WIPO Arbitration and Mediatin Center
ADMINISTRATIVE PANEL DECISION
Bayerische Motoren Werke AG v. Domain Whois Protect Service / Cyber Domain Services Pvt. Ltd.
Case No. D2016-1951
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 Domain Whois Protect Service / Cyber Domain Services Pvt. Ltd. of Mumbai, Maharashtra, India.
2. The Domain Name and Registrar
The disputed domain name <turnersvillebmw.com> is registered with Tirupati Domains and Hosting Pvt Ltd. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 26, 2016. On September 27, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 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 September 29, 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 October 3, 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 October 4, 2016. In accordance with the Rules, paragraph 5, the due date for Response was October 24, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 25, 2016.
The Center appointed Piotr Nowaczyk as the sole panelist in this matter on November 10, 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, a German corporation, is one of the most successful manufacturers of automobiles and motorcycles in the world. It also provides numerous services including maintenance and repair services, financing, leasing, insurance, and warranty services.
The Complainant has an authorized dealer in Turnersville, New Jersey (United States of America) which has been using the trade name “BMW of Turnersville” and the corresponding domain name <bmwofturnersville.com> for over 10 years.
The Complainant is the owner of, among others, the following trademark registrations:
- German trademark registration No. 221388 for BMW registered on December 10, 1917 to cover goods and services in classes 7, 8, 9, 11 and 12;
- German trademark registration No. 410579 for BMW registered on November 15, 1929 to cover goods and services in classes 7 and 12;
- US trademark registration No. 0611710 for BMW registered on September 6, 1955 to cover goods in class 12;
- US trademark registration No. 0613465 for BMW registered on October 4, 1955 to cover goods in class 12.
The Complainant owns many domain names including the BMW mark, i.e.: <bmw.com>, <bmwgroup.com> and <bmwusa.com>.
The disputed domain name was registered on February 2, 2007.
5. Parties’ Contentions
Firstly, the Complainant contends that the disputed domain name is confusingly similar to the Complainant’s famous mark as it contains the BMW mark in its entirety combined with a geographic term (“Turnersville”). It also asserts that Internet users are likely to believe that the disputed domain name relates to its business in the specified geographic region. According to the Complainant, the confusing similarity of the disputed domain name is further heighted by the fact that it mimics the established naming conventions for domain names and trade names commonly used by its authorized dealers, including its authorized dealer of Turnersville.
Secondly, the Complainant submits that the Respondent has no rights or legitimate interests in the disputed domain name since its registration and use of a pay-per-click website does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use under the Policy. Moreover, the Complainant asserts that the Respondent is not and has not been commonly known by the disputed domain name. According to the Complainant, the Respondent is neither his licensee nor otherwise authorized to use the BMW mark.
Thirdly, the Complainant asserts that the Respondent has registered and is using the disputed domain name in bad faith, in particular, the Respondent has registered and is using the disputed domain name to intentionally attract, for commercial gain, Internet users by creating a likelihood of confusion with the BMW mark as to the source, sponsorship, affiliation, and/or endorsement of the Respondent’s website. The Complainant also asserts that the fact that the pay-per-click links on the website associated with the disputed domain name relate to the Complainant’s BMW products is further evidence that the Respondent acted in bad faith.
Further, the Complainant contends that the Respondent has a bad-faith pattern of registering trademark-related domain names which is evidenced by the fact that it has been the subject of numerous adverse UDRP decisions. Finally, in the Complainant’s opinion, the Respondent had knowledge of the Complainant’s rights when it registered the disputed domain name given, in particular, the fame of the BMW mark and the similarity between the disputed domain name and the domain name of the Complainant’s authorized dealer in Turnersville.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy places a burden on the Complainant to prove the presence of three separate elements. The three elements can be summarized as follows:
(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 the disputed domain name; and
(iii) the disputed domain name has been registered and is being used by the respondent in bad faith.
The requested remedy may only be granted if the above criteria are met.
