WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Bayerische Motoren Werke AG v. Dan Williams
Case No. D2018-1785
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 Dan Williams of Newark, New Jersey, United States of America (“US”), self-represented.
2. The Domain Names and Registrar
The disputed domain names <bronxbmw.com> and <brooklynbmw.com> are registered with GoDaddy.com, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 6, 2018. On August 7, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On August 8, 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 proceeding commenced on August 9, 2018. In accordance with the Rules, paragraph 5, the due date for Response was September 2, 2018. The Response was filed with the Center on September 2, 2018.
On September 3, 2018, the Center sent an email communication regarding possible settlement to the Parties. On September 4, 2018, both the Complainant and the Respondent sent email communications to the Center. On September 7, 2018, the Center received an unsolicited supplemental filing from the Complainant. On September 10, 2018, the Center received an informal communication from the Respondent.
The Center appointed Sebastian M.W. Hughes as the sole panelist in this matter on September 14, 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 is a company incorporated in Germany and the manufacturer of automobiles and motorcycles under the well-known trade mark BMW (the “Trade Mark”) since 1917. The Complainant is the owner of numerous registrations in jurisdictions around the world for the Trade Mark, including international registration number 173813, with a registration date of January 7, 1954; and US registration number 0611710, with a registration date of September 6, 1955.
The Respondent is an individual resident in the US.
C. The Disputed Domain Names
The disputed domain names were both initially registered on the same date, December 1, 2004, by BMW of Manhattan, the Complainant’s authorised dealer for Manhattan, Brooklyn and the Bronx, in the US. Both registrations were allowed to lapse on December 1, 2008; and the disputed domain names were subsequently both registered by the Respondent on the same date, in January 1, 2009.
D. Use of the Disputed Domain Names
The disputed domain names have previously been used by the Respondent in the same manner in respect of pay-per-click websites with sponsored links relating to the Complainant and its products. The disputed domain names have also been, intermittently, passively held.
The Respondent used the disputed domain name <brooklynbmw.com> from March 2018 up until the date of filing of the Complaint in respect of a website featuring the name “Brooklyn (BMW) Brookly1 Best Male Wrestlers”, stock photographs of bodybuilders apparently copied from third-party websites, inoperative links, and nonsensical Latin placeholder text.
As at the date of this Decision, the disputed domain names have both been resolved to websites with the same content as the website for the disputed domain name <brooklynbmw.com> from March 2018 (the “Website(s)”), save that the name featured on each website is “Bronxbmw (Bronx Best Male Wrestlers)” and “Brooklynbmw (Bronx Best Male Wrestlers)”, respectively.
5. Parties’ Contentions
The Complainant contends that the disputed domain names are identical or confusingly similar to the Trade Mark, the Respondent has no rights or legitimate interests in respect of the disputed domain names, and the disputed domain names have been registered and are being used in bad faith.
The Respondent contends that he registered the disputed domain names in 2009 “for our group Best Male Wrestlers with chapters in Brooklyn and Bronx, New York”, after the Complainant’s authorised dealer let the registrations lapse.
The Respondent asserts that the previous use of the disputed domain names in respect of pay-per-click links does not amount to bad faith use as the websites were parking pages hosted by the Respondent’s hosting company.
The Respondent asserts that he does not use the disputed domain names to sell cars, that he is not seeking to capitalise on the success and popularity of the Complainant’s authorised dealers, and that the disputed domain names are being used to promote the Brooklyn and Bronx chapters of Best Male Wrestlers, a group of wrestlers.
6. Discussion and Findings
6.1 Supplemental Filing
Panels have sole discretion, under paragraphs 10 and 12 of the Rules, whether to accept an unsolicited supplemental filing from either party, bearing in mind the need for procedural efficiency, and the obligation to treat each party with equality and ensure that each party has a fair opportunity to present its case. The party submitting its filing would normally need to show its relevance to the case and explain why it was unable to provide that information in the complaint or response. It is not usual practice, absent special circumstances and a satisfactory explanation from the party seeking to file supplementary submissions, for UDRP panels to allow reply or sur-reply submissions.
Although it is stated in the reply submissions that the Complainant “submits this Reply to address the factual errors and meritless claims” in the Response, the Complainant’s supplemental filing amounts merely to submissions in reply. There has been no attempt in the Complainant’s reply submissions to address any factual errors in the Response.
