WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Bayerische Motoren Werke AG v. Peeter Aps
Case No. D2018-2293
1. The Parties
The Complainant is Bayerische Motoren Werke AG of Germany represented by Kelly IP, LLP of the United States of America (the “U.S.”).
The Respondent is Peeter Aps of Estonia.
2. The Domain Name and Registrar
The disputed domain name <bmwcoding.online> (“Domain Name”) is registered with Tucows Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 10, 2018. On October 10, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On October 10, 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 October 22, 2018. In accordance with the Rules, paragraph 5, the due date for Response was November 12, 2018. The Respondent did not submit a Response. Accordingly, the Center notified the Respondent’s default on November 12, 2018.
The Center appointed Jon Lang as the sole panelist in this matter on November 21, 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 one of the most successful manufacturers of automobiles and motorcycles in the world.
It owns the trademark, service mark and trade name BMW. Under its BMW mark, the Complainant manufactures, sells, and distributes an array of automobiles and motorcycles, and provides numerous services including maintenance and repair services, financing, leasing, insurance and warranty services. The Complainant also uses and licenses its BMW mark for a wide variety of automobile and motorcycle parts and accessories and numerous additional products such as apparel.
The Complainant has for several years used its BMW mark in connection with its network of websites dedicated to advertising, promoting, and/or offering its automobiles, motorcycles and related products and services. The Complainant’s websites are accessible via domain names comprised of the BMW mark alone and also combined with relevant geographic and/or descriptive terms.
The Complainant has, for several years, permitted its authorized dealers to use trade names and domain names comprised in part of the BMW mark for their authorized BMW businesses. Their trade names and domain names frequently comprise the BMW mark and the dealer’s name and/or geographic location.
The Complainant has offered, for several years, proprietary diagnostic systems comprising hardware and software which is used for maintenance, repair, servicing and programming i.e. coding, of BMW automobiles. The Complainant’s proprietary diagnostic systems are offered only to its authorized dealers and/or other permitted parties, such as independent qualified repair centers who pay for access. These diagnostic tools include diagnostic software and are offered under the BMW mark and additional marks and names, including E- SYS and INPA, among others. Authorized dealers and/or other permitted parties only, have the right to use the BMW diagnostic software and may not reproduce, distribute or sell such software.
The Complainant has continuously used BMW as a trademark and service mark since 1917, and owns numerous registrations for the BMW mark and variations thereof in more than 140 countries around the world, for instance, in Germany (e.g. Registration No. 221388 for the mark BMW and Design, filed October 5, 1917 and issued on December 10, 1917) and the U.S. (e.g. Registration No. 611,710 for the mark BMW in block letters, first used in commerce in February 1949, filed on March 10, 1954 and issued on September 6, 1955).
The Respondent registered the Domain Name on October 27, 2016. According to the evidence provided by the Complainant the Domain Name resolves to a website offering an unauthorized version of Complainant’s software products. Not much more is known of the Respondent as he did not take part in these proceedings.
5. Parties’ Contentions
The Complainant has trademark rights in its BMW mark by virtue of its trademark registrations and also its common law rights acquired through use of the BMW mark since 1917. Its trademark rights long pre-date the Respondent’s registration of the Domain Name.
As a result of the longstanding naming traditions of the Complainant (as well as its authorized dealers around the world), those encountering domain names consisting of the BMW mark combined with additional terms will believe that the domain name and/or corresponding website is owned, operated, and/or authorized by the Complainant.
The Respondent uses the Domain Name for a commercial website that advertises and/or offers unauthorized, counterfeit versions of the Complainant’s diagnostic software products and which directly competes with BMW’s own offering of its genuine diagnostic products. In particular, the Respondent advertises “E-SYS” and “INPA” software, and provides downloads and/or links to download such software. The Respondent however is not an authorized BMW dealer or otherwise authorized to offer BMW’s diagnostic software. The Respondent’s website also advertises the Respondent’s technical services for installation and use of the unauthorized, counterfeit software.
The Domain Name is confusingly similar to the Complainant’s BMW mark
The Domain Name is confusingly similar because it contains the BMW mark in its entirety and also because it contains the Complainant’s mark combined with the generic or descriptive term “coding”, such term having an obvious connection to the coding or programming software offered by the Complainant through its diagnostic systems under its BMW mark.
Whilst it is well-established under the UDRP that the generic Top-Level Domain (“gTLD”)’s such as “.online” are irrelevant to confusing similarity analysis, to the extent that the gTLD “.online” may be viewed as a descriptive gTLD, it only goes to heighten the confusing similarity of the Domain Name because “online” is a common term related to online businesses generally and the Complainant’s online business specifically.
No rights or legitimate interests in the Domain Name
The Respondent’s registration and use of the Domain Name for a commercial website advertising and/or offering unauthorized, counterfeit versions of the Complainant’s software products does not constitute a bona fide offering of goods or services nor a legitimate noncommercial or fair use under the UDRP, and alone constitutes sufficient grounds to find that the Respondent has no legitimate interests in the Domain Name.
