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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Bayerische Motoren Werke AG v. Vatandoust Institute

Case No. DIR2016-0001

1. The Parties

The Complainant is Bayerische Motoren Werke AG of Munich, Germany, internally represented.

The Respondent is Vatandoust Institute of Tehran, Islamic Republic of Iran.

2. The Domain Name and Registrar

The disputed domain name <bmwservice.ir> is registered with IRNIC.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 28, 2016. On January 29, 2016, the Center transmitted by email to IRNIC a request for registrar verification in connection with the disputed domain name. On January 30, 2016, IRNIC transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. Hard copies of the Complaint were received by the Center on February 4, 2016.

The Center verified that the Complaint satisfied the formal requirements of the .ir Domain Name Dispute Resolution Policy (the “Policy” or “irDRP”), the Rules for .ir Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for .ir Domain Name Dispute Resolution Policy (the “Supplemental Rules”).

In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on February 5, 2016. In accordance with the Rules, paragraph 5(a), the due date for Response was February 25, 2016. No response was received. Accordingly, the Center notified the Respondent’s default on February 26, 2016.

The Center appointed Steven A. Maier as the sole panelist in this matter on March 1, 2016. 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 corporation organized under the laws of Germany. It is a manufacturer of automobiles and motorcycles.

The Complainant is the owner of trademark registrations in numerous territories for the word mark BMW. Examples of its registrations for this mark include the following:

- Germany trademark number 410579 for BMW, registered on November 15, 1929 in International Classes 07 and 12 for goods and services including cars and motorcycles

- United States of America (“United States”) trademark number 0611710 for BMW, registered on September 6, 1955 in International Class 12 for goods and services including automobiles and motor cycles

- Islamic Republic of Iran trademark number 26525 for BMW, registered on April 28, 1965 in International Class 12 for goods and services including automobiles and motor cycles

The Complainant is also the owner of trademark registrations in numerous territories for a figurative mark comprising a circular logo consisting of blue and white quarter segments surrounded by a black border and the letters “BMW” (“the BMW Logo”). Examples of its registrations for this mark include the following:

- Germany trademark number 221338 for the BMW Logo, registered on December 10, 1917 in International Classes 07, 08, 09, 11 and 12 for goods and services including automobiles

- United States trademark number 0613465 for a version of the BMW Logo, registered on October 4, 1955 in International Class 12 for goods and services including automobiles and motor cycles

- Islamic Republic of Iran trademark number 26526 for the BMW Logo registered on April 28, 1965 in International Class 12 for goods and services including automobiles and motor cycles

The disputed domain name was registered on September 26, 2007.

According to evidence submitted by the Complainant by way of screen prints, on January 26, 2016 the disputed domain name resolved to a website at “www.bmwservice.ir” which was headed “BMW Service” and which included the BMW Logo and images of the Complainant’s automobile model range.

5. Parties’ Contentions

A. Complainant

The Complainant states that it is one of the world’s most successful manufacturers of automobiles and motorcycles. It submits evidence that in 2014 the mark BMW was ranked 11th by Interbrand’s “Best Global Brands” and valued at USD 34.2 billion. It states than in 2014 it manufactured over 1.8 million automobiles and that in 2013 it had global sales and revenues in excess of EUR 80 billion. It has approximately 3,250 authorized dealers in more than 140 countries worldwide and spends tens of millions of US dollars annually in advertising and promoting the BMW brand.

The Complainant states that it operates its own corporate websites linked to the domain names <bmw.com> and <bmwgroup.com> and that it also operates country-specific and region-specific websites linked e.g. to <bmwusa.com> and <bmw.ir>. It has for many years sold BMW accessories online at <bmwshop.com>. The Complainant also submits that many of its dealers worldwide are authorized to use the BMW mark, together with a geographical term identifying the dealer’s location, as a domain name. Thus, members of the public who encounter the BMW mark linked to a geographical term will believe that the corresponding website is owned or operated by the Complainant or by one of its authorized dealers.

The Complainant submits that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights. The Complainant states that the disputed domain name comprises the term BMW in its entirety combined with the descriptive term “service”. The Complainant submits that the addition of this descriptive term is not effective to distinguish the disputed domain name from the Complainant’s mark and, furthermore, that it adds to the likelihood of confusion in the light of the Complainant’s own presence and that of its authorized dealers online.

The Complainant submits that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant states that it has never authorized the Respondent to use its BMW mark for the purposes of a domain name and that the Respondent has not been commonly known by the disputed domain name. It also submits that the Respondent is not making any legitimate noncommercial or fair use of the disputed domain name. The Complainant submits that the Respondent is using the disputed domain name for the purpose of a commercial website that passes itself off as a website operated by the Complainant or one of its authorized dealers. The Complainant states that the Respondent’s website displays the BMW Logo, mimics the style of the Complainant’s official websites (examples of which are provided) and includes copies of the Complainant’s own photographs, in breach of copyright, and pictures of the Complainant’s cars and spare parts all bearing the BMW Logo. The Complainant submits that by both passing itself off as the Complainant and engaging in activities competitive with those of the Complainant the Respondent has demonstrated a lack of any rights or legitimate interests in respect of the disputed domain name.

