WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Bayerische Motoren Werke AG v. Kang M.

Case No. D2011-1086

1. The Parties

Complainant is Bayerische Motoren Werke AG of Germany, represented by Finnegan, Henderson, Farabow, Garrett & Dunner, LLP, United States of America.

Respondent is Kang M. of Republic of Korea.

2. The Domain Name and Registrar

The disputed domain name <shopbmw.com> (the “disputed Domain Name”) is registered with eNom.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 27, 2011. On June 28, 2011, the Center transmitted by email to eNom. a request for registrar verification in connection with the disputed Domain Name. On June 28, 2011, eNom. 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on July 12, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was August 1, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 2, 2011.

The Center appointed Eduardo Machado as the sole panelist in this matter on August 5, 2011. 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

Complainant BMW is one of the most successful manufacturers of high-performance automobiles and motorcycles in the world.

Complainant owns the trademark and service mark BMW. Since 1917 the BMW mark has enjoyed unquestionable fame as a result of extensive and long use and advertising, and favorable public acceptance and recognition worldwide. Indeed, the BMW mark has become one of the most recognized brands in the world. Complainant has manufactured, marketed, and sold many millions of vehicles under the BMW mark.

Complainant has continuously used BMW as a trade name, trademark, and service mark since 1917, and owns 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 BMW’s earliest registrations for its BMW mark: a) Registration No. 221388 for the mark BMW and design, filed Oct 5, 1917, issued Dec 10, 1917, covering products in international classes 12, 7, 8, 9, and 11 including automobiles and related parts and accessories; and b) Registration No. 410579 for the mark BMW in block letters, filed Feb 23, 1929, issued Nov 15, 1929, covering products in international classes 12 and 7, including vehicles and motorcycles.

Complainant also owns trademark registrations in the United States.

Complainant also owns the domain name <bmw.com> which BMW registered on January 29, 1996 and which BMW has used for its website for many years.

5. Parties’ Contentions

A. Complainant

Complainant alleges that Respondent registered the disputed Domain Name in November 2004, long after Complainant began using its BMW mark; long after the BMW mark became internationally famous; and long after Complainant registered its mark in Germany, United States, and elsewhere.

Complainant states that Respondent uses the disputed Domain Name for a pay-per-click website that features search categories that connect to web pages displaying sponsored-link advertisements for various websites. Complainant alleges that Respondent’s website is provided by the domain-name monetization company TrafficZ, as shown by the <trafficz.com> servers listed on the WhoIs record for the disputed Domain Name. Complainant further contends that Respondent undoubtedly receives “click-through” commissions from TrafficZ when Internet users clicked on the sponsored-link advertisements featured on its website.

Complainant alleges that Respondent has used the disputed Domain Name for a pay-per-click website that featured numerous search categories that referred directly to Complainant (e.g., “BMW Cars,” “BMW Car Parts,” “BMW Auto Parts,” and “BMW Extended Warranty”), Complainant’s competitors (“Audi Parts,” “Audi Car Parts,” “Land Rover Parts”), and Complainant’s business (e.g. “Auto Extended Warranties,” “Auto Extended Warranty”). As with Respondent’s current pay-per-click website, these search categories are undoubtedly connected to web pages displaying sponsored-link advertisements for various websites, including directly competing websites.

Complainant states that Respondent’s website also featured an offer to sell the disputed Domain Name, specifically, the message “This domain name is for sale. If you are interested in this domain name, please contact us.”

Complainant informs that, on February 24, 2011, Complainant sent Respondent a cease-and-desist letter demanding the transfer of the disputed Domain Name, among other things. Respondent did not respond directly, but changed the links on its pay-per-click website and changed its WhoIs information. Complainant alleges that Respondent’s cybersquatting activities have been the subject of at least one adverse UDRP decision. American Airlines,Inc. v. Domain registrant c/o M. Kang (NAF Claim No. FA0902001247045) (ordering the transfer of the domain name <american-airlines.com>).

