WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Bayerische Motoren Werke AG v. Diagnostic Software, Global Domain Privacy / Elizabeth Davis, Chen Guo Qiang
Case No. D2020-1110
1. The Parties
The Complainant is Bayerische Motoren Werke AG, Germany, represented by Kelly IP, LLP, United States of America (“U.S.”).
The Respondents are Diagnostic Software, United Kingdom, and Global Domain Privacy, United Arab Emirates / Elizabeth Davis, United Arab Emirates, and Chen Guo Qiang, China.
2. The Domain Names and Registrar
The disputed domain names <bmw-diagnose-software.com> and <bmw-ista.com> were initially both registered with Register SPA and Network Solutions, LLC (the “Registrars”).
After appointment of the Administrative Panel, a cyberflight occurred and the domain name <bmw-ista.com> was transferred to the registrar Alibaba Cloud Computing (Beijing) Co., Ltd. (the “New Registrar”, see below, para. 4).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 5, 2020. On May 5, 2020, the Center transmitted by email to the Registrars a request for registrar verification in connection with the disputed domain names. On May 7 and 12, 2020, the Registrars transmitted by email to the Center their verification responses disclosing registrant and contact information for the disputed domain names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on May 14, 2020, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on May 16, 2020.
The Center verified that the Complaint, together with the amended 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 June 2, 2020. In accordance with the Rules, paragraph 5, the due date for Response was June 22, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 7, 2020.
The Center appointed Andrea Mondini as the sole panelist in this matter on July 10, 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.
On July 13, 2020, after appointment of the Administrative Panel, the Center ascertained that a cyberflight had occurred as to the domain name <bmw-ista.com>.
The Panel notes that despite multiple communications regarding the cyberflight, the two registrars involved did not restore the initial registration details for the domain name <bmw-ista.com>.
Upon the Center’s request of July 24 and August 5, 2020, the New Registrar confirmed lock of the domain name <bmw-ista.com> on July 28, 2020, and provided registrant information "Chen Guo Qiang" regarding the new named registrant of this domain name.
Pursuant to the Procedural Order No. 1 issued by the Panel on August 17, 2020, the Center informed the parties that a cyberflight had occurred in this matter involving a registrant and registrar change and delivered a copy of the Complaint, amended Complaint, and Procedural Order No. 1 to the currently named registrant of the domain name <bmw-ista.com>, requesting that he submit his comments as to the Complainant's statements by August 31, 2020. However, he did not submit any response. Therefore, the Panel now proceeds to Decision.
4. Factual Background
The Complainant is a leading manufacturer of automobiles and motorcycles and its trademark BMW is known worldwide.
The Complainant owns numerous registrations for the trademark BMW, including German registration No. 410579 for the trademark BMW in block letters, registered November 15, 1929, covering products in International Classes 7 and 12, including vehicles and motorcycles, and U.S. registration No. 611,710, issued September 6, 1955, covering automobiles and motorcycles in International Class 12.
Under the BMW mark and additional marks including ISTA, the Complainant also offers proprietary diagnostic systems (comprised of hardware and software) for maintenance, repair, servicing, and programming of BMW automobiles. The Complainant owns U.S. registration No 5,430,672 for the ISTA mark covering computer software for repair, diagnosis, coding, and programming of vehicles, registered on March 27, 2018.
The disputed domain name <bmw-ista.com> was first created on April 23, 2019, and the disputed domain name <bmw-diagnose-software.com> was created on October 28, 2014.
The Respondent used the disputed domain name <bmw-diagnose-software.com> for websites advertising and offering diagnostic software for BMW automobiles and using the BMW trademarks.
The disputed domain name <bmw-ista.com> resolves to an inactive website.
5. Parties’ Contentions
The Complainant in essence contends the following:
The BMW mark is famous worldwide.
The disputed domain names are confusingly similar to the Complainant's marks. Both disputed domain names incorporate the BMW mark in its entirety. The <bmw-ista.com> domain name also includes the Complainant's trademark ISTA and therefore combines two marks owned by the Complainant. The domain name <bmw-diagnose-software.com> combines the BMW trademark with the generic/descriptive terms "diagnose" and "software", and the addition of such terms heightens confusing similarity because it relates to the Complainant's business.
The Respondent is offering on its website and Facebook page counterfeit versions of the Complainant's diagnostic software for BMW automobiles and therefore is not making a legitimate use of the trademark-related domain names.
The Respondent is not commonly known by the disputed domain names. The Complainant has not licensed or otherwise authorized the Respondent to use the BMW trademark. The Respondent has no association with the Complainant, no rights or legitimate interests in the disputed domain name, or any rights in the BMW trademarks.
The disputed domain names have been registered and used in bad faith, considering the worldwide fame of the Complainant’s BMW trademark and the Respondent's use to advertise and offer unauthorized, counterfeit products.
The Respondent has further used the disputed domain name <bmw-ista.com> in bad faith by passively holding it without a legitimate purpose.
The Respondents did not reply to the Complainant’s contentions.
In particular, the currently named registrant of the domain name <bmw-ista.com> did not submit any comments.
6. Discussion and Findings
According to paragraph 4(a) of the Policy, in order to succeed, a complainant must establish each of the following elements:
(i) the disputed domain names are identical or confusingly similar to the trademark or service mark in which the complainant has rights;
(ii) the respondent has no rights or legitimate interests in respect of the disputed domain names; and
(iii) the disputed domain names have been registered and are being used in bad faith.
