WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Bayerische Motoren Werke AG v. DomainsByProxy.com / Sharjeel Hussaini, MB Navigation Updates

Case No. D2018-2846

1. The Parties

Complainant is Bayerische Motoren Werke AG of Munich, Germany, represented by Kelly IP, LLP, United States of America (“United States”).

Respondent is DomainsByProxy.com of Scottsdale, Arizona, United States / Sharjeel Hussaini, MB Navigation Updates of Toronto, Ontario, Canada, self-represented.

2. The Domain Name and Registrar

The disputed domain name <bmwnavupdate.com> (the “Domain Name”) is registered with GoDaddy.com, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 12, 2018. On December 13, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On December 13, 2019, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name that differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on December 17, 2018, providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on December 17, 2018.

The Center verified that the Complaint together with the amended 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 Respondent of the Complaint, and the proceedings commenced on December 18, 2018. On December 19, 2018, the Center received an email communication from Respondent. In accordance with the Rules, paragraph 5, the due date for Response was January 7, 2019. On January 9, 2019, the Center sent an email communication inviting the Parties to explore settlement negotiations. On January 17, 2019, noting Complainant had not responded to the Center’s email communication of January 9, 2019, the Center informed the Parties it would proceed to panel appointment. Respondent submitted a request for suspension of the proceeding on January 17, 2019, to which the Center on January 18, 2019 invited Complainant to submit its comments. No further communication from Complainant was received by the Center. On January 23, 2019, the Center emailed the Parties indicating it would initiate the panel appointment process. That same day, the Center received an email communication from Respondent.

The Center appointed Marina Perraki as the sole panelist in this matter on January 25, 2019. 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

According to the Complaint, Complainant is one of the most successful manufacturers of automobiles and motorcycles in the world. It manufactures, sells, and distributes automobiles and motorcycles under the BMW trademark and provides various services. Complainant’s products and components are manufactured at 30 sites in 14 countries. In each year from 2011 through 2017, Complainant produced and sold more than 1,300,000 automobiles and more than 100,000 motorcycles. In 2017, Complainant had worldwide sales and revenue in excess of EUR 98 billion. According to the Complaint, the BMW mark has been in use since 1917 and enjoys fame and recognition worldwide as a result of extensive use and advertising.

Complainant offers also navigation software and systems under the BMW mark. It also offers navigation software updates and activation codes for such updates, known as FSC codes, through its authorized dealers and on its “www.bmwusa.com” website, among other official channels.

Complainant is the owner of numerous BMW trademark registrations. These include:

- German Registration No. 221388 for 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.

- United States Registration No. 611,710 for BMW in block letters, first used in commerce February 1949, filed on March 10, 1954, registered on September 6, 1955, covering automobiles and motorcycles in International Class 12.

The Domain Name was registered on September 27, 2017 and resolves to a website (the “Website”), which, per the Complaint, advertises and offers unauthorized, counterfeit versions of Complainant’s navigation software and activation/FSC codes. The Website displays an altered version of Complainant’s BMW logo next to the words “BMW Nav Update”. It also displays unauthorized copies of Complainant’s copyright protected publicity image, which Complainant makes available only to the press and media for use in media coverage. Further, per the Complaint, the Website depicts Complainant’s BMW logo on an unauthorized, counterfeit USB stick on which the unauthorized software is provided. Lastly, it displays unauthorized copies of Complainant’s images from Complainant’s Configurator (or Build Your Own) tool found on Complainant’s “www.bmwusa.com” and “www.bmw.de” websites.

5. Parties’ Contentions

A. Complainant

Complainant asserts that it has established all three elements required under paragraph 4(a) of the Policy for a transfer of the Domain Name.

B. Respondent

Respondent did not submit a substantive reply to Complainant’s contentions. However, the Panel notes Respondent did contact the Center and Complainant on several occasions expressing a willingness to explore settlement negotiations.

6. Discussion and Findings

Paragraph 4(a) of the Policy lists the three elements which Complainant must satisfy with respect to the Domain Name:

(i) the Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

(ii) Respondent has no rights or legitimate interests in respect of the Domain Name; and

(iii) the Domain Name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

Complainant has demonstrated rights through registration and use of the BMW mark.

The Panel finds that the Domain Name <bmwnavupdate.com> is confusingly similar with the BMW trademark of Complainant.

The Domain Name incorporates the said trademark of Complainant in its entirety. This is sufficient to establish confusing similarity (Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525).

The letters “nav”, which are also the first three letters of the word “navigation”, and the word “update” added in the Domain Name do not avoid a finding of confusing similarity (Bayerische Motoren Werke AG v. Domains by Proxy, LLC / Alfred Kolinz, bmwupdate, WIPO Case No. D2017-2450; Philip Morris Products S.A. v. Yang Jiang Nan, WIPO Case No. D2018-1869; Accenture Global Services Limited v. Jean Jacque / Luck Loic, WIPO Case No. D2016-1315; Wragge Lawrence Graham & Co LLP v. Registration Private, Domains by Proxy LLC / Ian Piggi, WIPO Case No. D2015-0135; WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.8 ).

The generic Top-Level Domain (“gTLD”) “.com” is disregarded, as gTLDs typically do not form part of the comparison on the grounds that they are required for technical reasons only (Rexel Developpements SAS v. Zhan Yequn, WIPO Case No. D2017-0275; Hay & Robertson International Licensing AG v. C. J. Lovik, WIPO Case No. D2002-0122).

The Panel finds that the Domain Name <bmwnavupdate.com> is confusingly similar to the BMW trademark of Complainant.

Complainant has established Policy, paragraph 4(a)(i).

