WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Bayerische Motoren Werke AG v. Thanh Tran
Case No. D2014-0721
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 Thanh Tran of Hochiminh City, Viet Nam, self-represented.
2. The Domain Name and Registrar
The disputed domain name <bmwmyanmar.com> 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 May 3, 2014. On May 5, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 6, 2014, the Registrar transmitted by email to the Center its verification response confirming the Respondent as the registrant and provided contact details.
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 May 15, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was June 4, 2014. The Response was filed with the Center on June 2, 2014.
On June 9, 2014, the Complainant submitted a supplemental filing to the Center. On June 12, 2014, the Respondent submitted a supplemental filing in response to the Complainant’s supplemental filing.
The Center appointed Warwick A. Rothnie as the sole panelist in this matter on June 20, 2014. 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 manufacturer of the well-known BMW automobiles and motor cycles. It also provides a wide range of associated services by reference to the trademark, BMW, and has licensed its use on a wide range of accessories.
According to the Complaint, the Complainant has sold more than 1,000,000 automobiles branded BMW in each of the years 2008 to 2012 and more than 80,000 motorcycles. It has manufacturing facilities at 24 locations in 13 countries and 106,000 employees around the world. Its sales revenues have exceed EUR 50 billion in each of the years since 2008, reaching EUR 76.8 billion in 2012. It spends tens of millions of dollars each year on advertising and promotion through a variety of media including television, print, the Internet and high profile sponsorships.
The trademark was first used in 1917. Its registered trademarks include:
- Trademark No. 221388 for BMW and Design registered in Germany from December 10, 1917 in International Classes 7, 8, 9, 11 and 12;
- Trademark No. 410579 for BMW registered in Germany registered in Germany from November 15, 1929 in International Classes 7 and 12 for goods including automobiles and motorcycles;
- International Registration No 663925 for BMW designating, amongst others, Viet Nam registered from December 22, 1995 for goods including automobiles and motorcycles.
It has also been issued with Myanmar Declaration of Ownership of Trademark Registration Nos 8901/2013 and 8902/2013 issued in August 2013.
The BMW trademark has been ranked in Interbrand’s Top 100 brands for many years, being ranked twelfth in both 2012 and 2013, with an estimated value of USD 31 billion.
The disputed domain name was registered on February 18, 2012.
It does not appear to have resolved to an active website since that date.
The email address used by the Respondent would appear to be associated with the registration of at least 900 other domain names.
Before the Complaint was filed, the Respondent rejected an offer from the Complainant to buy the disputed domain name from him for USD 100.
5. Discussion and Findings
Paragraph 4(a) of the Policy provides that in order to divest the Respondent of the disputed domain name, the Complainant must demonstrate each of the following:
(i) the 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 disputed domain name has been registered and is being used in bad faith.
Paragraph 15(a) of the Rules directs the Panel to decide the complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.
Before addressing the substantive requirements under the Policy, the Panel deals with the Complainant’s request to file a supplemental filing.
Apart from documents requested by the Panel pursuant to paragraph 12 of the Rules, neither the Policy nor the Rules expressly provide for supplemental filings. Their admissibility is therefore in the discretion of the Panel bearing in mind the requirements under paragraph 10 of the Rules to ensure that the proceeding is conducted with due expedition and both parties are treated equally, with each party being given a fair opportunity to present its case.
In this case, the Complainant’s supplemental filing seeks to rebut the justification advanced by the Respondent in support of his registration of the disputed domain name. That particular justification was not something that the Complainant could have reasonably anticipated. Therefore, the Panel admits the supplemental filing. The Respondent’s supplemental filing seeks to respond to the Complainant’s supplemental filing. In the interests of fairness, the Panel admits it also especially as it was filed promptly and does not delay the resolution of the proceeding.
A. Identical or Confusingly Similar
The first element that the Complainant must establish is that the disputed domain name is identical with, or confusingly similar to, the Complainant’s trademark rights.
There are two parts to this inquiry: the Complainant must demonstrate that it has rights in a trademark and, if so, the disputed domain name must be shown to be identical or confusingly similar to the trademark.
The Complainant has established ownership of the registered trademarks referred to in section 4 above. In those jurisdictions that recognize such rights, the Panel also accepts that the Complainant has extensive common law rights and its mark is very well-known.
On the question of identity or confusing similarity, what is required is simply a comparison and assessment of the disputed domain name itself to the Complainant’s proved trademarks: see for example, Disney Enterprises, Inc. v. John Zuccarini, Cupcake City and Cupcake Patrol, WIPO Case No. D2001-0489; IKB Deutsche Industriebank AG v. Bob Larkin, WIPO Case No. D2002-0420. This is different to the question under trademark law which can require an assessment of the nature of the goods or services protected and those for which any impugned use is involved, geographical location or timing. Such matters, if relevant, may fall for consideration under the other elements of the Policy.
The disputed domain name differs from the Complainant’s simplest trademark, BMW, by the addition of the geographic descriptor “Myanmar” and the generic Top-Level Domain (“gTLD”), “.com”. The latter may be disregarded as a functional requirement of the domain name system and the former does not change the confusing nature of the disputed domain name: e.g. Telstra Corporation Limited v. Ozurls, WIPO Case No. D2001-0046.
