WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Bayerische Motoren Werke AG v. Stressfree Driving School Pty Ltd / James Vergis
Case No. DAU2017-0002
1. The Parties
The Complainant is Bayerische Motoren Werke AG of Munich, Germany, represented by Kelly IP, LLP, United States of America ("United States").
The Respondent is Stressfree Driving School Pty Ltd / James Vergis of Australia, self-represented.
2. The Domain Names and Registrar
The disputed domain names <bmwdriveschool.com.au>, <bmwdriveschool.net.au>, <bmwdrivingschool.com.au> and <bmwdrivingschool.net.au> (the "Disputed Domain Names") are registered with NetRegistryPty Ltd.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on January 13, 2017. On January 17, 2017, the Center transmitted by email to NetRegistryPty Ltd. (the "Registrar") a request for registrar verification in connection with the Disputed Domain Names. On January 25, 2017, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrants and providing the Respondent's contact details.
The Center verified that the Complaint satisfied the formal requirements of the .au Dispute Resolution Policy (the "Policy"), the Rules for .au Dispute Resolution Policy (the "Rules"), and the WIPO Supplemental Rules for .au Domain Name Dispute Resolution Policy (the "Supplemental Rules").
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on January 31, 2017. In accordance with the Rules, paragraph 5(a), the due date for Response was February 20, 2017. The Response was filed with the Center on February 16, 2017. The Complainant filed a brief reply on February 22, 2017.
The Center appointed David Stone as the sole panelist in this matter on February 24, 2017. 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 ("BMW"), owns the trade mark BMW and has been continuously using it since 1917 in more than 140 countries around the world. Under this mark, it manufactures, sells, and distributes automobiles and motorcycles, as well as providing services including driver training programs. These educational and training services are also offered through other BMW-formative marks, which include BMW DRIVING EXPERIENCE and BMW PERFORMANCE DRIVING SCHOOL.
In Australia, the Complainant registered the BMW and design mark on May 12, 1950; the BMW (in block letters) mark on July 19, 1988; and the BMW DRIVING EXPERIENCE mark on April 21, 2011, in each case for car-related goods/services.
The Disputed Domain Names were registered by the Respondent in May 2014 together with four additional Domain Names under the generic Top-Level Domains ("gTLDs") ".com" and ".net" for which a complaint has separately been filed by the Complainant under the Uniform Domain Name Dispute Resolution Policy ("UDRP"). The Disputed Domain Names re-direct to a placeholding website informing Internet users that the domain is parked.
5. Parties' Contentions
The Complainant alleges that it has been using the BMW trade mark and service mark since 1917. The Complainant also asserts that, since 1977, it has offered driver training and education services: it was the first automobile manufacturer to offer driving courses to consumers. The BMW mark is registered in more than 140 countries, including Australia, where the Respondent operates. The Complainant claims that it enjoys fame and recognition worldwide due to extensive advertising and other uses of its trade mark.
The Complainant's contentions are as follows:
- That the Disputed Domain Names are confusingly similar to the Complainant's registered mark as each contains the BMW mark in its entirety. The Complainant claims that this confusion is heightened by the use of terms relating directly to its driver training services;
- That the Respondent has no rights or legitimate interests in the Disputed Domain Names on account of: (i) the Respondent sought to solicit a business arrangement with the Complainant, (ii) the Respondent's non-use or passive holding of the Disputed Domain Names, (iii) the threat by the Respondent to sell the Disputed Domain Names to a third party, (iv) the fact that the Respondent is not commonly known by the Disputed Domain Names, and (v) the lack of merit of the Respondent's assertion that it/he has rights to the Disputed Domain Names because they were available; and
- That the Respondent acted in bad faith. This pattern of bad faith behaviour is said to be evidenced by (i) the Respondent's registration of the ".com" and ".net" domain names as well as the Disputed Domain Names, (ii) the Respondent's registration of 33 other domain names containing other third-party car brands, (iii) the Respondent's registration of the Disputed Domain Names to solicit a business arrangement with the Complainant, (iv) the Respondent's non-use or passive holding of the disputed Domain Names, and (v) the Respondent's selection of domain names containing the BMW mark to attract consumers creating confusion as to source, sponsorship, affiliation and/or endorsement, for the Respondent's commercial gain.
