WIPO Arbitration and Medition Center

ADMINISTRATIVE PANEL DECISION

Bayerische Motoren Werke AG v. Jaewan Lee

Case No. D2019-3161

1. The Parties

The Complainant is Bayerische Motoren Werke AG, Germany, represented by Kelly IP, LLP, United States of America (“United States”).

The Respondent is Jaewan Lee, Republic of Korea.

2. The Domain Names and Registrar

The disputed domain names <bestbmw.com>, <bmwcompact.com>, <bmw24.com>, <bmw4.com>, <miniconnect.com>, and <mymini.com> are registered with Inames Co., Ltd. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 20, 2019. On December 23, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On December 24, 2019, 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.

On January 7, 2020, the Center notified the Parties in both English and Korean that the language of the registration agreement for the disputed domain name is Korean. On January 8, 2020, the Respondent requested for Korean to be the language of the proceeding. On the same date, the Complainant requested for English to be 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 in English and Korean of the Complaint, and the proceedings commenced on January 23, 2020. In accordance with the Rules, paragraph 5, the due date for Response was February 12, 2020. The Center received an email communication from the Respondent on February 9, 2020. The Center notified the Parties on February 13, 2020, that it would proceed to panel appointment. The Complainant sent an email communication on February 25, 2020.

The Center appointed Moonchul Chang as the sole panelist in this matter on February 27, 2020. 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 (“BMW”) is a German manufacturer of automobiles and motorcycles. BMW has obtained registrations for the BMW trademarks since 1917 in numerous countries including Germany (e.g., Registration No. 221388, registered on December 10, 1917) and the United States (e.g., Registration No. 611,710, registered on September 6, 1955). Under the 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, among others. The Complainant also uses and licenses its BMW mark on a wide variety of automobile and motorcycle parts and accessories and numerous collateral products.

In addition, the Complainant owns registrations for MINI trademark in the United States (e.g., Registration No. 2746570, registered on August 5, 2003). The Complainant, BMW has offered for many years a full array of products and services under the MINI mark including automobile parts and accessories, apparel and other products and services such as financing and maintenance services. BMW also licenses its MINI mark on a wide variety of products.

According to the publicly available WhoIs information and confirmed by the Registrar, the disputed domain name <bmw4.com> was registered on October 22, 2010, <bmw24.com> on January 2, 2007, <bmwcompact.com> on November 20, 2009, <bestbmw.com> on April 9, 2010, <miniconnect.com> on February 14, 2015, and <mymini.com> on December 17, 2009 respectively.

5. Parties’ Contentions

A. Complainant

The Complainant contends that:

(1) The disputed domain names are identical or confusingly similar to the Complainant’s trademarks because each contains one of the Complainant’s BMW and MINI marks in its entirety. The additional elements of numbers or terms such as “compact”, “best”, “connect” or “my” do not negate the confusing similarity.

(2) The Respondent has no rights or legitimate interests in the disputed domain names. The Respondent does not offer any goods or services at his websites under the disputed domain names. The Respondent’s registration and use of the confusingly similar domain names for the purpose of selling them for a profit does not constitute a bona fide offering of goods or services. The Respondent’s use of the disputed domain name <mymini.com> for a pay-per-click website is further evidence that it has no rights or legitimate interests in the disputed domain names. The Respondent is not and has not been commonly known by the disputed domain names. There is no evidence in the record, including the WhoIs information, to demonstrate that the Respondent is commonly known by the disputed domain names. In addition, the Complainant has never authorized the Respondent to register or use the disputed domain names or the Complainant’s marks.

(3) The Respondent has registered and used the disputed domain names in bad faith. Firstly, the Respondent has engaged in a bad faith pattern of conduct in registering six disputed domain names each containing the Complainant’s well-known trademarks. The Respondent’s prior adverse UDRP decisions constitute further evidence of a pattern of bad faith registration. (seeZulunet, Inc. v.이재원, WIPO Case No. D2001-0473; Accor, SoLuxury HMC v. Jaewan Lee, WIPO Case No. D2009-0574). Secondly, the Respondent’s registration and use of the disputed domain names constitute bad faith because the Respondent has used the disputed domain names primarily to sell, rent, or otherwise transfer them for valuable consideration in excess of its documented out-of-pocket expenses. The Respondent offers to sell the disputed domain names on the associated websites, Sedo’s or DAN domain marketplace website.

Thirdly, the Respondent has used the disputed domain names to intentionally attract, for commercial gain, Internet users to the websites associated with the disputed domain names by creating a likelihood of confusion with the Complainant’s marks as to the source, sponsorship, affiliation, and/or endorsement of such websites. Fourthly, the Respondent’s registration and use of the disputed domain names constitute bad faith because the Respondent disrupts the Complainant’s business by using the disputed domain names to compete with the Complainant for Internet traffic and by interfering with the Complainant’s ability to control use of the its registered trademarks. Finally, the Respondent registered the disputed domain names in bad faith with knowledge of the Complainant’s rights in its marks, given the fame of the Complainant’s marks, the Respondent’s selection and registration of the six disputed domain names that contain the Complainant’s trademarks, and the Respondent’s use of the disputed domain name <mymini.com> for a pay-per-click website with search links referencing the Complainant’s MINI cars. Considering the worldwide reputation of these marks, it is inconceivable that the Respondent would have chosen and registered the disputed domain names without having been aware of the Complainant’s trademarks.