The Complainant submits that the disputed domain name has been registered or is being used in bad faith. The Complainant repeats that the Respondent is using the disputed domain name for the purpose of a website that uses the BMW Logo, mimics the Complainant’s style and formatting, offers the Complainant’s products and passes itself off as a website operated or authorized by the Complainant. The Complainant submits that it is inconceivable in these circumstances that the Respondent was unaware of the Complainant’s mark at the time of registration of the disputed domain name. It further submits that the Respondent has used the disputed domain name intentionally to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation and/or endorsement of that website. The Complainant also asserts that the Respondent is using the disputed domain name unfairly to disrupt the Complainant’s business by engaging in activities competitive with those of the Complainant.

The Complainant submits evidence that it sent the Respondent a “cease and desist” letter relating to the disputed domain name on September 30, 2015 and a follow-up communication on January 7, 2016. It states that the Respondent did not reply to either communication.

The Complainant requests a transfer of the disputed domain name.

B. Respondent

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

6. Discussion and Findings

In order to succeed in the Complaint, the Complainant is required to show that all three of the elements set out under paragraph 4(a) of the Policy are present. Those elements are:

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

(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 or is being used in bad faith.

Even in a case such as this where the Respondent has not responded to the Complaint, it is still necessary for the Complainant to establish that all of the three above elements are present.

A. Identical or Confusingly Similar

The Complainant has established to the satisfaction of the Panel that it is the owner of registered trademark rights for the mark BMW in numerous territories around the world including the Islamic Republic of Iran. The Complainant also accepts the Complainant’s evidence that its BMW mark is widely known by the public and associated with the Complainant’s automobile and motorcycle products. Ignoring the country code Top-Level Domain (“ccTLD”) “.ir”, which is typically to be disregarded for the purpose of assessing confusing similarity, the disputed domain name consists of the Complainant’s mark BMW together with the term “service”. The Panel finds that this descriptive term does nothing to distinguish the disputed domain name from the Complainant’s mark, and accepts the Complainant’s submission that it is likely in fact to add to the likelihood of confusion given the nature of the Complainant’s business and online presence.

In the circumstances, the Panel finds that the disputed domain name is confusingly similar to a trademark or service mark in which the Complainant has rights.

B. Rights or Legitimate Interests

The Panel accepts the Complainant’s evidence (which the Respondent has not disputed) that the Complainant has never authorized the Respondent to use its mark BMW for the purpose of a domain name and that the Respondent has not commonly been known by the disputed domain name. The Panel also accepts the Complainant’s evidence that the Respondent has used the disputed domain name for the purposes of a commercial website and finds that this does not constitute legitimate noncommercial or fair use of the disputed domain name. These matters give rise to a prima facie case, for the Respondent to answer, that it has no rights or legitimate interests in respect of the disputed domain name.

Because the Respondent has not participated in this proceeding, it has advanced no submissions as to any rights or legitimate interests which it may claim to have in respect of the disputed domain name. At first sight, the Respondent’s website appears to offer services connected with the Complainant’s trademarked goods. Under certain conditions, a respondent who sells trademarked goods under a domain name reflecting that trademark may have rights or legitimate interests in the domain name, even where such sales may be unauthorized by the trademark owner. One such condition, however, is that the respondent makes clear its relationship (or lack thereof) with the trademark owner and in the view of the Panel, that condition has not been met in this case. Based on the Panel’s review of the evidence submitted by the Complainant, the Panel finds that the Respondent’s website uses the BMW Logo and other images that are the property of the Complainant and has been designed to resemble an official or authorized website of the Complainant. The Panel has seen no material on the website which sufficiently identifies the Respondent as an independent operator and the Panel concludes, on the contrary, that the Respondent’s website passes itself off as being operated or authorized by the Complainant. This does not amount to any bona fide offering of goods or services for the purposes of the Policy, and the Panel finds in the circumstances that that the Respondent has no rights or legitimate interests in respect of the disputed domain name.

C. Registered or Used in Bad Faith

The Panel repeats its findings concerning the Respondent’s use of the disputed domain name and, in particular, its conclusion that the Respondent has used the disputed domain name for the purpose of a commercial website that passes itself off as being operated or authorized by the Complainant. In these circumstances, the Panel finds that by using the disputed domain name the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of its website or of a product or service on that website (paragraph 4(b)(iv) of the Policy).

The Panel also notes again that the Respondent has failed to participate in this proceeding and has therefore declined the opportunity to reply to the Complainant’s submissions. The Panel also accepts that the Complainant sent the Respondent a “cease and desist” letter and a reminder and that the Respondent did not respond to either of these communications.

In the circumstances, the Panel finds that the disputed domain name is being used in bad faith. As there is no conjunctive requirement under the Policy, it is unnecessary to consider the specific circumstances of the registration of the disputed domain name.

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 <bmwservice.ir> be transferred to the Complainant.

Steven A. Maier
Sole Panelist
Date: March 4, 2016

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