Complainant alleges that the disputed Domain Name <shopbmw.com> is confusingly similar to Complainant’s famous and federally registered BMW mark because it is comprised of Complainant’s mark in its entirety with the generic or descriptive term “shop” and the non-distinguishing gTLD “.com.”

Complainant argues that combining Complainant’s BMW mark with a generic or descriptive term is insufficient to distinguish the disputed Domain Name from Complainant’s mark because the dominant portion of the disputed Domain Name is Complainant’s BMW mark.

Complainant alleges that Respondent clearly has no rights or legitimate interest in the disputed Domain Name for several reasons. First, Complainant argues that Respondent’s registration and use of the disputed Domain Name for a pay-per-click website featuring sponsored-link advertisements for various websites including directly competing websites does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed Domain Name.

Second, Complainant alleges that 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, Complainant informs that Respondent is not a licensee of Complainant, and Complainant has never authorized Respondent to register or use the disputed Domain Name or the BMW mark. Complainant further alleges that, given the fame of Complainant’s BMW mark, Respondent could not be known by the disputed Domain Name.

Finally, Complainant alleges that Respondent’s offer to sell the disputed Domain Name is further evidence that Respondent lacks a legitimate interest in the disputed Domain Name.

Complainant alleges that Respondent’s registration and use of the disputed Domain Name squarely meets the grounds of bad faith outlined in the UDRP, as well as additional grounds of bad faith defined in previous UDRP decisions.

First, Complainant alleges that Respondent’s registration and use of the disputed Domain Name constitute bad faith under Section 4(b)(iv) of the UDRP. Specifically, Complainant argues that Respondent uses the disputed Domain Name to intentionally attract, for commercial gain, Internet users by creating a likelihood of confusion with Complainant’s famous BMW mark as to the source, sponsorship, affiliation, and/or endorsement of Respondent’s website.

Second, Complainant alleges that Respondent’s registration and use of the disputed Domain Name constitute bad faith under Section 4(b)(iii) of the UDRP because Respondent’s use of the disputed Domain Name for a website displaying search categories and/or sponsored-link advertisements for competing websites disrupts Complainant’s business.

Third, Complainant argues that Respondent’s registration of the disputed Domain Name constitutes bad faith under Section 4(b)(i) because Respondent registered the disputed Domain Name primarily to sell, rent, or otherwise transfer it for valuable consideration in excess of its documented out-of-pocket expenses.

Fourth, Complainant contends that Respondent’s registration of the disputed Domain Name constitutes bad faith under Section 4(b)(ii) because Respondent has a bad-faith pattern of registering trademark-related domain names as shown by the prior adverse UDRP decision against Respondent.

Finally, Complainant argues that there is no question that Respondent had knowledge of Complainant’s rights in the BMW mark when it registered the disputed Domain Name given the fame of Complainant’s BMW mark, Complainant’s trademark registrations for its BMW mark in the United States (and elsewhere), and the fact that Respondent’s website had search categories that referred directly to Complainant, its BMW mark, and its products and services offered under the BMW mark.

B. Respondent

The Respondent did not reply to Complainant’s contentions.

6. Discussion and Findings

Pursuant to the Policy, Complainant is required to prove the presence of each of the following three elements to obtain the relief it has requested: (i) the disputed Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; (ii) Respondent has no rights or legitimate interests in respect of the disputed Domain Name; and (iii) the disputed Domain Name has been registered and is being used in bad faith, Policy, paragraph 4(a).

A. Identical or Confusingly Similar

According to Complainant’s arguments and the exhibits attached to the Complaint, it is proved that Complainant has intellectual property rights over the expression, BMW.

The panel finds that Complainant’s registered BMW trademarks are well-known in its field of activity and have a strong reputation in many countries. The Panel finds that the disputed Domain Name is confusingly similar with Complainant’s BMW trademark. The only difference between Complainant’s registered trademark and the disputed Domain Name is the addition of the generic and non-distinctive word “shop.”

