on May 11, 2018. On May 14, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 14, 2018, 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. The Center sent an email communication to the Complainant on May 16, 2018 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 May 18, 2018.

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 May 22, 2018. In accordance with the Rules, paragraph 5, the due date for Response was June 11, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on June 14, 2018.

The Center appointed Mihaela Maravela as the sole panelist in this matter on June 27, 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. Factual Background

The Complainant is a manufacturer of high-performance automobiles and motorcycles. The Complainant owns the MINI trademark that the Complainant states has become one of the most recognizable cars on the road since its introduction over fifty years ago. In addition to the Complainant's automobiles offered under the MINI trademark, the Complainant offers and has offered for many years a full array of products and services under the MINI trademark including automobile parts and accessories, apparel, and other products and services such as financing and maintenance services. The Complainant spends significant amounts of money every year to extensively and widely advertise and promote its products and services under the MINI trademark.

The Complainant is the owner of a number of registered trademarks consisting of MINI, including the following:

- United Kingdom Trademark for MINI (word trademark) No. 969678 filed on January 5, 1971,
- European Union Trademark for MINI (word trademark) No. 004375581 registered on April 25, 2006.

The disputed domain name was registered on February 20, 2018. According to the evidence provided by the Complainant, the disputed domain name resolved to a website which displayed the trademark MINI and the MINI logo. At the date of the Complaint the website displayed an error message: "This shop is unavailable". At the date of the decision the website is inactive.

5. Parties' Contentions

A. Complainant

The Complainant argues that the disputed domain name is confusingly similar to the Complainant's famous and registered MINI trademark because it is comprised of the Complainant's MINI trademark in its entirety combined with a generic or descriptive term ("bilen" meaning "car" in Danish) that describes the Complainant's primary products offered under its MINI trademark. The Complainant further argues that the confusing similarity of the disputed domain name is heightened because the term "car" refers to the Complainant's cars offered under the MINI trademark and that UDRP Panels have consistently held that combining a trademark with another term renders the domain name confusingly similar to that trademark if the term relates to the trademark owner's business.

Moreover, the Complainant contends that the Respondent does not have any rights or legitimate interests in the disputed domain name. The Respondent is not and has never been a licensee of the Complainant or otherwise authorized by the Complainant to use the Complainant's MINI trademark. The Respondent used the disputed domain name for passing off, fraudulent, and competing activities which do not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name. The Respondent's current non-use of the disputed domain name constitutes further evidence that the Respondent does not have any legitimate interests in the disputed domain name.

Further, the Complainant argues that the Respondent's registration and use of the disputed domain name constitute bad faith. The Complainant shows that the Respondent has used the disputed domain name for passing off, fraudulent, and competing activities. Specifically, the Complainant contends that the Respondent's website prominently displayed the Complainant's MINI trademark and logo. The Complainant further argues that the Respondent's unauthorized use of the Complainant's MINI trademark in the disputed domain name and on its website created the false and highly misleading impression that its website was an official MINI website or otherwise affiliated with the Complainant. Under this false impression of an official or authorized MINI website, the Respondent fraudulently offered model/toy cars that the consumers paid but never received. Several consumers posted complaints on the third-party website "trustpilot.com" stating that they purchased products on the "www.minibilen.com" website and never received the items despite paying for them. In addition, the Complainant contends that the Respondent's use of the disputed domain name unfairly competed with the Complainant's offering of genuine MINI-branded model/toy cars and also the Respondent's products were branded with the trademark "MERCEDES-BENZ" used by one of the Complainant's competitors. According to the Complainant, the Respondent's website currently displays the error message "This shop is unavailable". The Complainant argues that the Respondent has used the disputed domain name to intentionally attract, for commercial gain, Internet users by creating a likelihood of confusion with the Complainant's famous and registered MINI trademark as to the source, sponsorship, and/or endorsement of the Respondent's associated website, the products advertised/offered therein, and/or its activities. The Respondent registered the disputed domain name in bad faith with knowledge of the Complainant's rights in its MINI trademark given the fame of the Complainant's MINI trademark, the fact that the Respondent selected and registered the disputed domain names that are comprised of MINI and the term "car" in Danish that describes the Complainant's products offered under MINI trademark, and the Respondent's use of an altered version of the Complainant's MINI Logo on its website.

