The Complainant is Bayerische Motoren Werke AG, Germany, represented by Kelly IP, LLP, United States of America (“United States”).
The Respondent is BMW Decals, Turkey.
The disputed domain name <bmwdecals.com> is registered with OnlineNic, Inc. d/b/a China-Channel.com (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 23, 2020. On June 25, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 25, 2020, 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 July 1, 2020, 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 July 3, 2020.
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 July 7, 2020. In accordance with the Rules, paragraph 5, the due date for Response was July 27, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 28, 2020.
The Center appointed Reyes Campello Estebaranz as the sole panelist in this matter on August 5, 2020. 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.
The Complainant is the world famous German manufacturer of motor vehicles, established over 100 years ago. The Complainant’s headquarters are located in Germany, but its products and components are manufactured at 31 sites in 15 countries on four continents, having more than 133,000 employees worldwide. Since 1917, it has sold many millions of motor vehicles and related products and services under the BMW trademark. The Complainant’s sales in 2019 were in excess of EUR 104 billion.
The Complainant owns an extensive portfolio of trademark registrations for the mark BMW, its well-known circular logo, other BMW family trademarks and M marks (collectively the “BMW mark”), including German Trademark No. DE221388 for BMW and Device, registered on December 10, 1917, in classes 7, 8, 9, 11, and 12; German Trademark No. DE410579 for BMW, figurative, registered on November 15, 1929, in classes 7 and 12; and United States Trademark No. 613465 for BMW and Device, registered October 4, 1955, in class 12.
The Complainant has approximately 3,500 authorized BMW dealers around the world. These authorized BMW dealers are permitted to use trade names and domain names comprised in part of the BMW mark for their businesses and numerous such dealers use and have used such names over a long period.
The Complainant further operates a network of numerous websites, owning many domain names incorporating the BMW mark or comprised of the BMW mark and descriptive terms, including the domain names <bmw.com> (registered in 1996), <bmwgroup.com> (registered in 1998), <bmwusa.com> (registered in 1995) and <shopbmwusa.com> (registered in 2011), which are linked to its corporate websites advertising, promoting and offering for sale the Complainant’s products and services.
The disputed domain name was registered on January 5, 2013, and it is currently inactive resolving to a blank page. According to the evidence provided by the Complainant, the disputed domain name has been linked to a commercial website, in English language, selling allegedly counterfeit products including emblems, decals, stripes, wheel caps, keychains, and other accessories bearing the BMW mark. This website prominently displayed the Complainant’s BMW mark it is heading together with a photograph of the front side of a BMW car. The prices included in the site were in USD, offering worldwide free shipping.
Key contentions of the Complaint may be summarized as follows:
The disputed domain name includes the Complainant’s trademark in its entirety combined with the generic and/or descriptive term “decals”, which heightens the confusing similarity of the disputed domain name to the BMW mark.
The Complainant has not authorized or otherwise allowed the Respondent to use its trademark in the disputed domain name. The Respondent is not commonly known by the disputed domain name and, given the fame of the Complainant’s BMW mark, could not be known by the disputed domain name, having no rights or legitimate interests thereto. Additionally, there can be no legitimate interest in the sale of counterfeits, and the Respondent has tried to pass off these counterfeit products as genuine Complainant’s goods or affiliated with or endorsed by the Complainant.
Due to the reputation of the BMW mark, the Respondent must have been aware of this trademark when registering the disputed domain name. Further, the Respondent’s website is offering counterfeit products bearing the Complainant’s trademark. The Respondent has intentionally misappropriated the Complainant’s trademark as a way of directing Internet users to its website for commercial gain, disrupting the Complainant’s business, competing with the Complainant for Internet traffic, and/or interfering with the Complainant’s ability to control use of its reputed trademark. Furthermore, the Respondent has engaged in a bad faith pattern of conduct in registering various domain names incorporating the Complainant’s well-known trademark, namely the disputed domain name and another domain name (<bmwdecal.com>, which was initially included in this proceeding and has been deleted).
