WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
BayerischeMotorenWerkeAktiengesellschaft v. Gregory James Talifero
Case No. DAU2011-0009
1. The Parties
The Complainant is BayerischeMotorenWerkeAktiengesellschaft of Munich, Germany, represented by Davies Collison Cave, of Melbourne, Australia.
The Respondent is Gregory James Talifero of Meadows, South Australia, Australia.
2. The Domain Names and Registrar
The disputed domain names <buybmw.com.au> and <sellingbmw.com.au>(the “Disputed Domain Names”) are registered with Aust Domains International Pty Ltd dba Aust Domains, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 16, 2011. On that day the Center transmitted by email to Aust Domains International Pty Ltd dba Aust Domains, Inc.
a request for registrar verification in connection with the Disputed Domain Names. On March 25, 2011, AustDomainsInternational Pty Ltd dba Aust Domains, Inc. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant of both the Disputed Domain Names and providing the contact details.
The Center verified that the Complaint satisfied the formal requirements of the .au Dispute Resolution Policy (the “Policy” or “auDRP”), the Rules for .au Dispute Resolution Policy (the “auDRP Rules”), and the WIPO Supplemental Rules for .au Domain Name Dispute Resolution Policy (the “auDRP Supplemental Rules”).
In accordance with the auDRP Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on March 25, 2011. In accordance with the auDRP Rules, paragraph 5(a), the due date for Response was April 14, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 15, 2011.
The Center appointed Philip N. Argyas the sole panelist in this matter on April 20, 2011. 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.
All other procedural requirements appear to have been satisfied.
4. Factual Background
The following facts, taken from the Complaint and its annexures, remain uncontested:
The Complainant is a very well-known corporation incorporated in Germany. It is one of the largest car manufacturers in the world, operates in over 140 countries throughout Europe, America, Africa, Asia and Oceania, and has a global workforce of almost 100,000 people. It is the registered proprietor of numerous word and device marks for BMW throughout the world, dating back to 1917 in Germany. Its first trademark registration in Australia that incorporated BMW was in May 1950 and it presently holds more than 20 trademark registrations in Australia alone.
The Complainant sells luxury/premium motor vehicles and motorcycles throughout the world and also provides service and support facilities. As part of its promotion of the BMW brand the Complainant is extensively involved in promotional and sponsorship activities including event sponsorships and it is also the holder of numerous awards for its marques, including many in Australia.
The Complainant and its licensees are the only entities authorized to use BMW as a trademark in connection with the provision of motor vehicles and motorcycles, motor vehicle and motorcycle spare parts and accessories and associated retail, repair, finance and leasing services. The Respondent is not a licensee of the Complainant’s marks.
During 2009 and 2010 the Complainant sold nearly three million motor vehicles and motorcycles and had global revenues exceeding Euro 100 billion.
The Complainant registered <bmw.com> in October 1996 and <bmw.com.au>in April 1998. The Disputed Domain Names were registered on October 8, 2010.
On or around October 19, 2010 the Respondent sent a letter addressed to "BMW Dealer Principal", to Brisbane BMW, one of the Complainant's authorised motor vehicle dealerships stating that he was looking to sell <buybmw.com.au> to "a dealer who can utilise the marketing potential of such a name". The letter sought expressions of interest by 4:00pm on November 8,2010, and stated that that domain name "has never traded before and has no history attached to it".
A formal letter of demand was sent to the Respondent by the Complainant's lawyers on November 17, 2010, putting the Respondent on notice of the Complainant's BMW trademarks and alleging that the Respondent had also engaged in misleading and deceptive conduct and had made false and misleading representations, and objecting to the Respondent's use of <buybmw.com.au>. The letter of demand sought undertakings from the Respondent that, among other things, he would cancel the registration of that domain name.
On November 22,2010 the Respondent sent an email to the Complainant’s lawyers refusing to give the undertakings sought and asserting, among other things:
- that the Respondent had been a "BMW fan for over 20 years";
- that the Respondent had registered <buybmw.com.au> for the purposes of selling his "collection" but that he had subsequently sold his collection without the need to develop a website;
- that the Respondent had not represented himself as a BMW dealer and had no intention of doing so;
- that the Respondent is a builder by trade;
- that the Respondent had never acted in bad faith towards the Complainant;
- that by offering to sell <buybmw.com.au>to the Complainant's Australian dealers, the Respondent had shown goodwill;
- that BMW enthusiasts had shown interest in purchasing <buybmw.com.au> from the Respondent; and
- that the Respondent had almost concluded a sale for <buybmw.com.au> for AUD3,325.
