WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Bayerische Motoren Werke AG v. MIKE LEE / WHOISGUARD PROTECTED, WHOISGUARD, INC., Yang Xiao, Xiao Yang, Ning Li, Li Ning, MIKE LEE
Case No. D2016-2268
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 Respondents are MIKE LEE of Foshan, Fujian, China / WHOISGUARD PROTECTED, WHOISGUARD, INC. of Panama; Yang Xiao, Xiao Yang of Shenzhen, Guangdong, China; Ning Li, Li Ning of Shenzhen, Guangdong, China; MIKE LEE of Foshan, Fujian, China.
2. The Domain Names and Registrars
The disputed domain names <bmw-icom.com> and <bmw-icom.net> are registered with 22net, Inc. The disputed domain name <bmwispi.com> is registered with eNom, Inc. The disputed domain names <bmwista.com> and <bmwrheingold.com> are registered with HiChina Zhicheng Technology Ltd. (together the "Domain Names").
3. Procedural History
The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the "Center") on November 8, 2016. On November 8, 2016, the Center transmitted by email to 22net, Inc., eNom, Inc. and HiChina Zhicheng Technology Ltd. (the "Registrars") a request for registrar verification in connection with the Domain Names. On November 9 and November 15, 2016, the Registrars 22net, Inc. and HiChina Zhicheng Technology Ltd. transmitted by email to the Center their verification responses confirming that the Respondents Yang Xiao, Xiao Yang, Ning Li, Li Ning and MIKE LEE are listed as the registrants for the Domain Names <bmw-icom.net>, <bmw-icom.com>, <bmwista.com> and <bmwrheingold.com> and providing the contact details. On November 9, 2016, the Registrar eNom, Inc. transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name <bmwispi.com> which differed from the named Respondent WHOISGUARD PROTECTED, WHOISGUARD, INC. and contact information in the Complaint. The Center sent an email communication to the Complainant on November 15, 2016 providing the registrant and contact information disclosed by the Registrar eNom, Inc., and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on November 16, 2016 including a consolidation request regarding multiple registrants.
On November 15, 2016, the Center sent an email communication to the Parties in both Chinese and English regarding the language of the proceeding in relation to the Domain Names <bmw-icom.net>, <bmw-icom.com>, <bmwista.com> and <bmwrheingold.com>. On November 16, 2016, the Complainant confirmed its request that English be the language of the proceeding. The Respondents did not comment on the language of the proceeding by the specified due date.
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 Respondents in both Chinese and English of the Complaint, and the proceedings commenced on November 21, 2016. In accordance with the Rules, paragraph 5, the due date for Response was December 11, 2016. The Center notified the Respondents' default on December 12, 2016.
On December 12, 2016, an email was received from one of the Respondents.
The Center appointed Karen Fong as the sole panelist in this matter on December 19, 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 one of the most successful manufacturers of automobiles and motorcycles in the world. It owns the trade mark, service mark, and trade name BMW. It has continuously used BMW as a trade mark and service mark since 1917. Under its BMW mark, the Complainant manufactures, 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 BMW mark on a wide variety of automobile and motorcycle parts and accessories and numerous collateral products.
The Complainant has, and owns numerous registrations for the BMW trade mark and variations of it in more than 140 countries around the world. The earliest registration for the BMW mark is in Germany registered in 1917. Its earliest registration in the United States dates back to 1954.
The Complainant's headquarters are located in Germany whilst its products and components are manufactured at 30 sites in 14 countries on four continents. It has more than 122,000 employees worldwide. The Complainant has manufactured, marketed, and sold many millions of vehicles under the BMW mark. For example, in each year from 2011 through 2015, it produced and sold more than 1,300,000 automobiles, and more than 100,000 motorcycles under the BMW mark. In 2015, BMW had worldwide sales and revenue in excess of EUR 92 billion. In prior years, BMW's sales were also in the billions, with revenues of more than EUR 80 billion in 2014, EUR 76 billion in 2013, more than EUR 76 billion in 2012, and more than EUR 68 billion in 2011.
