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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Bayerische Motoren Werke AG v. Whois privacy services provided by DomainProtect LLC / N.a, Vlad Chernov

Case No. D2013-0452

1. The Parties

The Complainant is Bayerische Motoren Werke AG of Munich, Germany, represented by Finnegan, Henderson, Farabow, Garrett & Dunner, LLP, United States of America (“US”).

The Respondent is Whois privacy services provided by DomainProtect LLC of Saint-Petersburg, Russian Federation / N.a, Vlad Chernov of Moscow, Russian Federation.

2. The Domain Name and Registrar

The disputed domain name <bmw-accessories.com> is registered with MISTERNIC LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 4, 2013. On March 5, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 6, 2013, 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 March 19, 2013 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 March 19, 2013.

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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on March 21, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was April 10, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 11, 2013.

The Center appointed Tobias Zuberbühler as the sole panelist in this matter on April 19, 2013. 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 BMW is one of the world’s best known, largest and most prestigious car and motorcycle manufacturers.

The Complainant owns numerous trademark registrations for BMW and combined marks in more than 140 countries. The trademark BWM dates back to 1917, has been ranked number 15 among the top 100 brands worldwide and valued at more than USD 24 billion by Interbrand in 2011.

The disputed domain name <bmw-accessories.com> was registered by the Respondent on June 2, 2010 and has been linked to “www.openmerchant.com”, a website offering domain names for sale.

5. Parties’ Contentions

A. Complainant

The disputed domain name is confusingly similar to the Complainant’s famous BMW mark because it is comprised of the Complainant’s mark in its entirety with the generic or descriptive term “accessories”, a hyphen, and the non-distinguishing gTLD “.com”. Combining the Complainant’s BMW mark with a generic or descriptive term is insufficient to distinguish the disputed domain name from the Complainant’s mark because the dominant portion is the Complainant’s BMW mark.

The Respondent is not and has not been commonly known by the disputed domain name. In addition, the Respondent is not a licensee of the Complainant, and the Complainant has never authorized the Respondent to register or use the disputed domain name or the BMW mark. Indeed, given the fame of the Complainant’s BMW mark, the Respondent could not be known by the disputed domain name. The Respondent’s registration and use of the disputed domain name for commercial websites offering the domain name for sale does 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 registration constitutes bad faith under paragraph 4(b)(i) of the Policy because the Respondent has registered the disputed domain name primarily to sell, rent, or otherwise transfer it for valuable consideration in excess of the Respondent’s out-of-pocket expenses. In addition, the Respondent’s conduct constitutes bad faith under paragraph 4(b)(iv) of the Policy because it uses the disputed domain name to intentionally attract Internet users for commercial gain, by creating a likelihood of confusion with the Complainant and its BMW mark as to the source, sponsorship, affiliation, and/or endorsement of the Respondent, its activities, and/or the websites associated with the disputed domain name.

B. Respondent

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

6. Discussion and Findings

A. Identical or Confusingly Similar

The disputed domain name is comprised of the Complainant’s famous trademark BMW and the suffix “accessories”. UDRP panels have consistently held that the addition of merely generic or descriptive terms to a trademark in a domain name would be insufficient in itself to avoid a finding of confusing similarity under the first element of the UDRP (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 1.9). This is all the more true here because the Complainant has been selling accessories under the BMW mark for many years.

The Complainant has thus fulfilled paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

There are no indications before the Panel of any rights or legitimate interests of the Respondent in respect of the disputed domain name.

Based on the Complainant’s contentions, the Panel finds that the Complainant, having made a prima facie case which remains unrebutted, has fulfilled the requirements of paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

The Respondent’s registration constitutes bad faith under paragraph 4(b)(i) of the Policy because the disputed domain name has primarily been used to sell, rent, or otherwise transfer it for valuable consideration in excess of the Respondent’s out-of-pocket expenses. In addition, the Respondent’s conduct constitutes bad faith under paragraph 4(b)(iv) of the Policy because the Respondent uses the disputed domain name to intentionally attract Internet users for commercial gain, by creating a likelihood of confusion with the Complainant and its BMW mark as to the source, sponsorship, affiliation, and/or endorsement of the Respondent, its activities, and/or the websites associated with the disputed domain name.

Accordingly, the Complainant has also satisfied paragraph 4(a)(iii) of the Policy.

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 <bmw-accessories.com> be transferred to the Complainant.

Tobias Zuberbühler
Sole Panelist
Date: May 10, 2013

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