WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Bayerische Motoren Werke AG v. Joseph Kordick, JCK PARTS LLC

Case No. D2020-2422

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 Joseph Kordick, Jck Parts LLC, United States, self-represented.

2. The Domain Name and Registrar

The disputed domain name <bmwofwesleychapel.com> is registered with GoDaddy.com, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 17, 2020. On September 18, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 18, 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 September 22, 2020. In accordance with the Rules, paragraph 5, the due date for Response was October 23, 2020. On October 12, 2020, the Respondent requested an extension of the due date for the Response and the removal of Mr. Kordick as named Respondent from the proceeding. On October 13, 2020, the Center extended the due date for the Response until October 23, 2020. On the same date, the Center informed the Respondent that a determination as to the Respondent identity was a matter to be decided by the Panel once appointed. The Response was filed with the Center on October 23, 2020. On October 30, 2020, the Complainant submitted a supplemental filing.
The Center appointed Assen Alexiev as the sole panelist in this matter on October 30, 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.

The Panel decided to accept and take into account the supplemental filing submitted by the Complainant, as it deals with arguments raised in the Response that the Complainant may not have anticipated.

4. Factual Background

The Complainant is a major automobile and motorcycles manufacturer, with production facilities in 31 sites in 15 countries on four continents, and has more than 133,000 employees. In 2019, the Complainant manufactured more than 2,205,000 automobiles and had worldwide revenue in excess of EUR 104 billion. It currently has approximately 3,500 authorized BMW dealers in locations throughout the world. In the United States, the Complainant has had a manufacturing plant in South Carolina since 1994, and its North American headquarters company, BMW of North America, LLC, has been located in New Jersey since 1975.

The Complainant operates under the trade name BMW for which it has the following trademark registrations (the “BMW trademark”):

- the combined trademark BMW with registration No. 221388, registered in Germany on December 10, 1917, for goods in International Classes 7, 8, 9, 11, and 12;
- the word trademark BMW with registration No. 410579, registered in Germany on November 15, 1929, for goods in International Classes 7 and 12;
- the word trademark BMW with registration No. 611,710, registered in the United States on September 6, 1955, for goods in International Class 12; and
- the combined trademark BMW with registration No. 613,465, registered in the United States on October 4, 1955, for goods in International Class 12.

The Complainant’s international portal websites are located at the domain names <bmw.com> and <bmwgroup.com>.

The disputed domain name was registered on April 12, 2018. It is currently inactive.

5. Parties’ Contentions

A. Complainant

The Complainant submits that it spends tens of millions of US Dollars every year to advertise the BMW trade name and trademark in connection with its products and services through television and print advertisements, the Internet, and high-profile sponsorships. According to the Complainant, the BMW trademark has become internationally famous as a result of extensive and long use and advertising, and favorable public acceptance and recognition worldwide. It has consistently been ranked in many top-100 lists for years including high positions in “100-top Most Powerful Brands” by Tenet Partners, “World’s Most Admired Companies” by Fortune, “The World’s Most Valuable Brands” by Forbes, and “Best Global Brands” by Interbrand.

The Complainant states that it uses the BMW trademark in connection with its network of websites, operated since 1996, which are dedicated to promoting and offering BMW automobiles, motorcycles, and related products and services. The websites in this online network are accessible via domain names comprised of the BMW trademark combined with relevant geographic or descriptive terms. The Complainant permits its authorized dealers to use trade names and domain names comprised of the BMW trademark for their authorized BMW businesses, and numerous dealers use and have used such names for many years. These authorized dealers’ trade names and domain names are frequently comprised of the BMW trademark and the dealer’s name or geographic location. The Complainant’s business network in the Tampa Bay, Florida, United States, recently expanded to include a new authorized dealer that uses the trade name “BMW of Wesley Chapel”, Wesley Chapel being a suburb of Tampa, Florida.

