WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Bayerische Motoren Werke AG v. Nataporn Chetrakran, Bmw Easy Coding

Case No. D2020-2757

1. The Parties

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

Respondent is Nataporn Chetrakran, Bmw Easy Coding, Thailand.

2. The Domain Name and Registrar

The disputed domain name <bmweasycoding.com> (“Disputed Domain Name”) is registered with GMO Internet, Inc. d/b/a Discount-domain.com and Onamae.com (the “Registrar”).

3. Procedural History

The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on October 21, 2020, 2020. On October 21, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On October 22, 2020, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Disputed Domain Name, which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on November 8, 2020 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint in English on November 9, 2020.

On November 8, 2020, the Center transmitted an email communication to the Parties in English and Japanese regarding the language of the proceeding. On November 9, 2020, Complainant submitted its request that English be the language of the proceeding. Respondent did not comment on the language of the proceeding.

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 Respondent in English and Japanese of the Complaint, and the proceedings commenced on November 20, 2020. In accordance with the Rules, paragraph 5, the due date for Response was December 10, 2020. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on December 16, 2020.

The Center appointed Haig Oghigian as the sole panelist in this matter on January 7, 2021. 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

A. Complainant, its Products and Services, and its BMW Mark

Complainant is one of the most successful manufacturers of automobiles and motorcycles in the world.

Complainant owns the trademark, service mark, and trade name BMW. Under its BMW mark, 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. 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 to the BMW mark in block letters, Complainant owns its federally registered BMW logo.

Complainant has manufactured, marketed, and sold many millions of vehicles under the BMW mark. For example, in each year from 2015 through 2019, Complainant both produced and sold more than 1,910,000 automobiles under the BMW mark, and more than 135,000 motorcycles under the BMW mark. In 2019, Complainant had its most productive year ever, manufacturing more than 2,205,000 BMW automobiles.

Complainant’s headquarters are located in Germany. Complainant’s products and components are manufactured at 31 sites in 15 countries on four continents, including in the United States, and Complainant has more than 133,000 employees worldwide.

Complainant has for decades utilized a network of authorized dealers to market both new and certified
pre-owned BMW vehicles, as well as vehicle parts and accessories, and other products including apparel, as well as services such as rental, financing, and maintenance services. Complainant currently has approximately 3,500 authorized BMW dealers in locations throughout the world, including many in the United States.

In 2019, Complainant had worldwide sales and revenue in excess of EUR 104 billion. In prior years, Complainant’s sales were also in the billions, with revenues of more than EUR 96 billion in 2018, more than EUR 98 billion in 2017, and more than EUR 94 billion in 2016.

Complainant over the years has extensively and widely advertised and promoted its products and services under the BMW mark. Complainant spends tens of millions of dollars every year to advertise, market, and promote the BMW name and mark in connection with its products and services through a variety of media, including television and print advertisements, the Internet, and high-profile sponsorships. Moreover, the BMW mark has received considerable third-party press, attention, and recognition.

B. Complainant’s Trademark Holdings

Complainant has continuously used BMW as a trademark and service mark since 1917, and owns numerous registrations for the BMW mark and variations thereof in more than 140 countries around the world.

Complainant owns numerous registrations for the BMW mark in Germany, including the following registrations, which are Complainant’s earliest registrations for its BMW mark:

a. Registration No. 221388 for the mark BMW and Design, filed on October 5, 1917, registered on December 10, 1917, covering products in International Classes 7, 8, 9, 11, and 12, including automobiles and related parts and accessories.

b. Registration No. 410579 for the mark BMW in block letters, filed on February 23, 1929, registered on November 15, 1929, covering products in International Classes 7 and 12, including vehicles and motorcycles.

Complainant owns numerous registrations for the BMW mark in the United States, including the following representative registrations:

a. Registration No. 0611710 for the mark BMW in block letters, first used in commerce in February 1949, filed on March 10, 1954, registered on September 6, 1955, covering automobiles and motorcycles in International Class 12.

b. Registration No. 0613465 for the mark BMW and Design, first used on October 5, 1917, first used in commerce in February 1949, filed on March 10, 1954, registered on October 4, 1955, covering automobiles, motorcycles, and related parts in International Class 12.

