WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Bayerische Motoren Werke AG v. Nikan Engineers Group
Case No. D2015-2114
1. The Parties
The Complainant is Bayerische Motoren Werke AG of Munich, Germany, represented by Kelly IP, LLP, United States of America.
The Respondent is Nikan Engineers Group of Tehran, Islamic Republic of Iran.
2. The Domain Name and Registrar
The disputed domain name <bmwshopiran.com> (the "Domain Name") is registered with Realtime Register B.V. (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on November 20, 2015. On November 20, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On November 23, 2015, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on November 25, 2015. In accordance with the Rules, paragraph 5, the due date for Response was December 15, 2015. Apart from an email received from the Respondent of December 15, 2015, that the Domain Name was registered on behalf of a customer of the Respondent, the Respondent did not submit any response.
The Center appointed Willem J. H. Leppink as the sole panelist in this matter on December 30, 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 following facts are undisputed.
The Complainant is a successful manufacturer of automobiles and motorcycles in the world. In use since 1917, the BMW mark enjoys fame as a result of extensive and long use and advertising, and favorable public acceptance and recognition worldwide.
Under the BMW trademark and trade name, the Complainant manufactures, sells, and distributes an array of automobiles and motorcycles. The Complainant also provides numerous services including maintenance and repair services, as well as consumer and dealer financing, leasing, insurance, and warranty services as new vehicle warranties and extended warranties.
The Complainant is the owner of a large portfolio of various trademark registrations comprising the element "BMW", including figurative marks, with validity in several countries and territories worldwide, registered for various goods and services ("Trademark").
The Complainant is also the owner of a large portfolio of various domain names comprised of the Trademark and combined with relevant geographical and/or descriptive terms such as <bmwshop.com> and <bmw-iran.com>.
The Domain Name was registered on December 3, 2013. At the time the Complaint was filed, the Domain Name resolved to a website in would appears to be Arabic, that mimicked the Complainant's website formatting and purported to offer the Complainant's BMW products. Presently, the website indicates that the account has been suspended.
5. Parties' Contentions
Insofar as relevant, the Complainant contends the following.
The Domain Name is confusingly similar to the Complainant's famous and federally registered Trademark, because it contains the Trademark in its entirely combined with a generic term "shop" and a geographical term "Iran". Further, the addition of the terms "shop" and "Iran" that relate to the Complainant's business, including its prior long-term use of the domain names <bmwshop.com> and <bmw-iran.com>, heightens the confusing similarity of the Domain Name.
The Respondent clearly has no rights or legitimate interests in the Domain Name for several reasons:
The Respondent's registration and use of the Domain Name for a commercial website that prominently displays the Complainant's Trademark, mimics the Complainant's website formatting, and purports to offer the Complainant's products does not constitute a bona fide offering of services or a legitimate noncommercial use of the Domain Name. Rather, the Respondent's activities constitute passing off and directly compete with the Complainant. Both passing off and directly competing activities have been consistently held to demonstrate a lack of legitimate interest under the UDRP.
The Respondent is not and has not been commonly known by the Domain Name. There is no evidence in the record, including the WhoIs information, to demonstrate that the Respondent is commonly known by the Domain Name. In addition, the Respondent is not a licensee of the Complainant, and the Complainant has never authorized to register or use the Domain Name or the Trademark.
The Respondent's registration and use of the Domain Name squarely meets the grounds of bad faith outlined in the UDRP, as well as additional grounds of bad faith defined in previous UDRP decisions.
The Respondent's registration and use of the Domain Name constitute bad faith because the Respondent uses the Domain Name to intentionally attract, for commercial gain, Internet users by creating a likelihood of confusion with the Complainant's famous and registered Trademark as to the source, sponsorship, affiliation, and/or endorsement of the Respondent's website.
The Respondent's use of the Domain Name for a website that prominently displays the Complainant's Trademark, mimics the Complainant's website formatting, and purports to offer the Complainant's products constitutes "passing off" and an independent ground of bad faith.
The Respondent's registration and use of the Domain Name constitute bad faith because the Respondent unfairly disrupts the Complainant's business by using the Domain Name for competing activities, namely, purporting to offer the Complainant's products and competing with the Complainant for Internet traffic. While the Respondent itself may not be a competitor of the Complainant, the fact that the Respondent's activities are in opposition to the Complainant are sufficient to define the Respondent as a competitor under the UDRP.
The Respondent's registration of the Domain Name for financial gain is further illustrated by its proposal to the Complainant to use the Respondent's website design services. Registration of trademark-related domain names for the purpose of encouraging a prospective business arrangement has been recognized as an independent ground for bad faith.
There is no question that the Respondent had knowledge of the Complainant's rights in its Trademark when it registered the Domain Name, given the fame of the Complainant's Trademark and the Respondent's unauthorized use of Complainant's Trademark on its website. By registering the Domain Name with knowledge of the trademark owner's rights has been consistently found to constitute bad faith.