In addition, the Respondent offered to sell <buybmw.com.au> to the Complainant for AUD3,325.
On November 29,2010, a further letter was sent to the Respondent by the Complainant's lawyers denying the Respondent's assertions that he had been involved in no wrongdoing, repeating the Complainant's objections to the Respondent's use of <buybmw.com.au>, and again seeking undertakings that, among other things, the Respondent would cancel the registration of <buybmw.com.au>.
The Respondent has not responded to the Complainant's lawyers' letter dated November 29, 2010.
The Complainant’s lawyers subsequently became aware that the Respondent was also the registrant of <sellingbmw.com.au>. A search they conducted on February 9,2011 showed that both Disputed Domain Names remain parked on the Crazy Domainswebsite at “www.crazydomains.com.au”.
In addition to the Disputed Domain Names, the Respondent is also the registrant of the following domain names:
5. Parties’ Contentions
The Disputed Domain Names wholly incorporate the Complainant's BMW trademark and are confusingly similar to a trademark in which the Complainant has rights. Ignoring, as one does, the “.au” ccTLD and the “.com” Second-Level Domain, the addition of “buy” and “selling” to “bmw” do not remove, and more likely only compound, the confusing similarity. There is nothing in these words which alters the fundamental character of the Disputed Domain Names as referring to some aspect of the Complainant and its trademark.
The Respondent has no right or legitimate interest in respect of the Disputed Domain Names and has no authority from the Complainant to use its marks in the Disputed Domain Names. The Respondent is not commonly known by either of the Disputed Domain Names, does not trade under either of the Disputed Domain Names or any related name and is not an authorised dealer of the Complainant's motor vehicles or other products or services relating to the Complainant or the Complainant's products.
The Respondent's assertion that <buybmw.com.au>was registered for the bona fide purpose of selling the Respondent's collection of BMW-branded merchandise is inconsistent with the Respondent's conduct in offering it for sale to one of the Complainant's authorised dealers 11 days after it was registered.
The Respondent's actual knowledge of the Complainant's rights at the time of registration of the Disputed Domain Names clearly indicates that the domain names have been appropriated in bad faith. Given such bad faith use and adoption, the Respondent cannot have any legitimate interest in the Disputed Domain Names.
The Respondent states that he has been a BMW enthusiast for at least 20 years prior to the registration of the Disputed Domain Names. His assertion that <buybmw.com.au>was registered for the purpose of selling the Respondent's collection of BMW-branded merchandise is inconsistent with the Respondent's conduct in offering that domain name for sale to the Complainant's authorised dealers, only 11 days after it was registered.
The Respondent admitted that he considered that <buybmw.com.au> would be of commercial value to the Complainant or its authorised dealers. The Respondent has registered and used the Disputed Domain Names well knowing of the Complainant's rights and primarily for the purpose of selling them to the Complainant or the Complainant's authorised dealers.
The Respondent confirmed his intention to sell <buybmw.com.au> by initially offering to sell it to the one of the Complainant's authorised dealers, initially within 11 days of registering it, and then to the Complainant directly (following receipt of the Complainant's first letter of demand), for an amount in excess of the Respondent's out-of-pocket costs directly related to the Buy BMW Domain Name.
The Respondent has not complied with the Complainant's request in its formal letters of demand to cancel the <buybmw.com.au>, nor has he cancelled <sellingbmw.com.au>subsequent to receiving the formal letters of demand.
The Respondent is also the registrant of various other domain names, including domain names which are relevant to the motor vehicle industry, including <sellingbmw.com>, <buyholden.com>, <sellingholden.com> and <insuremyute.com>.
No Response had been filed by the time the Panel delivered its decision on April 25, 2011. However, the Panel has had regard to the pre-proceedings correspondence referred to in section 4 above which was in evidence as part of the Complaint.
