WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Bayerische Motoren Werke AG v. Domain Administrator / Fundacion Privacy Services LTD
Case No. D2018-0701
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 Administrator / Fundacion Privacy Services LTD of Panama City, Panama.
2. The Domain Name and Registrar
The disputed domain name <bmwplanet.com> is registered with Media Elite Holdings Limited dba Register Matrix (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on March 28, 2018. On March 29, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 6, 2018, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the 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 the Respondent of the Complaint, and the proceedings commenced on April 6, 2018. In accordance with the Rules, paragraph 5, the due date for Response was April 26, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on May 1, 2018.
The Center appointed Jonas Gulliksson as the sole panelist in this matter on May 9, 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 Complainant, Bayerische Motoren Werke AG, manufactures, sells and distributes automobiles and motorcycles and provides related services in many countries all over the world.
The Complainant is the proprietor of inter alia the following trademark registrations:
German trademark Registration No. 221388 for BMW (figurative) application date October 5, 1917, registration date December 10, 1917, for goods in International Classes 12, 7, 8, 9, and 11 including automobiles and related parts and accessories
German trademark Registration No. 410579 for the word mark BMW, application date February 23, 1929, registration date November 15, 1929, covering products in International Classes 12 and 7, including vehicles and motorcycles.
United States of America ("US") trademark Registration No. 611,710 for the word mark BMW, application date March 10, 1954, registration date September 6, 1955, covering automobiles and motorcycles in International Class 12.
US trademark Registration No. 613,465 for the BMW (figurative), application date March 10, 1954, registration date October 4, 1955, covering automobiles, motorcycles, and related parts in International Class 12.
The disputed domain name was according to the Complainant registered in 2010. The WhoIs information indicates that the disputed domain name was created April 13, 2000. Prior to the filing of the Complaint, the disputed domain name redirected Internet users to a competing website operated by Volvo, one of Complainant's competitors.
5. Parties' Contentions
The Complainant mainly alleges the following.
The BMW mark has been in use since 1917 and enjoys unquestionable fame as a result of extensive and long use and advertising and favorable public acceptance and recognition worldwide. The BMW mark has become one of the most recognized brands in the world. Interbrand, one of the world's leading branding firms, has ranked the BMW brand in its "Top 100" report for global brands for many years, and in 2016, ranked the BMW mark 11th of the "Best Global Brands" with a value of more than $41.5 billion.
The Complainant's above-mentioned registrations for its BMW mark constitute evidence of the Complainant's rights under the UDRP and that the Complainant's trademark rights in its BMW mark, based on its trademark registrations and its common law rights acquired through use since 1917, long predate the Respondent's registration of the disputed domain name.
The Respondent registered or acquired the disputed domain name long after the Complainant began using its BMW mark; long after the BMW mark became internationally famous; and long after the Complainant registered its mark in Germany, the U.S., and elsewhere. The exact date of the Respondent's registration or acquisition is unknown because the Respondent is anonymous and because historical registration records list an apparent third-party registrant in 2010 followed by various privacy services. In any event, the Complainant's rights in its BMW mark also long predate the apparent third-party prior registrations of the disputed domain name.
The disputed domain name contains the Complainant's famous BMW mark in its entirety. On its face, the disputed domain name immediately communicates a connection to BMW that does not exist. The Respondent uses the disputed domain name to redirect to a directly competing website, namely, the "www.volvocars.com' website of Volvo, one of the Complainant's competitors.
The Respondent undoubtedly receives advertising commissions for redirecting the disputed domain name to Volvo's website, as shown by the use of the term "ad" in the redirected URLs.
The disputed domain name is confusingly similar to the Complainant's famous and federally registered mark BMW because it contains the Complainant's mark in its entirety. The disputed domain name is also confusingly similar to the Complainant's BMW mark because it contains the Complainant's mark combined with a generic and/or descriptive term ("planet").
The Respondent clearly has no rights or legitimate interest in the disputed domain name. The Respondent is not and has not been commonly known by the disputed domain name. There is no evidence in the record, including the WhoIs information, to demonstrate that the Respondent is commonly known by the disputed domain name. In addition, the Respondent is not a licensee of the Complainant or otherwise authorized to use the Complainant's BMW mark. The Respondent's registration and use of the disputed domain name to redirect Internet users to a directly competing website operated by Volvo, one of the Complainant's competitors, does not constitute a bona fide offering of goods or services or noncommercial fair use. The Respondent's commercial use of the disputed domain name to generate advertising/pay-per-click commissions does not constitute a bona fide offering of goods or services or noncommercial fair use.
The Respondent's registration and use of the disputed domain name constitutes bad faith because the Respondent has used the disputed domain name to intentionally attract, for commercial gain, Internet users by creating a likelihood of confusion with the Complainant's famous and registered BMW mark as to the source, sponsorship, affiliation, and/or endorsement of the disputed domain name and associated website. The use also constitutes bad faith since the Respondent disrupts Complainant's business by using the disputed domain name for a directly competing website. The Respondent registered the disputed domain name in bad faith with knowledge of the Complainant's rights in its BMW mark, given the fame of the BMW mark, the Respondent's selection and registration of the disputed domain name that contains the Complainant's BMW mark in its entirety, and the Respondent's use of the disputed domain name for a directly competing automobile-related website.
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy requires the Complainant to prove all three of the following elements:
(i) that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) that the disputed domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Complainant is the proprietor of trademark registrations for BMW, both word- and figurative marks. The disputed domain name contains the trademark BMW in its entirety together with the word planet and the generic Top-Level Domain ("gTLD") ".com". It is well-established among UDRP panels that the gTLD is not distinguishing. The word planet does not in the Panel's opinion distinguish the disputed domain name from the BMW trademark. The Panel therefore finds that the disputed domain name is confusingly similar to the Complainant's BMW trademark and that the first requirement of the Policy is fulfilled.
B. Rights or Legitimate Interests
In cases when a Respondent fails to present a response, the Complainant is still required to make a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name.
The Panel finds that the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. The Respondent has not proven otherwise. The Panel therefore finds the requirements of the second element of the Policy fulfilled.
C. Registered and Used in Bad Faith
The Complainant's registered trademarks predate the disputed domain name and it is not probable that the Respondent registered the disputed domain name without knowledge of the Complainant or its trademarks, particularly when considering the reputation of the BMW trademarks. The circumstances presented by the Complainant and the submitted supporting evidence regarding direction of Internet traffic to the website of one of the Complainant's competitors from the disputed domain name supports a finding of bad faith registration and use. The Panel therefore finds that the third requirement of the Policy is 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 name, <bmwplanet.com> be transferred to the Complainant.
Date: May 23, 2018