B. Respondent

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

6. Discussion and Findings

6.1. Preliminary Issue: Language of Proceedings

According to paragraph 11 of the Rules, the language of the administrative proceeding shall be the language of the registration agreement unless the panel determines otherwise or otherwise agreed to by the parties. In this present case the Registrar confirmed that the language of the registration agreement for the disputed domain names is Korean.

However, the Complaint was filed in English. The Complainant requests that the language of proceeding be English for the following reasons. The Respondent has knowledge of or proficiency in English, as shown by the Respondent’s use of the disputed domain names in connection with English language websites. The Respondent uses the disputed domain name <mymini.com> in connection with an English language pay-per-click website, and uses the other disputed domain names for pages of English language DAN and Sedo’s domain marketplace websites. Moreover, English was the language of the proceeding in the prior adverse UDRP decisions against the Respondent. On the other hand the Respondent, while not actually submitting a Response, requests to conduct the administrative proceeding in the Korean language.

Here, the Panel observes that the Center, for its part, has communicated with the Parties in a bilingual manner in both English and Korean concerning all of the various steps and requirements thus far in the administrative proceeding. The spirit of paragraph 11 of the Rules is to ensure fairness in the selection of the language of the proceeding by giving full consideration, inter alia, to the parties’ level of comfort with each language, expenses to be incurred, and possibility of delay in the proceeding in the event translations are required and other relevant factors.

In consideration of the above circumstances and in the interest of fairness to both Parties, the Panel concludes, in view of all of the above, that it is appropriate to render this Decision in English. By not responding to the Complaint, but merely asking that the proceedings be conducted in Korean, the Panel feels the Respondent is merely trying to add delay and expense.

6.2. Merits

Under paragraph 4(a) of the Policy, the Complainant must demonstrate that the three elements enumerated in paragraph 4(a) of the Policy have been satisfied. These elements are that:

(i) the disputed domain name is identical or confusingly similar to the Complainant’s trademark or service mark; 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 disputed domain names contain the Complainant’s mark BMW or MINI in its entirety. The dominant feature of the disputed domain names is “bmw” or “mini” which is entirely identical to the Complainant’s trademarks. The added numbers or terms such as “compact”, “best”, “connect”, or “my” do not prevent a finding of confusing similarity. Numerous UDRP panels have held that where a domain name substantially incorporates a complainant’s trademark, this is sufficient to make the domain name “confusingly similar” within the meaning of the Policy (Section 1.7 of WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”)).

Accordingly, the Panel finds that the first element under paragraph 4(a) of the Policy has been met by the Complainant.

B. Rights or Legitimate Interests

Under paragraph 4(a)(ii) of the Policy, the overall burden of proof is on the Complainant. However, once the Complainant presents a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain names, the burden of production shifts to the Respondent. (Section 2.1 of WIPO Overview 3.0”)

Firstly, the Complainant contends that it has never licensed or authorized the Respondent to use the Complainant’s trademark or to register any domain names incorporating the BMW or MINI marks, but that the Respondent has used the Complainant’s trademark without permission of the Complainant. Here, the Panel finds that the Complainant has made out a prima facie case.

Secondly, the Complainant contends that the Respondent is not using the disputed domain names in connection with a bona fide offering of goods or services. Rather, the Respondent has registered and used the disputed domain names for the purpose of selling them for a profit or for operating a pay-per-click website. In the meantime the Respondent failed to come forward with any appropriate allegations or evidence that might demonstrate its rights or legitimate interests in the disputed domain name to rebut the Complainant’s prima facie case.

Thirdly, there is no evidence presented to the Panel that the Respondent has used, or has made demonstrable preparations to use, the disputed domain names in connection with a bona fide offering of goods or services or is making a legitimate noncommercial or fair use of the disputed domain names. In addition there is no evidence to suggest that the Respondent has been commonly known by the disputed domain names.

Accordingly, the Panel concludes that the Complainant has satisfied the second element under paragraph 4(a) of the Policy in the present case.

C. Registered and Used in Bad Faith

Paragraph 4(a)(iii) of the Policy requires that the disputed domain name “has been registered and is being used in bad faith”. Hence, the Complainant must establish both bad faith registration and bad faith use of the disputed domain names. In addition, the circumstances listed in paragraph 4(b) of the Policy are not exclusive, and other circumstances may likewise lead to a finding of bad faith registration and use.

Firstly, since BMW and MINI mark are widely-known in many countries, including Germany and the Republic of Korea, it is most likely that the Respondent registered the disputed domain names with notice of the Complainant’s trademarks. In addition, the Respondent in all likelihood registered the disputed domain names with the expectation of taking advantage of the reputation of the Complainant’s trademarks.

Secondly, the Respondent offers to sell the disputed domain names on the associated websites such as Sedo’s or DAN domain marketplace websites. It is evidence of bad faith use where a respondent has used the disputed domain name to sell the disputed domain name for the price which is in excess of its documented out-of-pocket expenses.

Finally, having considered the Respondent’s registration of numerous domain names incorporating famous trademarks, the Panel finds that these registrations constitute a typical pattern of cybersquatting.

Accordingly, the Panel concludes that the Complainant has satisfied the third element under paragraph 4(a) of the Policy in the present case.

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 <bestbmw.com>, <bmwcompact.com>, <bmw24.com>, <bmw4.com>, <miniconnect.com>, and <mymini.com> be transferred to the Complainant.

Moonchul Chang
Sole Panelist
Date: March 12, 2020