The Complainant has cited previous decisions under the Policy that it considers supportive of its position and requests the transfer of the disputed domain name.
The Respondent did not reply to the Complainant’s contentions.
The Complainant has made the relevant assertions as required by the Policy and the dispute is properly within the scope of the Policy. The Panel has authority to decide the dispute examining the three elements in paragraph 4(a) of the Policy, taking into consideration all of the relevant evidence, annexed material and allegations, and performing some limited independent research under the general powers of the Panel articulated, inter alia, in paragraph 10 of the Rules.
In cases where a domain name incorporates the entirety of a trademark, or where at least a dominant feature of the relevant mark is recognizable in the domain name, the domain name will normally be considered identical or confusingly similar to that mark for purposes of the Policy. In such cases, the addition of terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element. It is further to be noted that the applicable generic Top-Level Domain (“gTLD”) in a domain name is considered a standard technical registration requirement and, as such, is generally disregarded under the first element confusing similarity test. See sections 1.7, 1.8, and 1.11.1, of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).
The Complainant indisputably has rights in the registered trademark BMW, both by virtue of its numerous trademark registrations around the world and as a result of the goodwill and reputation acquired through its widespread use of the BMW mark over many years (since 1917). The disputed domain name incorporates this mark in its entirety followed by the term “decals”, which does not avoid confusing similarity with the trademark. The Complainant’s trademark BMW is recognizable in the disputed domain name, and the gTLD “.com” is a technical requirement, generally disregarded for the purpose of the analysis of the confusing similarity. Accordingly, this Panel finds that the disputed domain name is confusingly similar to the Complainant’s mark, and the first element of the Policy under paragraph 4(a)(i) has been satisfied.
Although the Complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, 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 primarily if not exclusively within the respondent’s knowledge. Thus, the consensus view is that paragraph 4(c) of the Policy shifts to the respondent the burden of production to come forward with relevant evidence of rights or legitimate interests in the disputed domain name, once the complainant has made a prima facie case that the respondent lacks rights or legitimate interests.
The Complainant’s above-noted assertions and evidence in this case effectively shift the burden to the Respondent of producing evidence of rights or legitimate interests in the disputed domain name, providing the circumstances of paragraph 4(c) of the Policy, without limitation, that may establish rights or legitimate interests in the disputed domain name in order to rebut the Complainant’s prima facie case. However, the Respondent has not replied to the Complainant’s contentions, not providing any explanation and evidence of rights or legitimate interests in the disputed domain name.
A core factor in assessing fair use of a domain name is that it does not falsely suggest affiliation with the Complainant’s trademark. See section 2.5, WIPO Overview 3.0. The disputed domain name incorporates the Complainant’s trademark in its entirety adding the term “decals”, which refers to the Complainant’s products and accessories for its products. Therefore, the Panel considers that the addition of the term “decals” reinforces the risk of implied affiliation and confusion. Furthermore, the circumstance that many authorized BMW dealers are permitted to use trade names and domain names comprised in part of the BMW mark for their business increases the risk of confusion and affiliation of the disputed domain name and the Complainant’s trademark.
The Panel further considers that the Complainant has made out a strong prima facie case that the Respondent could not have rights or legitimate interests in the disputed domain name, not being one of its authorized dealers or otherwise authorized by the Complainant to use its BMW mark, and it appears that the disputed domain name has been used to sell counterfeits. According to the Complainant allegations and evidence, the disputed domain name is being used for a commercial website apparently selling counterfeit copies of the Complainant’s products and accessories at low prices.
The Panel, in use of the general powers articulated in the Policy, has corroborated, through the Internet archive WayBack Machine, that the disputed domain name has been used (at least between March 2014 and December 2019) for a commercial website selling BMW products and accessories. The Panel has further compared the prices in of the products and accessories included in the Respondent’s website, with the ones included in the Complainant’s official online store for United States consumers (“www.shopbmwusa.com”, which offers a wide range of BMW accessories with prices in USD), being the official prices more than double than the ones included in the site that was linked to the disputed domain name. Therefore, the Panel considers that there are strong evidences that the products offered in the Respondent’s website were not original, and, as many UDRP decisions have previously found, there can be no rights or legitimate interests in selling counterfeit products. See section 2.13, WIPO Overview 3.0.