6.1 Consolidation of proceedings
The Complainant has filed a single Complaint against the two disputed domain names naming two registrants.
Where a complaint is filed against multiple respondents, panels look at whether (i) the domain names or corresponding websites are subject to common control, and (ii) the consolidation would be fair and equitable to all parties. Procedural efficiency would also underpin panel consideration of such a consolidation scenario. Panels have considered a range of factors, typically present in some combination, as useful to determining whether such consolidation is appropriate, such as similarities in or relevant aspects of (i) the registrants’ identity(ies) including pseudonyms, (ii) the registrants’ contact information including email address(es), postal address(es), or phone number(s), including any pattern of irregularities, (iii) relevant IP addresses, name servers, or webhost(s), (iv) the content or layout of websites corresponding to the disputed domain names, (v) the nature of the marks at issue (e.g., where a registrant targets a specific sector), (vi) any naming patterns in the disputed domain names (e.g., <mark-country> or <mark-goods>), (vii) the relevant language/scripts of the disputed domain names particularly where they are the same as the mark(s) at issue, (viii) any changes by the respondent relating to any of the above items following communications regarding the disputed domain name(s), (ix) any evidence of respondent affiliation with respect to the ability to control the disputed domain name(s), (x) any (prior) pattern of similar respondent behavior, or (xi) other arguments made by the complainant and/or disclosures by the respondent(s) (WIPO Overview of WIPO Panel Views on Selected UDRP Question, Third Edition (“WIPO Overview 3.0”), section 4.11.2).
The Complainant asserts, and the Panel agrees, that the following factors indicate that the registrants of the disputed domain names are either one-and-the-same, or are acting in concert and the disputed domain names are under common control: (1) the Respondent's use of the email address “[..]@bmw-diagnose-software.com”, on the registration record for the domain name <bmw-ista.com>; (2) the advertisement of the Respondent’s websites associated with the disputed domain names on the same infringing Facebook page “BMW Diagnostic Software”, and (3) the Respondent’s offering of the same infringing products on its websites, namely, unauthorized, counterfeit versions of the Complainant’s diagnostic and navigation software. The fact that, after appointment of the Panel, a cyberflight occurred, does not affect this analysis, as the previous and the current named registrant of the domain name <bmw-ista.com> must have acted in concert to carry out the cyberflight. Moreover, the current named registrant of the domain name <bmw-ista.com> did not submit any comments.
Accordingly, the Panel holds that under the circumstances of the present case, the Complainant’s filing of a single Complaint against the two disputed domain names and different registrants is proper under the UDRP Rules and WIPO’s Supplemental Rules.
6.2 Substantive issues
A. Identical or Confusingly Similar
The Complainant has shown that it holds trademark registrations for the word marks BMW and ISTA.
The Panel finds that the disputed domain name <bmw-diagnose-software.com> is confusingly similar to the Complainant’ trademark BMW, because it incorporates in its entirety the famous trademark BMW. The addition of the words "diagnose" and "software" does not dispel confusing similarity. See WIPO Overview 3.0, section 1.8.
Also, the disputed domain name <bmw-ista.com> is confusingly similar to the Complainant's marks because it consists of the combination of two trademarks owned by the Complainant.
Accordingly, the Panel finds that the Complainant has satisfied the requirement under paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
The Complainant contends, credibly, that it has not authorized the Respondents to register or use any domain name incorporating the Complainant’s trademarks BMW or ISTA, and that there is no relationship whatsoever between the Parties. Further, the Complaint credibly contends that the products offered on the Respondents' website “www.bmw-diagnose-software.com” and on their Facebook page are counterfeit.
In the absence of any response, the Panel concludes that the Respondents were not authorized or licensed to use the Complainant’s trademarks in the disputed domain names and that there is no indication of any bona fide offering of goods or services under the disputed domain names nor any legitimate noncommercial or fair use of the disputed domain names. Further, there is no evidence showing that the Respondents have been commonly known by the disputed domain names. Accordingly, the Panel finds that the Respondents do not have rights or legitimate interests in the disputed domain name.
Therefore, the Panel finds that the Complainant has satisfied the requirement under paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
The BMW mark is distinctive and famous worldwide for automobiles and motorcycles. The Panel thus concludes that the Respondents must have been aware of this trademark and its reputation when they registered the disputed domain names, so that the disputed domain names were registered in bad faith.
By using the disputed domain name name <bmw-diagnose-software.com> to advertise and offer unauthorized diagnostic software for BMW automobiles, the Respondents used the disputed domain name in bad faith to intentionally attract, for commercial gain, Internet users by offering them counterfeit copies of the Complainant's diagnostic software, thereby confusing them into believing that the disputed domain name was being operated by or authorized by the Complainant.
Considering the distinctiveness and worldwide reputation of the Complainant’s trademark BMW and the failure of the Respondents to submit a response or comments, the inactive use of the disputed domain name <bmw-ista.com> without a legitimate purpose, under the circumstances of this case, does not prevent a finding of bad faith under the doctrine of passive holding. See WIPO Overview 3.0, section 3.3.
The cyberflight regarding the domain name <bmw-ista.com> is a further indication of registration and use of this domain in bad faith.
Accordingly, the Panel concludes that the disputed domain names have been registered and used in bad faith.
The Panel therefore finds that the Complainant has satisfied the requirement under paragraph 4(a)(iii) of the Policy.
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 <bmw-diagnose-software.com> and <bmw-ista.com> be transferred to the Complainant.
Date: September 9, 2020