A. Identical or Confusingly Similar
The disputed domain name <turnersvillebmw.com> contains the BMW mark in its entirety combined with a geographic term (“Turnersville”). It is well established that the addition of a geographic identifier to a distinctive mark is not sufficient to distinguish the domain name from the mark itself (See Bayerische Motoren Werke AG (BMW AG) v. Anthony Edwards, WIPO Case No. D2008-1624).
Moreover, the Panel emphasizes that the disputed domain name mimics the trade name of the Complainant’s authorized dealer of Turnersville and its domain name which increases the likelihood of confusion and association between the parties.
Therefore, the Panel finds that the disputed domain name is confusingly similar to the BMW mark, in which the Complainant has rights, and as a consequence, the Complainant meets the requirement of paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
The overall burden of proof for this element rests with the Complainant. However, it is well established by previous UDRP decisions that once a complainant establishes a prima facie case that a respondent lacks rights or legitimate interests in a domain name, the burden shifts to the respondent to rebut the complainant’s contentions. If the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy (See Danzas Holding AG, DHL Operations B.V. v. Ma Shikai, WIPO Case No. D2008-0441; see also the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 2.1 and cases cited therein).
The Panel notes the following circumstances presented in the Complaint in relation to any possible rights or legitimate interests of the Respondent in the disputed domain name: (a) the Respondent is not affiliated or related to the Complainant in any way; (b) the Respondent is neither licensed nor authorized by the Complainant to use the BMW mark; (c) there is no evidence that the Respondent has been commonly known by the disputed domain name; (d) the Respondent has not demonstrated use of, or demonstrable preparations to use, the disputed domain name in connection with a bona fide offering of goods or services, in particular, the use of the disputed domain name for a pay-per-click website does not qualify as a bona fide offering of goods or services under the circumstances of this case.
Accordingly, in the absence of any evidence to support a possible basis on which the Respondent may have rights or legitimate interests in respect of the disputed domain name, the Panel accepts the Complainant’s unrebutted prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name and concludes that the second element of paragraph 4(a) of the Policy is satisfied.
C. Registered and Used in Bad Faith
Paragraph 4(a)(iii) of the Policy requires the Complainant to prove the registration as well as use in bad faith of the disputed domain name.
Firstly, the disputed domain name was registered on February 2, 2007, and incorporates the BMW mark, which was registered years before and is commonly known worldwide. In the Panel’s opinion, the notoriety of use of the BMW mark and the similarity of the disputed domain name with the trade name of the Complainant’s authorized dealer in Turnersville indicate that the Respondent knew or should have known about the Complainant’s rights when registering the disputed domain name.
Secondly, the Respondent is using the disputed domain name in bad faith which is evidenced by the fact that it directs Internet users to a parking website involving a pay-per-click system. The fact that these pay-per-click links divert Internet users to websites related to the products of the Complainant is further evidence of bad faith registration and use as this show that the Respondent had knowledge of the Complainant and its BMW mark. In this instance, it appears that the sole purpose of the Respondent’s parking website is to attract Internet users to the site, for profit, by creating confusion between the disputed domain name and the Complainant and its trademark (see, e.g., Bayerische Motoren Werke AG v. Sabri Hammad, WIPO Case No. D2007-0675; Bayerische Motoren Werke AG v. Aditya Roshni, Web Services Pty, WIPO Case No. D2015-1110).
Furthermore, the Respondent has engaged itself in the pattern of conduct as to registration of the domain names including famous marks and was subject to many UDRP decisions which constitutes further evidence of its bad faith.
As the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the website at the disputed domain name by creating a likelihood of confusion with the Complainant’s trademarks as to the source, sponsorship, or endorsement of or affiliation with the website, the Panel finds the bad faith requirement under paragraph 4(b)(iv) of the Policy to be fulfilled and the third element of paragraph 4(a) of the Policy is satisfied.
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 <turnersvillebmw.com> be transferred to the Complainant.
Date: November 21, 2016