WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Bayerische Motoren Werke AG, Rolls-Royce Motor Cars Limited v. Ed Slingsby, SC Net

Case No. D2015-0268

1. The Parties

The Complainants are Bayerische Motoren Werke AG of Munich, Germany, and Rolls-Royce Motor Cars Limited of Bracknell, United Kingdom of Great Britain and Northern Ireland, both represented by Finnegan, Henderson, Farabow, Garrett & Dunner, LLP, United States of America.

The Respondent is Ed Slingsby, SC Net of Chicago, Illinois, United States of America.

2. The Domain Names and Registrar

The disputed domain names <chicagorollsroyce.com>, <minicooperdealer.com>, <minicooperdealers.com> and <rollsroycechicago.com> are registered with Wild West Domains, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 20, 2015. On February 20, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On February 20, 2015, 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on February 24, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was March 16, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 17, 2015.

The Center appointed Philippe Gilliéron as the sole panelist in this matter on March 26, 2015. 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 owns numerous trademarks consisting in whole or in part of the word “MINI” in more than 100 countries throughout the world, such as:

- United Kingdom Registration No. 969678 for the mark MINI (word), registered January 5, 1971, for “motor cars” in International Class 12;

- Community Trademark Registration No. 143909 for the mark MINI (word), registered December 8, 1999, for goods and services in classes 12, 28, 36 and 37;

- United States Registration No. 2746570 for the mark MINI (word), registered August 5, 2003, for “Automobiles and structural parts therefor” in International Class 12.

- United States Registration No. 2376477 for the mark MINI COOPER (word), registered August 15, 2000, for “Automobiles and structural partstherefor” in International Class 12.

- United States Registration No. 3696191 for the mark MINI COOPER (word), registered October 13, 2009, for “Automobiles and structural parts therefor” in International Class 12, and related clothing and accessories.

- United States Registration No. 4626756 for the mark MINI COOPER SE (word), registered October 28, 2014, for “Automobiles” in InternationalClass 12.

The Complainant Bayerische Motoren Werke AG notably owns since March 1, 2000 the domain names <miniusa.com> to carry out its activities related to the promotion and sales of the Mini Cooper in the United States of America, and <mini.co.uk> since September 16, 1996 as to the United Kingdom of Great Britain and Northern Ireland.

The Complainant Rolls-Royce Motor Cars Limited owns numerous trademarks consisting in whole or in part of the word “ROLLS-ROYCE”, such as:

- United States Trademark Reg. No. 197,089 for the mark ROLLS-ROYCE (and Design), registered April 7, 1925 and reflecting a first-use date of January 1, 1905 for “automobiles and chassis” in International Class 12;

- United States Trademark Reg. No. 325,195 for the mark ROLLS-ROYCE, registered June 11, 1935 and reflecting a first use date of 1906 for “automobiles and chassis” in International Class 12;

- Community Trade Mark Reg. No. 003384071 for the mark ROLLSROYCE, registered March 2, 2005 for “cars and parts therefor” inInternational Class 12; and

- Community Trade Mark Reg. No. 010206233 for the mark ROLLSROYCE MOTOR CARS, registered January 24, 2012 for “automobilesand their parts” in International Class 12.

The Complainant Rolls-Royce Motor Cars Limited operates a website under the domain name <rolls-roycemotorcars.com>.

The disputed domain names were registered by the Respondent on:

- June 11, 2001: <chicagorollsroyce.com>;

- June 13, 2001: <rollsroycechicago.com>;

- June 16, 2002: <minicooperdealers.com> and <minicoooperdealer.com>.

The disputed domain names are used to redirect Internet users to pay-per-click websites containing links to third-party automobile manufacturers.

On November 11, 2014, the Complainants, acting through their legal counsel, sent a cease and desist letter to the Respondent, drawing its attention to their trademark rights and the infringement resulting from the registration of the disputed domain names and requesting it to take immediate steps to cease such use and transfer the disputed domain names in their favor.

The Respondent did not respond.

5. Parties’ Contentions

A. Complainants

The Complainants first contend that the disputed domain names are confusingly similar to their respective trademarks as they comprise these trademarks in their entirety with either the generic terms “dealer” or “dealers” or the geographic descriptor “Chicago” and the non-distinguishing generic Top-Level Domain (gTLD) string “.com”. Such addition is likely to increase the likelihood of confusion by making Internet users believe that they are connecting to an authorized dealer’s websites.

