WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Bayerische Motoren Werke AG v. Whois Agent, Whois Privacy Protection Service, Inc. / Jaroslaw Matula
Case No. D2016-1526
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 Whois Agent, Whois Privacy Protection Service, Inc. of Kirkland, Washington, United States / Jaroslaw Matula of Rzeszow, Poland.
2. The Domain Name and Registrar
The disputed domain name <touringsportbmw.com> is registered with Name.com, Inc. (Name.com LLC) (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on July 26, 2016. On July 27, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 29, 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 August 1, 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 August 2, 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 August 4, 2016. In accordance with the Rules, paragraph 5, the due date for Response was August 24, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on August 25, 2016.
The Center appointed Clive Duncan Thorne as the sole panelist in this matter on August 29, 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
According to the Complainant it is one of the most successful manufacturers of automobiles and motorcycles in the world.
It owns the trademark, service mark and trade name BMW. Under its BMW mark the Complainant manufacturers, sells and distributes an array of automobiles and motorcycles and provides numerous services including maintenance and repair services, financing, leasing, insurance and warranty services, among others. The Complainant also uses and licenses its mark BMW on a wide variety of automobile and motorcycle parts and accessories and numerous collateral products.
The Complainant has manufactured, marketed and sold many millions of vehicles under the mark BMW. For example in each year from 2011 until 2015 the Complainant both produced and sold more than 1.3 million automobiles under the mark BMW and more than 100,000 motorcycles under the mark BMW. In 2015 BMW had its most productive year ever, manufacturing more than 1.9 million BMW automobiles and more than 136,000 BMW motorcycles. This can be seen from the excerpts from the Complainant's annual report for 2015 which is exhibited at Exhibit 3 to the Complaint.
The Complainant's headquarters are located in Germany. Its products and components are manufactured at 30 sites in 14 countries in 4 continents including in the United States. The Complainant has more than 122,000 employees worldwide.
The Complainant has for decades utilised a network of authorised dealers to market its vehicles, vehicle parts and accessories and other products including apparel, as well as services such as rental, financing and maintenance services. It currently has approximately 3,310 authorised dealers in locations throughout the world including many in the United States.
The Complainant's commercial success using the mark BMW has been "tremendous". Over the years the Complainant has sold many billions worth of products and services under the mark BMW. In 2015 it had worldwide sales and revenue in excess of EUR 92 billion. In prior years its sales were also in the billions of euros with revenues of more than EUR 80 billion in 2014, EUR 76 billion in 2013, over EUR 76 billion in 2012 and over EUR 68 billion in 2011.
The Complainant has extensively and widely advertised and promoted its products and services under the mark BMW. It spends tens of millions of USD every year to advertise, market and promote its name and mark in connection with its products and services through a variety of media including television and print advertisements, the Internet and high profile sponsorships. The mark has also received considerable third party press attention and recognition.
The mark BMW which has been in use since 1917 enjoys undoubted fame as a result of extensive and long use and advertising and favourable public acceptance and recognition worldwide. The fact that the mark BMW has become one of the most recognised brands in the world is shown by the fact that Interbrand, one of the world's leading branding firms, has ranked the brand BMW in its top 100 report for global brands for many years. In 2015 Interbrand ranked the mark BMW eleventh "Best Global Brands" with a value of more than USD 37.2 billion. Excerpts from the Interbrand 2015 "Best Global Brands" report are set out at Exhibit 4 to the Complaint.
For many years the Complainant has used its mark BMW in connection with its network of websites dedicated to advertising, promoting and/or offering its automobiles, motorcycles and related products and services. Its online network which has been in operation since at least 1996 receives many millions of hits each month. Its websites are accessible by domain names consisting of the mark BMW alone or combined with relevant geographic or descriptive terms.