B. Respondent

The Respondent did not reply to the Complainant's contentions.

6. Discussion and Findings

Noting the fact that the Respondent has not filed a Response, the Panel shall consider the issues present in the case based on the statements and documents submitted by the Complainant.

"A Panel shall 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", paragraph 15(a) of the Rules.

Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following elements:

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

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

(iii) that the disputed domain name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

The Complainant must establish that it has a trademark or service mark and that the disputed domain name is identical or confusingly similar to that trademark or service mark for the Complainant to succeed.

The Complainant adduced evidence of trademark registrations for MINI in the name of the Complainant.

As regards the question of identity or confusing similarity for the purpose of the Policy, it requires a comparison of the disputed domain name to the trademarks in which the Complainant holds rights.

Here the disputed domain name incorporates the Complainant's trademark MINI in its entirety. In addition, the disputed domain name includes the generic term "bilen", that describes in Danish language the primary products that the trademark of the Complainant is applied to. The addition of the descriptive term "bilen" to the MINI trademark of the Complainant does not distinguish the disputed domain name from the Complainant's trademarks.

The fact that a domain name wholly incorporates a complainant's trademark may be sufficient to establish identity or confusing similarity for the purpose of the Policy, despite the addition of other words to such marks. See, Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903. The addition of a descriptive term does not serve to distinguish the domain name from the trademark. See section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0").

It is well accepted by UDRP panels that a generic Top-Level Domain ("gTLD"), such as ".com", is typically ignored when assessing whether a domain name is identical or confusing similar to a trademark.

This Panel concludes that the disputed domain name is confusingly similar to the trademarks of the Complainant and therefore finds that the requirement of paragraph 4(a)(i) of the Policy is satisfied.

B. Rights or Legitimate Interests

The consensus view of UDRP panels on the burden of proof on establishing the existence of rights or legitimate interests with regard to the domain name under paragraph 4(a)(ii) of the Policy is summarized in section 2.1 of the WIPO Overview 3.0, which states:

"[…] 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."

In the present case the Complainant has established a prima facie case that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant has established that it holds rights over the trademark MINI and claims that the Respondent is not a licensee, distributor or authorized agent of the Complainant.

The disputed domain name does not resolve to an active website at the date of this decision. However, from the evidence put forward by the Complainant and not refuted by the Respondent it results that the domain name was used for sale of goods bearing the Complainant's trademarks and/or goods bearing the trademark of competitors of the Complainant. Such use could not support a finding of bona fide offering of goods or services or for a legitimate noncommercial fair use under the UDRP. See for a similar finding Bayerische Motoren Werke AG v. Patrick White, WIPO Case No. D2018-0074.

By not submitting a Response, the Respondent has failed to invoke any circumstances which could demonstrate any rights or legitimate interests in the disputed domain name.

The Panel considers that the Respondent was aware of the MINI trademark of the Complainant when it registered the disputed domain name, since the Complainant's trademark is distinctive and well-known (see Bayerische Motoren Werke AG, Rolls-Royce Motor Cars Limited v. Ed Slingsby, SC Net, WIPO Case No. D2015-0268).

The Panel reviewed the evidence in the case file and found no circumstances for holding the existence of a situation provided by paragraph 4(c) of the Policy. There is no evidence that the Respondent used or has made demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods or services. There is no evidence that the Respondent made any legitimate noncommercial or fair use of the disputed domain name within the meaning of paragraph 4(c)(iii) of the Policy. And there is no evidence in the file to indicate that the Respondent has been commonly known by the disputed domain name. See for a similar finding ALDI GmbH & Co. KG v. zhou xiaolei, WIPO Case No. D2014-0957.

As a consequence, the Panel finds that the Respondent has no rights or legitimate interests with respect to the disputed domain name.

C. Registered and Used in Bad Faith

According to paragraph 4(a)(iii) of the Policy, the Complainant must establish that the disputed domain name has been registered and is being used in bad faith. The Policy indicates that certain circumstances specified in paragraph 4(b) of the Policy may, "in particular but without limitation", be evidence of the disputed domain name's registration and use in bad faith.