The Complainants then affirm that the Respondent has no rights or legitimate interests in the disputed domain names as these are used for pay-per-click websites featuring sponsored link advertisements for directly competing websites, which does not constitute a bona fide offering of goods or services or a legitimate noncommercial use or fair use under the UDRP. Furthermore, the Respondent is not and has not been commonly known by any of the disputed domain names, and the Respondent is not a licensee of either of the Complainants, which have not authorized the Respondent to register or use any of the disputed domain names.

Finally, the Complainants consider that the disputed domain names have been registered and are being used in bad faith. The Respondent unfairly disrupts the Complainants’ businesses by using the disputed domain names for websites displaying sponsored-link advertisements for directly competing websites. In addition, the Respondent uses the disputed domain names to intentionally attract, for commercial gain, Internet users by creating a likelihood of confusion with the Complainants’ famous MINI and ROLLS-ROYCE trademarks as to source, sponsorship, affiliation or endorsement. Finally, considering the fame enjoyed by the Complainants’ trademarks, there can be no question that the Respondent knew of the Complainants’ rights in the marks when it registered the disputed domain names.

B. Respondent

The Respondent did not reply to the Complainants’ contentions.

6. Discussion and Findings

Paragraph 15(a) of the Rules instructs this Panel to “[…] decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”.

Pursuant to paragraph 4(a) of the Policy, the Complainants must prove each of the following three elements to obtain an order that the disputed domain names should be cancelled or transferred:

(i) The disputed domain names registered by the Respondent are identical or confusingly similar to a trademark or a service mark in which the Complainants have rights; and

(ii) The Respondent has no rights or legitimate interests in respect of the disputed domain names; and

(iii) The disputed domain names have been registered and are being used in bad faith.

A. Consolidation

The Complainants request to be entitled to consolidate their claims in a single case against the same Respondent, since the Complainants are related entities that have a common interest in protecting their trademarks one the one side, and that the Respondent has demonstrated a pattern of registering domain names that incorporate Complainants’ trademarks in order to impersonate legitimate MINI and ROLLS-ROYCE dealerships and linking them to the same types of pay-per-click websites.

UDRP panels have articulated principles governing the question of whether a complaint filed by multiple complainants may be brought against (one or more) respondents. These criteria encompass situations in which (i) the complainants either have a specific common grievance against the respondent, or the respondent has engaged in common conduct that has affected the complainants’ individual rights in a similar fashion; (ii) it would be equitable and procedurally efficient to permit the consolidation (see paragraph 4.16 of WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”)).

In the present case, the Complainants have demonstrated that they are affiliated companies, Rolls-Royce Motors Cars Limited being a subsidiary of Bayerische Motoren Werke AG on the one hand, and that all disputed domain names have been registered by the same Respondent on the other hand. As a result, the Panel considers that, in line with paragraph 4.16 of the WIPO Overview 2.0, it is equitable and procedurally efficient to permit the consolidation, which is hereby granted.

B. Identical or Confusingly Similar

According to the Policy, paragraph 4(a)(i), the Complainants have to prove that the disputed domain names are identical or confusingly similar to trademarks or service marks in which the Complainants have rights.

The Complainants are the holders of numerous trademarks throughout the world consisting of the words “MINI” and “ROLLS-ROYCE”. There is no doubt in the Panel’s opinion that these marks enjoy a wide reputation and can be considered well-known trademarks under Art. 16.3 of the TRIPS Agreement, respectively Art. 6bis of the Paris Convention.

UDRP panels widely agree that incorporating a trademark into a domain name can be sufficient to establish that the domain name is identical or confusingly similar to a registered trademark for purpose of the Policy (see, e.g., Uniroyal Engineered Products, Inc. v. Nauga Network Services, WIPO Case No. D2000-0503; Thaigem Global Marketing Limited v. Sanchai Aree, WIPO Case No. D2002-0358; and F. Hoffmann-La Roche AG v. Relish Entreprises, WIPO Case No. D2007-1629).

This is all the more true when the inserted trademark, a well-known one, is the dominant part of the disputed domain name, and that the added elements are merely descriptive.

Such happens to be the case here. The addition of a geographical term such as “chicago” is merely descriptive and does not reduce the likelihood of confusion (see, among others: Playboy Entreprises International, Inc. v. Zeynel Demirtas, WIPO Case No. D2007-0768; Inter-IKEA Systems B.V. v. Evezon Co. Ltd, WIPO Case No. D2000-0437; Dell Computer Corporation v. MTO C.A. and Diabetes Education Long Life, WIPO Case No. D2002-0363). To the contrary, it rather strengthens the likelihood of confusion by making Internet users mistakenly believe that the website might be the Complainant’s official website with regards to the Chicago area.