In all the circumstances, the Panel therefore determines that it will not admit the Complainant’s supplemental reply.
6.2 Substantive Elements of the Policy
The Complainant must prove each of the three elements in paragraph 4(a) of the Policy in order to prevail.
A. Identical or Confusingly Similar
The Panel finds that the Complainant has rights in the Trade Mark acquired through use and registration.
The disputed domain names incorporate the entirety of the Trade Mark (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.7) together with the words “bronx” or “brooklyn”.
Where a relevant trade mark is recognisable within a disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) does not prevent a finding of confusing similarity under the first element (see WIPO Overview 3.0, section 1.8).
The Panel therefore finds that the disputed domain names are confusingly similar to the Trade Mark.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides a list of non-exhaustive circumstances any of which is sufficient to demonstrate that a respondent has rights or legitimate interests in a disputed domain name:
(i) Before any notice to the respondent of the dispute, the respondent’s use of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; or
(ii) The respondent (as an individual, business, or other organization) has been commonly known by the disputed domain name even if the respondent has acquired no trade mark or service mark rights; or
(iii) The respondent is making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.
The Complainant has not authorised, licensed, or permitted the Respondent to register or use the disputed domain names or to use the Trade Mark. The Panel finds on the record that there is therefore a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain names, and the burden is thus on the Respondent to produce evidence to rebut this presumption.
The Respondent has failed to show that he has acquired any trade mark rights in respect of the disputed domain names or that the disputed domain names have been used in connection with a bona fide offering of goods or services. To the contrary, the evidence demonstrates that the disputed domain names were registered opportunistically by the Respondent when their previous registrations by the Complainant’s authorised dealer were allowed to lapse (a fact admitted by the Respondent in the Response); and were then at different times held passively, used in respect of landing pages with sponsored links relating to the Complainant and its products, and used in respect of the Websites.
The Panel considers the most recent use of the disputed domain names in respect of the Websites amounts to no more than a thinly-veiled attempt to legitimise the registration and use of the disputed domain names, in circumstances where the Respondent does not deny (1) prior knowledge of the Complainant and of its well-known Trade Mark; and (2) that he registered the disputed domain names opportunistically when they were inadvertently allowed to lapse by the Complainant’s authorised dealer.
The Respondent also, in the Response, confirms his knowledge and understanding of the use by the Complainant’s authorised dealers in the New York area of various domain names comprising the Trade Mark, under licence from the Complainant.
The Panel notes that the following factors strongly suggest that the “Best Male Wrestlers” group does not exist, and that the term has been creatively coined by the Respondent in order to attempt to legitimise his registration and use of the disputed domain names:
(i) None of the links on the Websites (for example “Revive Retreat”) is operative;
(ii) The Complainant has furnished compelling evidence to demonstrate that the photographs on the Websites are stock photographs that have been copied from third party websites, a fact not denied by the Respondent;
(iii) The main body of text on the Websites is nonsensical Latin filler text;
(iv) The name previously featured on the <brooklynbmw.com> Website has been changed following the filing of the Complaint from the previous name, with glaring typographical error “Brooklyn (BMW) Brookly Best Male Wrestlers”, to the current name “Brooklynbmw (Bronx Best Male Wrestlers)”; and
(v) The Respondent has not filed any evidence to show that the “Best Male Wrestlers” group exists.
There has been no evidence adduced to show that the Respondent has been commonly known by the disputed domain names; and there has been no evidence adduced to show that the Respondent is making a legitimate noncommercial or fair use of the disputed domain names.
The Panel finds that the Respondent has failed to produce any evidence to rebut the Complainant’s prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain names.
C. Registered and Used in Bad Faith
Given the notoriety of the Complainant and of its Trade Mark, and in light of the findings under Section B. above, the Panel has no hesitation in concluding the requisite elements of bad faith registration and use have been made out.
The evidence on record indicates that the Respondent sought to take advantage of the Trade Mark when registering and using the disputed domain names.
For all the foregoing reasons, the Panel concludes that the disputed domain names have been registered and are being used in bad faith.
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 <bronxbmw.com> and <brooklynbmw.com> be transferred to the Complainant.
Sebastian M.W. Hughes
Dated: September 28, 2018