The Panel further notes that the Respondent used the name “BMW Decals” (corresponding to the disputed domain name) in its registration of the disputed domain name, but concealed under a privacy registration service, and has not produced any evidence of that name being its real company name or being commonly known by it. The Respondent has chosen not to respond to the Complaint, not providing any explanation connected to any of the circumstances included in paragraph 4(c) of the Policy or any other circumstance that may be considered as a right or legitimate interest in the disputed domain name.
It is further remarkable the Respondent’s taking down the website linked to the disputed domain name.
All the above-mentioned circumstances lead the Panel to conclude that, nothing in the case file gives reason to believe that the Respondent has or has had any rights or legitimate interests in respect of the disputed domain name. Therefore, the second element of the Policy under paragraph 4(a)(ii) has been established.
The Policy, paragraph 4(a)(iii), requires that the Complainant establish that the disputed domain name has been registered and is being used in bad faith.
The applicable standard of proof in UDRP cases is the “balance of probabilities” or “preponderance of the evidence”, being the Panel prepared to draw certain inferences in light of the particular facts and circumstances of the case. See section 4.2, WIPO Overview 3.0.
The Panel notes the centennial existence and use of the MBW mark, as well as its extensive presence over the Internet, its use internationally and its worldwide well-known character, which has been recognized by previous decisions under the Policy. See Bayerische Motoren Werke AG v. Lucjan Niemiec, WIPO Case No. D2003-0240; Bayerische Motoren Werke AG v. Domains by Proxy, LLC / Alfred Kolinz, bmwupdate, WIPO Case No. D2017-2450; and Bayerische Motoren Werke AG v. Gerry Scarantine, WIPO Case No. D2018-0233.
The Panel considers that all cumulative circumstances of this case point to bad faith registration and use of the disputed domain name: (i) the disputed domain name incorporates the Complainant’s trademark BMW in its entirety, adding a term (“decals”) referred to the Complainant’s products and accessories, which enhances the intrinsic likelihood of confusion and affiliation; (ii) the Complainant’s trademark is well-known, and the Complainant operates internationally, including in Turkey (where the Respondent is located according to the Registrar verification); (iii) the disputed domain name has been used for a commercial website selling counterfeit copies of the Complainant’s products and accessories at low prices; (iv) the Respondent used a privacy registration service; (iv) the Respondent has not offered any explanation of any rights or legitimate interests in the disputed domain name and has not come forward to deny the Complainant’s assertions of bad faith, choosing not to reply to the Complaint; (v) the Respondent’s reaction to this proceeding has apparently been taking down the website linked to the disputed domain name; and (vi) the Respondent has been apparently engaged in a bad faith pattern of conduct in registering various domain names incorporating the BMW mark (namely the disputed domain name and its singular version <bmwdecal.com>, which WhoIs records had identical contact details and has been deleted). See section 3.2.1, WIPO Overview 3.0.
It is further to be noted that non-use of the disputed domain name does not prevent a finding of bad faith under the doctrine of passive holding. See section 3.3, WIPO Overview 3.0.
In light of the above, taking into consideration all cumulative circumstances of this case, on the balance of probabilities the Panel considers that the disputed domain name was registered and is being used targeting the BMW mark in bad faith, with the intention of obtaining a free ride on the established reputation of the Complainant by intentionally mislead and attract Internet users to a commercial website selling counterfeit products and accessories of the BMW mark.
Accordingly, the Panel concludes that the Complainant has met its burden of establishing that the disputed domain name has been registered and is being used in bad faith.
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 <bmwdecals.com> be transferred to the Complainant.
Reyes Campello Estebaranz
Date: August 12, 2020