WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Bayerische Motoren Werke AG v. Gerry Scarantine

Case No. D2018-0233

1. The Parties

The Complainant is Bayerische Motoren Werke AG of Munich, Germany, represented by Kelly IP, LLP, Washington D. C., United States of America ("United States").

The Respondent is Gerry Scarantine of El Paso, Texas, United States, self-represented.

2. The Domain Names and Registrar

The disputed domain names <bmwcertifiedcars.com>, <bmwcertified.com>, <bmwcertifiedused.com>, <bmw-deals.com>, <bmwlife.com>, <bmwmotorcycleparts.com> and <bmwofcalifornia.com> are registered with GoDaddy.com, LLC (the "Registrar").

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on February 2, 2018. On February 5, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On February 6, 2018, 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 February 8, 2018. In accordance with the Rules, paragraph 5, the due date for Response was February 28, 2018.

The Respondent submitted a communication to the Center on February 9, 2018, stating that he required the appointment of a three -member panel. He wrote again to the Center on February 15, 2018, saying that he had no websites for "these domain names I brought from GO DADDY and have made no money on these domains." Following those communications from the Respondent, on February 15, 2018, the Center informed the Parties of the possibility of suspending the proceedings and settling the matter. The Respondent submitted a further communication to the Center on February 27, 2018, saying "the amount they are offering me is way below market value.using domainindex [sic] value." No further communications were received by the Center from the Respondent, who did not file a formal Response to the Complaint.

The Center appointed Anthony R. Connerty as the sole panelist in this matter on March 12, 2018. 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 ("BMW"), is a corporation organized under the laws of the Federal Republic of Germany, with a principal place of business in Munich, Germany.

BMW manufactures automobiles and motorcycles. It owns the trademark, service mark, and trade name BMW. Under its BMW mark, BMW 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. BMW also offers, and has offered for decades, a vast array of motorcycle parts and accessories and automobile parts and accessories under its BMW mark, including pedals, brakes, seats, clutches, and lighting, to name a few.

BMW has manufactured, marketed, and sold many millions of vehicles under its BMW mark.

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

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

- Registration No. 221388 for the mark BMW and Design, filed on October 5, 1917, registered on

December 10, 1917, covering products in International Classes 12, 7, 8, 9, and 11, including automobiles and related parts and accessories.

- 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 12 and 7, including vehicles and motorcycles.

The Complainant also owns numerous trademark registrations for the BMW mark in the United States.

The Respondent registered the disputed domain names in the period from January 11, 2016 and November 8, 2016. The disputed domain names all resolve to websites displaying the text: "website coming soon!", with the exception of the disputed domain name <bmwcertified.com>, which is inactive.

5. Parties' Contentions

A. Complainant

The Complainant has its headquarters in Germany. It is one of the most successful manufacturers of automobiles and motorcycles in the world. BMW's products and components are manufactured at 30 sites in 14 countries on four continents, including in the United States. BMW has more than 124,000 employees worldwide.

BMW 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. BMW also offers, and has offered for decades, a vast array of motorcycle parts and accessories and automobile parts and accessories including pedals, brakes, seats, clutches, and lighting, to name a few.

BMW has manufactured, marketed, and sold many millions of vehicles under the BMW mark: in each year from 2011 through 2016, BMW both produced and sold more than 1,300,000 automobiles under the BMW mark, and more than 100,000 motorcycles under the BMW mark. In 2016, BMW had its most productive year ever, manufacturing more than 2,002,000 BMW automobiles.

In that year, BMW had worldwide sales and revenue in excess of EUR 96 billion. In prior years, BMW's sales were also in the billions, with revenues of more than EUR 92 billion in 2015, more than EUR 80 billion in 2014, more than EUR 76 billion in 2013, and more than EUR 76 billion in 2012.

BMW over the years has extensively and widely advertised and promoted its products and services under the BMW mark. BMW 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.

The BMW mark has been in use since 1917 and "enjoys 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. For example, Interbrand, one of the world's leading branding firms, has ranked the BMW brand in its 'Top 100' report for global brands for many years, and in 2016, ranked the BMW mark 11th of the 'Best Global Brands' with a value of more than $41.5 billion."

BMW has for years used its BMW mark in connection with its network of websites dedicated to advertising, promoting, and/or offering its automobiles, motorcycles, and related products and services. BMW's online network, which BMW has operated since at least as early as 1996, receives many millions of hits each month. BMW's websites are accessible via domain names comprised of the BMW mark alone and combined with relevant geographic and/or descriptive terms.

