WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Bayerische Motoren Werke AG v. Dustin Brown
Case No. D2017-1917
1. The Parties
Complainant is Bayerische Motoren Werke AG ("BMW") of Munich, Germany, represented by Kelly IP, LLP, United States of America ("United States" or "U.S.").
Respondent is Dustin Brown of Buffalo, New York, United States.
2. The Domain Name and Registrar
The disputed domain name <bmwnavigation.net> (the "Domain Name") is registered with eNom, Inc. (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on September 30, 2017. On October 2, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On October 2, 2017, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing Respondent's contact details.
The Center verified that the 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 Respondent of the Complaint, and the proceedings commenced on October 10, 2017. In accordance with the Rules, paragraph 5, the due date for Response was October 30, 2017. Respondent did not submit any response. Accordingly, the Center notified Respondent's default on November 7, 2017.
The Center appointed Clive L. Elliott Q.C. as the sole panelist in this matter on November 16, 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
According to WhoIs the Domain Name was registered on February 12, 2015.
Complainant is a manufacturer of automobiles and motorcycles worldwide with its headquarters located in Germany. It has owned the trade mark, service mark, and trade name BMW (the "BMW Mark") since as early as 1917, with numerous registrations and variations thereof in more than 140 jurisdictions including Germany, European Union and United States, e.g., German trade mark registration number 410579, registered on November 15, 1929.
Complainant also owns the BMW logo:
the "BMW Logo").
5. Parties' Contentions
Complainant states that under the BMW Mark, it manufactures, sells, and distributes automobiles and motorcycles, and provides associated services including maintenance, repairs, financing, leasing, insurance and warranties.
Complainant further states that it uses and licenses the BMW Mark on a wide variety of automobile and motorcycle parts and accessories as well as numerous collateral products including apparel. Its products and components are manufactured at 30 sites in 14 countries, including the United States, and it has more than 124,000 employees worldwide. It uses a network of authorized dealers to market its vehicles, parts and accessories, services and products. It currently has approximately 3,400 authorized BMW dealers worldwide.
Complainant contends that it has gained commercial success having manufactured, marketed, and sold many millions of vehicles under the BMW Mark over the past 100 years, and that in 2016 it had its most productive year on record, having manufactured more than 2,002,000 BMW automobiles, with worldwide sales and revenue in excess of EUR 96 billion.
Complainant also contends that it has extensively and widely advertised and promoted its products and services under the BMW Mark, spending tens of millions of dollars every year in promoting the BMW name and BMW Mark through a variety of media, including television and print advertisements, the Internet, and high-profile sponsorships. As a result the BMW Mark has received considerable third-party press, attention, and recognition and the BMW Mark has become one of the most recognized brands in the world.
Complainant states that it has used the BMW Mark in connection with its network of websites dedicated to advertising, promoting, and/or offering its automobiles, motorcycles, and related products and services, and its online network, which it has operated since at least as early as 1996, receives many millions of hits each month.
Complainant also states that its websites are accessible via domain names comprised of the BMW Mark alone and combined with relevant geographic and/or descriptive terms. For example, Complainant's international portal websites include its websites located at <bmw.com> and <bmwgroup.com>. Complainant's portal websites provide information regarding its products and services, and allows users to select their country or region to go to Complainant's country-specific or region-specific websites for detailed and geographically relevant information regarding Complainant's products and services. Like its portal websites, Complainant's country-specific and region-specific websites are located at BMW-formative domain names, e.g., Complainant's website for U.S. consumers is located at the domain name <bmwusa.com>.
Complainant further states that in addition to its corporate websites, it has for years permitted its authorized dealers and authorized importers to use trade names and domain names comprised in part of the BMW Mark for their authorized BMW businesses. Complainant's authorized dealers' trade names and domain names are frequently comprised of the BMW Mark and the dealer's name and/or geographic location. As a result of these naming traditions, persons encountering domain names consisting of the BMW Mark combined with terms relating to Complainant's business would believe that the domain name and/or corresponding website is owned, operated, and/or authorized by Complainant.