C. Respondent’s activities and the Disputed Domain Name

The Disputed Domain Name was registered by Respondent on December 10, 2018. Respondent uses the Disputed Domain Name for a website advertising and offering unauthorized or allegedly counterfeit versions of Complainant’s products including (a) Complainant’s BMW navigation software, (b) Complainant’s FSC codes for its navigation software, (c) Complainant’s CONNECTEDDRIVE software, and (d) Complainant’s IDRIVE software, or illegally provides for the unauthorized circumvention of technological protection measures protecting such BMW software. Respondent’s website uses the trade name “BMW Easy Coding” and an altered version of Complainant’s BMW logo. Respondent’s website also offers third-party products including “Video in Motion” software that is allegedly intended to interfere with and circumvent Complainant’s software and safety controls in BMW vehicles.

5. Parties’ Contentions

A. Complainant

Complainant argues that the Disputed Domain Name is confusingly similar to Complainant’s famous and federally registered mark BMW because it contains Complainant’s mark in its entirety combined with the generic and/or descriptive terms “easy” and “coding”. UDRP panels have consistently held that the addition of generic and/or descriptive terms is not sufficient to distinguish a domain name from the mark at issue.

Complainant also argues that Respondent has no rights or legitimate interests in the Disputed Domain Name. Respondent’s registration and use of the Disputed Domain Name for a website advertising/offering unauthorized and/or counterfeit products that directly compete with Complainant’s genuine products, as well as third-party software to circumvent and interfere with Complainant’s BMW vehicles, does not constitute a bona fide offering of goods or services nor a legitimate noncommercial or fair use. Respondent’s passing off activities are further evidence of Respondent’s lack of any legitimate interest in the Disputed Domain Name. Moreover, given the fame of Complainant’s BMW mark, Respondent could not be known by the Disputed Domain Name.

Finally, Complainant argues that Respondent has registered and is using the Disputed Domain Name in bad faith.

B. Respondent

Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

6.1. Language of the Proceeding

On October 22, the Registrar confirmed to the Center that the language of the registration agreement for the Disputed Domain Name is Japanese. On November 8, 2020, the Center transmitted an email communication to the Parties in English and Japanese regarding the language of the proceeding. On November 9, 2020, Complainant submitted its request that English be the language of the proceeding. Respondent did not comment on the language of the proceeding.

Considering the following circumstances, the Panel, exercising its authority to determine the language of the proceeding under paragraph 11(a) of the Rules, has decided English as the language of the proceeding:

- the Complaint was filed in English;

- Complainant is a German entity, and represented by a law firm in the United States;

- Respondent’s address is in Thailand;

- Respondent did not comment on the language of the proceeding;

- Respondent did not reply to Complainant’s contentions in any way;

- the Disputed Domain Name consists of English terms, and is formed by words in Roman characters (ASCII) and not in Japanese script; and

- ordering the translation of the Complaint would only result in unnecessary delay and cost for Complainant.

6.2 Substantive Issues

A. Identical or Confusing Similarity

The Panel finds that the Disputed Domain Name is confusingly similar to Complainant’s famous and federally registered mark BMW because it contains Complainant’s mark in its entirety. UDRP panels have consistently held that domain names containing a mark in its entirety are confusingly similar to that mark, and that generic Top-Level Domains (“gTLDs”) such as “.com” are usually irrelevant to confusing similarity analysis. See, e.g., Bayerische Motoren Werke AG v. bmwcar.com, WIPO Case No. D2002‑0615 (finding the domain name <bmwcar.com> confusingly similar to Complainant’s BMW mark because “[a]s numerous prior panels have held, when a domain name wholly incorporates a complainant’s registered mark, that is sufficient to establish confusing similarity for purposes of the Policy.”); Bayerische Motoren Werke AG v. Gipol Kaip, WIPO Case No. D2016-0906 (“The disputed domain name [<bmw---deutschland.info>] wholly incorporates the element ‘bmw’, which is identical to the trademark BMW registered by the Complainant as trademarks in countries all over the world. Numerous earlier UDRP decisions have held that when a domain name wholly incorporates a complainant’s registered trademark, it is sufficient to establish confusing similarity for purpose of the Policy.”).

The Disputed Domain Name contains Complainant’s mark combined with the dictionary terms “easy” and “coding”. UDRP panels have consistently held that the addition of dictionary and/or descriptive terms is not sufficient to distinguish a domain name from the mark at issue. In a prior case directly on point involving Complainant’s BMW mark and the term “coding,” Bayerische Motoren Werke AG v. Peeter Aps, WIPO Case No. D2018-2293, the Panel found the domain name <bmwcoding.online> confusingly similar to Complainant’s BMW mark, holding: “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.” See also, e.g., Bayerische Motoren Werke AG v. Alexey S Baranov, WIPO Case No. D2020‑0523 (finding the domain name <bmwcoders.com> confusingly similar to Complainant’s BMW mark).