The Complainant like most major car manufacturers utilizes a network of authorized dealers to market its BMW vehicles, vehicle parts and accessories, and other products including apparel, as well as services such as rental, financing, and maintenance services. BMW currently has approximately 3,310 authorized BMW dealers in locations throughout the world. The Complainant over the years has extensively and widely advertised and promoted its products and services under the BMW mark, spending tens of millions of dollars every year to advertise, market, and promote the BMW 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 Complainant has also received considerable third-party press, attention, and recognition in connection with the BMW mark.
In use since 1917, the BMW mark enjoys unquestionable fame as a result of extensive and long use and advertising, and favorable public acceptance and recognition worldwide. Indeed, the BMW mark has become one of the most recognized brands in the world. In 2015 Interbrand ranked the BMW mark eleventh of the "Best Global Brands" with a value of more than USD 37.2 billion.
The Complainant has since 1996 used its BMW mark in connection with its network of websites dedicated to advertising, promoting, and/or offering its automobiles, motorcycles, and related products and services. The Complainant's websites are accessible via domain names comprised of the BMW mark alone and combined with relevant geographic and/or descriptive terms. The domain names it owns include: <bmw.com>, <bmwgroup.com> and <bmwusa.com>.
The Complainant offers proprietary diagnostic systems (comprised of hardware and software) for maintenance, repair, servicing, and programming of BMW automobiles to its authorized dealers and/or other authorized parties. These diagnostic tools include (a) BMW's ICOM A2+B+C system; (b) BMW's ISPI software, also known as BMW's Integrated Service Process Initiative; (c) BMW's RHEINGOLD diagnostic and repair guide; and (d) BMW's ISTA software, also known as Integrated Service Technical Application.
The Complainant uses its composite ISPI NEXT logo in connection for its next-generation updates for the ISPI diagnostic program, and its ISPI NEXT logo incorporates the Complainant's BMW logo, its MINI logo, and its subsidiary Rolls-Royce Motor Cars Limited's RR ROLLS ROYCE logo.
The following Respondents registered the following Domain Names on these dates:
Date of Registration
November 9, 2014
Introductory screen uses BMW Logo, Mini Logo and Rolls Royce Logo (a test purchase was conducted and the product found to be counterfeit).
March 10, 2014
This was passively held but it is now a pay-per-click website.
March 20, 2012
This is passively held.
Yang Xiao/Xiao Yang
April 10, 2012
Advertises counterfeit "BMW ICOM A2+B+C" software identical to the same product sold on website connected to <bmwispi.com>.
The website at <bmw-icom.net> links to a website at <eobdtool.com> to purchase the product.
Ning Li/Li Ning
March 12, 2014
Advertised BMW software using the email address […]@eobdtool.com and linked to the website at <eobdtool.com> for product purchases.
It is currently used to advertise BMW. software that links to the website at <eob2repair.com> for product purchases. The website at <eob2repair.com> offers the same counterfeit "BMW ICOM A2+B+C" software.
5. Parties' Contentions
The Complainant contends that the Domain Names are identical or confusingly similar to the trade mark BMW, the Respondent has no rights or legitimate interests with respect to the Domain Names, and that the Domain Names were registered and used in bad faith. The Complainant requests transfer of the Domain Names, all of which it believes are related and under management and control of a single, unknown owner/registrant or the registrants are acting in concert.
The basis of its belief that the registrants are related and under management and control of a single unknown owner/registrant or the registrants are acting in concert is that all five Domain Names are associated with and connected to a network of websites advertising and/or offering counterfeit versions of the BMW's proprietary diagnostics software amongst other counterfeit products. Also, one of the Respondents, Mike Lee has had an adverse UDRP decision against him in relation to the domain name <gmmdi.com> that he used to offer counterfeit diagnostic software for the complainant GM automobiles.
The Respondents did not formally reply to the Complainant's contentions save that one of them sent an email on December 12, 2016 protesting why the proceeding has been brought against them when there are other examples of misuse, e.g., <bmw-icom.org>.
6. Discussion and Findings
According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the Domain Names, the Complainant must prove each of the following, namely that:
(i) The Domain Names are identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
(ii) The Respondent has no rights or legitimate interests in respect of the Domain Names; and
(iii) The Domain Names were registered and being used in bad faith.
