WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Bayerische Motoren Werke AG v. Alexey S Baranov

Case No. D2020-0523

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 Alexey S Baranov, Russian Federation.

2. The Domain Name and Registrar

The disputed domain name <bmwcoders.com> (“Domain Name”) is registered with PDR Ltd. d/b/a PublicDomainRegistry.com (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 3, 2020. On March 4, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On March 5, 2020, 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 March 13, 2020. In accordance with the Rules, paragraph 5, the due date for Response was April 2, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 3, 2020.

The Center appointed Benjamin Fontaine as the sole panelist in this matter on April 14, 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

Bayerische Motoren Werke AG, known as BMW is a well-known car manufacturer. It sells in particular millions of high-end cars branded BMW. The trademark BWM was first used in 1917 and enjoys an outstanding reputation. It is repeatedly ranked amongst the most valuable brands.

The Complainant not only manufactures and sells automobiles and motorbikes, but it also provides numerous complimentary services. These services include diagnostic systems software provided under additional trademarks such as E- SYS and INPA and navigation software and their activation codes brought under the mark FSC. Part of these products is made available through the company’s own websites located on domain names such as <bmw.com> or <bmwgroup.com>. BMW also distributes these software through a network of authorized dealers allowed to use the BMW trademark as part of their domain name. Only these authorized dealers or other permitted parties may offer BMW diagnostic and navigation software. BMW also owns ETK databases and catalogues and TIS manuals distributed exclusively to its authorized BMW dealers.

In support of its Complaint, the Complainant relies on several registered trademarks, including:

- German trademark no. 410579 registered on November 15, 1929 in classes 7 and 12;

- United States trademark no. 613465 registered on October 4, 1955 in class 12.

The Respondent registered the Domain Name on February 19, 2011.

This Domain Name resolves to a commercial website offering what the Complainant alleges to be unauthorized counterfeit “BMW” diagnostic and navigation software. This webpage contains on top a picture of operators fixing BMW cars, and it offers a number of links, with forums for discussion with potential clients: “BMW ICOM NEXT | BMW NBT EVO FSC Codes | BMW NBT & CIC FSC Codes | BMW Rheingold, ISTA/P, KSD, ETK remote installation | BMW STANDARD TOOLS remote installation | BMW ESYS remote installation”. Each product specification is detailed and is available for purchase.

5. Parties’ Contentions

A. Complainant

The Domain Name is confusingly similar to the Complainant’s BMW mark

The Domain Name is confusingly similar with the trademarks of the Complainant. It contains the BMW mark in its entirety combined with the word “coders”, which is either generic or descriptive as it has an obvious connection to the coding and software products offered. Indeed, the Respondent uses the Domain Name for a commercial website that advertises and/or offers unauthorized, counterfeit versions of the Complainant’s codes, software products, catalogues and manuals which directly compete with BMW’s own offering of its genuine diagnostic products. In particular, the Respondent advertises BMW’s FSC codes; ICOM, RHEINGOLD, ISTA/P, and ESYS diagnostic products; ETK catalogues; and TIS manuals. The Complainant asserts that combining the BMW mark with the term “coders” gives the false impression that the Respondent is an authorized dealer as it mimics the longstanding conventions used by the authorized dealers of combining the trademark BMW with an additional term.

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 codes, software products, catalogues and manuals do not constitute a bona fide offering of goods or services, nor a legitimate noncommercial or fair use under the Policy. Indeed, the products offered by the Respondent are directly in competition with the Complainant and the Respondent is not an authorized dealer or party to use the Complainant’s trademarks. The Complainant adds that “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”.

Bad faith

The Complainant asserts that the registration of the Domain Name constitutes bad faith as it was chosen to intentionally attract, for commercial gain, Internet users by creating a likelihood of confusion with the Complainant’s famous and registered BMW mark. Indeed, there is overwhelming evidence that when registering the Domain Name the Respondent knew of the Complainant’s rights in the BMW mark, given the fame of the BMW mark. Moreover, this use 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.

The Complainant refers throughout its Complaint to numerous prior UDRP decisions involving its trademark BMW. They will be referred to in this decision wherever relevant.