B. Rights or Legitimate Interests

The Panel finds that Respondent has no rights or legitimate interests in the Disputed Domain Name for several reasons.

Respondent has no rights or legitimate interests in the Disputed Domain Name under UDRP, paragraph 4(c)(i) or 4(c)(iii). Respondent’s registration and use of the Disputed Domain Name for a website advertising/offering unauthorized and/or counterfeit products that directly compete with Complainant’s genuine products, as well as third-party software to circumvent and interfere with Complainant’s BMW vehicles, does not constitute a bona fide offering of goods or services nor a legitimate noncommercial or fair use. UDRP panels have consistently found no legitimate interest in use of trademark-related domain names to advertise/offer unauthorized, counterfeit, and/or competing products, including in cases involving Complainant’s BMW mark. See, e.g., Bayerische Motoren Werke AG v. Perfect Privacy, LLC / Codesoft Technologies, WIPO Case No. D2018-1160 (“. . . the Respondent’s registration and use of the disputed domain name <bmwcodesoft.com> for a commercial website advertising/offering unauthorized, counterfeit ‘BMW’ products, as further described under Part C below, does not constitute a bona fide offering of goods or services, nor a legitimate noncommercial or fair use under the Policy.”); Bayerische Motoren Werke AG v. MIKE LEE / WHOISGUARD PROTECTED, WHOISGUARD, INC., Yang Xiao, Xiao Yang, Ning Li, Li Ning, MIKE LEE, WIPO Case No. D2016-2268 (“The websites connected to the Domain Names [<bmwista.com> among others] sell or are linked to websites that sell counterfeit BMW proprietary diagnostic software products. There can be no legitimate interest in the sale of counterfeits.”); Bayerische Motoren Werke AG (BMW) v. Balog Sebastian, WIPO Case No. D2017-1407 (holding respondent’s use of the domain name <cartesbmw.com> and <bmwspot.com> to offer counterfeit “BMW” navigation software does not constitute a bona fide offering of goods or services nor a legitimate noncommercial or fair use).

Respondent’s passing off activities are further evidence of Respondent’s lack of any rights or legitimate interests in the Disputed Domain Name. Specifically, Respondent’s unauthorized uses of Complainant’s BMW mark in the trade name “BMW Easy Coding” and in product names, and its use of an altered version of Complainant’s famous BMW logo, constitute passing off, in that Respondent is trying to pass off its website as Complainant’s or affiliated with or endorsed by Complainant. Passing off has been consistently held to demonstrate a lack of rights or legitimate interests under the UDRP.

Respondent has no rights or legitimate interests in the Disputed Domain Name under UDRP paragraph 4(c)(ii). Respondent is not and has not been commonly known by the Disputed Domain Name. There is no evidence in the record, including the WhoIs information, to demonstrate that Respondent is commonly known by the Disputed Domain Name. In addition, Respondent is not a licensee of Complainant or otherwise authorized to use Complainant’s BMW mark. See, e.g., Bayerische Motoren Werke AG v. Perfect Privacy, LLC / Codesoft Technologies, WIPO Case No. D2018-1160 (“The Panel accepts as asserted by the Complainant that the Respondent is not and has not been commonly known by the disputed domain name <bmwcodesoft.com> and in view of the degree of fame attaching to the Complainant’s BMW mark could not have been known by the disputed domain name. The Complainant has submitted that there is no evidence on the record, including the WhoIs information, to demonstrate that the Respondent is commonly known by the disputed domain name. In addition, the Complainant has confirmed that the Respondent is not a licensee of the Complainant and neither is it authorised to use the Complainant’s marks, including its BMW mark.”).

Moreover, given the fame of Complainant’s BMW mark, Respondent could not be known by the Disputed Domain Name. See Bayerische Motoren Werke AG v. Domain Administrator, See PrivacyGuardian.org / Chris Pointon, WIPO Case No. D2018-1143 (“The Panel accepts, as asserted by the Complainant, that the Respondent is not and has not been commonly known by the disputed domain names <bmwinpa.com>, <bmwgt1.com>, and <bmwdis.com> and in view of the degree of fame attaching to the Complainant’s BMW mark could not have been known by the disputed domain names.”); BMW v. Null, WIPO Case No. D2002-0937) (holding respondent had no legitimate interest in the domain name <bmwx5.com> because the fact that Complainant’s BMW and X5 marks are well-known worldwide “prevent the Respondent from invoking any rights or legitimate interests.”).

C. Registered and Used in Bad Faith

The Panel finds that Respondent’s registration and use of the Disputed Domain Name constitute bad faith under the UDRP and prior UDRP decisions.