A part from the email received from the Respondent of December 15, 2015 which is stated below, no formal response was filed:
The domain "bmwshopiran.com" does not belong to us (Nikan Engineers Group, www.nikan.ir). This domain belongs to our customer that after we have received your email, we have terminated registrar's website and have requested to delete this domain. We don't need to this domain at all. If there is any problem yet, please let us know to do anymore operation or action. you can contact us through this email
[redacted]) every time.
Nikan Engineers Group"
6. Discussion and Findings
Pursuant to paragraph 4(a) of the Policy, the Complainant must prove each of the following three elements:
(i) the disputed domain names are 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 names; and
(iii) the disputed domain names have been registered and are being used in bad faith.
A. Identical or Confusingly Similar
The Complainant must demonstrate that it has rights in a trademark and, if so, the Domain Name must be shown to be identical or confusingly similar to that trademark. As indicated above, the Complainant owns numerous Trademark registrations world wide.
The Domain Name incorporates the Trademark in its entirely, and adds the descriptive word "shop" and the geographical term "Iran". See Oki Data Ams, Inc. v. ASD, Inc., WIPO Case No. D2001-0903 ("[T]he fact that a domain name wholly incorporates a complainant's registered mark is sufficient to establish identity or confusing similarity for purposes of the Policy despite the addition of other words to such marks.").
The Panel also takes into account that Internet users considering the Domain Name without awareness of its content may believe that the Domain Name is in some way connected and associated with the Complainant. See Covance, Inc. and Covance Laboratories Ltd v. The Covance Campaign, WIPO Case No. D2004-0206; CBS Broadcasting Inc., f/k/a CBS Inc. v. Nabil Z. aghloul, WIPO Case No. D2004-0988.
Thus, the Panel finds that the Domain Name is confusingly similar to the Complainant's Trademark.
For all the foregoing reasons, the Panel is satisfied that the first element of the Policy is met.
B. Rights or Legitimate Interests
The Respondent did not reply to the Complainant's contentions. For that reason, the Panel has taken careful note of the factual assertions that have been made and supported by evidence by the Complainant.
In particular, the Respondent has failed to offer the Panel any of the types of evidence set forth in paragraph 4(c) of the Policy from which the Panel might conclude that the Respondent has rights or legitimate interests in the Domain Name, such as:
(i) use or preparation to use the Domain Name or a name corresponding to the Domain Name in connection with a bona fide offering of goods or services prior to notice of the dispute; or
(ii) being commonly known by the Domain Name (as an individual, business or other organization) even if the Respondent has not acquired any trademark or service mark rights; or
(iii) making 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.
There is no evidence in the case file that the Respondent has any rights or legitimate interests in the Domain Name.
The Respondent does not seem to be affiliated with the Complainant in any way. There is no evidence that BMW is the Respondent's name or that the Respondent is commonly known as BMW. There is also no evidence that the Respondent is, and has ever been, a licensee of the Complainant and that the Respondent has ever asked, and has ever been permitted in any way by the Complainant to register or use the Complainant's Trademark, or to apply for or use any domain name incorporating any of the Complainant's marks.
Furthermore, the use of the Domain Name cannot be considered a bona fide offering of goods or services. In particular, the Respondent did not demonstrate any use or demonstrable preparation to use the Domain Name in connection with a bona fide offering of goods or services as the Respondent is using the Domain Name for the sole purpose of misleading Internet users by offering products from the Complainant.
It is also clear that the Respondent is not making any legitimate noncommercial or fair use of the Domain Name.
Finally, given the circumstance of this case, the Panel finds that the Respondent's lack of rights or legitimate interests in the Domain Name may also be inferred by the fact that no response was filed by the Respondent. According to earlier UDRP decisions "non-response is indicative of a lack of interests inconsistent with an attitude of ownership and a belief in the lawfulness of one's own rights." See Pomellato S.p.A. v. Richard Tonetti, WIPO Case No. D2000-0493; and GA Modefine S.A. and Giorgio Armani S.p.A. v. Yoon-Min Yang, WIPO Case No. D2005-0090.
Therefore, based on the evidence, the Panel is satisfied that the second element of the Policy is met.
C. Registered and Used in Bad Faith
The Panel finds that the Domain Name was registered and is being used in bad faith.
In light of the evidence filed by the Complainant and in the absence of a reply, the Panel finds that the Complainant's Trademark and its activities are wellknown throughout the world. Accordingly, in the Panel's view, the Respondent must have been aware of the Complainant's existence and rights when it registered the Domain Name. This is emphasized by the fact that it uses the Domain Name to promote products from Complainant.
This behavior of the Respondent fits the example of paragraph 4(b)(iv) of the Policy, i.e., that by using the Domain Name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other online 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 the Respondent's website or location. Additionally, the suspension of the website content by its hosting provider is a further indication of the Respondent's bad faith.
Although the lack of an official reply by the Respondent as such cannot by itself lead to the conclusion that there is use in bad faith, the cumulative circumstances as outlined in the decision are sufficient for the Panel to find that the use by the Respondent is in bad faith.
In light of the above circumstances, the Panel is satisfied that the third element of the Policy is met and that the Domain Name was registered and is being used in bad faith.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name <bmwshopiran.com> be transferred to the Complainant.
Willem J. H. Leppink
Date: January 12, 2016