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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Bayerische Motoren Werke AG v. Jeong Yeono / Yeon O Jung

Case No. D2018-0434

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 Jeong Yeono / Yeon O Jung of Daegu, Republic of Korea.

2. The Domain Names and Registrars

The disputed domain name <bmwhouse.com> is registered with Megazone Corp., dba HOSTING.KR.

The disputed domain name <bmw-motorcycles.com> is registered with Gabia, Inc.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on February 23, 2018. On February 26, 2018, the Center transmitted by email to Megazone Corp., dba HOSTING.KR and Gabia, Inc. (the "Registrars") a request for registrar verification in connection with the disputed domain names. On February 27, 2018, each Registrar transmitted by email to the Center its verification response indicating that the language of the registration agreement is Korean, confirming that the Respondent is listed as the registrant, and providing the Respondent's contact details.

On March 5, 2018, the Center notified the Parties in both English and Korean that the language of the registration agreements for the disputed domain names is Korean. On March 9, 2018, the Complainant requested for English to be the language of the proceeding. The Respondent did not make any submission regarding the language of the proceeding.

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 the Respondent of the Complaint in both English and Korean, and the proceedings commenced on March 14, 2018. In accordance with the Rules, paragraph 5, the due date for Response was April 3, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on April 4, 2018.

The Center appointed Thomas P. Pinansky as the sole panelist in this matter on April 20, 2018. 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 following factual information is derived from the Complaint and supporting materials submitted by the Complaint:

The Complainant is one of the most successful manufacturers of automobiles and motorcycles in the world. The Complainant owns the trademark, service mark, and trade name BMW, and it manufactures and sells automobiles and motorcycles, as well as provides related services such as maintenance and repair services, under the BMW mark.

The Complainant has continuously used the BMW mark as a trademark and service mark since 1917, engaging in global advertisement and promotion of its products and services under the BMW mark. The Complainant owns numerous registrations for the BMW mark in the countries including Germany and the United States of America, the earliest of which was filed on October 5, 1917 and issued on December 10, 1917.

The Complainant also has used the BMW mark in connection with its websites such as "www.bmw.com", "www.bmwgroup.com", "www.bmw-motorrad.com", and "www.bmwmotorcycles.com". The Complainant has permitted its authorized dealers to use trade names and domain names comprised in part of the BMW mark for their authorized BMW businesses. The Respondent is not one of them.

The disputed domain name <bmwhouse.com> is registered with Megazone Corp., dba HOSTING.KR and was registered on July 8, 2008, and the disputed domain name <bmw-motorcycles.com> is registered with Gabia, Inc., and was registered on May 12, 2009. According to the documentary evidence and contentions submitted by the Complainant, the Respondent uses its websites "www.bmwhouse.com" and "www.bmw-motorcycles.com" for sale of the disputed domain names. The Respondent's websites also displayed pay-per-click ads, for which the Complainant is convinced that the Respondent received commissions.

5. Parties' Contentions

A. Complainant

The Complainant argues that the disputed domain names are confusingly similar to the trademark or service mark in which the Complainant has rights because each of them contains the Complainant's trademark in its entirety. The Complainant also contends that the disputed domain names are confusingly similar to the trademark because they contain the Complainant's mark combined with descriptive terms which relate directly to the Complainant's business.

The Complainant further contends that the Respondent has no right or legitimate interests in the domain names because (i) the Respondent is not and has not been commonly known by the disputed domain names and the Respondent could not be known by the disputed domain names because of the fame and reputation of the Complainant's trademark; (ii) the Respondent's registration and use of the disputed domain names for the purpose of selling them does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use; (iii) the Respondent's offer to sell the disputed domain names constitutes an independent ground for lack of legitimate interest; (iv) the Respondent's registration and use of the disputed domain names for pay-per-click websites constitutes lack of legitimate interest.

Finally, the Complainant contends that the Respondent registered and is using the disputed domain names in bad faith because (i) the Respondent registered the disputed domain names primarily to sell them; (ii) the Respondent's intention was to abusively benefit from the Complainant's reputation and its trademark by attracting Internet users for commercial gains, (iii) the Respondent showed a pattern of a bad-faith behavior; and (iv) the Respondent knew of the Complainant's trademark when it registered the disputed domain names.

B. Respondent

The Respondent did not reply to the Complainant's contentions.

6. Discussion and Findings

The Respondent neither replied to the Complaint nor responded to the Center's communication, and the Center found the Respondent in default. The consensus view of the WIPO panel in case of default is that "the respondent's default does not automatically result in a decision in favor of the complainant and that the complainant must establish each of the three elements required by paragraph 4(a) of the UDRP." Allianz, Compaña de Seguros y Reaseguros S.A. v. John Michael, WIPO Case No. D2009-0942.