First, Respondent’s registration and use of the Disputed Domain Name constitute bad faith under UDRP paragraph 4(b)(iv) because Respondent uses the Disputed Domain Name to intentionally attract, for commercial gain, Internet users by creating a likelihood of confusion with Complainant’s famous and registered BMW mark as to the source, sponsorship, affiliation, and/or endorsement of Respondent’s website and the products advertised/offered therein. See, e.g., Bayerische Motoren Werke AG v. Perfect Privacy, LLC / Codesoft Technologies, WIPO Case No. D2018-1160 (“The Respondent in this case has used the disputed domain name <bmwcodesoft.com> 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. Domains by Proxy, LLC / Alfred Kolinz, bmwupdate, WIPO Case No. D2017-2450 (“The Respondent registered the Domain Name [<bmwupdate.online>] for commercial gain with a view to taking unfair advantage of the Complainant’s rights in the mark, both by confusing Internet users into believing that the Domain Name was being operated by or authorized by the Complainant for legitimate purposes related to the Complainant’s activities and to draw in Internet users to offer them unauthorized, counterfeit copies of the Complainant’s software at low prices. The Panel is in no doubt that this amounts to paradigm bad faith registration and use for the purposes of the Policy.”)

Second, Respondent’s registration and use of the Disputed Domain Name constitute bad faith under UDRP paragraph 4(b)(iii) because Respondent disrupts Complainant’s business by (a) using the Disputed Domain Name to advertise/offer unauthorized and/or counterfeit products that compete with Complainant’s genuine products, and third-party software to circumvent/interfere with Complainant’s software and safety controls in BMW vehicles, (b) competing with Complainant for Internet traffic, and (c) interfering with Complainant’s ability to control use of its registered BMW mark. Respondent’s activities in opposition to Complainant are sufficient to define Respondent as a competitor under the UDRP. See e.g., Bayerische Motoren Werke AG v. Perfect Privacy, LLC / Codesoft Technologies, WIPO Case No. D2018-1160 (“. . . the Respondent’s registration and use of the disputed domain name <bmwcodesoft.com> constitutes bad faith under paragraph 4(b)(iii) of the Policy because in using the disputed domain name to resolve to a website on which it is selling unauthorised or fake BMW marked products, the Respondent is disrupting the Complainant’s business and unfairly competing with the Complainant.”); Bayerische Motoren Werke AG v. Registration Private, DomainsByProxy.com, LLC / Patryk Matysiak, WIPO Case No. D2018-2123 (holding respondent’s use of the domain name <bmwvin.com> for a website offering Complainant’s technical data constitutes bad faith under UDRP paragraph 4(b)(iii) because “...the Respondent is effectively a competitor of the Complainant in that its activities are in direct opposition to the Complainant the Respondent is de facto competing with the Complainant and is intentionally seeking to target the Complainant’s rights in such [BMW] mark.”).

Third, Respondent’s “passing off” activities constitute further evidence of its bad faith under UDRP paragraphs 4(b)(iv) and 4(b)(iii) as well independent ground of bad faith under prior UDRP decisions.

Finally, it is indisputable that Respondent registered the Disputed Domain Name in bad faith with knowledge of Complainant’s rights in its BMW mark, given the fame of Complainant’s BMW mark and Respondent’s use of the Disputed Domain Name to advertise/offer unauthorized and/or counterfeit products. Registration of a domain name with knowledge of the trademark owner’s rights has been consistently found by UDRP panels to constitute bad faith under the UDRP. See, e.g., Bayerische Motoren Werke AG v. Perfect Privacy, LLC / Codesoft Technologies, WIPO Case No. D2018-1160 (“The Respondent clearly knew of the Complainant’s BMW mark at this time as it set about creating a website, to which the disputed domain name <bmwcodesoft.com> resolves, that features the Complainant’s mark and logo and attempts to misrepresent itself as being endorsed by or affiliated with the Complainant in order to sell what the Complainant asserts are fake or counterfeit ‘BMW’ diagnostic hardware and coding solution tools.”); Bayerische Motoren Werke AG v. Domains by Proxy, LLC / Alfred Kolinz, bmwupdate, WIPO Case No. D2017-2450 (“In light of the use to which the Respondent has put the Domain Name <bmwupdate.online>, there is no doubt that the Respondent had the Complainant and its rights in the BMW mark in mind when it registered the Domain Name.”).

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 <bmweasycoding.com> be transferred to Complainant.

Haig Oghigian
Sole Panelist
Date: January 21, 2021