Furthermore, the Respondent’s advertising/offering of unauthorized, counterfeit products unfairly competes with the Complainant.
There is no evidence to demonstrate that the Respondent is commonly known by the Domain Name.
The Respondent is not a licensee of the Complainant or otherwise authorized to use the Complainant’s marks.
Finally, given the fame of the Complainant’s BMW mark, the Respondent could not be known by the Domain Name.
The Respondent uses the 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 Domain Name, the Respondent’s website and the products advertised/offered thereon.
The Respondent disrupts the Complainant’s business and unfairly competes with the Complainant by using the Domain Name to advertise/offer unauthorized, counterfeit and/or competing products.
Finally, there is overwhelming evidence that the Respondent registered the Domain Name in bad faith with knowledge of the Complainant’s rights in the BMW mark, given the fame of the BMW mark and the Respondent’s use of the Domain Name to advertise/offer unauthorized, counterfeit versions of the Complainant’s software.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy requires a complainant to prove that a respondent has registered a domain name which is (i) identical or confusingly similar to a trademark or service mark in which a complainant has rights; and (ii) that the respondent has no rights or legitimate interests in respect of the domain name; and (iii) that the domain name has been registered and is being used in bad faith. A complainant must prove each of these three elements to succeed.
A. Identical or Confusingly Similar
The Complainant clearly has rights in the BMW trademark.
Ignoring the gTLD “.online” (as the Panel may do for comparison purposes), the Domain Name comprises the Complainant’s BMW trademark, followed by the word “coding”. As the BMW trademark and Domain Name are not identical, the issue of confusing similarity must be considered. Under the UDRP, the test for confusing similarity typically involves a comparison, on a visual or aural level, between the trademark and the domain name. To satisfy the test, the trademark to which the domain name is said to be confusingly similar, would generally need to be recognisable as such within the domain name. The addition of common, dictionary, descriptive, or negative terms are usually regarded as insufficient to prevent confusing similarity.
The famous BMW trademark is clearly recognizable within the Domain Name. The only real issue therefore is whether the word “coding” which follows it, renders the Domain Name something other than confusingly similar (to the BMW mark). In the Panel’s view, it does not.
Accordingly, the Panel finds that the Domain Name is confusingly similar to the BMW mark for the purposes of the Policy and thus paragraph 4(a)(i) of the Policy has been established.
B. Rights or Legitimate Interests
By its allegations, the Complainant has made out a prima facie case that the Respondent lacks rights or legitimate interests in the Domain Name and, as such, the burden of production shifts to the Respondent to come forward with arguments or evidence demonstrating that it does in fact have such rights or legitimate interests. The Respondent has not done so and accordingly, the Panel is entitled to find, given the prima facie case made out by the Complainant, that the Respondent indeed lacks rights or legitimate interests in the Domain Name. Despite the lack of any answer to the Complaint however, the Panel is entitled to consider whether there would be anything inappropriate in such a finding.
Despite a respondent not having been licensed by or affiliated with a complainant, it might still be able to demonstrate rights or legitimate interests. For instance, a respondent can show that it has been commonly known by the domain name or that it is making a legitimate non-commercial or fair use of the domain name without intent for commercial gain to misleadingly divert consumers.
Here, the Respondent is not known by the Domain Name and, given the nature of the website to which the Domain Name resolves (advertising and/or offering unauthorized, counterfeit versions of the Complainant’s diagnostic software products as well as technical services for installation and use of such products), it cannot be said that there is legitimate non-commercial use. As to the requirement of an absence of an intent to mislead (for commercial gain), the Respondent’s choice of Domain Name (the dominant element being the Complainant’s famous BMW trademark with the addition of a descriptive term potentially enhancing rather than reducing the risk of confusion), suggests the very opposite. In these circumstances, “use” could not be regarded as “fair”, either.
A respondent can also show that it is using a domain name in connection with a bona fide offering of goods or services but in the circumstances of this Complaint, it would be difficult to accept that there is anything bona fide about the Respondent’s offering.
The Panel finds that the Complainant has fulfilled the requirements of paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
One way a complainant may demonstrate bad faith registration and use is to show that a respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with a complainant’s mark as to the source, sponsorship, affiliation or endorsement of its website or of products or services on it. In the Panel’s view, these are exactly circumstances present here.
In any event, if a UDRP proceeding is commenced in circumstances where a well-known mark (of which a respondent must have been aware) is used in a confusingly similar domain name, it is incumbent on the respondent to come forward with an explanation if it is to avoid or attempt to avoid the risk of an adverse finding. Indeed, a respondent’s non-participation is a factor that can be taken into account, along with others, in considering bad faith under the Policy.
The Respondent chose not to participate in these proceedings. The Respondent did however choose a famous trademark, BMW to incorporate into a Domain Name rendering such Domain Name confusingly similar to that BMW mark. There is no evidence that the Respondent has any rights or legitimate interests in the Domain Name but ample evidence to suggest that, for the purposes of the Policy, there has been both registration and use of the Domain Name 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 Domain Name <bmwcoding.online> be transferred to the Complainant.
Date: December 6, 2018