The Complainant submits that the disputed domain name is confusingly similar to its famous BMW trademark, as it contains the trademark in its entirety, and the addition of the geographic phrase “of Wesley Chapel” does not distinguish the disputed domain name from the trademark. The Complainant notes that the confusing similarity of the disputed domain name is heightened by the fact that it mimics the established naming conventions for domain names and trade names commonly used by the Complainant and its authorized dealers, which are comprised of the BMW trademark and geographic terms. In result, Internet users will mistakenly believe that the disputed domain name is owned by the Complainant or an authorized dealer of the Complainant.

According to the Complainant, the Respondent has no rights or legitimate interests in the disputed domain name, as the Respondent is not commonly known by the disputed domain name and is not a licensee of the Complainant or authorized to use the Complainant’s BMW trademark. The Complainant submits that the Respondent’s registration and use of the disputed domain name for a blank website constitutes passive holding, which does not demonstrate any legitimate interest in the disputed domain name and cannot be regarded as a bona fide offering of goods or services or a legitimate noncommercial or fair use.

The Complainant contends that the disputed domain name was registered and is being used in bad faith. It submits that the Respondent registered the disputed domain name in bad faith with knowledge of the Complainant’s prior rights in the BMW trademark which were established long before the Respondent registered the disputed domain name. The Complainant points out that the Respondent Kordick is a professional in the automotive field who works for an authorized BMW dealer in the Tampa Bay area.

According to the Complainant, the Respondent registered the disputed domain name opportunistically in bad faith to take advantage of the goodwill of the BMW trademark and the obvious connection between the disputed domain name, the Complainant’s BMW trademark, and the Complainant’s dealers located in the Tampa Bay area. In the Complainant’s submission, the Respondent’s passive holding of the disputed domain name constitutes bad faith because of the distinctive and famous nature of the Complainant’s trademark and the fact that the disputed domain name reflects the Complainant’s typical trade name and domain name conventions for its authorized dealers. The registration of the disputed domain name by the Respondent thus disrupts the Complainant’s business by competing with the Complainant for Internet traffic and interfering with the Complainant’s ability to manage the online use of its BMW trademark. The Complainant notes that the Respondent has a pattern of registering trademark-related domain names, as he also registered the domain name <vwofwc.com>, which contains the famous third-party trademark VW owned by Volkswagen, and uses it for a pay-per-click website that also links to GoDaddy’s brokerage page for the potential sale of the domain name.

The Complainant further submits that the Respondent registered the disputed domain name to intentionally attract Internet users by creating a likelihood of confusion with the Complainant’s famous BMW trademark as to the source, sponsorship, affiliation or endorsement of the disputed domain name, and thus to trade on the Complainant’s goodwill to the detriment of the Complainant.

The Complainant states that on August 13, 2020, its counsel sent a demand letter to the Respondent requesting an amicable resolution to the dispute, but the Respondent refused to transfer the disputed domain name to the Complainant.

In its supplemental filing, the Complainant submits that the Respondent erroneously claims that the Complainant does not license its BMW trademark to its authorized dealers for use in domain names because the domain names are owned by the dealers. Rather, the Complainant licenses its authorized dealerships to use the BMW trademark in conducting their dealership business, including the right to use the trademark as part of the dealer name and of domain names for websites promoting the authorized dealership business. The Complainant notes that the registration of such domain names under the dealers’ corporate names does not convert their licensed use of the BMW trademark to a third-party use.

According to the Complainant, the Respondent’s suggestion that the Complainant must own rights for each term included in the disputed domain name, including “of”, “wesley”, and “chapel”, is contrary to the plain language of the Policy, which does not require the Complainant to own a trademark identical to the disputed domain name. The Complainant submits that there is no merit in the Respondent’s claim that “there is no confusion” because the disputed domain name is not used for the products included in the scope of the BMW trademark registrations in the United States, as otherwise a trademark owner could prevail under the Policy only if the respondent used a domain name in connection with identical products or services.

