WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Bayerische Motoren Werke AG v. Pix UK Limited
Case No. D2004-0125
1. The Parties
The Complainant is Bayerische Motoren Werke AG, of Munich, Germany, represented by BMW AG, Germany.
The Respondent is Pix UK Limited, of Long Bennington, Newark, Notts, United Kingdom of Great Britain and Northern Ireland.
2. The Domain Name and Registrar
The disputed domain name <bmwtradecentre.com> is registered with Tucows Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on February 18, 2004, hardcopy of which was received on February 20, 2004. On February 18, 2004, the Center transmitted by email to Tucows a request for registrar verification in connection with the domain name at issue. On that same date, Tucows transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the "Policy"), 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on February 26, 2004. In accordance with the Rules, paragraph 5(a), the due date for Response was March 17, 2004. The Respondent did not submit a Response. Accordingly, the Center notified the Respondentís default on March 18, 2004.
The Center appointed the undersigned as the sole panelist in this matter on March 24, 2004. The Panel finds that it was properly constituted. The Panel submitted on that same date the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7, and rendered its decision within the time-limit granted.
4. Factual Background
The Complainant carries on business in the manufacture and distribution of motor vehicles. The world-famous trademarks "BMW" and "BMW and design" (hereinafter referred to as the "BMW Trademarks") have been in use since as early as 1917, in Germany (Annex C and Annex D to the Complaint), the registrations of which may be summarized as follows :
Trademark : BMW and design
Country : Germany
Registration No. : 221388
Reg. Date : December 10, 1917
Class : 12
Goods : Land, air, water vehicles, automobiles, bicycles, accessories for automobiles and bicycles, vehicle parts; stationary engines for solid, liquid and gaseous operating supplies and their components and accessory parts.
Valid until: October 31, 2007
Trademark : BMW
Country : Germany
Registration No. : 410579
Reg. Date : November 15, 1929
Class : 7, 12
Goods : Aircraft engines, land, air, water vehicles, motorcycles, internal combustion engines for solid, liquid and gaseous operating supplies and their components.
Valid until : February 28, 2009
In addition to motor vehicles and other goods listed in the registrations above, the BMW Trademarks are currently used in relation to a wide variety of goods, including various accessories and merchandise, such as clothing, watches, sunglasses and leather goods, which promote the image and lifestyle that are associated with BMW automobiles and motorcycles. Services such as the repair and maintenance of motor vehicles, financial leasing of motor vehicles, and participation and sponsorship of sporting events, are also covered by various trademark registrations.
The Complainant is also the registered owner of BMW Trademarks in over 120 countries worldwide. The Complainant has, in particular, the following United Kingdom registrations (Annex E to the Complaint) :
Trademark Country Reg. No. Reg. Date
BMW UK 1020725 November 14, 1973
BMW UK 1310936 May 22, 1987
BMW & design UK 1221801 December 30, 1983
The Complainant first became aware of the Respondentís registration on November 13, 2003, when it reached the web site connected to this domain name showing that the domain name in dispute was being offered for sale. The statements: "You could own this domain name and have it linked to a fully managed web site complete with photos for only £25 per week" and "Purchase of www.bmwradecentre.com is available at £299 + VAT" could be seen. Clicking on the large text stating "PIX UK" also led to web pages advertising the digital photographic services and dealer website management services of the registrant (Annex G to the Complaint).
By letter sent to the Respondent on November 14, 2003, the Complainant advised the Respondent that the unauthorized use of the BMW Trademarks within the domain name <bmwtradecentre.com> violated its trademark rights and requested that the Respondent discontinue any further use or reference to the Complainantís trademarks and that this domain name be transferred to the Complainant within 30 days (Annex H to the Complaint).
On January 15, 2004, the Complainant sent a reminder letter to the Respondent (Annex I to the Complaint).
The Respondent did not reply and the web site for <bmwtradecentre.com> was not changed in any way and continued to show the same offer for sale for the domain and the advertisements for the Respondentís services as of February 5, 2004 (Annex J to the Complaint).