For example BMW international portal websites include its websites located at the domain names <bmw.com> and <bmwgroup.com>. Its portal websites provide information regarding its products and services and allow users to select their country or region so as to go to country specific or region specific websites for detailed and geographically relevant information regarding the Complainant's products and services. Like its portal websites the Complainant's country and specific and region specific websites are located at BMW-formative domain names. For example the Complainant's website for United States consumers is located at the domain name <bmwusa.com>. It also operates product specific websites such as <bmwmotorcycles.com> which provides extensive information on the Complainant's motorcycles including its touring and sport motorcycles that it has offered for many years. This can be seen from screen shots exhibited at Exhibit 5 to the Complaint.
In addition to its corporate websites, the Complainant has for many years permitted its authorised dealers and authorised importers to use trade names and domain names comprised in part of the mark BMW for their authorised BMW businesses. Numerous dealers use and have used such names. Thus the Complainant's authorised dealers' trade names and domain names frequently consist of the mark BMW together with the dealer's name and or geographic location.
As a result of these longstanding branding procedures followed by the Complainant and its authorised dealers, customers encountering domain names consisting of the mark BMW combined with a geographic term will believe that the corresponding website is owned, operated and/or authorised by the Complainant.
One of the Complainant's authorised dealers in North Carolina, Touring Sport, uses the trade name Touring Sport BMW and a corresponding domain name <touringsportbmw.com>. It registered the domain name in 1999 and has used it for its website from 1999 until May 2015 when its registration inadvertently lapsed for non-payment of the renewal fee. The Respondent then immediately registered the domain name which is now in dispute in this Complaint. It should be noted that Touring Sport continues to be known by the trading name Touring Sport BMW on various websites such as Yelp, the Better Business Bureau (BBB) and MapQuest. This can be seen from Exhibit 6 to the Complaint.
The Complainant has continuously used the mark BMW since 1917 and owns numerous registrations for the mark in more than 140 countries around the world.
In the Complaint the Complainant sets out a number of registrations in Germany and in the United States for the mark BMW including the following:
a) German registration no. 221388 for the mark BMW and Design filed on October 5, 1917 and registered on December 10, 1917 in classes 12, 7, 8 and 11.
b) German registration no. 410579 for the mark BMW filed on February 23, 1929 and registered on November 15, 1929 in classes 12 and 7.
c) United States registration no. 611710 for the mark BMW filed on March 10, 1954 and registered on September 6, 1955 in class 12.
d) United States registration no. 613465 for the mark BMW and Design filed March 10, 1954 and registered on October 4, 1955 in class 12.
The evidence adduced by the Complainant as to the Respondent's infringing activities are that the Respondent registered the disputed domain name in May 2015 which is long after the Complainant began using its mark BMW. It also registered the disputed domain name after the Complainant's authorised dealer Touring Sport/Touring Sport BMW owned and used the domain name before it inadvertently lapsed. Details of this can be seen at Exhibit 9 to the Complaint.
The disputed domain name consists of the Complainant's famous BMW mark in its entirety together with the terms "Touring" and "Sport".
At Exhibit 10 to the Complaint is evidence that the Respondent uses the disputed domain name for a website with adult/pornographic content that includes an "introduction" section that is clearly intended to mislead consumers into initially falsely believing that the website is associated with the Complainant or its authorised dealer. Specifically the Respondent's website prominently displays the name Touring Sport BMW –Complaint's authorised dealers name – followed by the tag line "Automobile Dealership? We've got you covered!"
The website then features adult/pornographic text with imbedded links to pornographic websites for example:
a) "Fast cars and sexy girls, this is what men always dig. But what about something more kinky when we say sexy girls.";
b) "These girls don't stop, they are faking being female agents and they trick their clients into sex.";
c) "This is the special club for all babysitters that got busted. If you are one, or know anybody like that, join us."
There are then links to pornographic websites at the domain name <mybabysittersclub.org>.
The Complainant also draws attention to the fact that the Respondent's activities have been the subject of an earlier UDRP decision; The Allen-Lamb House Foundation v. Jaroslaw Matula, NAF Case No. FA1412001597664) in which the panel ordered a transfer of the domain name on the grounds of the Respondent's bad faith.
There is no Response filed by the Respondent. Therefore the Panel accepts the evidence adduced by the Complainant as true and proceeds to determine this Complaint on the basis of the Complainant's evidence.