The Complainant disputes the Respondent’s claim that it intends to use the disputed domain name for a noncommercial social media platform that is in development. The Complainant notes that the disputed domain name was registered more than a century after the Complainant started using the BMW trademark and long after this trademark became globally famous. The Complainant also points out that the LinkedIn profile of the Respondent Kordick shows that he has long worked in the automotive industry and has been employed as a parts and service director by an authorized dealer of the Complainant since April 2018, and that the Respondent JCK PARTS LLC’s name includes the term “parts” which has an obvious connection to the automotive industry, and the disputed domain name mimics the long-established naming conventions used by authorized BMW dealers. The Complainant notes that despite Mr. Kordick’s attempts to distinguish himself from JCK PARTS LLC, he is listed as President and signatory on JCK PARTS LLC’s 2018 report filed with the Florida Secretary of State.

Finally, the Complainant states that the fact that it and its authorized dealer Wesley Chapel Automotive Management, LLC have attempted to resolve this dispute by requesting the transfer of the disputed domain name before engaging in the present proceeding does not support the Respondent’s position.

B. Respondent

The Respondent Kordick has not submitted a Response in this proceeding.

The Respondent JCK PARTS LLC, represented by Mr. Kordick, has a submitted the Response summarized below in its relevant parts.

JCK PARTS LLC submits that the Complainant’s BMW trademark is registered in the United States only for goods and services related to automobiles, motorcycles, and parts thereof, and not for any other goods or services. JCK PARTS LLC goes on to state that the Complainant does not hold a word trademark for “BMW” as it relates to the initials of a private citizen.

According to JCK PARTS LLC, the Complainant does not own any trademarks relating to “BMW of [any geographical location]”, and the BMW trademark does not apply to any and all words related to such sequence of elements, so the Complainant is trying to overreach its trademark beyond the goods and services for which it is registered in the United States. The registration of the disputed domain name by the Respondent over two and half years ago was not an infringement of the BMW trademark of the Complainant.

JCK PARTS LLC notes that the Complainant refers to 12 domain names in its Complaint, but only one of them is composed of “BMW of [geographical location]”, and it is owned by a third party, not by the Complainant. According to JCK PARTS LLC, the Complainant does not license the domain names referenced by it, but they are owned and operated by third parties.

JCK PARTS LLC states that the disputed domain name was registered on April 12, 2018, while the trade name “BMW of Wesley Chapel” was filed on January 21, 2020, by Wesley Chapel Automotive Management, LLC, which is a company not affiliated to the Complainant. JCK PARTS LLC was contacted by representatives of Wesley Chapel Automotive Management, LLC to solicit the purchasing of the disputed domain name, which was declined by JCK PARTS LLC.

According to JCK PARTS LLC, since it is a separate legal entity different from Mr. Kordick, and is the sole owner of the disputed domain name, Mr. Kordick’s affiliation to any other company is irrelevant.

JCK PARTS LLC further states that it has not yet activated the website at the disputed domain name, as it will be used for a noncommercial social media platform that is in development. According to JCK PARTS LLC, the disputed domain name is not and will never be used for automobiles, motorcycles, or parts for them, so there will never be confusion with the BMW trademark.

JCK PARTS LLC maintains that it has never is attempted to sell, rent, or profit off the disputed domain name.

6. Discussion and Findings

6.1. Procedural issue – Request for removal of Mr. Kordick as Respondent

The Respondent JCK PARTS LLC (acting through Mr. Kordick) requests the removal of Mr. Kordick as Respondent from this proceeding. JCK PARTS LLC submits that it exists as a legal entity separate from Mr. Kordick, and that it is the sole owner of the disputed domain name, while Mr. Kordick is not the legal owner of the disputed domain name. According to JCK PARTS LLC, the Complainant has incorrectly named Mr. Kordick as owner of the disputed domain name and as Respondent, and has no standing to name Mr. Kordick as such.

With its verification response dated September 18, 2020, the Registrar has confirmed that “The respondent, Joseph Kordick / Jck Parts LLC, is the registrant of the domain name(s)”, and the WhoIs information about the disputed domain name provided by the Registrar states:

“Registrant Name: JOSEPH KORDICK
Registrant Organization: JCK PARTS LLC.”

The evidence submitted by the Complainant shows that the 2018 Annual Report of JCK PARTS LLC was signed by and filed by Mr. Kordick as its authorized registered agent. In addition, JCK PARTS LLC is represented by Mr. Kordick in this proceeding and has communicated to the Center using the email address of Mr. Kordick indicated in the WhoIs information about the disputed domain name provided by the Registrar.

