WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Bayerische Motoren Werke Aktiengesellschaft v. Publishing Australia Pty Ltd, ACN 120 531 982, Mr. Nicholas Crawshay
Case No. DAU2011-0024
1. The Parties
The Complainant is Bayerische Motoren Werke Aktiengesellschaft of Munich, Germany, represented by Davies Collison Cave, Australia.
The Respondents are Publishing Australia Pty Ltd, ACN 120 531 982, Mr. Nicholas Crawshay of New South Wales, Australia, represented by Cooper Mills Lawyers, Australia (hereinafter the “Respondent”).
2. The Domain Name and Registrar
The disputed domain name <bmwdiscounts.com.au> is registered with IntaServe.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 2, 2011. On September 2, 2011, the Center transmitted by email to IntaServe a request for registrar verification in connection with the disputed domain name. On September 19, 2011, IntaServ, 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 .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 September 26, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was October 16, 2011. The Response was filed with the Center on October 13, 2011.
The Center appointed Fleur Hinton, William P. Knight and WiIliam A. Van Caenegem as panelists in this matter on November 14, 2011. The Panel finds that it was properly constituted. Each member of 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 commenced using the trade mark BMW in Germany in 1917. This use had extended to the United Kingdom of Great Britain and Northern Ireland by 1949 and use in Australia commenced in the 1950s. The Complainant is the registered owner of the trade mark BMW in Australia and many other countries. Some of these registrations are for the letters alone and some incorporate a device trade mark. Many are for vehicles in class 12 and repair services in class 37 but BMW is also registered for accessories and various sorts of merchandise. The Complainant promotes itself and its BMW trade mark vigorously throughout Australia and in many other countries throughout the world through advertising, sponsoring events and giving interviews about its BMW products to the media.
Since 1996, the Complainant has operated a number of websites using the trade mark BMW including “www.bmw.com”, “www.bmw.co.uk”, “www.bmw.de” and “www.bmw.com.au”.
The Respondent has been operating a website under the disputed domain name since at least June 2010. On this website, the Respondent offers to purchase BMW vehicles for the visitor at a discount from the normal price at which BMW vehicles are offered.
The Complainant’s solicitors wrote to the Respondent in July 2010 requiring that the Respondents cease using the disputed domain name and give undertakings not to use the Complainant’s trade mark BMW in the future. The Respondent did not reply to any of the letters sent to it, ending with a letter of August 27, 2010.
5. Parties’ Contentions
A. Complainant
The Complainant claims a very substantial international reputation in its trade mark BMW. It says that it is the owner of the BMW trade mark in many countries throughout the world and that that trade mark is very well-known. It has sold BMW vehicles extensively in Australia. The disputed domain name differs from the trade mark only in the addition of “discounts”, a word describing a service, and the top level denominator “.au”, neither of which detracts from the distinctive BMW trade mark. For that reason, the domain name is confusingly similar to a trade mark owned by the Complainant.
The Complainant states that the Respondent has no right or legitimate interests in the disputed domain name because:
1. the Complainant’s use and registration of BMW precedes the use being made by the Respondent by many years;
2. the Complainant has not licensed or permitted the Respondent to use any of its trade marks;
3. the Respondent is not known by the disputed domain name, is not an authorized dealer in the Respondent’s goods and has not registered the disputed domain name as either a trade mark or a business name;
4. the Respondent is not making a legitimate use of the disputed domain name for non-commercial purposes; and
5. the Respondent is not making use of the disputed domain name for a bona fide offering of goods or services. The Complainant refers to the decision in Oki Data Americas, Inc v. ADS, Inc, WIPO Case No. D2001-0903 in which the panel set out a list of criteria to determine whether an offering of goods and services is a bona fide offering.
The Complainant states that the Respondent has registered or is using the disputed domain name in bad faith because:
1. The Complainant’s trade marks have previously been found to be very well-known;
2. the Respondent must have been aware of the Complainant’s trade marks due to the Complainant’s extensive reputation;
3. the directors of the Respondent have been aware of the Complainant’s trade mark rights since at least December 21, 2005;
4. the Respondent registered the disputed domain name knowing of the Complainant’s rights and primarily for the purpose of diverting Internet users from the website of the disputed domain name to its Private Fleet business;
5. the disclaimers on the Respondent’s website do not suffice to negate the initial confusion caused when potential customers visit the website;
6. the Respondent has not complied with the formal request to cancel the disputed domain name;
7. the directors of the Respondent are the owners of more than 1300 other domain names which include names by automotive companies. As such they should be aware of the rights and duties of domain name registrants; and
8. the directors of the Respondent have been involved with other companies which have been the subject of adverse domain name decisions.
B. Respondent
The Respondent submits that the disputed domain name is neither substantially identical with nor confusingly similar to a trade mark in which the Complainant has rights. In support of this argument the Respondent relies on the difference in appearance between the Complainant’s trade marks and the disputed domain name, the fact that the disputed domain name makes it plain that the website to which it leads is operated by the Respondent and describes the Respondent’s activities and the Respondent makes it clear on its website that it has no connection with the Complainant.
