WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Bayerische Motoren Werke AG v. Domain Administrator, Fundacion Privacy Services LTD

Case No. D2020-1159

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 Domain Administrator, Fundacion Privacy Services LTD, Panama.

2. The Domain Names and Registrar

The disputed domain names <bmwusacar.com>, <mybmwusa.com>, and <usabmw.com> (each a “Disputed Domain Name” and collectively the “Disputed Domain Names”) are registered with Media Elite Holdings Limited dba Register Matrix (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 8, 2020. On May 11, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Names. On May 11, 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 May 14, 2020. In accordance with the Rules, paragraph 5, the due date for Response was June 3, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 4, 2020.

The Center appointed Nicholas Weston as the sole panelist in this matter on June 15, 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 is a corporation organized under the laws of Germany that operates a business manufacturing and distributing cars, motorcycles, and branded merchandise with revenue exceeding EUR 104 billion in 2019. The Complainant holds registrations for the trademark BMW and design in numerous countries, including in Germany pursuant to the Registration No. 221388, registered on December 10, 1917.

The Complainant is also the owner of, inter alia, the domain name <bmwusa.com>, which resolves to the company’s main website for its United States franchise that since 1996 has promulgated information about the company’s business in that country.

The Disputed Domain Name <bmwusacar.com> was registered on January 7, 2019. The Complainant has supplied uncontested evidence that this Disputed Domain Name when initially accessed on May 6, 2020 redirected to the main website of competitor Volvo Cars at the domain name <volvocars.com> then later that day resolved to a pay-per-click (“PPC”) parking page with automobile related links including “BMW X3 Specs”, “BMW 330i” and “New Chevrolet Cars”.

The Disputed Domain Name <mybmwusa.com> was registered on February 20, 2006, and as at May 6, 2020 initially redirected to the main website of competitor Volvo Cars at the domain name <volvocars.com>.

The Disputed Domain Name <usabmw.com> was registered on October 1, 2002, and, as at May 6, 2020, resolved to a PPC parking page including links to “BMW Parts”, “BMW Auto Parts” and on clicking through to “OEM Auto Parts”, “Auto Accessories” and “Cheap OEM Auto Parts”.

5. Parties’ Contentions

A. Complainant

The Complainant cites its German trademark Registration No. 221388, registered on December 10, 1917, and United States trademark registrations including No. 611,710, registered in 1955, and numerous other registrations internationally for the mark BMW, as prima facie evidence of ownership.

The Complainant submits that the mark BMW is well known and that its rights in that mark predate the Respondent’s registration of the Disputed Domain Names. It submits that the Disputed Domain Names are confusingly similar to its trademark, because each Disputed Domain Name incorporates in its entirety the BMW trademark and that the similarity is not removed by additions of the words “USA” and “car” in the case of the Disputed Domain Name <bmwusacar.com>, the words “my” and “USA” in the case of the Disputed Domain Name <mybmwusa.com>, and the acronym “USA” in the case of the Disputed Domain Name <usabmw.com> as well as the generic Top-Level Domain (“gTLD”) “.com”.

The Complainant contends that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Names because “Respondent’s registration and use of the [Disputed] Domain Names to redirect Internet users to a directly competing website operated by Volvo, one of Complainant’s competitors, and/or for pay-per-click websites advertising competing automotive websites, does not constitute a bona fide offering of goods or services or noncommercial fair use”.

Finally, the Complainant alleges that the registration and use of the Disputed Domain Names were, and currently are, in bad faith, contrary to the Policy and Rules having regard to the prior use and fame of the Complainant’s trademarks.

B. Respondent

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

6. Discussion and Findings

Under paragraph 4(a) of the Policy, the Complainant has the burden of proving the following:

(i) that each Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(ii) that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Names; and

(iii) that the Disputed Domain Names have been registered and are being used in bad faith.

A. Identical or Confusingly Similar

The Complainant has produced sufficient evidence to demonstrate that it has registered trademark rights in the mark BMW in numerous countries including the United States and Germany. The requirements of the first element for purposes of the Policy may be satisfied by a trademark registered in any country (see Thaigem Global Marketing Limited v. Sanchai Aree, WIPO Case No. D2002-0358).

Turning to whether the Disputed Domain Names are identical or confusingly similar to the BMW trademark, the Panel observes that:

1) the Disputed Domain Name <bmwusacar.com> comprises: (a) an exact reproduction of the Complainant’s trademark BMW; (b) with the geographical identifier “USA”; (c) followed by the word “car”; (d) followed by the gTLD “.com”.

2) the Disputed Domain Name <mybmwusa.com> comprises: (a) the word “my”; (b) followed by an exact reproduction of the Complainant’s trademark BMW; (c) followed by the geographical identifier “USA”; (d) followed by the gTLD “.com”.