B. Rights or Legitimate Interests

Pursuant to paragraph 4(c) of the Policy, Respondent may establish its rights or legitimate interests in the Domain Name, among other circumstances, by showing any of the following elements:

(i) before any notice to you [Respondent] 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 [Respondent] (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 [Respondent] 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.

The Panel concludes that Respondent lacks rights or legitimate interests in respect of the Domain Name.

Respondent has not submitted a substantive response to Complainant’s contentions and has not claimed any such rights or legitimate interests with respect to the Domain Name. As per the Complaint, Respondent was not authorized to register the Domain Name.

Respondent did not demonstrate prior to the notice of the dispute any use of the Domain Name or a name corresponding to the Domain Name in connection with a bona fide offering of goods or services.

On the contrary, as Complainant demonstrates, the Domain Name resolves to a website containing text and content that suggests falsely that the Website is that of Complainant or of an affiliated entity or of an official dealer of Complainant.

Per the Complaint, Respondent is not an affiliated entity or an authorized distributor or reseller of Complainant and no agreement, express or otherwise, exists allowing the use of Complainant’s trademarks on the Website and the use of the Domain Name by Respondent.

However, the Domain Name falsely suggests that it is an official site of Complainant or of an entity affiliated to or endorsed by Complainant. The Website extensively reproduces, without authorization by Complainant, Complainant’s trademarks, official Complainant product images and marketing material. Lastly, per the Complaint, the Website was used for the offering of unauthorized or counterfeit products.

The use of a domain name for illegal activity (e.g., the sale of counterfeit goods or passing off) can never confer rights or legitimate interests on a respondent (Bayerische Motoren Werke AG (BMW) v. Balog Sebastian, WIPO Case No. D2017-1407; Bayerische Motoren Werke AG v. MIKE LEE / WHOISGUARD PROTECTED, WHOISGUARD, INC., Yang Xiao, Xiao Yang, Ning Li, Li Ning, MIKE LEE, WIPO Case No. D2016-2268; Bayerische Motoren Werke AG v. Contact Privacy Inc. Customer 0126592991 / Damir Gasparlin, WIPO Case No. D2017-0643; Prada S.A. v. Domains For Life, WIPO Case No. D2004-1019; WIPO Overview 3.0, sections 2.8. and 2.13.1).

Furthermore, the use of a domain name that intentionally trades on the fame of another and suggests affiliation with the trademark owner cannot constitute a bona fide offering of goods or services (Madonna Ciccone, p/k/a Madonna v. Dan Parisi and “Madonna.com”, WIPO Case No. D2000-0847; Philip Morris Incorporated v. Alex Tsypkin, WIPO Case No. D2002-0946; AB Electrolux v. Handi Sofian, Service Electrolux Lampung, WIPO Case No. D2016-2416; WIPO Overview 3.0, section 2.8).

The Panel finds that these circumstances do not confer upon Respondent any rights or legitimate interests in respect of the Domain Name.

Complainant has established Policy, paragraph 4(a)(ii).

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy provides that the following circumstances, “in particular but without limitation”, are evidence of the registration and use of the Domain Name in bad faith:

(i) circumstances indicating that Respondent has registered or has acquired the Domain Name primarily for the purpose of selling, renting, or otherwise transferring the Domain Name registration to Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of its documented out-of-pocket costs directly related to the Domain Name; or

(ii) that Respondent has 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 Respondent has engaged in a pattern of such conduct; or

(iii) that Respondent has registered the Domain Name primarily for the purpose of disrupting the business of a competitor; or

(iv) that by using the Domain Name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website or other online location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product or service on Respondent’s website or location.

The Panel concludes that Respondent has registered and used the Domain Name in bad faith. As per the Complaint, Complainant’s BMW trademark is widely known for automobiles and related goods and services. Because the BMW mark had been widely used and registered at the time of the Domain Name registration by Respondent, the Panel finds it more likely than not that Respondent had Complainant’s mark in mind when registering the Domain Name (Tudor Games, Inc. v. Domain Hostmaster, Customer ID No. 09382953107339 dba Whois Privacy Services Pty Ltd / Domain Administrator, Vertical Axis Inc., WIPO Case No. D2014-1754; Parfums Christian Dior v. Javier Garcia Quintas and Christiandior.net, WIPO Case No. D2000-0226).

As regards bad faith use of the Domain Name, Complainant has demonstrated that the Domain Name was used to create a website, which prominently displays the Complainant’s registered BMW trademark and logo and publicity images, thereby giving the false impression that it is operated by Complainant or a company affiliated with Complainant or an authorized dealer of Complainant. The Domain Name operates by intentionally creating a likelihood of confusion with Complainant’s trademark and business as to the source, sponsorship, affiliation or endorsement of the website to which it resolves. This is indicative of bad faith registration and use (Booking.com BV v. Chen Guo Long, WIPO Case No. D2017-0311; Ebel International Limited v. Alan Brashear, WIPO Case No. D2017-0001; Walgreen Co. v. Muhammad Azeem / Wang Zheng, Nicenic International Group Co., Limited, WIPO Case No. D2016-1607; Oculus VR, LLC v. Sean Lin, WIPO Case No. DCO2016-0034; WIPO Overview 3.0 , section 3.3 and 3.4 ). Furthermore, per the Complaint, unauthorized, counterfeit versions of Complainant’s navigation software and activation/FSC codes were offered on the Website (BMW v.Kolinz, WIPO Case No. D2017-2450, BMW v. Balog, WIPO Case No. D2017-1407).

Under these circumstances and on this record, the Panel finds that Respondent has registered and is using the Domain Name in bad faith.

Complainant has established Policy paragraph 4(a)(iii).

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 Domain Name <bmwnavupdate.com> be transferred to the Complainant.

Marina Perraki
Sole Panelist
Date: February 8, 2019