Taking all the above into account, the Panel is satisfied that the registrant of the disputed domain name is JCK PARTS LLC, and at the same time that the same is under the control of Mr. Kordick. Therefore, the Complainant has properly named Mr. Kordick / JCK PARTS LLC as registrant of the disputed domain name and Respondent in this proceeding. For this reason, the Panel rejects the request of JCK PARTS LLC for the removal of Mr. Kordick as Respondent from this proceeding, and will jointly refer to both as the “Respondent” in its analysis of the substantive matters below. The Panel notes that the attempt of JCK PARTS LLC to have Mr. Kordick removed as Respondent from the proceeding is relevant for the analysis of the substance of the dispute and the conduct of the Respondent.

6.2. Substantive issues

Pursuant to the Policy, paragraph 4(a), the Complainant must prove each of the following to justify the transfer of the disputed domain name:

(i) the disputed domain name is identical or confusingly similar to a 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 name; and
(iii) the Respondent has registered and is using the disputed domain name in bad faith.

A. Identical or Confusingly Similar

The Complainant has submitted evidence about a number of registrations of the BMW trademark. The Respondent maintains that the Complainant does not hold a word trademark for “BMW” and that this abbreviation relates to the initials of a private citizen. The Respondent has however not specified or submitted supporting evidence about who this private citizen might be and what rights he or she may have that would negate the trademark rights of the Complainant over the BMW trademark, and according to the Wikipedia entry for the Complainant, the acronym BMW stands for the Complainant’s official name Bayerische Motoren Werke AG. At the same time, the evidence submitted by the Complainant shows that the BMW trademark is registered both as word trademark and as a combined trademark, and being registered, the trademark enjoys a presumption of validity. The above is sufficient to satisfy the Panel that the Complainant has established its trademark rights in the BMW trademark in the present proceeding.

The Panel notes that a common practice has emerged under the Policy to disregard in appropriate circumstances the generic Top-Level Domain (“gTLD”) section of domain names for the purposes of the comparison under the Policy, paragraph 4(a)(i). See section 1.11.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, (“WIPO Overview 3.0”). The Panel sees no reason not to follow the same approach here, so it will disregard the “.com” gTLD section of the disputed domain name.

The relevant part of the disputed domain name is the sequence “bmwofwesleychapel”. It incorporates the BMW trademark entirely with the addition of the dictionary word “of” and the geographic term “Wesley Chapel”, which as noted by the Complainant and not disputed by the Respondent is the name of a suburb of Tampa, Florida. The Complainant has also shown that its authorized dealers commonly use a combination of the BMW trademark and their name or a geographic term in their trade names and domain names. As discussed in section 1.8 of WIPO Overview 3.0, where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element. The nature of such additional terms may however bear on assessment of the second and third elements.

The Respondent maintains that the Complainant does not own any trademarks relating to “BMW of [any geographical location]”, and the BMW trademark does not apply to any and all words related to such sequence of elements. However, as noted by the Complainant, the Policy does not require the Complainant to own a trademark identical to the disputed domain name, and the Complainant is not required to have trademark rights for each term included in the disputed domain name.

The Respondent also claims that there is no confusion between the disputed domain name and the BMW trademark because the disputed domain name is not used for the products included in the scope of the BMW trademark registered in the United States. The Complainant correctly notes that this argument lacks merit, because otherwise a trademark owner could prevail under the Policy only if the respondent used a domain name in connection with identical products or services.

In view of the above, the Panel finds that the disputed domain name is confusingly similar to the BMW trademark in which the Complainant has rights.

B. Rights or Legitimate Interests

While the overall burden of proof in UDRP proceedings is on the complainant, UDRP panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the often-impossible task of “proving a negative”, requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element. See section 2.1 of the WIPO Overview 3.0.

