WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Bayerische Motoren Werke AG (“BMW”) v. Registration Private, Domains By Proxy, LLC / Armands Piebalgs
Case No. D2017-0156
1. The Parties
The Complainant is Bayerische Motoren Werke AG (“BMW”), of Munich, Germany, represented by Kelly IP, LLP, United States of America (“United States”).
The Respondents are Registration Private, Domains By Proxy, LLC of Scottsdale, United States / Armands Piebalgs of Riga, Latvia.
2. The Domain Names and Registrar
The disputed domain names <bmdecoder.com> and <bmwdecoder.com> (the “Disputed Domain Names”) are registered with GoDaddy.com, LLC (the “Registrar”).
3. Procedural History
The Complaint and the amended Complaint were filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 26, 2017 and January 31, 2017. On January 27, 2017 and February 2, 2017, the Center transmitted by email to the Registrar two requests for registrar verification in connection with the Disputed Domain Names. On January 29, 2017 and February 2, 2017, the Registrar transmitted by email to the Center its verification responses confirming that the Respondents are listed as the registrant and providing the contact details.
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 of the Complaint, and the proceedings commenced on February 7, 2017. In accordance with the Rules, paragraph 5, the due date for Response was February 27, 2017. The Respondents did not submit any response. Accordingly, the Center notified the Respondents’ default on March 1, 2017.
The Center appointed Nick J. Gardner as the sole panelist in this matter on March 7, 2017. 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 leading manufacturers of automobiles and motorcycles in the world. It owns the trademark, service mark, and trade name BMW. It has continuously used BMW as a trademark and service mark since 1917. Under its BMW trademark, 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 trademark 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 trademark and variations of it in more than 140 countries around the world. The earliest registration for the BMW trademark is in Germany. Namely, German Trademark registration no. 221388 BMW (figurative mark), registered on December 10, 1917.
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 trademark. 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 trademark. 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 trademark, spending tens of millions of dollars every year to advertise, market, and promote the BMW name and trademark 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 trademark.
In use since 1917, the BMW trademark enjoys unquestionable fame as a result of extensive and long use and advertising, and favorable public acceptance and recognition worldwide. Indeed, the BMW trademark has become one of the most recognized brands in the world. In 2015 Interbrand ranked the BMW trademark eleventh of the “Best Global Brands” with a value of more than USD 37.2 billion.
The Complainant has since 1996 used its BMW trademark 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 trademark alone and combined with relevant geographic and/or descriptive terms. The domain names it owns include: <bmw.com>, <bmwgroup.com> and <bmwusa.com>.
The Respondents registered <bmwdecoder.com> in February 24, 2016. It is used to offer for sale reports that contain (or purport to contain) information about BMW and MINI vehicles including dealer history, service history, and mileage. Respondents are not and have never been an authorized user of BMW’s proprietary data. In addition to containing BMW’s data, Respondents’ reports also contain unauthorized copies of BMW’s copyright-protected publicity images. The Respondents registered <bmdecoder.com> on January 27, 2017, immediately after BMW filed this Complaint and after the Respondents were notified of BMW’s Complaint by the Registrar. The Respondents link this domain name to a website offering an unauthorized “BMW VIN Decoder” tool and unauthorized reports for BMW vehicles. A VIN is a Vehicle Identification Number, which is a unique number applicable to a given vehicle.
5. Parties’ Contentions
The Complainant says that the Disputed Domain Names are each confusingly similar to its BMW trademark as each one incorporates Complainant’s well-known and distinctive BMW trademark or an obvious contraction of that trademark, and the combination thereof with generic terminology is insufficient to distinguish the Disputed Domain Names from the Complainant’s BMW trademark.
