WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Bayerische Motoren Werke AG v. Fundacion Private Whois, Domain Administrator/ PPA Media Services, Ryan G Foo
Case No. D2013-0704
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 Fundacion Private Whois, Domain Administrator of Panama; PPA Media Services, Ryan G Foo of Santiago, Chile.
2. The Domain Name and Registrar
The disputed domain name <bmwfresno.com> (the “Disputed Domain Name”) is registered with Internet.bs Corp. (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 22, 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 April 22, 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 April 22, 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 May 3, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was May 23, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 24, 2013.
The Center appointed Jacques de Werra as the sole panelist in this matter on June 3, 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 the owner of various trademarks containing “BMW”, including the German trademark No. 221388 registered on December 12, 1917, no. 410579 registered on November 15, 1929 and the United States trademark no. 611,710, registered on September 6, 1955 (“the Trademark”). In 2012, the brand associated with the Trademark was ranked 12th of the “Top 100 Brands” and was valued at more than $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 Fresno, California, which uses the trade name “BMW Fresno” and the corresponding domain name <bmwfresno.net>.
The Respondent acquired or registered the Disputed Domain Name in 2013. The Respondent uses the Disputed Domain Name for a pay-per-click website that features search categories that directly refer to the Complainant and to the Trademark (e.g. “BMW Inventory” and “BMW Lease”) and to the Complainant’s industry (e.g., “Buy Cars”). The Respondent’s search categories connect to web pages featuring feature sponsored-link advertisements for websites offering directly competing products (e.g., automobiles manufactured by Complainant’s competitors Mercedes-Benz and Toyota) and other commercial websites. The Respondent further offers to sell the Disputed Domain Name on the WhoIs record, and on the domain-market website <aftermarket.com>.
5. Parties’ Contentions
The Complainant claims that:
The Disputed Domain Name is confusingly similar to 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 Complainant’s Trademark, and Respondent’s use of the Trademark is unauthorized. Respondent is not and has never been a licensee of the Complainant. Respondent is not and has never been otherwise authorized by Complainant to use the Trademark.
The Respondent’s registration and use of the Disputed 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 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 domain name; and
(iii) the respondent's 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 USA.
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. the term “BMW”, to which a geographic element has been added, i.e. “fresno”.
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 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 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 domain name or a name corresponding to the 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 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 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 is used in connection with a link farm parking page pointing to the products and services offered by third parties which are (at least partly) in competition with the Complainant. As recognized by many UDRP panels, it is well-established that operating a link farm parking page using a distinctive trademark in a domain name, and providing connection to goods and/or services which are competing with those of the trademark owner, does not establish rights or legitimate interests. See, e.g., Donald J. Trump v. Mediaking LLC d/b/a Mediaking Corporation and Aaftek Domain Corp., WIPO Case No. D2010-1404.
In addition, the offer for sale of the Disputed Domain Name which is confusingly similar to a well-known trademark such as the Trademark, cannot be considered in itself a use of the Disputed Domain Name in connection with a bona fide offering of goods and services. See, e.g., Bayerische Motoren Werke AG v. Lucjan Niemiec, WIPO Case No. D2003-0240.
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 similarly 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 in connection with a parking service pointing to products of companies in the automotive industry which are competing with those of the Complainant.
The Panel holds that the Respondent registered the Disputed Domain Name in bad faith because the Trademark distinctively identifies the Complainant and the Complainant’s products so that the choice of the Disputed Domain Name cannot be reasonably explained otherwise than as a reference to the Trademark. The Respondent’s bad faith in the registration and use of the Disputed Domain Name is further established by the fact that the Disputed Domain Name is used in connection with a pay-per-click parking page pointing to products some of which are of Complainant’s direct competitors. Such use has consistently been held as a bad faith registration and use of a domain name. See, e.g., Serta Inc. v. Charles Dawson, WIPO Case No. D2008-0147; Bayerische Motoren Werke AG v. bmwrider llc, WIPO Case No. D2008-0610.
The Respondent’s conduct further constitutes bad faith under paragraph 4(b)(ii) of the Policy because it registered the Disputed Domain Name in order to prevent the Complainant from reflecting the Trademark in a corresponding domain name, and because the Respondent has engaged in a pattern of such conduct.
The Respondent has indeed been the respondent in several UDRP proceedings involving well-known trademarks which lead to decisions of transfer of the relevant domain names, whereby some of these decisions expressly confirmed that the Respondent had engaged in such a bad faith conduct. See, e.g., Twentieth Century Fox Film Corporation v. PPA Media Services / Ryan G Foo, NAF Claim No. FA1210001467717 (finding that the Respondent registered the <foxsports2.com> domain name in bad faith pursuant to paragraph 4(b)(ii) of the Policy “as part of a pattern of bad faith domain name registrations”).
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 <bmwfresno.com> be transferred to the Complainant.
Jacques de Werra
Date: June 11, 2013