However, paragraph 14 of the Rules provides in the event of default that a Panel may draw such inferences therefrom as it considers appropriate. Paragraph 15(a) of the Rules instructs that "[a] Panel shall decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules or principles of law that it deems applicable." "Where a party fails to present evidence in its control, the Panel may draw adverse inferences regarding those facts." Tradewind Media, LLC d/b/a Intopic Media v. Jayson Hahn, WIPO Case No. D2010-1413; see also Time Equipment Corp. v. Stage Presence, WIPO Case No. D2003-0850; Express Scripts, Inc. v. Roy Duke, Apex Domains aka John Barry aka Domains for Sale and Churchill Club aka Shep Dog, WIPO Case No. D2003-0829; Mary-Lynn Mondich and American Vintage Wine Biscuits, Inc. v. Shane Brown, doing business as Big Daddy's Antiques, WIPO Case No. D2000-0004.

A. Identical or Confusingly Similar

The disputed domain names incorporate the Complainant's trademark BMW in its entirety. "When a domain name wholly incorporates a complainant's registered mark, that is sufficient to establish confusing similarity for purposes of the Policy." Bayerische Motoren Werke AG v. bmwcar.com, WIPO Case No. D2002-0615. Although the disputed domain names include descriptive terms, "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.'" Swarovski Aktiengesellschaft v. mei xudong, WIPO Case No. D2013-0150 (citing Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a For Sale, WIPO Case No. D2000-0662). UDRP panels have also held that confusion is particularly likely when a descriptive term added in the disputed domain name relates to the trademark owner's business. See, e.g., Bayerische Motoren Werke AG v. Domain Name Services, WIPO Case No. D2008-0147.

In light of the previous UDRP decisions and based on the inference in favor of the Complainant as allowed under the Rules, the Panel finds that the disputed domain names are identical or confusingly similar to the Complainant's trademark.

B. Rights or Legitimate Interests

The Complainant asserts that the Respondent lacks any rights or legitimate interests in the disputed domain names.

The consensus view among the WIPO UDRP panelists is that a Complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, the burden of production shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, a complainant is generally deemed to have satisfied paragraph 4(a)(ii) of the UDRP. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, section 2.1; see also, Accor v. Eren Atesmen, WIPO Case No. D2009-0701. The failure to submit a response by a respondent in some cases supports a finding of the lack of such rights, particularly in the absence of any license from the Complainant to use the Complainant's trademark or incorporate it in a domain name. AREVA v. St. James Robyn Limoges, WIPO Case No. D2010-1017.

After reviewing the assertions made by the Complainant and the supporting materials thereto, the Panel finds that the Complainant has established a prima facie case that the Respondent does not have rights or legitimate interests in the disputed domain names. On the other hand, by never responding to the Complainant's position, the Respondent failed to show any of the circumstances provided in paragraph 4(c) of the Policy. In particular, the Respondent has not been able to show either (i) before notice of the dispute, that it has used or has prepared to use the disputed domain names or a name corresponding to the disputed domain names in connection with a bona fide offering of goods or services, nor (ii) that it has been commonly known by the disputed domain names, nor (iii) that it is making a legitimate noncommercial or fair use of the disputed domain names without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark at issue.

Therefore, the Panel finds that the Respondent does not have rights or legitimate interests in the disputed domain names.

C. Registered and Used in Bad Faith

First, pursuant to UDRP 4(b)(i), the Panel finds that the Respondent registered the disputed domain names in bad faith because the Respondent registered the disputed domain names primarily to sell. Although the offers for sale of the disputed domain names are not specifically addressed to the Complainant or its competitors, it does not negate the bad faith shown by such attempts to sell the disputed domain names. UDRP 4(b)(i) "only indicates circumstances which, without limitation, shall be evidence of the registration and use of a domain name in bad faith." See Bayerische Motoren Werke AG v. Niemiec, WIPO Case No. D2003-0240. Therefore, the fact that the attempt to sell the disputed domain names was not directed to the Complainant does not prevent the Panel from finding bad faith in the Respondent's attempt to sell the disputed domain names.

Second, in the absence of any response to the Complaint, it is most plausible that the Respondent registered the disputed domain names to confuse Internet users and attract them to the Respondent's websites for commercial gains, which constitutes evidence of bad faith under UDRP 4(b)(iv). See Bayerische Motoren Werke AG v. Private Registrations Aktien Gesellschaft, WIPO Case No. D2010-0898.

Third, considering the Complainant's fame and reputation, its world-wide presence, and the long period of time the Complainant has been in the business, it is almost impossible to believe that the Respondent did not know of the trademark BMW. The fact that the Respondent added the descriptive terms related to automobiles and motorcycles in the disputed domain names indicates that the Respondent was well aware of the Complainant, its business, and its mark. The UDRP panel previously held that "registration of a well-known trademark as a domain name is a clear indication of bad faith in itself, even without considering other elements."Allianz, Compañ­a de Seguros y Reaseguros S.A. v. John Michael, WIPO Case No. D2009-0942.

Based on the combination of the points mentioned above, the Panel finds that the Respondent registered and used the disputed domain names in bad faith.

7. Decision

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 <bmw-motorcycles.com> and <bmwhouse.com> be transferred to the Complainant, Bayerische Motoren Werke AG.

Thomas P. Pinansky
Sole Panelist
Date: May 4, 2018

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