B. Preliminary Procedural Issue - Consolidation of Proceedings
Paragraph 5(f) of the Policy allows a panel to consolidate multiple disputes between parties at its sole discretion and paragraph 10(e) of the Rules empowers a panel to consolidate multiple domain name disputes in accordance with the Policy and Rules. Neither the Policy nor the Rules expressly provide for the consolidation of multiple respondents in a single administrative proceeding. In fact, paragraph 3(c) of the Rules provides that a complaint may relate to more than one domain name provided that the domain names are registered by the same domain name holder. The panel in Speedo Holdings B.V. v. Programmer, Miss Kathy Beckerson, John Smitt, Matthew Simmons, WIPO Case No. D2010-0281 reviewed the relevant UDRP decisions in relation to consolidation in multiple respondent's cases and extracted the following general principles:
(1) Consolidation of multiples registrants as respondents in a single administrative proceeding may in certain circumstances be appropriate under paragraphs 3(c) or 10(e) of the Rules provided the complainant can demonstrate that the disputed domain names or the websites to which they resolve are subject to common control, and the panel having regard to all of the relevant circumstances, determines that consolidation would be procedurally efficient and fair and equitable to all parties.
(2) The administrative provider should act as a preliminary gatekeeper in such cases by determining whether or not such complaints fulfill the requisite criteria. Once a case is admitted on a prima facie basis, the respondent has the opportunity to make its submissions on the validity of the consolidation together with its substantive arguments. In the event that the panel makes a finding that the complaint has not satisfied the requisite criteria, the complainant is not precluded from filing the complaint against the individual named respondents.
In the present case, each of the Domain Names incorporate the BMW trade marks in their entirety as well as the name of the Complainant various diagnostic products. All three registrants have websites that sell or are linked to websites that sell counterfeit BMW diagnostic products (the"Websites"). The Domain Names have clearly been used to divert consumers from the Complainant's websites. The Panel accepts the Complainant's contentions set out above. All of them point to the Complainant being the target of common conduct based on the registration and use of the Domain Names and that such conduct interferes with the BMW trade marks. Furthermore, Complainant's claims against the Domain Names involve common questions of law and fact.
The Respondents had the opportunity but did not respond substantively to the Complaint.
Accordingly, applying the principles to the facts in this case, the Panel finds that the Complainant has established more likely than not that the Domain Names are subject to common ownership or control. The Panel finds such common control to justify consolidation of the Complainant's claims against the registrants of the Domain Names in this proceeding. The Panel further concludes in the circumstances of this case that consolidation would be fair and equitable to all parties and procedurally efficient, and therefore will allow the consolidation as requested by the Complainant pursuant to paragraph 10(e) of the Rules.
In light of the above, the Respondents may be referred to collectively as the Respondent hereafter.
C. Language of the Proceeding
The Rules, paragraph 11, provide that unless otherwise agreed by the parties or specified otherwise in the registration agreement between the respondent and the registrar in relation to the disputed domain name, the language of the 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 proceedings. According to the information received from the Registrars 22net, Inc. and HiChina Zhicheng Technology Ltd., the language of the registration agreements for the Domain Names <bmw-icom.net>, <bmw-icom.com>, <bmwista.com> and <bmwrheingold.com> is Chinese. According to the information received from the Registrar eNom, Inc., the language of the registration agreement for the Domain Name <bmwispi.com> is English.
The Complainant submits in paragraph III of the Complaint that the language of the proceeding should be English as English is extensively used on the Websites. Also in the UDRP proceedings against one of the Respondents, Mike Lee as discussed above, the UDRP was conducted in English as the panel found there to be sufficient evidence that he was proficient in the English language.
The Panel accepts the Complainant's submissions regarding the language of the proceeding. The Complainant may be unduly disadvantaged by having to conduct the proceeding in Chinese. The Panel notes that in any case all of the communications from the Center to the parties were transmitted in both Chinese and English. There is therefore no question of the Respondent not being able to understand the Complaint. The Respondent chose not to respond to the Complaint. Having considered all the circumstances of this case, the Panel determines that English is the language of the proceeding.
D. Identical or Confusingly Similar
The Panel accepts that the Complainant has rights to the mark BMW through extensive use and registration that predates the Domain Names.
