About Intellectual Property IP Training IP Outreach IP for… IP and... IP in... Patent & Technology Information Trademark Information Industrial Design Information Geographical Indication Information Plant Variety Information (UPOV) IP Laws, Treaties & Judgements IP Resources IP Reports Patent Protection Trademark Protection Industrial Design Protection Geographical Indication Protection Plant Variety Protection (UPOV) IP Dispute Resolution IP Office Business Solutions Paying for IP Services Negotiation & Decision-Making Development Cooperation Innovation Support Public-Private Partnerships The Organization Working with WIPO Accountability Patents Trademarks Industrial Designs Geographical Indications Copyright Trade Secrets WIPO Academy Workshops & Seminars World IP Day WIPO Magazine Raising Awareness Case Studies & Success Stories IP News WIPO Awards Business Universities Indigenous Peoples Judiciaries Genetic Resources, Traditional Knowledge and Traditional Cultural Expressions Economics Gender Equality Global Health Climate Change Competition Policy Sustainable Development Goals Enforcement Frontier Technologies Mobile Applications Sports Tourism PATENTSCOPE Patent Analytics International Patent Classification ARDI – Research for Innovation ASPI – Specialized Patent Information Global Brand Database Madrid Monitor Article 6ter Express Database Nice Classification Vienna Classification Global Design Database International Designs Bulletin Hague Express Database Locarno Classification Lisbon Express Database Global Brand Database for GIs PLUTO Plant Variety Database GENIE Database WIPO-Administered Treaties WIPO Lex - IP Laws, Treaties & Judgments WIPO Standards IP Statistics WIPO Pearl (Terminology) WIPO Publications Country IP Profiles WIPO Knowledge Center WIPO Technology Trends Global Innovation Index World Intellectual Property Report PCT – The International Patent System ePCT Budapest – The International Microorganism Deposit System Madrid – The International Trademark System eMadrid Article 6ter (armorial bearings, flags, state emblems) Hague – The International Design System eHague Lisbon – The International System of Appellations of Origin and Geographical Indications eLisbon UPOV PRISMA Mediation Arbitration Expert Determination Domain Name Disputes Centralized Access to Search and Examination (CASE) Digital Access Service (DAS) WIPO Pay Current Account at WIPO WIPO Assemblies Standing Committees Calendar of Meetings WIPO Official Documents Development Agenda Technical Assistance IP Training Institutions COVID-19 Support National IP Strategies Policy & Legislative Advice Cooperation Hub Technology and Innovation Support Centers (TISC) Technology Transfer Inventor Assistance Program WIPO GREEN WIPO's Pat-INFORMED Accessible Books Consortium WIPO for Creators WIPO ALERT Member States Observers Director General Activities by Unit External Offices Job Vacancies Procurement Results & Budget Financial Reporting Oversight

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

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

Case No. D2021-0659

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 Name and Registrar

The disputed domain name <bmwuda.com> is 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 March 4, 2021. On March 4, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 7, 2021, 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 12, 2021. In accordance with the Rules, paragraph 5, the due date for Response was April 1, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 7, 2021.

The Center appointed Anne-Virginie La Spada as the sole panelist in this matter on April 13, 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

The Complainant, Bayerische Motoren Werke AG, is a world-renowned manufacturer of automobiles and motorcycles. Many millions of vehicles have been sold under the BMW trademark since its creation in 1917.
The trademark BMW has been recognized as a leading global brand.
The Complainant is the owner of various registrations worldwide for the word mark BMW, including:
- German registration No. 410579 registered on May 31, 1956 in relation to goods of classes 7 and 12; and
- United States registration No. 611,710 registered on September 6, 1955 in relation to goods of class 12.
The Complainant also owns various domain names composed with the BMW trademark such as <bmw.com>, <bmwgroup.com>, or <bmwusa.com>, the latter resolving to the website dedicated to United States customers and registered since 1995.
The disputed domain name was registered on November 30, 2015.

The disputed domain name used to redirect to a website resolving from the domain name <volvocars.com> offering Volvo cars, i.e., goods competing directly with those of the Complainant.

5. Parties’ Contentions

A. Complainant

The Complainant alleges that the disputed domain name reproduces its famous BMW trademark in its entirety and that the mark is easily recognizable, so that the adjunction of the term “uda” does nothing to reduce its confusing similarity with the BMW trademark. This is all the more so, according to the Complainant, since “uda” is a misspelling of “usa” and therefore constitutes typosquatting.

The Complainant argues that the disputed domain name used to resolve to a directly competing website for automotive related advertising.

The Complainant has not licensed or otherwise permitted the Respondent to use the BMW trademark or any variation thereof. The Complainant also contends that the Respondent is not commonly known by the disputed domain name.