5. Parties' Contentions
1. The disputed domain name is confusingly similar to the Complainant's mark BMW because it contains the Complainant's mark BMW in its entirety combined with descriptive terms.
2. The Respondent has no rights or legitimate interests in the disputed domain name.
a) The Respondent's registration and use of the disputed domain name for adult/pornographic content does not constitute a bona fide offering of goods or services.
b) The Respondent's use of the name Touring Sport BMW followed by the tag line "Automobile Dealership? We've got you covered!" constitutes passing off.
c) The Respondent is not and has not been commonly known by the disputed domain name.
3. The Respondent's registration and use of the disputed domain name constitutes bad faith.
a) The Respondent's registration and use of the disputed domain name for adult/pornographic content in itself constitutes bad faith.
b) The Respondent's registration and use of the disputed domain name constitutes bad faith because the adult/pornographic content disrupts the Complainant's business and tarnishes the Complainant's mark.
c) The Respondent's use of the disputed domain name constitutes bad faith because it is using the disputed domain name to intentionally attract for commercial gain Internet users by creating a likelihood of confusion by the Complainant and its mark.
d) The Respondent's use of the disputed domain name for passing off activities constitutes an independent ground of bad faith.
e) The re-registration of the disputed domain name after it was owned and used by the Complainant's authorised dealer constitutes bad faith.
f) The Respondent's registration of the disputed domain name constitutes bad faith in that the Respondent has a bad faith pattern of registering trade mark related domain names as is shown by the UDRP decision referred to above.
g) The Respondent has knowledge of the Complainant's rights in the mark BMW given the famous nature of the mark BMW.
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
The Panel accepts the evidence adduced by the Complainant that the disputed domain name contains the Complainant's mark BMW in its entirety combined with the descriptive terms "touring" and "sport". It is well established on previous UDRP authority that domain names consisting of a trade mark and descriptive terms are confusingly similar to the mark in issue.
Moreover the addition of the terms "touring" and "sport" heighten the confusing similarity of the disputed domain name because the terms correspond directly to the Complainant's authorised dealer's names "Touring Sport" and "Touring Sport BMW".
It follows that the Panel finds for the Complainant in respect of this element.
B. Rights or Legitimate Interests
The Panel finds that there is no evidence that the Respondent is or has been commonly known by the disputed domain name. There is no evidence, including public WhoIs information, to demonstrate that the Respondent is commonly known by the disputed domain name. Moreover the Respondent is not a licensee of the Complainant and the Complainant has never authorised the Respondent to register or use the disputed domain name or its mark BMW.
The Panel also takes into account that the Respondent's registration and use of the disputed domain name for adult/pornographic content does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name. It is well established by previous authorities that the use of a trade mark in a domain name resolving to a website consisting of adult or pornographic content fails to demonstrate any legitimate interest of the Respondent in the disputed domain name. An example of this is Bayerische Motoren Werke AG v. Ivan Razin, WIPO Case No. D2005-0341, in which the panel found that there was no legitimate interest in the respondent's use of the domain name disputed in that case for pornographic website content.
In the Panel's view the above is more than sufficient to enable the Complainant to succeed under this element. The Panel therefore finds that the Respondent has no rights or legitimate interests in the disputed domain name.
C. Registered and Used in Bad Faith
The Complainant puts forward seven reasons why the Respondent's registration and use of the disputed domain name constitutes bad faith. The Panel does not consider that it is necessary to consider each of these. It is prepared to find that the Respondent's registration and use of the disputed domain name for adult/pornographic content itself constitutes grounds for a finding of bad faith.
Furthermore, the Panel also finds that the Respondent's registration and use of the disputed domain name constitutes bad faith under the UDRP because the Respondent is using the disputed domain name to intentionally attract for commercial gain Internet users by creating a likelihood of confusion with the Complainant and its BMW mark as to the source, sponsorship and affiliation and/or endorsement of the Respondent's website.
Accordingly the Panel finds that the disputed domain name was registered and 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 disputed domain name <touringsportbmw.com> be transferred to the Complainant.
Clive Duncan Thorne
September 5, 2016