B. Respondent

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

6. Discussion and Findings

Paragraph 4(a) of the Policy requires that the Complainant prove all of the following three elements in order to be successful in these proceedings:

(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 was registered and is being used in bad faith.

A. Identical or Confusingly Similar

The Complainant, under the first requirement of paragraph 4(a) of the Policy, needs to establish that the Domain Name is confusingly similar to a trademark or a service mark in which it has rights.

The Complainant has registered numerous trademarks over the sign BMW. These trademarks are fully reproduced in the Domain Name, and in first position. In a very similar UDRP decision involving the domain name <bmwcoding.com>, the UDRP panel indicated that “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” (Bayerische Motoren Werke AG v. Peeter Aps, WIPO Case No. D2018-2293). Similarly, the addition of the element “coders” does not prevent a finding of confusing similarity, and this is consistent with standard practice under the Policy: see section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).

The Domain Name is therefore confusingly similar to the trademarks of the Complainant.

B. Rights or Legitimate Interests

Under the Policy, a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests in the disputed domain names. Once such a prima facie case is made, the burden of production shifts to the respondent to demonstrate rights or legitimate interests in the domain name. If the respondent fails to do so, the complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy.

The Complainant has asserted that the Respondent is not known under the name “bmw” or “bmw coder”, and is not a member of its authorized network of dealers. The Respondent has not challenged these findings.

The operation set up by the Respondent, under the Domain Name, of a website that offers for sale unauthorized material, under the famous trademark BMW of the Complainant, is not fair use under the Policy. A similar finding was made by the UDRP panel in Bayerische Motoren Werke AG v. Perfect Privacy, LLC / Codesoft Technologies, WIPO Case No. D2018-1160 involving the domain name <bmwcodesoft.com>.

The Complainant is therefore deemed to have satisfied paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

In order to prevail under the third element of paragraph 4(a)(iii) of the Policy, the Complainant must demonstrate that the disputed domain names have been registered and are being used in bad faith.

Paragraph 4(b) of the Policy lists a number of circumstances which, without limitation, are deemed to be evidence of the registration and use of a domain name in bad faith. These are:

(i) circumstances indicating that [a respondent has] registered or acquired a disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the disputed domain name to the complainant or to a competitor of the complainant, for valuable consideration in excess of [the respondent’s] documented out-of-pocket costs directly related to the disputed domain name; or

(ii) [the respondent has] registered the disputed domain name in order to prevent the complainant from reflecting the complainant’s trademark or service mark in a corresponding domain name, provided that [the respondent has] engaged in a pattern of such conduct; or

(iii) the respondent has registered the disputed domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the disputed 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.

The Respondent chose the Domain Name to target the Complainant’s highly reputed trademark BMW. Besides, the association of the trademark BMW with the word “coders” establishes a direct reference to the activity of the Complainant and its network of retailers and garage owners in the field of diagnostic and navigation software.

The Respondent then made use of the Domain Name for the retail of allegedly counterfeit material. Failing any reaction from the Respondent, the Panel has no reason to question the assertions of the Complainant is this respect.

The registration and use of the Domain Name in these circumstances amounts to bad faith, under paragraphs (iii) and (iv) mentioned above. First, the Respondent is disrupting the activities of the Complainant and its network of authorized dealers. Second, the Respondent is attracting illegitimately Internet users by creating a likelihood of confusion with the Complainant’s trademark for commercial purposes. As indicated by a previous UDRP panel, “The Respondent in this case has used the disputed domain name to confuse Internet users into thinking that the Respondent has some affiliation or connection with the Complainant such that it is authorised to sell BMW branded diagnostic hardware and software. Internet users who are confused in this way and are diverted to the Respondent’s website to which the disputed domain name resolves are likely to think that the products being promoted have been authorised or approved by the Complainant when this is not the case” (Bayerische Motoren Werke AG v. Perfect Privacy, LLC / Codesoft Technologies, supra).

Accordingly, the third criteria set out in paragraph 4(a) of the Policy is also satisfied.

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 Domain Name <bmwcoders.com> be transferred to the Complainant.

Benjamin Fontaine
Sole Panelist
Date: April 28, 2020