WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Bayerische Motoren Werke AG v. Whois Privacy Protection Service by Value-Domain / Kei Sakurai, LuckyDomain

Case No. D2015-0246

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 Whois Privacy Protection Service by Value-Domain of Osaka, Japan / Kei Sakurai, LuckyDomain of Tokyo, Japan.

2. The Domain Name and Registrar

The disputed domain name <bmwguam.com> is registered with GMO Internet, Inc. d/b/a Discount-Domain.com and Onamae.com (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 17, 2015. On February 17, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 18, 2015, 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 February 23, 2015 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 4, 2015.

On February 23, 2015, the Center notified the Parties in both English and Japanese that the language of the Registration Agreement for the disputed domain name was Japanese. On February 25, 2015, the Complainant requested for English to be the language of the proceeding, to which the Respondent has not replied.

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 4, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was March 24, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 25, 2015.

The Center appointed Douglas Clark as the sole panelist in this matter on April 7, 2015. 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 multinational luxury car company. The Complainant is the registered proprietor of the trademark BMW in various countries in numerous classes, including Class 12. The Complainant allows its authorised dealers to register domain names which include the trademark BMW and a geographic description.

The disputed domain name <bmwguam.com> was registered on April 6, 2014. The website to which the disputed domain name resolves is a parking page with advertisements for various products and services including used cars. The links are stated to be provided by the domain name host’s (Sedo) domain parking service.

5. Parties’ Contentions

A. Complainant

Identical or confusingly similar

The Complainant argues that the disputed domain name <bmwguam.com> is made entirely up of the registered trademark BMW and the geographical description “Guam” to which generic Top-Level Domain (“gTLD”) “.com” has been added. It is therefore confusingly similar to the Complainant’s registered trademark BMW.

No rights or legitimate interests

The Complainant submits that the Respondent has not been known by the disputed domain name and the Respondent has no connection with the Complainant or any of its affiliates and has never sought or obtained any trademark registrations for BMW.

Registered and used in bad faith

The Complainant submits that there is no doubt that before registration of the disputed domain name the Respondent knew of the Complainant’s rights in the BMW trademark and as such its registration and use is in bad faith.

B. Respondent

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

6. Discussion and Findings

6.1. Language of the Proceeding

The language of the Registration Agreement is in Japanese. Paragraph 11(a) of the Rules provides that:

“Unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding.”

The Complainant requested the language of the proceeding to be English on grounds that included that the working language of the Complainant’s counsel is English and that the website under the disputed domain name was written in English.

The Respondent did not respond to this request.

The Center made a preliminary determination to:

1) accept the Complaint as filed in English;

2) accept a Response in either English or Japanese;

3) appoint a Panel familiar with both languages mentioned above, if available.

The final determination of the language of the proceeding lies with this Panel. As a first point, this Panel does not consider the Complainant’s submission that the Complainant’s counsel do not understand Japanese to be of much weight. The Complainant has business in Japan and could have instructed counsel familiar with Japanese. The fact that the website under the disputed domain name is in English is of greater weight, even though it is stated to have been provided by the domain host, Sedo. The Respondent is seeking to attract business in English.

Further, the Respondent has not responded to the Center’s preliminary determination.

This Panel decided in Zappos.com, Inc. v. Zufu aka Huahaotrade, WIPO Case No. D2008-1191, that a respondent’s failure to respond to a preliminary determination by the Center as to the language of the proceeding “should, in general, be a strong factor to allow the Panel to decide to proceed in favour of the language of the Complaint”.

Further, as set out below, the Panel considers the merits of the case to be strongly in favour of the Complainant. Translating the Complaint would cause unnecessary delay in this matter.

These factors lead the Panel to determine to follow the Center’s preliminary determination. As the only pleading before the Panel is in English, the Panel will render its decision in English.

6.2. Substantive Issues

This is a very simple case of clear cybersquatting for the purposes of commercial gain which the UDRP was designed to stop.

A. Identical or Confusingly Similar

The disputed domain name <bmwguam.com> is made up of the registered trademark BMW, the geographical term “Guam” and the gTLD “.com”. The disputed domain name is confusingly similar to the registered trademark BMW. The first part of the paragraph 4(a) of the Policy is therefore satisfied.

B. Rights or Legitimate Interests

The Respondent has not responded to the Complaint to assert any rights or legitimate interests. Paragraph 2.1 of the WIPO Overview of WIPO Panel views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”) provides:

“While the overall burden of proof rests with the complainant, panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is often primarily within the knowledge of the respondent. Therefore a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, the burden of production shifts to the respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such appropriate allegations or evidence, a complainant is generally deemed to have satisfied paragraph 4(a)(ii) of the UDRP.”

The Complainant has made out a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name. None of the circumstances in paragraph 4(c) of the Policy, which sets out how a respondent can prove its rights or legitimate interests, are present in this case.

The second part of the paragraph 4(a) of the Policy is therefore satisfied.

C. Registered and Used in Bad Faith

For the same reasons as those above, the Panel has no hesitation in finding that the disputed domain name <bmwguam.com> was registered in bad faith and is being used in bad faith.

This case falls with paragraph 4(b)(iv) of the Policy which provides that a registrant has registered and is using a domain name in bad faith where:

“by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site 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 your web site or location or of a product or service on your web site or location.”

The paid links on the site are clearly intended to attract revenue.

The third part of the paragraph 4(a) of the Policy is therefore satisfied.

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 <bmwguam.com> be transferred to the Complainant.

Douglas Clark
Sole Panelist
Date: April 21, 2015