The fact that the disputed domain name is confusingly similar with the Complainant's trademarks and that the said trademarks are used for a long period of time indicates not only that the Respondent was aware of the Complainant's business and trademark at the time of registration, but also that it registered the disputed domain name to mislead Internet users into thinking it is some way connected, sponsored, endorsed by or affiliated with the Complainant's services. This finding is also supported by the fact that the Complainant's trademarks are distinctive and well-known and also by the fact that the website to which the disputed domain name redirects displayed, according to the evidence adduced by the Complainant, the trademark MINI of the Complainant and its protected logo. Moreover, the term "bilen" that means cars in Danish, is descriptive for the products primary sold under the Complainant's trademark, and the Panel considers that this reinforces the risk of confusion with the trademark MINI of the Complainant.

As regards the use of the disputed domain name, the Complainant adduced evidence not refuted by the Respondent that the website to which the disputed domain name resolved before the date of the Complaint was used for online sale of possibly counterfeit products marked with the Complainant's trademarks that were not delivered to consumers even if paid, and for sale of products marked with the trademark of one of the Complainant's competitors. This shows in the Panel's view that the website to which the disputed domain name resolved was used to create a likelihood of confusion as to Complainant's affiliation with the site and offers for sale of presumably counterfeit replicas of Complainant's goods. For a similar finding see IM Production v. Yan Si, WIPO Case No. D2015-1633.

This Panel agrees that even in the event that the Respondent offered genuine MINI goods, misleading Internet users and consumers into thinking that the Respondent is, in some way or another, connected to, sponsored by or affiliated with the Complainant and its business, or that the Respondent's activities are approved or endorsed by the Complainant, indicates bad faith in the context of this case (see Swarovski Aktiengesellschaft v. swarovski-coupon.net swarovski-coupon.net swarovski-coupon.net, WIPO Case No. D2013-1529, and also Swarovski Aktiengesellschaft v. bingbing chen, WIPO Case No. D2011-1524).

As concerns the fact that the disputed domain name is not currently in use by the Respondent, the Panel takes the view that passive holding of the disputed domain does not preclude a finding of bad faith (section 3.3 of WIPO Overview 3.0), nor does it detract from the Respondent's bad faith, as it has been established in prior UDRP decisions (e.g., Koç Holding A.S. v. KEEP B.T, WIPO Case No. D2009-0938).

Additional factors retained by the Panel as indicative of bad faith registration and use of the disputed domain name include:

- the Respondent's failure to provide any evidence of bona fide registration and use (see Awesome Kids LLC and/or Awesome Kids L.L.C. v. Selavy Communications, WIPO Case No. D2001-0210);

- also, as noted above, the Panel has concluded that the Respondent had knowledge of the Complainant's trademarks at the time of registration of the disputed domain name. The Respondent provided no explanations for which he registered the disputed domain name;

- The apparent change of the content of the websites after the receipt of the Complaint. The change to the Respondent's website further supports a finding of bad faith. See Maplin Electronics Limited v. Lee Jeongsoon, WIPO Case No. D2006-0011 (change in website after receiving complaint was evidence of bad faith) and V&V Supremo Foods, Inc. v. pxlchk1@gmail.com, WIPO Case No. D2006-1373.

Furthermore, the Respondent availed of a privacy shield service to protect his identity. While the use of a privacy shield is not necessarily objectionable in itself, in the present case it contributes to the accumulation of elements pointing to bad faith registration and use. (See Solvay SA v. Domain Privacy Service Fbo Registrant / Mary Koehler, WIPO Case No. D2016-1357).

In the Panel's view these circumstances represent evidence of registration and use in bad faith of the disputed domain name. The Respondent failed to bring evidence as to the contrary. Consequently, the Panel concludes that the condition of paragraph 4(a)(iii) of the Policy is fulfilled.

7. 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, <minibilen.com> be transferred to the Complainant.

Mihaela Maravela
Sole Panelist
Date: July 11, 2018