According to the Complainant, it is clear that the choice of the famous BMW trademark and the use of the disputed domain name to resolve to the website of a direct competitor aims at creating a direct affiliation with the Complainant and its business. Therefore, the Respondent is not making a legitimate noncommercial or fair use of the disputed domain name within the meaning of the Policy.

In addition, the Complainant alleges that given its worldwide reputation, the Respondent was aware of the BMW trademark long before registering the disputed domain name and the use of this disputed domain name to resolve to a competing website constitutes registration and use in bad faith.

B. Respondent

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

6. Discussion and Findings

According to paragraph 4(a) of the Policy, a complainant must assert and prove each of the following:

(i) the domain name registered by the respondent 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 domain name; and

(iii) the domain name registered by the respondent has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

The Complainant owns various trademark registrations for the mark BMW.

The disputed domain name reproduces the Complainant’s trademark in its entirety with no alteration and combines this trademark with “uda”, which may easily be recognized as a typographical misspelling for “usa” as the “d” is next to the “s” on a standard keyboard.

As a rule, UDPR panels consider that where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) does not prevent a finding of confusing similarity under the first element of paragraph 4(a) of the Policy (see section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”)).

In the present case, the trademark BMW is recognizable in the disputed domain name. In addition, the adjunction of “uda” does not change the overall impression produced by the disputed domain name and is not sufficient to prevent a finding of confusing similarity between the disputed domain name and the Complainant’s trademark (see, for example, DPDgroup International Services GmbH & Co. KG v. Whois Privacy Protection Foundation / Aurelius Mark, WIPO Case No. D2019-3141).

UDRP panels also accept that a generic Top-Level Domain (“gTLD”), such as “.com”, should be disregarded when assessing whether a domain name is identical or confusing similar to a trademark (see section 1.11 of the WIPO Overview 3.0).

The Complainant has thus satisfied the condition set forth in paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

Based on the information submitted by the Complainant, the Respondent does not appear to have rights or legitimate interests in respect of the disputed domain name, nor has the Complainant granted to the Respondent an authorization to use the disputed domain name. Moreover, there is no evidence indicating that the Respondent is commonly known by the disputed domain name.

Furthermore, the use of the disputed domain name in connection to a website offering directly competing goods supports the apparent lack of rights or legitimate interests of the Respondent in the disputed domain name. Indeed, use of the Complainant’s trademark in relation to goods of a competitor can hardly be a legitimate or fair use.

Finally, the registration of a domain name that differs from the Complainant’s domain name <bmwusa.com> by a single letter does not suggest legitimate or fair use, but rather carries a risk of implied affiliation (see section 2.5.1 of the WIPO Overview 3.0).

Finally, the Panel may draw from the lack of a Response the inferences that it considers appropriate, according to the Rules, paragraph 14(b).

In view of the above, the Panel finds that the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name, and that the Respondent’s silence corroborates such prima facie case.

Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name, and that the Complainant has satisfied the condition set out in paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

Given the well-known character of the BMW trademark, the Panel accepts that the Respondent knew of the Complainant’s trademark when it registered the disputed domain name in November 2015. The use of a misspelling consisting of the substitution of the “s” of “usa” by the adjacent keyboard letter “d” reinforces a finding of bad faith at the time of registration. The Panel therefore finds that the Respondent registered the disputed domain name in bad faith.

The Respondent used the disputed domain name to redirect to a website under the domain name <volvocars.com>, which offers goods directly competing with the Complainant’s goods.

Panels have found that redirecting a domain name to a competitor’s website may support a finding that a respondent has registered a domain name to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the complainant’s mark, a behavior which amounts to use in bad faith according to paragraph 4(b)(iv) of the Policy (see section 3.1.4 of the WIPO Overview 3.0).

The Panel finds that by redirecting the disputed domain name to the website of a competitor of the Complainant, the Respondent intentionally tried to create a likelihood of confusion with the Complainant’s mark. Although the nature of the commercial gain of the Respondent is unknown, the Panel finds it likely that the Respondent received, or hoped to receive, pay-per-click fees or advertising commissions for redirecting the disputed domain name to such competing website.

For the reasons set out above, the Panel finds that the Respondent has registered and used the disputed domain name in bad faith, and that the Complainant has satisfied the condition set forth in 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 name <bmwuda.com> be transferred to the Complainant.

Anne-Virginie La Spada
Sole Panelist
Date: April 27, 2021

https://www3.wipo.int/contact/en/area.jsp?area=arbitration https://www.wipo.int/pressroom/en/ https://www.wipo.int/tools/en/disclaim.html https://www.wipo.int/en/web/privacy-policy/ https://www.wipo.int/en/web/accessibility/ https://www.wipo.int/tools/en/sitemap.html https://www3.wipo.int/newsletters/en/ https://www.wipo.int/podcasts/en/ https://www.wipo.int/news/en/