The Complainant contends that the Respondent has no rights or legitimate interests in the disputed domain name, stating that the Respondent is not commonly known by the disputed domain name and is not authorized by the Complainant to use the BMW trademark. The Complainant submits that the Respondent has registered the disputed domain name with knowledge of the Complainant’s prior rights in the BMW trademark, because the Respondent Mr. Kordick works in an authorized BMW dealer, and that the registration of the disputed domain name was made opportunistically to take advantage of the goodwill of the BMW trademark by reflecting the Complainant’s typical domain name convention for its authorized dealers. Thus, the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name.

The Respondent does not dispute that it has knowledge of the Complainant and that it is not commonly known by the disputed domain name and is not authorized by the Complainant to use the BMW trademark.

The Respondent maintains that the Complainant does not license the domain names referenced by it, and they are owned and operated by third parties. However, the Respondent does not dispute that these third parties are authorized BMW dealers offering the Complainant’s goods and services. In view of this, these entities cannot be regarded as unrelated third parties, but should rather be regarded as part of the Complainant’s distribution network, and their use of the BMW trademark in domain names should not be regarded as independent.

The Respondent states that it has not yet activated the website at the disputed domain name, as it will be used for a noncommercial social media platform that is in development, and will never be used for automobiles, motorcycles or parts for them, so there will never be confusion with the BMW trademark. The Respondent has however not substantiated this allegation, as it has submitted no details or evidence about the alleged social media platform, and no explanation of how it has chosen the disputed domain name and why it would be suitable for such a project.

The Respondent has unsuccessfully attempted to remove Mr. Kordick as party to this proceeding, and the evidence in the case file shows that he is listed as registrant of the disputed domain name and controls JCK PARTS LLC, the entity listed as registrant organization of the disputed domain name. The evidence also confirms the Complainant’s statement that Mr. Kordick currently works in an authorized BMW dealer. These circumstances taken together make it more likely than not that the Respondent registered the disputed domain name targeting the BMW trademark and reflecting the naming conventions in the car dealer business of which it was well aware, being a professional in this field.

In view of the above, the Panel finds that the Respondent has failed to rebut the prima facie case made by the Complainant that the Respondent has no rights or legitimate interests in the disputed domain name.

Therefore, the Panel finds that the Respondent does not have rights or legitimate interests in the disputed domain name.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy lists four illustrative alternative circumstances that shall be evidence of the registration and use of a domain name in bad faith by a respondent, namely:

“(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or

(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or

(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your 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 your website or location or of a product or service on your website or location.”

The disputed domain name is confusingly similar to the BMW trademark and reflects the naming conventions in the car dealer business of which the Respondent is well aware, being a professional in this field.

The Respondent’s allegation that it plans to use the disputed domain name for a noncommercial social media platform that is in development is unconvincing, as it lacks any details and is not supported by evidence.

In view of the above facts, the Panel finds it clear that the Respondent was well aware of the Complainant and moreover finds that he has registered the disputed domain name targeting the Complainant and its BMW trademark in an attempt to unfairly capitalize on the trademark by attracting for commercial gain Internet users to the disputed domain name. The likelihood of confusion between the BMW trademark and the disputed domain name may lead to a situation where Internet visitors will believe that the disputed domain name refers to the official online location of the Complainant or of its authorized dealer for the geographical area whose name is included in the disputed domain name.

In the present case, the disputed domain name has not been put to active use. However, as discussed in section 3.3 of the WIPO Overview 3.0, the non-use of a domain name would not prevent a finding of bad faith under the doctrine of passive holding. While previous UDRP panelists will look at the totality of the circumstances in each case, factors that have been considered relevant in applying the passive holding doctrine include the degree of distinctiveness or reputation of the complainant’s mark, the failure of the respondent to provide any evidence of actual or contemplated good-faith use, and the implausibility of any good faith use to which the domain name may be put. All these factors are present here. The Complainant has established that its BMW trademark has a global reputation, the Respondent has not any evidence that the disputed domain name would be used in good faith, and the Panel is not aware of good faith use to which the disputed domain name may be put without the consent of the Complainant.

Therefore, the Panel finds that the disputed domain name was registered and has been used in bad faith.

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 name <bmwofwesleychapel.com> be transferred to the Complainant.

Assen Alexiev
Sole Panelist
Date: November 18, 2020