The Respondent alleges that it/he has acted legally, transparently and in good faith, registering the Disputed Domain Names as part of a business plan to approach car manufacturers with a business proposal. The Respondent further adds that the Complainant has acted unethically and in an aggressive or threatening manner.
The Respondent's contentions are as follows:
- That the Disputed Domain Names were available up until the Respondent bought them in 2014 and that the Complainant's claim is "superficial" given the length of time these rights were available;
- That the Disputed Domain Names were bought legally;
- That the Respondent informed the Complainant of its/his legal right to the Disputed Domain Names;
- That the Respondent at no time held itself/himself out as representing BMW; and
- That the Respondent, not wanting to be associated with the Complainant or to benefit from the Complainant's association, did not use the Disputed Domain Names.
6. Discussion and Findings
Paragraph 4(a) of the Policy states that the Complainant, in order to succeed, must prove:
(i) That the Disputed Domain Names are identical or confusingly similar to a name, trade mark or service mark in which the Complainant has rights;
(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 or subsequently used in bad faith.
A. Supplemental Filing
This Panel notes that the Complainant has submitted a brief reply to the Respondent's response. In light of paragraphs 10 and 12 of the Rules, and noting that there was no "exceptional" circumstances in this case, the Panel has not taken into consideration the Complainant's supplemental filings. (See WIPO Overview 2.0, paragraph 4.2)
B. Identical or Confusingly Similar
The Complainant has proven extensive usage of the trade mark BMW, all over the world including in Australia where the Respondent operates. Furthermore, the Complainant has provided evidence that it has offered its customers driver training and education services as well as the production, distribution and sale of vehicles and vehicle parts. Finally, the Complainant has shown that it owns an extensive online network of websites that use the BMW trade mark name combined with relevant terms. BMW is therefore a trade mark in which the Complainant has rights.
The disputed Domain Names contain the entirety of the Complainant's trade mark together with the words "drive" or "driving" and "school", which relate to the Complainant's business.
Previous UDRP panel decisions have found that domain names containing the Complainant's BMW trade mark together with generic terms relating to the Complainant's business satisfy the requirement of being identical or confusingly similar, as set out in paragraph 4(a)(i) of the auPolicy: see BMW v. bmwcar.com, WIPO Case No. D2002-06151 (<bmwcar.com>).
The Panel therefore finds that the Disputed Domain Names are confusingly similar to the Complainant's trade mark and that they therefore satisfy the condition set out in paragraph 4(a)(i) of the auDRP.
C. Rights or Legitimate Interests
Guidance in relation to establishing that the Respondent has rights or legitimate interests in the Disputed Domain Names is set out in paragraph 4(c) of the auDRP. The Complainant must establish a prima facie case and then the Respondent must provide evidence that any of these circumstances are present:
(i) That before any notice of the subject matter of the dispute, the Respondent can demonstrate bona fide use of, or demonstrable preparations to use, the Domain Names or a name corresponding to the Domain Names in connection with an offering of goods or services (not being the offering of domain names that have been acquired for the purpose of selling, renting or otherwise transferring); or
(ii) That the Respondent (as an individual, business, or other organisation) has been commonly known by the Domain Names, even if they have not acquired trade mark or service mark rights; or
(iii) That the Respondent is making a legitimate non-commercial or fair use of the Domain Names, without intent for commercial gain to misleadingly divert consumers or to tarnish the name, trade mark or service mark at issue.
The Panel finds that the Complainant has established a prima facie case.