Accordingly, the Panel finds that the Complainant has established that the disputed domain name is confusingly similar to the Complainant’s trademarks and the requirement under the first limb of the Policy is satisfied.
B. Rights or Legitimate Interests
The second requirement the Complainant must prove is that the Respondent has no rights or legitimate interests in the disputed domain name.
Paragraph 4(c) of the Policy provides that the following circumstances can be situations in which the Respondent has rights or legitimate interests in a disputed domain name:
(i) before any notice to [the Respondent] 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] (as an individual, business, or other organization) has been commonly known by the [disputed] domain name, even if [the Respondent] 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.
These are illustrative only and are not an exhaustive listing of the situations in which a respondent can show rights or legitimate interests in a domain name.
The onus of proving this requirement, like each element, falls on the Complainant. Panels have recognized the difficulties inherent in disproving a negative, however, especially in circumstances where much of the relevant information is in, or likely to be in, the possession of the respondent. Accordingly, it is usually sufficient for a complainant to raise a prima facie case against the respondent under this head and an evidential burden will shift to the respondent to rebut that prima facie case. See e.g., paragraph 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”).
The Complainant states that it has not authorised the Respondent to use the disputed domain name. Nor is the Respondent affiliated with it. The disputed domain name is plainly not derived from the Respondent’s name. From the available record, the Respondent does not appear to hold any trademarks for the disputed domain name.
The Respondent does not contest these matters. Instead, the Respondent says he registered the disputed domain name for a business he is planning to start under the name “Best Mother and Woman – Myanmar” as a “bridge” for Myanmari women to meet online with men from other countries.
In assessing this, the first thing is that the disputed domain name was registered in February 2012 and has been inactive since then. There is no business actually being operated via the disputed domain name. The Respondent has provided what he says is the logo he has developed for this business. It is not clear, however, when this logo was created. In addition, while he says his business plan is secret and confidential, the Respondent has not submitted any other evidence of his preparations to use the disputed domain name for his proposed business or otherwise explained the delay.
He has also pointed out that his 900 plus domain names include <burmamarket.com>, <myanmargarment.com> and <myanmarsimcard.com> which do resolve to active websites. However, the Complainant points out that some of the Respondent’s other domain names include:
- <toyotamyanmar.com>; and
The existence of these registrations rather throws into doubt the Respondent’s claim that the resemblance of the disputed domain name to the Complainant’s trademark is a coincidence. All the more so when the Respondent does not deny knowledge or awareness of the Complainant’s trademark.
Thirdly, the Panel notes that the contact details used by the Respondent in registering the disputed domain name include in the postal address “THIS DOMAIN IS TRANSFERABLE”.
Taking all these matters into account, the Panel finds that the Respondent has not established what appears to be his reliance on paragraph 4(c)(i) and rejects the proffered justification advanced by the Respondent. The Panel finds that the Respondent has not rebutted the Complainant’s prima facie case that he has no rights or legitimate interests in the disputed domain name.
Accordingly, the Panel finds the Complainant has established the second requirement under the Policy also.
C. Registered and Used in Bad Faith
Under the third requirement of the Policy, the Complainant must establish that the disputed domain name has been both registered and used in bad faith by the Respondent.
Generally speaking, a finding that a domain name has been registered and is being used in bad faith requires an inference to be drawn that the respondent in question has registered and is using the disputed domain name to take advantage of its significance as a trademark owned by (usually) the complainant.
As noted above, the Respondent has not sought to deny knowledge of the Complainant’s trademark before registering the disputed domain name. Moreover, his registration of the three other car makers’ trademarks in domain names following a similar formula to the disputed domain name shows an awareness of the car industry and its brands which, together with the extensive reputation of the Complainant’s trademark, are strong indicators that he was well aware of the trademark significance of BMW. Further, on the record in this case, the Panel has not accepted the purportedly innocent explanation advanced by the Respondent for his registration of the disputed domain name.
It appears more than likely therefore that the Respondent registered the disputed domain name to take advantage of its confusing similarity to the Complainant’s trademark. That was done in circumstances where the address used by the Respondent, “THIS DOMAIN IS TRANSFERABLE”, in effect communicated that the Respondent was open to offers for the sale of the disputed domain name. As noted above, the Respondent rejected an offer to buy the disputed domain name for USD 100.
In these circumstances, the Panel finds that the Respondent registered the disputed domain name in bad faith.
It is also well established that the “passive” holding of a domain name which has been registered because of its association with another’s trademark can be use of the domain name in bad faith: Telstra Corporation Limited v Nuclear Marshmallows, WIPO Case No. D2000-0003. The Panel considers it appropriate to apply that principle in this case where the Respondent has been shown not to have rights or legitimate interests in the disputed domain name and appears to have registered it with a view to selling it for profit.
Accordingly, the Panel finds that the Complainant has established the third requirement under the Policy also.
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 <bmwmyanmar.com> be transferred to the Complainant.
Warwick A. Rothnie
Date: July 5, 2014