WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Bayerische Motoren Werke AG v. Domain Admin, Whois Privacy Corp.
Case No. D2018-2016
1. The Parties
The Complainant is Bayerische Motoren Werke AG of Munich, Germany, represented by Kelly IP, LLP, United States of America (“United States”).
The Respondent is Domain Admin, Whois Privacy Corp. of Nassau, Bahamas.
2. The Domain Name and Registrar
The disputed domain name <bmẉ.com> [xn--bm-e3s.com] is registered with Internet Domain Service BS Corp (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 4, 2018. On September 5, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 7, 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 September 18, 2018. In accordance with the Rules, paragraph 5, the due date for Response was October 8, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 9, 2018.
The Center appointed Edoardo Fano as the sole panelist in this matter on October 18, 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.
The Panel has not received any requests from the Complainant or the Respondent regarding further submissions, waivers or extensions of deadlines, and the Panel has not found it necessary to request any further information from the Parties.
Having reviewed the communication records in the case file provided by the Center, the Panel finds that the Center has discharged its responsibility under the Rules, paragraph 2(a), “to employ reasonably available means calculated to achieve actual notice to Respondent”. Therefore, the Panel shall issue its Decision based upon the Complaint, the Policy, the Rules and the Supplemental Rules and without the benefit of a response from the Respondent.
The language of the proceeding is English, being the language of the Registration Agreement, as per paragraph 11(a) of the Rules.
4. Factual Background
The Complainant is Bayerische Motoren Werke (BMW) AG, a German company among the most successful manufacturers of automobiles and motorcycles in the world, owning several trademark registrations for BMW, among which:
- German Trademark Registration No.410579 for BMW, registered on November 15, 1929; and
- United States Trademark Registration No. 0611710 for BMW, registered on September 6, 1955.
The Complainant operates several websites, among which are “www.bmw.com” and “www.bmwgroup.com”.
The Complainant provided evidence in support of the above.
The disputed domain name <bmẉ.com>, Internationalized Domain Name (IDN) represented and displayed in Unicode and equivalent to the Punycode or ASCII version <xn--bm-e3s.com>, was registered on May 22, 2018, according to the WhoIs records, and when the Complaint was filed, when accessed on a mobile device it pointed to a web page displaying the Complainant’s official logo BMW and offering free BMW cars by means of a survey aimed to “phish” for consumers’ information.
5. Parties’ Contentions
The Complainant states that the disputed domain name <bmẉ.com > is confusingly similar to its trademark BMW, as the character “ẉ” (“w” with a dot below) is virtually identical to the letter “w”.
Moreover, the Complainant asserts that the Respondent has no rights or legitimate interests in respect of the disputed domain name since it has not been authorized by the Complainant to register the disputed domain name or to use its trademark within the disputed domain name, nor is the Respondent commonly known by the disputed domain name. The Complainant asserts the Respondent is not making either a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name.
The Complainant submits that the Respondent has registered the disputed domain name in bad faith, since the Complainant’s trademark BMW is distinctive and internationally known. Therefore, the Respondent targeted the Complainant’s trademark at the time of registration of the disputed domain name and the Complainant contends that the use of the disputed domain name to intentionally attract, for commercial gain, Internet users by creating a likelihood of confusion with the Complainant’s famous trademark as to the source, sponsorship, affiliation and/or endorsement of the Respondent’s associated website qualifies as bad faith registration and use.
The Respondent has made no reply to the Complainant’s contentions and is in default. In reference to paragraphs 5(e) and 14 of the Rules, no exceptional circumstances explaining the default have been put forward or are apparent from the record.
A respondent is not obliged to participate in a proceeding under the Policy, but if it fails to do so, reasonable facts asserted by a complainant may be taken as true, and appropriate inferences, in accordance with paragraph 14(b) of the Rules, may be drawn (see, e.g., Reuters Limited v. Global Net 2000, Inc., WIPO Case No. D2000-0441; Microsoft Corporation v. Freak Films Oy, WIPO Case No. D2003-0109; SSL International PLC v. Mark Freeman, WIPO Case No. D2000-1080; Altavista Company v. Grandtotal Finances Limited et. al., WIPO Case No. D2000-0848; Confédération Nationale du Crédit Mutuel, Caisse Fédérale du Crédit Mutuel Nord Europe v. Marketing Total S.A., WIPO Case No. D2007-0288).