3) the Disputed Domain Name <usabmw.com> comprises: (a) the geographical identifier “USA”; (b) followed by an exact reproduction of the Complainant’s trademark BMW; (c) followed by the gTLD “.com”.

It is well established that the gTLD used as technical part of a domain name may be disregarded (see Autodesk v. MumbaiDomains, WIPO Case No. D2012-0286). The relevant comparison to be made is with the second-level portion of the Disputed Domain Names, specifically: “bmwusacar”, “mybmwusa”, and “usabmw”.

It is also well established that where a domain name incorporates a complainant’s well-known and distinctive trademark in its entirety, it may be confusingly similar to that mark despite the addition of other words such as a descriptive word or geographical identifier (see Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903; Wal-Mart Stores, Inc. v. Kuchora, Kal, WIPO Case No. D2006-0033).

This Panel accepts the Complainant’s contention that “[t]he [Disputed] Domain Names are also confusingly similar to Complainant’s BMW mark because each contains Complainant’s mark combined with generic, descriptive, and/or geographic terms — ‘car’, which identifies Complainant’s primary product, ‘USA’, which identifies Complainant’s geographic location, and/or ‘my’, a common term widely used to communicate personalized websites operated by trademark owners.” and that these additional terms do not prevent a finding of confusing similarity.

The Panel finds that the Complainant has established paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy lists the ways that the Respondent may demonstrate rights or legitimate interests in the Disputed Domain Names. The Policy also places the burden on the Complainant to establish the absence of the Respondent’s rights or legitimate interests in the Disputed Domain Names. Because of the inherent difficulties in proving a negative, the consensus view is that the Complainant need only put forward a prima facie case that the Respondent lacks rights or legitimate interests. The burden of production then shifts to the Respondent to rebut that prima facie case (see World Wrestling Federation Entertainment, Inc. v. Ringside Collectibles, WIPO Case No. D2000-1306; WIPO Overview of WIPO Panel Views on Selected URDP Questions, Third Edition (“WIPO Overview 3.0”), section 2.1).

The Complainant contends that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Names because there is no evidence of the Respondent’s use, or demonstrable preparations to use, the Disputed Domain Names in connection with a bona fide offering of goods or services.

This Panel accepts the Complainant’s uncontested evidence that the “Respondent uses the [Disputed Domain Names <bmwusacar.com> and <mybmwusa.com>] to redirect to a directly competing website, namely, the [‘www.volvocars.com’] website of Volvo, one of BMW’s competitors. [The] Respondent undoubtedly receives advertising commissions for redirecting the [Disputed] Domain Names to Volvo’s website”. This conduct is inconsistent with the Respondent having rights or legitimate interests.

This Panel also accepts the Complainant’s uncontested evidence that the “Respondent uses the [Disputed Domain Names <bmwusacar.com> and <usabmw.com>] for pay-per-click websites featuring search links related to Complainant’s BMW products and services (e.g., ‘BMW X3 Specs’, ‘BMW 330i’, ‘BMW Parts’, and ‘BMW Auto Parts’) that connect to pages with advertisements for various websites including competing automotive websites”. This conduct is also inconsistent with the Respondent having rights or legitimate interests.

On any objective view, the Respondent is not a reseller with a legitimate interest in a domain name incorporating a manufacturer’s mark, such that it could meet the tests set out in Oki Data Americas, Inc. v. ASD, Inc., supra. Nor, alternatively, is the Respondent commonly known by any of the Disputed Domain Names.

This Panel accepts that the Complainant has made out a prima facie case that the Respondent lack rights or legitimate interests in the Disputed Domain Names and, in the absence of a reply by the Respondent, 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 third element of the Policy that the complainant must also demonstrate is that the disputed domain names have been registered and used in bad faith. Paragraph 4(b) of the Policy sets out certain circumstances to be construed as evidence of both of these conjunctive requirements.

The Panel finds that the evidence in the case shows the Respondent registered and has used the Disputed Domain Names in bad faith.

On the issue of registration, the trademark BMW is such a famous mark for cars and motorcycles that it would be inconceivable that the Respondent might have registered the Disputed Domain Names without knowing of it (see Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003; Bayerische Motoren Werke AG v. Kang M., WIPO Case No. D2011-1086(“Complainant’s well-known trademark BMW”); Bayerische Motoren Werke AG v. Whois privacy services provided by DomainProtect LLC / N.a, Vlad Chernov, WIPO Case No. D2013-0452(“The disputed domain name is comprised of the Complainant’s famous trademark BMW”); Bayerische Motoren Werke Aktiengesellschaft v. Irena Milacic, WIPO Case No. DME2017-0005(“At the date of registration of the disputed domain name in 2012 the Complainant's BMW mark was so extremely well-known worldwide that it is not credible to consider that the Respondent, also involved in the motor vehicle business, was not well aware of it.”); and Bayerische Motoren Werke AG v. Domain Administrator, see PrivacyGuardian.org / Chris Pointon, WIPO Case No. D2018-1143 (“the Complainant’s mark [was] extremely well-known by 2010”).