The Respondent puts forward in its/his Response five reasons to justify its/his ownership of the Disputed Domain Names. None of these meets the requirements of the auDRP to demonstrate rights or legitimate interests:
- The availability of the Disputed Domain Names prior to purchase by the Respondent does not demonstrate any right or legitimate interest;
- The fact that the Respondent was able to acquire the Disputed Domain Names does not demonstrate any right or legitimate interest;
- The Respondent's informing the Complainant of its/his ownership, the Respondent's use and the Respondent's not wanting to be associated with the Complainant also do not demonstrate any right or legitimate interest.
Registering domain names as part of a business plan to approach a complainant and offer a joint business agreement has been previously found not to be a legitimate non-commercial or fair use of the domain names: see Starbucks Corporation, Starbucks U.S. Brands LLC v. gratefulnet.com, WIPO Case No. D2006-1649 (<starbuckscommunications.com>, <starbucksentertainment.com>, <starbucksInternetcafe.com>, <starbucksInternet.com>, <starbuckslive.com>, <starbucksmerchandise.com>, <starbucksprices.com>).
The Panel therefore finds that the Respondent has failed to provide evidence to rebut the prima facie case, and that therefore the second condition set out in paragraph 4(a)(ii) of the auDRP has been established.
D. Registered or Subsequently Used in Bad Faith
Paragraph 4(b) of the auDRP identifies a non-exhaustive list of circumstances that, if found, would evidence that the Respondent registered or has subsequently used the Disputed Domain Names in bad faith:
(i) Circumstances indicating that the Respondent has registered or has acquired the Domain Names primarily for the purpose of selling, renting, or otherwise transferring the Domain Names to another person for valuable consideration in excess of the Respondent's documented out‑of-pocket costs directly related to the Domain Names; or
(ii) Circumstances indicating that the Respondent has registered the Domain Names in order to prevent the owner of a name, trade mark or service mark from reflecting that name or mark in a corresponding domain name; or
(iii) Circumstances indicating that the Respondent has registered the Domain Names primarily for the purpose of disrupting the business or activities of another person; or
(iv) Circumstances indicating that, by using the Domain Name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to a website or other online location, by creating a likelihood of confusion with the Complainant's name or mark as to the source, sponsorship, affiliation, or endorsement of that website or location or of a product or service on that website or location; or
(v) Circumstances in which, if any of the Respondent's representations or warranties as to eligibility or third party rights given on application or renewal are, or subsequently become, false or misleading in any manner.
The Respondent's own evidence sets out that its/his primary purpose for registering the Disputed Domain Names was to approach the Complainant and use this as leverage to aid in negotiations, after which if successful, the Respondent would have "gladly gifted" the rights to the Complainant.
From the evidence presented, it was the Respondent's admitted intention to register the Disputed Domain Names for the sole purpose of assisting with future negotiations with the Complainant. This suggests that the Respondent was looking to pressure the Complainant into reaching an agreement that would in some way be beneficial to the Respondent. Previous UDRP panels have found such behavior to constitute bad faith. See Hermes v. MMGA Domain, WIPO Case No. D2014-1760 (<hermes.clothing>).
Further, the Respondent's email dated December 22, 2016 (Exhibit 18 of the Complaint) informs the Complainant that the Respondent "predict[s] that by the end of January 2017 the right to these domains will no longer be in[the Respondent's] name". This constitutes further evidence that the Respondent was seeking to gain benefit from the Disputed Domain Names by pressuring the Complainant into an agreement.
Therefore, this Panel finds that the purchase and holding of the Disputed Domain Names for the sole purpose of aiding the Respondent in reaching a business agreement that would benefit the Respondent constitutes registering and subsequently using in bad faith. Accordingly, the third requirement of the auDRP is established.
For all 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 <bmwdriveschool.com.au>, <bmwdriveschool.net.au>, <bmwdrivingschool.com.au>, and <bmwdrivingschool.net.au> be transferred to the Complainant.
Date: March 13, 2017
1 In light of the substantive and procedural similarities between the auDRP and the UDRP, the Panel has cited authorities decided under the UDRP where appropriate.