For example, "BMW's international portal websites include its websites located at the domain names BMW.COM and BMWGROUP.COM. BMW's portal websites provide information regarding BMW's products and services, and allow users to select their country or region to go to BMW's country-specific or

region-specific websites for detailed and geographically relevant information regarding BMW products and services. Like its portal websites, BMW's country-specific and region-specific websites are located at BMW-formative domain names. For example, BMW's website for U.S. consumers is located at the domain name BMWUSA.COM, and advertises and promotes both new and certified pre-owned BMW automobiles."

The Complainant contends that"As a result of these longstanding naming traditions followed by BMW, as well as its authorized dealers in the U.S. and around the world, persons encountering domain names consisting of the BMW mark combined with additional terms will believe that the domain name and/or corresponding website is owned, operated, and/or authorized by BMW."

Furthermore, the Complainant's contentions are that:

a) The disputed domain names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

b) The Respondent has no rights or legitimate interests in respect of the domain names;

c) The domain names were registered and are being used in bad faith.

The Complainant requests that the disputed domain names be transferred to itself.

B. Respondent

The Respondent did not submit a Response to the Complaint.

6. Discussion and Findings

The Rules state that the Panel is required to decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules, and any rules and principles of law that it deems appropriate: paragraph 15 of the Rules. Paragraph 4(a) of the Policy requires the Complainant to prove all three of the following elements in order to be entitled to the relief sought:

(i) that the disputed domain names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(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 and are being used in bad faith.

Paragraph 4(c) of the Policy sets out various circumstances which, if found by the Panel to be proved based on the evaluation of all the evidence presented, shall demonstrate that the Respondent has rights and legitimate interests in the disputed domain names for the purposes of paragraph 4(a)(ii) of the Policy. The list of circumstances is non-exhaustive. The circumstances are:

(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or

(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

For the purposes of paragraph 4(a)(iii) of the Policy, paragraph 4(b) of the Policy sets out a non-exhaustive list of circumstances that shall be evidence of the registration and use of a domain name in bad faith:

(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.

A. Identical or Confusingly Similar

First, the Complainant contends that the disputed domain names are confusingly similar to its "famous and federally registered mark BMW because each contains Complainant's mark in its entirety."

In The Ritz Hotel, Limited v. Damir Kruzicevic, WIPO Case No. D2005-1137, the panel stated that: "the domain name incorporates the RITZ mark in its entirety. Numerous WIPO panels have found that a domain name that wholly incorporates the complainant's registered mark may be sufficient to establish confusing similarity for the purposes of the Policy".

Second, the Complainant says that the disputed domain names are also confusingly similar to Complainant's BMW mark "because they contain Complainant's mark combined with geographic, generic, and/or descriptive terms. UDRP Panels have consistently held that combining a mark with geographic, generic, and/or descriptive terms renders the domain name confusingly similar to that mark."

The Complainant refers to Bayerische Motoren Werke AG (BMW AG) v. Anthony Edwards, WIPO Case No. D2008-0162, where the panel found that the domain name<bmwuae.com> was confusingly similar to Complainant's BMW mark, holding that "It is well established that the addition of an obvious geographic identifier to a distinctive mark is not sufficient to distinguish the domain name from the mark itself."

Third, the Complainant submits that the confusing similarity of the disputed domain names "is heighted because the geographic, generic, and/or descriptive terms in the Domain Names relate directly to Complainant's business as described above. UDRP Panels have consistently held that combining a mark with another term renders the domain name confusingly similar to that mark if the term relates to the trademark owner's business, and many Panels have held that the addition of such terms heightens the confusing similarity of the domain name to the mark."

The Complainant's fourth submission is that it is well established under the UDRP that generic Top-Level Domains ("gTLDs") such as ".com" are irrelevant to confusing similarity analysis.

The Panel finds the disputed domain names all include the Complainant's BMW trademark in its entirety as their leading element. As such, the Complainant's mark is clearly recognizable in the disputed domain names, and despite the addition of geographic or descriptive terms, the Panel finds that the disputed domain names are confusingly similar to the Complainant's mark, and is satisfied that the Complainant has brought itself within the requirements of paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

The Complainant contends that the Respondent has no rights or legitimate interests in the disputed domain names for the following reasons.

First, Respondent is not and has not been commonly known by the disputed domain names. "There is no evidence in the record, including the WHOIS information, to demonstrate that Respondent is commonly known by the Domain Names. In addition, Respondent is not a licensee of Complainant or otherwise authorized to use Complainant's BMW mark…Moreover, given the fame of Complainant's BMW mark, Respondent could not be known by the Domain Names."

Second, the Complainant says that the Respondent "uses the domain names BMWMOTORCYCLEPARTS.COM, BMWCERTIFIEDCARS.COM, BMWCERTIFIEDUSED.COM, BMW-DEALS.COM, BMWLIFE.COM, and BMWOFCALIFORNIA.COM for websites displaying 'coming soon' notices. Respondent does not use, or passively holds, the domain name BMWCERTIFIED.COM."