6. Discussion and Findings
Paragraph 15(a) of the auDRP Rules requires the Panel to “decide a complaint on the basis of the statements and documents submitted in accordance with the auDRP, the auDRP Rules, and any rules and principles of law that it deems applicable".
Paragraph 4(a) of the auDRP requires a Complainant to prove that:
(i) the Disputed Domain Names are identical or confusingly similar to a name, 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 Names; and
(iii) the Disputed Domain Names have been registered or subsequently used in bad faith.
The onus of proof is on the Complainant in relation to all three of these elements.
A. Identical or confusingly similar to a trademark or name in which the Complainant has rights
Unlike the UDRP, which requires a complainant to establish rights in trademarks, the auDRP offers an additional ground to a complainant that can establish rights in a name. In this case the Panel is entirely satisfied that the Complainant has very extensive rights throughout the world, including in Australia, in respect of the BMW brand of motor vehicles, motor cycles, and associated services and accessories.
The Panel is well satisfied that the addition of the verbs “buy” and “selling” to the Complainant’s famous mark are hopelessly inadequate to prevent the Disputed Domain Names from being confusingly similar to the Complainant’s registered trademarks for BMW as well as the abbreviated name by which it is corporately known. The Complainant has easily made out the first limb of the auDRP.
B. Rights or Legitimate Interests in respect of the Disputed Domain Names
It would not have taken a great deal of effort for another respondent in different circumstances to persuade the Panel that there were plausibly legitimate interests in using “buy” and “selling” in domain names that pointed to the legitimate buying or selling of BMW products. However, the Respondent’s failure to file any Response, and the odd assertion that his intention to sell a collection of vehicles entitled him to register <buybmw.com.au>, leaves the Panel with little doubt that he has no rights or legitimate interests in respect of that domain name and that he cannot avail of paragraph 4(c) of the auDRP. In relation to <sellingbmw.com.au>, the Respondent has not even bothered to assert in correspondence any legitimacy of right or interest and the Panel formally finds none.
The second limb of the auDRP is made out by the Complainant.
C. Registered or subsequently used in bad faith
Paragraph 4(a)(iii) of the auDRP requires the Complainant to demonstrate that each Disputed Domain Name was either registered or subsequently used in bad faith. The Panel is of the view that the Disputed Domain Names were both registered in bad faith by the Respondent. Their parking on the Crazy Domains website can also be considered a bad faith use, especially in light of the Respondent’s offer to sell the first of the Disputed Domain Names to one of the Complainant’s dealers. A finding of either of those forms of conduct would have been sufficient for the Complainant to succeed on this ground of the auDRP.
For the reasons given in section 6 B. above, the Respondent has no rights or legitimate interests in respect of the Disputed Domain Names. Since they both incorporate the Complainant’s famous trademarks, and the evidence demonstrates that the Respondent was well aware of the Complainant’s products (claiming to have been a BMW fan for over 20 years), the only conclusion the Panel can reach is that the Respondent registered each of the Disputed Domain Names with the intention of selling it to the Complainant or to one of the Complainant’s trademark licensees for an amount in excess of his registration costs, and the Complainant thus also takes the benefit of paragraph 4(b)(i) of the auDRP. This conclusion is supported by the Respondent’s registration of other domain names that do not appear to have any legitimate connection to his trade as a builder, especially those relating to a brand of Australian motor vehicle such as “Holden”, and of course to his registration of <sellingbmw.com> (which is not one of the Disputed Domain Names in this proceeding). Whilst dubious, the Respondent ‘s building business plausibly grounds an interest in relation to the hire of skip bins and the Panel therefore rejects the Complainant’s submissions in relation to those registrations by the Respondent.
The Complainant nevertheless has easily made out paragraph 4(a)(iii) of the auDRP to the Panel’s satisfaction.
For all the foregoing reasons, in accordance with paragraphs 4(i) of the auDRP and 15 of the auDRP Rules, the Panel orders that the Disputed Domain Names <buybmw.com.au> and <sellingbmw.com.au>be transferred to the Complainant.
As registered proprietor of the relevant Australian trademarks for BMW, the Panel formally determines for the purposes of paragraph 4(i) of the auDRP that the Complainant is eligible to hold the Disputed Domain Names in the “.com.au” domain.
Philip N. Argy
Dated: April 25, 2011