The diversion of Internet users is also a common example of use in bad faith as referred to in paragraph 4(b)(iv) of the Policy and identified in many previous UDRP decisions (see L’Oréal, Biotherm, Lancôme Parfums et Beauté & Cie v. Unasi, Inc, WIPO Case No. D2005-0623; Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co., WIPO Case No. D2000-0163, and Hoffmann-La Roche Inc. v. Samuel Teodorek, WIPO Case No. D2007-1814).

Further, a gap of several years between registration of a complainant’s trademark and a respondent’s registration of a disputed domain name (containing the trademark) could constitute in certain circumstances additional evidence of bad faith (see Asian World of Martial Arts Inc. v. Texas International Property Associates, WIPO Case No. D2007-1415). In the present case, the Respondent registered the Disputed Domain Names decades after the Complainant first established trademark rights in the BMW mark.

On the issue of use, the uncontested evidence is that the Disputed Domain Names <bmwusacar.com> and <mybmwusa.com> redirected to the main website of competitor Volvo Cars at the domain name <volvocars.com>. The evidence is that <bmwusacar.com> subsequently resolved to a PPC parking page with automobile related links including “BMW X3 specs”, “BMW 330i” and “New Chevrolet Cars”. The evidence also demonstrates that the Disputed Domain Name <usabmw.com> resolved to a PPC parking page including links to “BMW Parts”, “BMW Auto Parts” and on clicking through to “OEM Auto Parts”, “Auto Accessories” and “Cheap OEM Auto Parts”. This Panel accepts the material demonstrating this conduct as evidence of bad faith use in accordance with paragraph 4(b)(iv) of the Policy.

The Respondent’s use of the Disputed Domain Names are apparently for domain monetization unconnected with any bona fide supply of goods or services by the Respondent. The business model in this case, is for the Respondent to passively collect commissions for diverting Internet traffic to <volvocars.com> or to PPC parking web pages and to obtain click through revenue generated solely from the Complainant’s goodwill and Internet users’ inaccurate guessing of the correct domain name associated with the Complainant’s BMW products. Exploitation of the reputation of a trademark to obtain click through commissions from the diversion of Internet users is a common example of use in bad faith as referred to in paragraph 4(b)(iv) of the Policy and identified in many previous UDRP decisions. (See Veuve Cliquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co., supra; Lilly ICOS LLC v. The Counsel Group LLC, WIPO Case No. D2005-0042; and L’Oréal, Biotherm, Lancôme Parfums et Beauté & Cie v. Unasi, Inc, supra).

The Panel also notes that the Respondent advertised the Disputed Domain Names <mybmwusa.com> and <usabmw.com> for sale on a domain-marketplace with a minimum bid of USD 1,000 each which the Panel infers is in bad faith as the sum sought is well in excess of any out-of-pocket costs the Respondent may have reasonably incurred (see adidas-Salomon AG v. Vincent Stipo, WIPO Case No. D2001-0372).

Moreover, the Panel has considered whether the involvement of the Respondent in 39 UDRP previous cases located – all resulting in the transfer of the disputed domain names – is sufficient to establish a “pattern of conduct” for the purpose of paragraph 4(b)(ii) of the Policy. The Panel finds that a “pattern” is evident having regard to the sheer number of transfers resulting in the 39 previous UDRP proceedings involving the Respondent as well as the apparent lack of remorse or implementation of a remedial procedure to avoid further infringements given the previous involvement of this Respondent in proceedings involving the Complainant and its BMW trademark in Bayerische Motoren Werke AG v. Domain Administrator / Fundacion Privacy Services LTD, WIPO Case No. D2018-0701, where the Respondent was ordered to transfer the domain name <bmwplanet.com> to the Complainant following evidence that it was being used to redirect Internet traffic to the website of a competitor, Volvo Cars. This Panel finds that, although the Respondent is a privacy or proxy service, the pattern is not the product of mere inadvertence but evidence of bad faith.

This Panel finds that the Respondent has taken the Complainant’s trademark BMW and incorporated it in the Disputed Domain Names without the Complainant’s consent or authorization, for the very purpose of capitalizing on the reputation of the trademark by diverting Internet users to the Volvo Cars website as well as to PPC parking web pages for commercial gain and seeking to sell two of the Disputed Domain Names for a sum in excess of any out-of-pocket costs the Respondent may have reasonably incurred, and has done so as part of a pattern of conduct. This Panel regards such conduct as prima facie evidence of bad faith use.

Accordingly, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(iii) of the Policy.

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 <bmwusacar.com>, <mybmwusa.com>, and <usabmw.com> be transferred to the Complainant.

Nicholas Weston
Sole Panelist
Date: June 21, 2020