In relation to the question as to whether the Respondent has rights or legitimate interests in the disputed domain name, the Respondent says that it satisfies all of the criteria required by the panel in the decision in Oki Data Amercias, INc v. ASD, Inc, WIPO Case No. D2001-0903 which are that:
1. the Respondent must be actually offering the goods or services in question;
2. the Respondent must use the website to sell only goods which bear the trade mark;
3. the website must disclose that it is not connected with the trade mark owner; and
4. the Respondent must not have tried to obtain domain name registrations of all of the domain names which include the particular trade mark.
The Respondent refers also to the panel decisions in GM Holden Ltd v. Publishing Australia Pty Ltd., WIPO Case No. DAU2011-0002 and Dr. Ing. h.c. F. Porsche AG v. Del Fabbro Laurent, WIPO Case No. D2004-0481.
The Respondent denies that it has registered or is using the disputed domain name in bad faith. It says that references by the Complainant to other cases in which directors of the Respondent have been involved are irrelevant to the determination of the present one. It sets out the criteria under the Policy which are required to be satisfied in order for a finding of registration of a domain name or use of it to have been made in bad faith:
(i) circumstances indicating that the respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to another person for valuable consideration in excess of its documented out-of-pocket costs directly related to the domain name; or
(ii) the respondent has registered the domain name in order to prevent the owner of a name, trademark or service mark from reflecting that name or mark in a corresponding domain name; or
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business or activities of another person; or
(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to a web site 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 web site or location or of a product or service on that web site or location.
The Respondent argues that the facts establish that none of those circumstances is present in this case. The Respondent further makes a counter-claim for a finding of reverse domain name hijacking. The Respondent argues that the Complaint was motivated by a commercial grievance rather than a genuine concern regarding the Complainant’s trade marks or deception of consumers.
6. Discussion and Findings
In order to be successful in having a domain name transferred or cancelled, the Complainant must satisfy the Panel that all three elements of the Policy have been satisfied, that is, that:
“(i) your [the Respondent’s] domain name is identical or confusingly similar to a name [Note 11], trademark or service mark in which the complainant has rights; and
(ii) you [the Respondent] have no rights or legitimate interests in respect of the domain name [Note 22]; and
(iii) your [the Respondent’s] domain name has been registered or subsequently used in bad faith”.
A. Identical or Confusingly Similar
The disputed domain name consists of the Complainant’s well-known trade mark BMW with the addition of the non-distinctive and descriptive word “discounts”. The Panel finds that the disputed domain name is confusingly similar to a trade mark in which the Complainant has rights.
B. Rights or Legitimate Interests
The Policy sets out the circumstances in which a respondent may demonstrate that it does have rights or legitimate interests in a domain name in respect of which a complaint has been lodged. Because the criteria set out in paragraph 4(a)(ii) of the Policy are essentially identical with those set out in paragraph 4(a)(ii) of the Uniform Domain Name Dispute Resolution Policy (“UDRP”) , cases decided under both are relevant to this case. Circumstances comparable to those the subject of this Complaint have been discussed in a number of decisions under the UDRP and the Policy, most recently in GM Holden Ltd v. Publishing Australia Pty Ltd, WIPO Case No. DAU2011-0002 also involving the present respondent.
In Oki Data Americas, Inc v. ADS, Inc, WIPO Case No. D2001-0903 the panel set out four criteria in which “an authorised sales or service agent of trademarked goods can use the trademark at issue in its domain name”. However, the Panel considers (as other Panels have also previously acknowledged3) that these considerations may be equally applicable to circumstances, such as those in which a person is offering genuine goods of a trade mark owner, or services related to those goods, but is not an authorized reseller or in an authorized relationship with the trade mark owner as such. The essential issue addressed by the Oki Data decision is whether, in these circumstances, there is a bona fide offering of relevant goods and services, and an absence of any associated deception.
The criteria set out in the Oki Data decision are:
1. the respondent must actually be offering the goods or services the subject of the trade mark;
2. the respondent must only be offering those goods or services;
3. the website must accurately describe the relationship between the respondent and the trade mark owner; and
4. the respondent must not try to take all of the relevant domain names so as to deprive the trade mark owner of the ability to register its trade mark as a domain name.
In Dr. Ing. h.c. F. Porsche AG v. Del Fabbro Laurent, WIPO Case No. D2004-0481, the respondent operated a website on which it offered second hand PORSCHE motor cars for sale. The panel in that case referred to the Oki Data case, noting that situation in the Porsche v. Del Fabbro Laurent case was different because in the Porsche case the complainant had not authorised the respondent as a distributor or in any other way. Nevertheless, the panel found that the respondent was offering only PORSCHE cars for sale. Although there were links to other websites offering other brands of cars, this was only a small part of the overall website. The respondent made it plain that he was not affiliated with the trade mark owner. Further, the respondent had not tried to register a large number of domain names incorporating “porsche” so as to deprive the trade mark owner of the ability to register a domain name or names incorporating its trade mark.