5. Partiesí Contentions
The Complainant submits the following :
(i) The domain name <bmwtradecentre.com> is identical or confusingly similar to the Complainantís BMW Trademarks.
The more dominant and distinctive component of the disputed domain name is "BMW" which is identical to the Complainantís registered and well-known trademark "BMW".
(ii) The Respondent has no rights or legitimate interests in respect of the domain name that is the subject of the Complaint.
The Respondent is not a licensee of the Complainantís marks and has not been authorized in any way to use the same.
The Respondent has made no legitimate non-commercial or fair use of the domain name. The Respondentís web site includes statements offering the domain name for sale for a price of £299; the offer for sale seems directed at businesses or individuals who specialize in "BMW and other prestige marks" and offers the domain name as a sale item which seems only intended for sale in conjunction with an additional contract and fee for web site management. The web site also offers other domain names at a cost of £49 plus VAT. Such an attempt to profit from BMW trade centres by registering this domain name and selling it to such businesses and forcing them to take a management contract with weekly fees is not legitimate. The Respondent itself is not a BMW trade centre as the domain name indicates and its attempt to profit from BMW trade centres (whether these are authorized dealers of the Complainant or not) does not constitute a bona fide interest nor does it constitute legitimate non-commercial or fair use of the domain name.
Furthermore, the offer for sale is not limited for sale to BMW authorized dealers, as is obvious from the fact that the domain is also targeted to sellers of "other prestige marks."
(iii) The Respondent has registered and used the disputed domain name in bad faith.
The asking amount of £299 is greater than the out-of-pocket registration costs for the domain names, which are typically in the range of £20 per domain name in the United Kingdom. The offer for sale to those that specialize in "BMW and other prestige marques" could be understood to be an offer to the Complainant itself, being a specialist in the BMW mark, or to the Complainantís competitors, since the domain is also being offered to specialists of "other prestige marks".
The current web site connected to <bmwtradecentre.com> also features advertising for the services of Pix UK with respect to digital photographic services and dealer website management. It is not a web site for a trade centre for BMW cars, as the domain name in dispute would suggest. Rather, the Respondent merely offers its services to any motor dealers (and not even necessarily to exclusive BMW trade centers) and has used the domain name at issue to attract Internet users looking for information for the Complainantís products to its web site. Those who accidentally come across the web site may even be confused as to whether the Respondentís site is sponsored or affiliated by the Complainant.
The Respondent has also failed to respond to the correspondence from the Complainant, not even simply to explain why the name was registered or to defend its position with respect to the name. In fact, the Respondent continued its activities and simply ignored the Complainantís claims.
The Respondent did not forward a Response to the Complaint. Instead, he raised criticisms about the proper channeling of communications and unnecessary trouble caused to him and his relatives in e-mail exchanged with both the Complainant and the Center.
6. Discussion and Findings
Concerning the proceedings, in particular the notification of the Complaint to the Respondent, the Panel considers, from the reading of the documents available in the file, that the Center has discharged its responsibility, pursuant to Paragraph 2(a) of the Rules, in forwarding the Complaint to the Respondent in the manner prescribed therein.
As regards the merits, it is to be recalled that Paragraph 4(a) of the Policy sets forth three requirements, which have to be met for the Panel to order the transfer of the disputed domain name to the Complainant. Those requirements are that:
(i) Respondentís domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) Respondentís domain name has been registered and is being used in bad faith.
The Complainant must prove in the administrative proceeding that each of the aforesaid three elements is present so as to warrant relief, according to Paragraph 4(a) of the Policy.
The Panel has 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, pursuant to Paragraph 15(a) of said Rules.
In accordance with Paragraph 14(b) of the Rules, if the Respondent does not submit a Response, in the absence of exceptional circumstances, the Panel shall decide the dispute based upon the Complaint.