The same holds true with regard to the terms “dealer” and “dealers”, which may lead consumers to believe that the disputed domain names <minicooperdealer.com> and <minicooperdealers.com> refer to a source for authorized dealerships who market and sell MINI branded automobiles.

As a result, the Panel considers paragraph 4(a)(i) of the Policy to be satisfied.

C. Rights or Legitimate Interests

According to the Policy, paragraph 4(a)(ii), the Complainants have to demonstrate that the Respondent has no rights or legitimate interests in the disputed domain names.

As the panel stated in Do The Hustle, LLC v. Tropic Web, WIPO Case No. D2000-0624, demonstrating that a respondent has no rights or legitimate interests in a domain name “would require complainant to prove a negative, a difficult, if not impossible, task”. Thus, in that decision, the panel opined that “[w]here a complainant has asserted that the respondent has no rights or legitimate interests in respect of the domain name, it is incumbent upon the respondent to come forward with concrete evidence rebutting this assertion”. Following that decision, subsequent panels developed a consensus view that it is deemed sufficient for a complainant to make a prima facie case that the respondent lacks rights or legitimate interests in a domain name. Once a prima facie case has been made, it is the respondent’s burden to demonstrate its rights or legitimate interests. If it fails to do so, the complainant is deemed to have satisfied to paragraph 4(a)(ii) of the Policy (see, e.g., paragraph 2.1 of the WIPO Overview 2.0).

In the present case the Complainants are the owner of numerous MINI and ROLLS-ROYCE trademarks. The Complainants have no business or other relationships with the Respondent.

The Complainants thus have made a prima facie case showing that the Respondent has no rights or legitimate interests in the disputed domain names.

On its side, the Respondent has not answered the Complaint, or the cease and desist letter that was sent to it on November 11, 2014.

Considering the absence of a Response and the fact that the Respondent is neither commonly known by the disputed domain names, nor has made a legitimate noncommercial or fair use of the disputed domain names, the Panel finds that the Respondent has failed to demonstrate any rights or legitimate interests in the disputed domain names.

Consequently, in light of the above, the Panel considers paragraph 4(a)(ii) of the Policy to be fulfilled.

D. Registered and Used in Bad Faith

For a complaint to succeed, a panel must be satisfied that a domain name has been registered and is being used in bad faith (Policy, paragraph 4(a)(iii)).

Bad faith requires the Respondent to be aware of the Complainants’ trademarks. In the present case, the Complainants are the owners of numerous MINI and ROLLS-ROYCE trademarks, which enjoy a worldwide reputation and amount to well-known trademarks as pointed out above.

Considering the worldwide reputation of these marks, it is inconceivable that the Respondent would have chosen and registered the disputed domain names without having been aware of the Complainants’ trademarks. The Respondent, having neglected to participate in these proceedings, did not bring any evidence to support any good faith reason for such a choice; such evidence is not apparent from the record, and the Respondent has to bear the consequences of its default in that regard.

Given the Respondent’s use of the disputed domain names to host pay-per-click links related to the Complainants’ business, there is no doubt in the Panel’s opinion that the Respondent was very well aware of the Complainants’ trademarks, and that the disputed domain names have been registered, and are being used to attract Internet users to the Respondent’s websites for commercial gain, by creating a likelihood of confusion and leading Internet users to believe that the Respondent’s websites are linked to the Complainants (see, for example: Bayerische Motoren Werke AG v. Sabri Hammad, WIPO Case No. D2007-0675; Bayerische Motoren Werke AG v. Gary Portillo, WIPO Case No. D2012-1937; Bayerische Motoren Werke AG v. RC, WIPO Case No. D2012-0124). Prior panels have held that the use of a domain name for a website displaying sponsored links to competitors’ webpages disrupts the concerned right-holder’s business and amounts to bad faith (Bayerische Motoren Werke AG v. Maxim Ilin / Domains By Proxy, LLC, WIPO Case No. D2012-1482).

Consequently, the Panel finds that the disputed domain names <chicagorollsroyce.com>, <minicooperdealer.com>, <minicooperdealers.com> and <rollsroycechicago.com> have been registered and are being used in bad faith under the 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 <chicagorollsroyce.com>, <minicooperdealer.com>, <minicooperdealers.com> and <rollsroycechicago.com> be transferred to the Complainants.

Philippe Gilliéron
Sole Panelist
Date: April 7, 2015