Complainant asserts that it has for many years offered navigation software and systems for its BMW automobiles, under the BMW Mark and BMW-formative marks, including its federally registered mark BMW CONNECTEDDRIVE. Offers, updates and activation codes (also known as FSC codes) for Complainant's navigation software is offered through its authorized dealers and on its "www.shopbmwusa.com" website, among other official BMW websites.
Complainant submits that as the Domain Name contains the BMW Mark in its entirety, the Domain Name communicates to Internet users a connection to BMW that does not exist.
Complainant asserts that Respondent uses the Domain Name for a commercial website selling unauthorized, counterfeit versions of Complainant's navigation software and activation/FSC codes. Respondent's website uses both Complainant's BMW Logo and the BMW Mark in the product name "BMW ON-BOARD NAVIGATION SYSTEM", as can be seen in the excerpt from Respondent's website below:
Complainant notes that Respondent's website also uses the BMW Mark in the product name "2017-1 BMW Road Map PREMIUM & 2017-2 NEXT - North America".
Complainant claims that despite Respondent's website displaying a statement claiming that it is "a private enthusiast site", the record shows that Respondent's website is a commercial website offering counterfeit "BMW" products to the general public.
Complainant contends that the addition of the generic or descriptive term "navigation" does not distinguish the Domain Name from the BMW Mark, and the confusing similarity is heightened because the additional term "navigation" relates directly to BMW's navigation software offered under the BMW Mark.
Complainant states that Respondent has no rights or legitimate interest in the Domain Name and Respondent's registration and use of the Domain Name for a commercial website advertising/offering unauthorized, counterfeit versions of Complainant's BMW navigation software and codes that directly compete with Complainant's offering of genuine BMW navigation software and codes does not constitute a bona fide offering of goods or services.
Complainant notes that Respondent is not and has not been commonly known by the Domain Name and Respondent is not a licensee of Complainant or otherwise authorized to use the BMW Mark. Therefore Respondent's registration and use of the Domain Name constitutes bad faith because Respondent has used the 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 Respondent's website and the products advertised/offered therein.
Respondent did not reply to Complainant's contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
Complainant has established that the BMW Mark has been used for many years in connection with its activities within the automobile industry. The BMW Mark has also been widely registered (in 140 jurisdictions). The BMW Mark has been used, inter alia, in relation to on-board navigation systems used in vehicles.
The term "navigation" is generic or descriptive in relation to "navigation" systems and software for motor vehicles. The term "navigation" does little or nothing to distinguish the Domain Name from the BMW Mark.
It is clear that Complainant has rights in respect of the BMW Mark and that while the Domain Name is not identical it contains the BMW Mark in its entirety. Further, adding the word "navigation" to the BMW Mark in the Domain Name does not dispel confusing similarity to the BMW Mark.
Accordingly, the Panel is satisfied that the first element of the Policy has been met.
B. Rights or Legitimate Interests
As noted above, Complainant contends that Respondents is using the Domain Name to promote and sell counterfeit BMW products to the general public, including BMW on-board navigation systems. This is not denied by Respondent.
Plainly, by virtue of Complainant's trade mark rights and business interests in relation to the automobile industry generally and the provision of on-board navigation systems and software more specifically, an unrelated entity using the Domain Name is likely to lead to members of the public being confused and deceived.
Respondent's registration and use of the Domain Name for a commercial website promoting and offering counterfeit versions of Complainant's BMW navigation software and codes, in direct competition with Complainant's genuine BMW navigation software and codes cannot amount to rights or legitimate interests in the Domain Name.
The Panel is of the view that the Domain Name has been employed as a means of diverting Internet customers. On this basis, it is found that Respondent has no rights or legitimate interests in the Domain Name.
The Panel is satisfied that the second element of the Policy has been met.
C. Registered and Used in Bad Faith
Respondent has intentionally attempted to attract for commercial gain Internet users to its website and thereby create a likelihood of confusion with Complainant.
The Panel finds that Respondent registered and is using the Domain Name to take bad faith advantage of Internet users who may wish to purchase Complainant's goods and services. In the context of the present case and in the absence of any explanation for its conduct, the Panel finds that the third limb of the Policy has been met.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name <bmwnavigation.net> be transferred to Complainant.
Clive L. Elliott Q.C.
Date: November 27, 2017