WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Bayerische Motoren Werke AG v. Victor Frankl
Case No. D2013-0701
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.
The Respondent is Victor Frankl of Roma, Italy.
2. The Domain Name and Registrar
The disputed domain name <bmwofthehamptons.com> (the “Disputed Domain Name”) is registered with GoDaddy.com, LLC. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 16, 2013. On April 17, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On April 28, 2013, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact.
The Center verified that the 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 April 25, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was May 15, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 16, 2013.
The Center appointed Jacques de Werra as the sole panelist in this matter on May 28, 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 is a well known manufacturer and distributor of motor vehicles.
The Complainant is the owner of various trademarks BMW (the “Trademark”), including the German trademark No. 221388 registered on December 10, 1917; No. 410579 registered on November 15, 1929 and the United States trademark No. 0611710, registered on September 6, 1955. In 2012, the brand associated with the Trademark was ranked 12th of the “Top 100 Brands” and was valued at more than USD 29 billion.
The Complainant operates various websites including the website associated with the domain name <bmw.com>.
The Complainant has set up a network of authorized dealers which operate under trade names which are frequently comprised of the Trademark combined with a geographic term (such as the city or town) identifying the dealer’s location.
The Complainant has an authorized dealer in Southampton, New York (United States), a town in the geographic region known as “The Hamptons.” The trade name of this dealer was formerly “BMW of The Hamptons”, and the dealer used that trade name for many years. This dealer also used the corresponding domain name <bmwofthehaptons.com> (which is the Disputed Domain Name) from 2004 to 2012, at which time it was inadvertently deleted. The dealer changed its name in 2010 to “BMW of Southampton”, but continued to use the Disputed Domain Name for its website as well as the new corresponding domain name <bmwofsouthampton.com>.
The Disputed Domain Name was registered by the Respondent in October 2012. The Disputed Domain Name automatically redirects to the web site “http://sextoysarena.co.uk” which contains adult content.
On February 7, 2013, the Complainant sent a cease-and-desist letter to the Respondent to which the Respondent has not answered.
5. Parties’ Contentions
The Complainant claims that:
The Domain Name is confusingly similar to the Complainant’s famous and registered Trademark.
The Respondent does not have any rights or a legitimate interest in the Disputed Domain Name because it trades on the goodwill of the Complainant’s Trademark, and the Respondent’s use of the Trademark is unauthorized. The Respondent is not and has never been a licensee of the Complainant. The Respondent is not and has never been otherwise authorized by the Complainant to use the Trademark.
The Respondent’s registration and use of the Domain Name constitute bad faith under the Policy.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy provides that the complainant must prove each of the following three elements in order to succeed in a UDRP proceeding. Thus, for the complainant to succeed, it must prove all of the three elements under the Policy:
(i) the Respondent's Disputed Domain Name is identical or confusingly similar to a 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 Name; and
(iii) the Respondent's Disputed Domain Name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Panel is satisfied that the Complainant has rights to the Trademark in various countries, including in Germany and in the United States.
The Panel also notes that the Trademark has reached a high degree of global distinctiveness and recognition, as evidenced by the documents filed by the Complainant, which has not been disputed by the Respondent.
A comparison between the Disputed Domain Name and the Trademark shows that the Disputed Domain Name contains the Trademark, i.e., BMW, to which geographic elements have been added, i.e. “of the Hamptons”.
As a matter of principle, the addition of merely generic, descriptive, or geographical wording to a trademark in a domain name is normally insufficient in itself to avoid a finding of confusing similarity. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0"), paragraph 1.9.
This is particularly true in the automotive industry in which it is usual that the car brand is used in connection with a geographic element (which is what is generally done in the dealership system set up by the Complainant). See, e.g. (concerning the Complainant) Bayerische Motoren Werke AG v. bmwrider llc, WIPO Case No. D2008-0610. For this reason, other UDRP panels have held that a domain name comprised of a trademark and a geographical term can create an undue association between the domain name holder and the trademark owner. See, e.g., Bayerische Motoren Werke AG v. Private Registrations Aktien Gesellschaft, WIPO Case No. D2010-0898.