The threshold test for identity or confusing similarity under the Policy involves the comparison between the trade mark and the domain name itself to determine likelihood of Internet user confusion. The trade mark would generally be recognizable within the domain name. In this case, the Domain Names comprise the Complainant's trade mark BMW and the names of its various diagnostic software, "ispi", "rheingold", "ista" and "icom". For the purposes of assessing identity and confusing similarity under paragraph 4(a)(i) of the Policy, it is permissible for the Panel to ignore the generic domain suffix. Further, the addition of the names of the Complainant's diagnostic software do not negate the confusing similarity encouraged by the Respondent's complete integration of the BMW trade mark in the Domain Names.
The Panel finds that the Domain Names are confusingly similar to the BMW trade mark of the Complainant, and that the requirements of paragraph 4(a)(i) of the Policy are therefore fulfilled.
E. Rights or Legitimate Interests
In relation to the second element of the UDRP, whilst the overall burden of proof rests with the Complainant, it is recognized that this could result in the impossible task of proving a negative. Hence, a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such a prima facie case is made, the burden of production shifts to the respondent. The standard of proof required under the UDRP is "on balance". An asserting party needs to establish that it is more likely than not that the claimed fact is true.
The Complainant contends that the Respondent has no rights or legitimate interest in the Domain Names. The Respondent is not commonly known by those names. It is not a licensee of the Complainant and is not otherwise authorized to use the Complainant's BMW trade mark. The websites connected to the Domain Names sell or are linked to websites that sell counterfeit BMW proprietary diagnostic software products. There can be no legitimate interest in the sale of counterfeits. (see Wellquest International, Inc. v. Nicholas Clark, WIPO Case No. D2005-0552 and Farouk Systems, Inc. v. QYM, WIPO Case No. D2009-1572).
The Panel finds that the Complainant has made out a prima facie case, a case calling for an answer from the Respondent. The Respondent has not responded apart from protesting why the proceeding has been brought against them when there are other examples of misuse, e.g., <bmw-icom.org>. This is no defence under the UDRP. Further, the Panel is unable to conceive of any basis upon which the Respondent could sensibly be said to have any rights or legitimate interests in respect of the Domain Names.
Having regard to the evidence above, the Complainant has satisfied its burden of proof of showing that the Respondent lacks rights or legitimate interests in the Domain Names. Accordingly, the Panel finds that paragraph 4(a)(ii) of the Policy has been satisfied.
F. Registered and Used in Bad Faith
To succeed under the Policy, a complainant must show that the domain name has been both registered and used in bad faith. It is a double requirement.
The Panel is satisfied that the Respondent was aware of the Complainant's marks when it registered the Domain Names. The Domain Names incorporate the Complainant's famous BMW trade mark in its entirety as well as names of its diagnostic software products. Further the display of the Complainant's trade marks and counterfeit products on the Websites confirm the Respondent's awareness of the BMW trade marks. Thus, the Panel concludes that the Respondent deliberately registered the Domain Names in bad faith.
In the Panel's view this is clear evidence that the registration of the Domain Names was in bad faith.
The Panel also finds that the actual use of the Domain Names is in bad faith. The Websites offer for sale or are linked to websites which offer for sale counterfeit BMW products. A test purchase was made as stated in paragraph 4 above and the Complainant confirmed after testing that the software purchased from the Respondent which bears the BMW trade mark was counterfeit. The use by a respondent of a domain name which includes a well-known trade mark to resolve to a website which offers and sells counterfeit products under that trade mark is evidence of bad faith registration and use. (See Policy, paragraph 4(b)(iv). See also Burberry Limited v. Jonathan Schefren, WIPO Case No. D2008-1546 and Prada S.A. v. Domains for Life, WIPO Case No. D2004-1019).
Moreover, the fact that <bmwista.com> and <bmwrheingold.com> are inactive does not avoid a bad faith finding under these circumstances.
The Panel therefore concludes that the Domain Names were registered and are being used in bad faith under paragraph 4(b)(iv) of the Policy.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Names <bmw-icom.com>, <bmw-icom.net>, <bmwispi.com>, <bmwista.com> and <bmwrheingold.com> be transferred to the Complainant.
Date: January 6, 2017
1 The Complainant asserts that it has purchased the products offered on the Respondents' website and based on its testing, the products confirmed to be counterfeit. The Panel accepts the Complainant's allegation that the products offered on the Respondents' websites are counterfeit for the purposes of the proceeding, also noting that the Respondents have not challenged the Complainant's allegation.