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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Bayerische Motoren Werke AG v. Domain Hostmaster, Customer ID: 66520284085067, Whois Privacy Services Pty Ltd / Lisa Katz, Domain Protection LLC

Case No. D2016-0569

1. The Parties

The Complainant is Bayerische Motoren Werke AG of Munich, Germany, represented by Kelly IP, LLP, United States of America ("United States").

The Respondent is Domain Hostmaster, Customer ID: 66520284085067, Whois Privacy Services Pty Ltd of Fortitude Valley, Australia / Lisa Katz, Domain Protection LLC of Dallas, Texas, United States.

2. The Domain Name and Registrar

The disputed domain name <minioffairfieldcounty.com> is registered with Fabulous.com (the "Registrar").

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on March 22, 2016. On March 23, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 2, 2016, 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 4, 2016 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 6, 2016.

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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on April 7, 2016. In accordance with the Rules, paragraph 5, the due date for Response was April 27, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on April 28, 2016.

The Center appointed Mario Soerensen Garcia as the sole panelist in this matter on May 11, 2016. 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 the United Kingdom of Great Britain and Northern Ireland ("UK") registration no. 969678, for MINI, granted on January 5, 1971, in class 12, of the United States registration no. 2,746,570, for MINI, granted on August 5, 2003, in class 12, and of the European Community registration no. 004375581, for MINI, granted on April 25, 2006.

In addition, the Complainant is the owner of the domain names <mini.com> and <miniusa.com>, registered in 1998 and 2000, respectively.

The disputed domain name was registered on June 1, 2006. The disputed domain name resolves to a pay-per-click parking page.

5. Parties' Contentions

A. Complainant

The Complainant states that the disputed domain name incorporates the Complainant's trademark MINI and imitates the domain names used by the Complainant's local dealers, comprised of the trademark MINI, plus the element "of" and the geographical indication related to the place of business (e.g., <miniofchicago.com>).

The Complainant presents itself as one of the most successful manufactures of high performance automobiles and motorcycles in the world. The Complainant claims that it has been commercializing the MINI automobile for over fifty years and that its trademark rights over the mark MINI date back to 1959. The trademark MINI is ranked in the Interbrand "Top 100" report of 2015, which estimated the value of the mark at more than USD 4.2 billion. The fame of the mark has also been recognized by previous UDRP panel decisions (see Bayerische Motoren Werke AG, Rolls-Royce Motor Cars Limited v. Ed Slingsby, SC Net, WIPO Case No. D2015-0268).

The Complainant argues that the disputed domain name is very similar to the domain name used by the Complainant's local dealer in Fairfield County, Connecticut, United States, namely <minifairfieldcounty.com>.

According to the Complainant, the disputed domain name was registered and used in bad faith to generate pay-per-click commissions via third parties' websites, some of which display links and mentions to the Complainant and its MINI trademark.

The Complainant also states that the Respondent does not have any trademark rights over the expression "mini", and that the disputed domain name is misleading Internet users and that the Respondent only intends to obtain financial profits from association with the Complainant.

There is no evidence that the Respondent had authorization to use the trademark MINI or to register domain names encompassing it. Furthermore, the Respondent's use of the disputed domain name does not constitute a bona fide offering of goods or services, and there is no evidence that the Respondent is or has ever been commonly known by the disputed domain name.

Finally, the Complainant requests the transfer of the disputed domain name.

B. Respondent

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

6. Discussion and Findings

As per paragraph 4(a) of the Policy, the Complainant must prove that:

(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

(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.

A. Identical or Confusingly Similar

The evidence presented demonstrates that the Complainant is the owner of the trademark MINI in the UK, in the United States and in the European Community, and of the domain names <mini.com> and <miniusa.com>.

The Complainant's trademarks predate the disputed domain name.

The disputed domain name is comprised of the Complainant's trademark MINI, plus the element "of" and a geographical indication (Fairfield County), besides the generic Top-Level Domain ("gTLD") ".com".