The Complainant says the Respondents do not have any rights or legitimate interests in the Disputed Domain Names and the Respondents use the Disputed Domain Names in bad faith as the websites to which the Disputed Domain Names resolve make use of the Complainant’s BMW trademark in order to offer for sale reports which the Complainant says are “counterfeit” as the type of data they purport to contain is only available to the Complainant’s authorised users, which does not include the Respondents. The Complainant says these reports contain its proprietary data which is (a) accessible only to users that are authorized by BMW, (b) accessible only through BMW, and (c) governed by terms that prohibit copying and distribution of such data, and that prohibit use of such data for any purpose other than maintenance and repair work at the authorized user’s repair facility. The Complainant says the Respondents are not and never have been an authorized user of BMW’s proprietary data. The Complainant also says that in addition to containing BMW’s data, the Respondents’ reports also contain unauthorized copies of BMW’s copyright-protected publicity images. The Complainant also says that the Respondents’ websites offer for sale counterfeit BMW navigation software.
The Respondents did not reply to the Complainant’s contentions.
6. Discussion and Findings
As a preliminary issue the Panel notes this is a case where one of the Respondents (Registration Private, Domains By Proxy, LLC) appears to be a privacy or proxy registration service while the other Respondent (Armands Piebalgs) appears to be the substantive Respondent. The Panel in this case adopts the approach of most UDRP panels, as outlined in the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 4.9, as follows: “Most panels in cases involving privacy or proxy services in which such disclosure of an underlying registrant has occurred, appear to have found it appropriate to record in their issued decision both the name of the privacy or proxy registration service appearing in the WhoIs at the time the complaint was filed, and of any disclosed underlying registrant”. Accordingly this decision generally refers to both Respondents.
The Panel also notes that no communication has been received from the Respondents. However, given the Notification of the Complaint, the Complaint and its annexes and the Written Notice were sent to the relevant addresses disclosed by the Registrar then the Panel again adopts the approach set out in the WIPO Overview 2.0, paragraph 4.9, namely, “once the WIPO Center has notified the complaint to the WhoIs-listed contact information (especially where confirmed by the registrar) for the domain name registrant, this would normally satisfy the requirement in paragraph 2(a) of the UDRP Rules to employ reasonably available means calculated to achieve actual notice”. Accordingly, the Panel considers it is able to proceed to determine this Complaint and to draw inferences from the Respondents’ failure to file any Response. While the Respondents’ failure to file a response does not automatically result in a decision in favor of the Complainant, the Panel may draw appropriate inferences from the Respondents’ default (see e.g. Verner Panton Design v. Fontana di Luce Corp, WIPO Case No. D2012-1909).
Paragraph 4(a) of the Policy states that the Complainant must prove each of the three following elements in respect of the Disputed Domain Names:
(i) the Disputed Domain Names are identical to or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) the Respondents have no rights or legitimate interests in the Disputed Domain Names;
(iii) the Disputed Domain Names have been registered and are being used in bad faith.
A. Identical or Confusingly Similar
The Complainant has submitted detailed evidence that it is the owner of the BMW trademark.
The Panel holds that each of the Disputed Domain Names is confusingly similar to the above trademark. The Disputed Domain Names, as registered by the Respondents, incorporate either the BMW trademark or a contraction of the BMW trademark omitting the third letter. Previous UDRP panels have consistently held that domain names are identical or confusingly similar to a trademark for purposes of the Policy, “when the domain name includes the trademark, or a confusingly similar approximation, regardless of the other terms in the domain name” (Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a For Sale, WIPO Case No. D2000-0662). The only difference in the present case is the addition in both Disputed Domain Names of the generic word “decoder”, which is apt to describe a website providing what purports to be technical information about a specific car. This addition does not in the opinion of the Panel suffice to negate the similarity between the Disputed Domain Names and the Complainant’s BMW trademark having regard to the established principles set out below. Moreover, whereas in the case of the latter Disputed Domain Names the mark is not present in its entirety, the content at the corresponding website serves to affirm a finding of confusing similarity. Additionally, the registration of multiple domain names with similar content and targeting the same mark reinforce this conclusion.