The Panel finds that the difference pointed above is not enough to characterize the disputed Domain Name as being distinct from Complainant’s registered trademark. See Columbia Pictures Industries, Inc. v. Caribbean Online International Ltd., WIPO Case No. D2008-0090. (“adding or removing letters to a domain name is not sufficient to escape the finding of similarity and does not change the overall impression of the designation as being connected to the trademark of Complainant.”) Moreover, the Panel finds that adding a generic expression such as “shop” is likely to increase the possibility of confusion amongst consumers.

The Panel finds that this similarity can mislead Internet users who search for Complainant’s products or services and divert them to the disputed Domain Name.

The Panel, therefore, finds that Complainant has established the first condition of the paragraph 4(a) of the Policy.

B. Rights or Legitimate Interests

Complainant has alleged that Respondent has no rights or legitimate interests in the disputed Domain Name. Taking into consideration that Respondent has failed to respond to the Complainant, the Panel will assume that Respondent lacks rights and legitimates interests in the disputed Domain Name.

As a matter of a fact, Complainant has made a prima facie case in support of its allegations and, due to this, the burden of proof shifts to Respondent to show that it does have rights or legitimates interests in the disputed Domain Name, according to paragraph 4(a)(ii) of the Policy.

With respect to paragraph 4(c)(i) of the Policy, there is no evidence that Respondent, before any notice of the dispute, used or prepared to use the disputed Domain Name or a name corresponding to the disputed Domain Name in connection with a bona fide offering of goods or services.

With respect to paragraph 4(c)(ii) of the Policy, there is no evidence that indicates that Respondent has ever been commonly known by the disputed Domain Name.

With respect to paragraph 4(c)(iii) of the Policy, Respondent has not made and is not making a legitimate noncommercial or fair use of the disputed Domain Name and has not used the disputed Domain Name, or a name corresponding to it, in connection with a bona fide offering of goods or services.

At the time the UDRP complaint was filed, the disputed Domain Name directed Internet users to parking pages offering goods and services in competition with Complainant. The panel finds that this is not a bona fide offering of goods and services.

So, in view of the above, the Panel finds that Complainant has established the second condition of the paragraph 4(a) of the policy.

C. Registered and Used in Bad Faith

Under paragraph 4(b)(iv), a respondent has used and registered a domain name in bad faith if, inter alia, the respondent has used the domain name intentionally to attempt to attract, for commercial gain, Internet users to the respondent’s 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 the respondent’s site or of a product or service offered on the respondent’s site. Policy paragraph 4(b)(iv).

Respondent has intentionally registered the disputed Domain Name which totally reproduces Complainant’s well-known trademark BMW. By the time the disputed Domain Name was registered, it is unlikely that Respondent did not have knowledge of the Complainant’s rights on the trademark BMW.

Complainant’s allegations of bad faith are not contested. The evidence provided by Complainant confirms that it had long been using its registered BMW trademark when the disputed Domain Name was registered. Moreover, Complainant submitted consistent evidence that its trademark is well-known. The Panel finds that Respondent must have been aware of Complainant’s rights in the mark and, further, that Respondent knowingly infringed the Complainant’s trademark when it registered the disputed Domain Name.

Also, under the Policy, it is evidence of bad faith that, “by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.” Policy paragraph 4(b)(iv). Respondent used Complainant’s well-known trademark to attract users to a parking page displaying pay-per-click ads. This is evidence of the intention by Respondent to attract Internet users for commercial gain, by creating a likelihood of confusion with Complainant’s marks as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or of a product or service on Respondent’s website.

In light of these, the Panel finds Respondent registered and used the disputed Domain Name in bad faith. Complainant has established the third element of the Paragraph 4(a) 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 <shopbmw.com> be transferred to the Complainant.

Eduardo Machado
Sole Panelist
Dated: August 19, 2011