A. Identical or Confusingly Similar
The Complainant submits that the addition of the generic words "trade centre" does not make the predominant element "BMW" less distinctive, relying on Toyota France and Toyota Jidosha K.K.d/b/a v. Computer-Brain (WIPO Case No. D2002-0002) in which the Administrative Panel ruled that the domain name <toyota-occasions.com> was substantially identical to and confusingly similar to the trademark "Toyota".
Like the "toyota-occasions.com" matter, the same conclusions can be drawn in the instant case. Even if <bmwtradecentre.com> is not identical to the BMW Trademarks, this domain name is confusingly similar to the Complainant's trademarks, because, within the disputed domain name, there is no doubt that the predominant element "BMW" is distinctive and eligible for protection per se and clearly isolable within the combination <bmwtradecentre.com>.
Moreover, the word "centre" is a generic term which, in addition to the name "BMW", does not create a new wording with a meaning of its own whereby "BMW" would no longer be perceived as the trademark of the Complainant's vehicles. The public may certainly perceive the <bmwtradecentre.com> domain name as being owned by or related to the Complainant, thus creating a likely risk of confusion.
The Panel concludes therefore that <bmwtradecentre.com> is confusingly similar to the Complainant's Trademarks.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides a non-exclusive list of circumstances, if found by the Panel to be proved based on its evaluation of all evidence submitted, shall demonstrate rights to or legitimate interests in the domain name in dispute. Those circumstances are described as follows:
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The Respondent, in not responding to the Complaint, has failed to invoke any of the circumstances which could demonstrate, pursuant to Paragraph 4(c) of the Policy, any rights to and/or legitimate interests in the domain name in dispute. This entitles the Panel to draw any such inferences from such default as it considers appropriate pursuant to Paragraph 14(b) of the Rules already cited above.
Absent evidence to the contrary, the Complainant, as underlined in its Complaint, has not granted any license or otherwise permitted the Respondent to use the trademark in question or to apply for any domain name incorporating the said trademark.
Moreover, no evidence is available in the file which would establish that the Respondent has been known by the <bmwtradecentre.com> domain name.
The Respondent has not argued that it intended to sell the domain name only to an authorized BMW trade center; the Panel considers therefore that it does not need to examine further this issue.
The Panel also agrees with the Complainant that the Respondent has neither used the domain name in dispute in connection with a bona fide offering of goods or services, nor made a legitimate noncommercial or fair use of the domain name. To the contray, the Respondent, not being itself a BMW trade center, attempted to profit from BMW trade centers and to force them by registering this domain name and taking a management contract with weekly fees. As a matter of fact, the Respondent could have achieved the same goal safely, had he simply limited himself by proposing to customize and/or manage the related web site to potential clients.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides a non-exclusive list of circumstances that evidence registration and use of a domain name in bad faith. Any one of the following behaviors is sufficient to support a finding of bad faith:
(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 website or other on-line location, by creating a likelihood of confusion with the complainantís 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.
As already mentioned, the Respondent did not file any response to the Complaint, failing thereby to invoke any circumstance which could demonstrate his good faith in the registration or use of the domain name in issue.
Much to the contrary, based on the contentions summarised above, it is the Panel's finding that the Complainant has established, with conclusive evidence (see in particular Annexes G and J to the Complaint), a case that the Respondent has behaved according to the circumstances described under Paragraph 4(b)(i) and (iv) of the Policy and also within the general meaning of Paragraph 4(b) thereof.
Moreover, it is clearly established that the Respondent was undoubtedly aware, at the time of registration of the domain name in dispute, of the Complainant's Trademarks (see Volvo Trademark Holding AB v. Cosmos1, WIPO Case No. D2003-0648 and cases cited therein) which are well known throughout the world (see BMW AG v. Loophole, WIPO Case No. D2000-1156), thus supporting further evidence of bad faith.
For all the foregoing reasons, in accordance with Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <bmwtradecentre.com> be transferred to the Complainant.
Dated: April 7, 2004