It is well established in domain name disputes that the sole addition of a geographical indication to a distinctive trademark is not sufficient to distinguish the domain name from the complainant's trademark, and sometimes may even increase the likelihood of confusion, as happens in the case in study (see Kabushiki Kaisha Toshiba dba Toshiba Corporation v. WUFACAI, WIPO Case No. D2006-0768; Bayerische Motoren Werke AG v. Private Registrations Aktien Gesellschaft, WIPO Case No. D2010-0898; Bayerische Motoren Werke AG v. Whois Protection, WIPO Case No. D2007-1142; Bayerische Motoren Werke AG v. Fundacion Private Whois, Domain Administrator/ PPA Media Services, Ryan G Foo, WIPO Case No. D2013-0704).

The Panel finds that paragraph 4(a)(i) of the Policy has been proved by the Complainant, i.e., the disputed domain name is identical or confusingly similar to the Complainant's trademark.

B. Rights or Legitimate Interests

The Respondent has not submitted a response to the Complaint and, in accordance with paragraph 5(f) of the Rules, the Panel shall decide the dispute based upon the Complaint.

There is no evidence that the Respondent has any authorization to use the Complainant's trademark or to register a domain name containing the trademark MINI.

There is no evidence that the Respondent is commonly known by the disputed domain name.

There is no evidence that the Respondent is making a legitimate noncommercial or fair use of the disputed domain name or that before any notice of the dispute the Respondent has made 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 offer of goods or services.

The use of the disputed domain name by the Respondent to obtain financial profits by the means of displaying various pay-per-click links can be verified by the screenshots and by the signed declaration contained in Annexes 10 and 11 to the Complaint, which denote the intention to obtain commercial profit from the association with the Complainant's trademark MINI. The Panel finds, in accordance with previous UDRP decisions in similar cases, that such use of the disputed domain name does not correspond to a bona fide use of domain names under the Policy (see, e.g., Bayerische Motoren Werke AG v. Gary Portillo, WIPO Case No. D2012-1937; Bayerische Motoren Werke AG v. RC, WIPO Case No. D2012-0124; Edmunds.com, Inc. v. Whois Privacy Services Pty Ltd / Lisa Katz, Domain Protection LLC, WIPO Case No. D2016-0128).

For the above reasons, the Complainant has made an unrebutted prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name. Accordingly, the Panel finds that the condition of paragraph 4(a)(ii) of the Policy has been satisfied.

C. Registered and Used in Bad Faith

The trademark MINI has been registered by the Complainant since at least 1971.

The disputed domain name is composed of the Complainant's trademark MINI trademark, plus the element "of" and a geographical indication (Fairfield County), besides the gTLD ".com", which presents a similar composition to the domain names used by the Complainant's authorized local dealers. The Complainant's local dealer in Fairfield County, Connecticut, United States, uses the domain name <minifairfieldcounty.com>.

The use of the disputed domain name as shown in Annexes 10 and 11, which includes explicit references to the Complainant and to its MINI trademark, denotes that the Respondent has sought to associate with the Complainant's mark without authorization in order to attract visitors for its own commercial gain, indicating the Respondent's bad faith (see, e.g., Bayerische Motoren Werke AG v. Sabri Hammad, WIPO Case No. D2007-0675).

The Respondent has no rights or legitimate interests in the disputed domain name.

In view of the above reasons, the Panel finds that the Respondent has registered and uses the disputed domain name with the intention to attract, for commercial gain, Internet users to the Respondent's 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 its web site or location or of a product or service on its web site or location, as described in the Policy, paragraph 4(b)(iv).

The Respondent has not responded to the Complaint.

The Panel finds that the Respondent's bad faith registration and use of the disputed domain name, with the intention of taking undue advantage of the trademark MINI, has been demonstrated.

For the above reasons, the Panel finds that the condition of paragraph 4(a)(iii) of the Policy has been satisfied, i.e., the disputed domain name has been registered and is being used in bad faith.

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 <minioffairfieldcounty.com> be transferred to the Complainant.

Mario Soerensen Garcia
Sole Panelist
Date: May 25, 2016

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