As a result, based on the rights of the Complainant on the Trademark and on the confusing similarity between the Trademark and the Disputed Domain Name, the Panel finds that the conditions of paragraph 4(a)(i) of the Policy are met.
B. Rights or Legitimate Interests
Pursuant to paragraph 4(c) of the Policy, the Respondent may establish rights to or legitimate interests in the Disputed Domain Name by demonstrating any of the following:
(i) before any notice to it of the dispute, the Respondent's use of, or demonstrable preparations to use, the Disputed Domain Name or a name corresponding to the Disputed Domain Name in connection with a bona fide offering of goods or services; or
(ii) the Respondent has been commonly known by the domain name, even if it has acquired no trademark or service mark rights; or
(iii) the Respondent is making a legitimate noncommercial or fair use of the Disputed Domain Name, without intent for commercial gain, to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
Although a complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, previous UDRP panels have consistently ruled that paragraph 4(c) of the Policy shifts the burden to the respondent to come forward with evidence of a right or legitimate interest in the domain name, once the complainant has made a prima facie showing. See Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270.
In this case, the Panel finds no evidence that the Respondent ever had any rights or legitimate interests in the Disputed Domain Name. Based on its uncontradicted allegations, the Complainant has demonstrated that the Disputed Domain Name automatically redirects to a website with adult-content which in the present circumstances by itself already constitutes an evidence of the lack of rights or legitimate interests in the Disputed Domain Name. See, e.g., AREVA v. Wang Songxu, WIPO Case No. D2012-2422.
The Panel further acknowledges that the Complainant never authorized, licensed or permitted the Respondent to use the Trademark in any manner and that the Respondent is not commonly known by the Disputed Domain Name.
On this basis, the Panel finds that the Complainant has made a prima facie showing that the Respondent has no rights or legitimate interests in the Disputed Domain Name and that the Respondent has not established any rights to or any legitimate interests in the Disputed Domain Name.
The Panel is consequently satisfied that the Complainant has established that the second requirement of paragraph 4(a) of the Policy is met.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy states that any of the following circumstances, in particular but without limitation, shall be considered evidence of registration and use of a domain name in bad faith:
(i) circumstances indicating that the respondent registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant (the owner of the trademark or service mark) or to a competitor of that complainant, for valuable consideration in excess of documented out-of-pocket costs directly related to the domain name;
(ii) circumstances indicating that the respondent 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 the respondent has engaged in a pattern of such conduct;
(iii) circumstances indicating that the respondent registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) circumstances indicating that the respondent intentionally is using the domain name in an attempt to attract, for commercial gain, Internet users to its website or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of the respondent's website or location or of a product or service on its website or location.
The examples of bad faith registration and use set forth in paragraph 4(b) of the Policy are not meant to be exhaustive of all circumstances from which such bad faith may be found. See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003. The overriding objective of the Policy is to curb the abusive registration of domain names in circumstances where the registrant is seeking to profit from and exploit the trademark of another. See Match.com, LP v. Bill Zag and NWLAWS.ORG, WIPO Case No. D2004-0230.
In this case, the Complainant alleges that the Respondent registered and uses the Disputed Domain Name in bad faith for a variety of reasons, particularly because of Respondent’s use of the Disputed Domain Name for an adult-content website. The Panel finds in this respect that such use must be considered as tarnishing the Trademark and the Complainant and therefore constitutes an evidence of a bad faith use of the Disputed Domain Name under the Policy. See Christian Dior Couture v. Paul Farley, WIPO Case No. D2008-0008.
The Panel further holds that the Respondent’s bad faith also results from the fact that the Trademark is so distinctive and so well-known that the Respondent could not possibly be unaware of its existence at the time when it registered the Disputed Domain Name. In the absence of any Response by the Respondent and in view of the distinctive nature of the Trademark, the Panel accepts that the Respondent clearly must have the Trademark and the Complainant in mind at the time of registration of the Disputed Domain Name and that the Respondent’s behavior constitutes bad faith under the Policy.
For these reasons, the Panel considers that the Complainant has established that the Disputed Domain Name was registered and is being used in bad faith by the Respondent pursuant to paragraph 4(a)(iii) of the Policy.
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 <bmwofthehamptons.com> be transferred to the Complainant.
Jacques de Werra
Date: June 12, 2013