In the case of GM Holden Ltd v. Blogger Pty Ltd, WIPO Case No. DAU2008-0016, the respondent, Blogger Pty Ltd, used the disputed domain name <holdenastra.com.au> to link to the website <privatefleet.com.au>. The panel referred to the case of SingTel Optus Pty v. Xnet, WIPO Case No. D2004-0734. In that case the panel found that the existence of a link did not suffice to constitute a bona fide offering. It also found that a mere disclaimer of connection with a trade mark owner will not suffice to overcome the initial confusion suffered by virtue of having been taken to a website which the visitor believed was that of the complainant but which turned out not to be.
In GM Holden Ltd. v. Bradley John Lawless WIPO Case No. DAU2010-0010, the respondent was offering repair and servicing of HOLDEN cars but failed to mention that it was in no way associated with the trade mark owner or its authorized user. The panel found that the respondent lacked rights or legitimate interests in the disputed domain name.
In GM Holden Ltd v. Publishing Australia Pty Ltd, WIPO Case No. DAU2011-0002, the disputed domain name was <holdendiscounts.co.au>. The complainant was the exclusive authorised user of the well-known HOLDEN trade marks. The respondent in that case was the same as in the present case and the materially relevant facts apposite to those in the present dispute.
In GM Holden Ltd v. Publishing Australia Pty Ltd, the panel found that the respondent was not a reseller of the goods but, rather, an agent for purchasing the goods. This is the case here also. Consistent with the Porsche v. Del Fabbro Laurent decision, this Panel agrees with the finding in GM Holden Ltd v. Publishing Australia Pty Ltd that the services offered by the Respondent on the disputed domain name are sufficiently analogous to those of reselling for the use of the disputed domain name in respect of them to be a bona fide use provided that the other criteria of Oki Data be satisfied.
In the present case, it appears to the Panel that the only offer which is made on the website of the disputed domain name is an offer to assist the potential purchaser to buy a discounted BMW vehicle. The fact that other parts of the Respondent’s business (which are apparently not offered on the website on the disputed domain name) may offer to assist people to buy other brands of cars is in this Panel’s view insufficient to take the Respondent’s use of the disputed domain name beyond that stipulated under the second limb of Oki Data. Therefore, this Panel finds that the second limb of Oki Data is satisfied.
The Panel finds that the disclaimers given on the disputed domain name’s website are adequate to inform potential purchasers of the relationship or lack of it between the Complainant and the Respondent. The Respondent is apparently using the disputed domain name and the website to which it resolves in relation to goods which are genuinely marked by the trade mark owner. In the Panel’s opinion, there is no scope for misleading confusion in this situation. The visitor is attracted to the website by a domain name suggesting the offering of “bmwdiscounts” and that is exactly what s/he is offered when at the website. The Panel finds no serious suggestion in the evidence in these Policy proceedings that the Respondent does not in fact offer the service of procuring the Complainant’s motor vehicles on favourable terms. The Panel finds the third limb of Oki Data is satisfied.
There is no evidence of record in these Policy proceedings that the Respondent has attempted to acquire many BMW domain names, thereby preventing the Complainant from registering domain names incorporating its trade mark. Panel accordingly finds the fourth limb of Oki Data is satisfied.
The Panel finds that, consistent with the reasoning and similar facts in GM Holden Ltd v. Publishing Australia Pty Ltd, the Complainant in this case has not been able to overcome to Respondent’s defended claim rights or legitimate interests in the disputed domain name for purposes of this present dispute under the Policy.
C. Registered or Subsequently Used in Bad Faith
In view of the finding in relation to the Respondent’s rights and legitimate interests, it is unnecessary to establish whether or not the Complainant has established that the disputed domain name was registered and is being used in bad faith.
7. Reverse Domain Name Hijacking
Given the circumstances of the decision in GM Holden Ltd v. Publishing Australia Pty Ltd, the nature of the disclaimers on the Respondent’s website, and the fact that they are represented by experienced external counsel, the Panel has considered very carefully the claim of reverse domain name hijacking in this case. The Panel notes, however, that the Respondent’s allegations of some improper motive on the part of the Complainant are entirely unsupported and argumentative. In the circumstances, the Panel does not find grounds to come to a finding of reverse domain name hijacking in this instance.
8. Decision
For all the foregoing reasons, the Complaint is denied.
Fleur Hinton
Presiding Panelist
William P. Knight
Panelist
WiIliam A. Van Caenegem
Panelist
Dated: November 24, 2011
1 For the purposes of this policy, auDA has determined that a "name … in which the complainant has rights" refers to:
a) the complainant's company, business or other legal or trading name, as registered with the relevant Australian government authority; or b) the complainant's personal name.
2 For the purposes of this policy, auDA has determined that "rights or legitimate interests in respect of the domain name" are not established merely by a registrar's determination that the respondent satisfied the relevant eligibility criteria for the domain name at the time of registration
3 See e.g. National Association for Stock Car Auto Racing, Inc. v. Racing Connection / The Racin’ Connection, Inc., WIPO Case No. D2007-1524 and GM Holden Ltd v. Publishing Australia Pty Ltd, WIPO Case No. DAU2011-0002, among others.