The Respondent's registration of the dispute domain names for "coming soon websites" is analogous to "non-use or passive holding, and his non-use or passive holding of the domain name BMWCERTIFIED.COM does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use."

Third, the Complainant says that the Respondent offers to sell the domain name BMWMOTORCYCLEPARTS.COM as a 'premium' name on GoDaddy's auction website. Respondent's offer to sell the Domain Name strongly suggests by extension that Respondent also intends to offer to sell the additional six Domain Names."

That factor "is further evidence that Respondent has no legitimate interest in the Domain Names."

It was open to the Respondent to file a Response. He has not done so. The Panel is satisfied that the Complainant has made out an unrebutted prima facie case and satisfied the requirements of paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

The Complainant has six grounds on which it relies in support of it contention that the disputed domain names were registered and used in bad faith: the four specific grounds set out in paragraph 4(b) of the Policy and two additional paragraph 4(b) "non-exhaustive" grounds.

First, paragraph 4(b)(i): The Respondent has offered to sell the domain name "BMWMOTORCYCLEPARTS.COM as a 'premium' name on GoDaddy's auction website…" That offer constitutes bad faith under paragraph 4(b)(i) of the Policy "because Respondent registered the Domain Names primarily to sell, rent, or otherwise transfer them for valuable consideration in excess of his documented out-of-pocket expenses"

Second, the Respondent's registration of the seven disputed domain names containing Complainant's BMW mark constitutes a bad-faith pattern under paragraph 4(b)(ii) of the Policy on the basis that registering more than one domain name featuring a complainant's mark indicates bad faith use and registration.

Third, the Respondent's registration and use of the disputed domain names constitute bad faith under paragraph 4(b)(iii) of the Policy because "Respondent disrupts Complainant's business by using the Domain Names to compete with Complainant for Internet traffic and by interfering with Complainant's ability to control use of its federally registered BMW mark. While Respondent is not a competitor of Complainant, the fact that Respondent's activities are in opposition to Complainant are sufficient to define Respondent as a competitor under the UDRP."

Fourth, the Complainant relies on the paragraph 4(b)(iv) ground of "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". The Complainant says "Respondent uses the Domain Names to intentionally attract 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 activities. Regardless of whether Respondent attempts to profit from its use of the Domain Names directly or indirectly, Respondent's registration and use of the confusingly similar Domain Names to trade on Complainant's goodwill and to generate traffic benefits Respondent to the detriment of Complainant, and thus constitutes bad faith."

Fifth, the Complainant says that the Respondent's registration of the disputed domain names for "coming soon websites," is analogous to non-use or passive holding and as such constitutes bad faith. In Bayerische Motoren Werke AG v. Gipol Kaip, WIPO Case No. D2016-0906, the panel stated that "the Respondent is not using the disputed domain name for a website – the disputed domain name does not resolve to a functioning website … Previous UDRP panels have held that non-use of a disputed domain name for a website, i.e., 'passive holding', constitutes bad faith."

Sixth, the Complainant submits that there is no question that Respondent registered the domain names in bad faith with knowledge of BMW's rights in its BMW mark "given the fame of the BMW mark and Respondent's registration of seven Domain Names containing Complainant's BMW mark. Registration of a domain name with knowledge of the trademark owner's rights has been consistently found to constitute bad faith under the UDRP."

In Bayerische Motoren Werke AG v. Lucjan Niemiec, WIPO Case No. D2003-0240, the panel when considering registration and use in bad faith said: "It is inconceivable that the Respondent was not aware of the existence and worldwide reputation of the BMW trademark and of the Complainant's activities when he registered the domain name <bmwcars.info>. Even more so, the registration of a domain name like <bmwcars.info>, where the BMW trademark is coupled with the term 'cars,' making clear reference to the Complainant's principal activity, eliminates any doubt as to the fact that the Respondent knew the BMW mark and the Complainant's activities at the time of the registration of the disputed domain name."

Based on the Complainant's submissions and evidence, the Panel finds that the Respondent has engaged in a bad faith pattern of conduct in registering seven domain names each containing the Complainant's well-known mark. The Panel accepts that in all probability the Respondent did so with a view to selling those domain names to the Complainant for a profit. Furthermore, the Panel considers that the Respondent's current non-use of the disputed domain names amounts to use in bad faith.

The Panel is satisfied that the Complainant has proved both the bad faith registration and the bad faith use requirements of 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 names, <bmwcertifiedcars.com>, <bmwcertified.com>, <bmwcertifiedused.com>, <bmw-deals.com>, <bmwlife.com>, <bmwmotorcycleparts.com> and <bmwofcalifornia.com> be transferred to the Complainant.

Anthony R. Connerty
Sole Panelist
Date: March 25, 2018