6. Discussion and Findings
Paragraph 4(a) of the Policy lists three elements, which the Complainant must satisfy in order to succeed:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Panel finds that the Complainant is the owner of the trademark BMW both by registration and acquired reputation and that the disputed domain name <bmẉ.com > [xn--bm-e3s.com] is confusingly similar to the trademark BMW.
Previous UDRP panels have considered IDNs and their Punycode translation to be equivalent. Regarding the use of the non-ASCII character “ẉ” to replace the ASCII letter “w”, the Panel notes that it is now well established that the replacement of an ASCII letter with a non-ASCII character does not prevent a finding of confusing similarity between the domain name and the trademark (see, e.g., Société Air France v. WhoisGuard Protected, WhoisGuard, Inc. / Irfan Khan, Kamran Khan, WIPO Case No. D2018-0393; WhatsApp Inc. v. Domain Admin, Whois Privacy Corp., WIPO Case No. D2018‑1654).
It is also well accepted that a generic Top-Level Domain (“gTLD”), in this case “.com”, may be ignored when assessing the similarity between a trademark and a domain name (see, e.g., VAT Holding AG v. Vat.com, WIPO Case No. D2000-0607).
The Panel finds that the Complainant has therefore met its burden of proving that the disputed domain name is confusingly similar to the Complainant’s trademark, pursuant to the Policy, paragraph 4(a)(i).
B. Rights or Legitimate Interests
The Respondent has failed to file a response in accordance with the Rules, paragraph 5.
The Complainant in its Complaint and as set out above has established a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name. It asserts that the Respondent, who is not currently associated with the Complainant in any way, is not using the disputed domain name for a legitimate noncommercial or fair use or in connection with a bona fide offering of goods or services. Rather, the disputed domain name led Internet users to a website prominently displaying the Complainant’s trademark, falsely announcing that the Complainant was giving away 75 free cars, and attempting to lure Internet users into completing an online survey which the Complainant states was part of a fraudulent scheme.
The prima facie case presented by the Complainant is enough to shift the burden of production to the Respondent to demonstrate that it has rights or legitimate interests in the disputed domain name. However, the Respondent has not presented any evidence of any rights or legitimate interests he may have in the disputed domain name, and the Panel is unable to establish any such rights or legitimate interests on the basis of the evidence in front of it.
The Panel therefore finds that paragraph 4(a)(ii) of the Policy has been satisfied.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides that “for the purposes of paragraph 4(a)(iii) of the Policy, the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that [the respondent has] registered or has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of the complainant, for valuable consideration in excess of its documented out-of-pocket costs directly related to the domain name; or
(ii) that [the respondent has] registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that [the respondent has] engaged in a pattern of such conduct; or
(iii) that [the respondent has] registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) that by using the domain name, [the respondent has] intentionally attempted to attract, for commercial gain, Internet users to [the respondent’s] website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of [the respondent’s] website or location or of a product or service on [the respondent’s] website or location.”
Regarding the registration in bad faith of the disputed domain name, the reputation of the Complainant’s trademark BMW in the field of automobiles and motorcycles is clearly established and the Panel finds that the Respondent likely knew of the Complainant and deliberately registered the disputed domain name, <bmẉ.com > [xn--bm-e3s.com], because it is confusingly similar to the Complainant’s trademark.
The Panel further notes that the disputed domain name is also used in bad faith since at the relevant website the Complainant’s official logo BMW is displayed in the attempt to pass off as the Complainant’s website and the false offer of free BMW cars is aimed at the fraudulent “phishing” for consumers’ information: the Respondent is therefore knowingly taking advantage from user confusion.
The above suggests to the Panel that the Respondent intentionally registered and is using the disputed domain name in order to create confusion with the Complainant’s trademark and attract, for commercial gain, Internet users to its website in accordance with paragraph 4(b)(iv) of the Policy.
The Panel finds that the Complainant has presented evidence to satisfy its burden of proof with respect to the issue of whether the Respondent has registered and is using the disputed domain name in bad faith.
The Panel therefore finds that paragraph 4(a)(iii) of the Policy has been satisfied.
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 <bmẉ.com> [xn--bm-e3s.com] be transferred to the Complainant.
Date: October 28, 2018