It is established that, where a mark is the distinctive part of a disputed domain name, the disputed domain name is considered to be confusingly similar to the registered mark (DHL Operations B.V. v. DHL Packers, WIPO Case No. D2008-1694).
It is also well established that the specific top level of the domain name (in this case “.com”) does not generally affect the domain name for the purpose of determining whether it is identical or confusingly similar – see for example Rollerblade, Inc. v. Chris McCrady, WIPO Case No. D2000-0429.
Accordingly the Panel finds that each of the Disputed Domain Names is confusingly similar to the Complainant’s BMW trademark and hence the first condition of paragraph 4(a) of the Policy has been fulfilled.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy non-exhaustively lists three circumstances that demonstrate a right or legitimate interest in the domain name:
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business or other organisation) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate non-commercial 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.
None of these clearly apply in the present circumstances, although conceivably it could be argued that (i) is applicable. However the Panel does not consider that the use concerned is bona fide, for reasons discussed in relation to bad faith, below. The Complainant has not authorised, licensed, or permitted the Respondents to register or use the Disputed Domain Names or to use the BMW trademark. The Complainant has prior rights in the BMW trademark which precede the Respondents’ registration of the Disputed Domain Names. The Complainant has therefore established a prima facie case that the Respondents have no rights or legitimate interests in the Disputed Domain Names and thereby the burden of production shifts to the Respondents to produce evidence demonstrating rights or legitimate interests in respect of the Disputed Domain Names (see for example Do The Hustle, LLC v. Tropic Web, WIPO Case No. D2000-0624; Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455). No such evidence has been produced by the Respondents.
Accordingly the Panel finds that the Respondents have failed to establish any rights or legitimate interests in the Disputed Domain Names and hence the second condition of paragraph 4(a) of the Policy has been fulfilled.
C. Registered and Used in Bad Faith
The Panel is not in a position to determine whether or not the material that the Respondents provide in the form of technical reports about specific vehicles is accurate or not. It is also not able to determine whether or not the Respondents are offering for sale counterfeit navigation software. The Panel is able to reach a decision without determining these issues.
In the present circumstances, the distinctive nature of the BMW trademark, and the evidence as to the extent of the reputation the Complainant enjoys in the BMW trade mark, and the confusingly similar nature of the Disputed Domain Names to the BMW trademark, and the lack of any explanation from the Respondents as to why they registered the Disputed Domain Names leads the Panel to conclude the registration and use was in bad faith. In the present case, the Panel concludes that it is inconceivable that the Respondents selected the Disputed Domain Names independently and without knowledge of the Complainant or its products. The websites operated by the Respondents at the Disputed Domain Names are clearly promoting a business which supplies technical information about BMW vehicles and the Panel has no doubt the Respondents were by use of the Disputed Domain Names seeking to suggest they had a connection with the Complainant in the course of trade, by suggesting that they were the Complainant’s business, or were authorised by the Complainant. They are neither. It is quite clear that by use of the Complainant’s BMW trademark or an abbreviation thereof, combined with the word “decoder”, they were seeking to attract customers who were looking for a source of technical information about BMW vehicles. It does not matter whether or not the information then provided was accurate or not, as what the Respondents are doing is using the Complainant’s trademark (or a contraction thereof) as part of the Disputed Domain Names to suggest they are likely to be an authorised source of such information. As such their behaviour clearly amounts to that specified in paragraph 4(b)(iv) of the Policy as being evidence of registration and use in bad faith, namely “by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your 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 your web site or location or of a product or service on your web site or location”.
Further the Panel notes that the Respondents have not filed a Response and have not sought to provide any explanation as to why their actions were legitimate.
As a result the Panel finds that the Disputed Domain Names have each been registered and are being used in bad faith. Accordingly the third condition of paragraph 4(a) of the Policy has been fulfilled.
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 Names <bmwdecoder.com> and <bmdecoder.com> be transferred to the Complainant.
Nick J. Gardner
Date: March 21, 2017