WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Bayerische Motoren Werke AG v. Antonio Vernacchia

Case No. D2019-0558

1. The Parties

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

Respondent is Antonio Vernacchia, U.S.

2. The Domain Names and Registrar

The disputed domain names <bmwenet.com> and <bmwesys.com> are registered with 1&1 IONOS Inc.

(the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 13, 2019. On March 14, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On March 17, 2019, the Registrar transmitted by email to the Center its verification response confirming that 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 Respondent of the Complaint, and the proceedings commenced on March 28, 2019. In accordance with the Rules, paragraph 5, the due date for Response was April 17, 2019. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on April 18, 2019.

The Center appointed Dr. Beatrice Onica Jarka as the sole panelist in this matter on May 8, 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

Complainant is one of the most successful manufacturers of automobiles and motorcycles in the world. It owns the trademark, service mark, and trade name BMW. Under its BMW mark, Complainant 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. Complainant also uses and licenses its BMW mark on a wide variety of automobile and motorcycle parts and accessories and numerous collateral products.

Complainant holds the BMW mark in block letters. BMW has manufactured, marketed, and sold many millions of vehicles under the BMW mark. For example, in 2017, Complainant had manufactured 2,088,000 BMW automobiles. Complainants’ BMW products and components are manufactured at 30 sites in 14 countries on four continents, including in the U.S., and it has more than 129,000 employees worldwide.

Complainant has continuously used BMW as a trademark and service mark since 1917, and owns numerous registrations for the BMW mark and variations thereof in more than 140 countries around the world. The BMW mark enjoys unquestionable fame as a result of extensive and long use and advertising, and favorable public acceptance and recognition worldwide, becoming one of the most recognized brands in the world, and consistently being ranked in many top-100 lists for years.

Complainant 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 such as: <bmw.com> and <bmwgroup.com>, <bmwusa.com>.

The Complainant offers, and has offered for years, proprietary diagnostic systems (comprised of hardware and software) for maintenance, repair, servicing, and programming of BMW and MINI automobiles. BMW’s proprietary diagnostic systems are offered only to BMW’s authorized dealers and/or other permitted parties, such as independent qualified repair centers who pay for access to the BMW diagnostic software. These diagnostic tools include BMW’s diagnostic products offered under the BMW mark and additional marks and names including ISTA, ICOM, INPA, ICOM, ISPI, and, among others. BMW also uses proprietary programming and coding software under the name E-SYS for research and development purposes and provides E-SYS software to partners and suppliers involved in the development and supply of products and services to BMW under strict conditions of use. For its proprietary software, BMW data named PSdZData are necessary for operation of the software. BMW also uses the name “BMW ENET” for BMW cables that use Ethernet (abbreviated as ENET) interfaces, which is used as a standard for vehicle OBD (on-board diagnostic) systems.

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

Respondent is an individual with contact data in U.S. Respondent registered the disputed domain names: <bmwenet.com> and <bmwesys.com> on April 19, 2014 respectively on July 12, 2014.

5. Parties’ Contentions

A. Complainant

Complainant contends that:

- the disputed domain names are confusingly similar to Complainant’s BMW mark because each contains Complainant’s mark in its entirety.

- the confusing similarity of the disputed domain names is heightened because, in addition to the BMW mark, the disputed domain name <bmwesys.com> contains a second mark owned by BMW, E-SYS (in the form ESYS without the hyphen), and the disputed domain name <bmwenet.com> contains the term “enet” that is used in relation to BMW products.

- Respondent uses the disputed domain names to redirect to an eBay page offering “The Original BMW F-Chassis Coding Package”. This package includes an unauthorized, counterfeit “BMW ENET” cable, namely, “BMW OBD2 ENET Cable BOOTMOD3 F-Series Coding i3 i8 ESYS 3.32.1 OBD-II G30 G12” also described as “BMW ENET Cables.” Respondent describes the cable as a “7-foot BMW ENET Cable - handmade in our BMW Repair Facility in New Jersey, USA”. Complainant confirms through a test purchase that Respondent’s cable is not a genuine BMW product. Such registration and use of the disputed domain names to advertise/offer unauthorized, counterfeit products does not constitute a bona fide offering of goods or services nor a legitimate noncommercial or fair use under the UDRP, and alone constitutes sufficient grounds to find that Respondent has no rights or legitimate interests in the disputed domain names.

- Respondent’s product package includes also unauthorized, counterfeit versions of BMW’s diagnostic software, namely, “ESYS Software,” and unauthorized, counterfeit versions of BMW’s navigation software and FSC codes, namely, “Navigation Maps Update to 2019-1 Version” with “instructions on how to generate an FSC code to update your navigation maps data to the latest version”. Purchasers of Respondent’s counterfeit cable receive an email from Respondent with <bmwesys.com> and <bmwenet.com> download links for the advertised software. These links redirect to the “www.mega.nz” website where such programs are located. Such advertising/offering of unauthorized, counterfeit products unfairly competes with Complainant.

There can be no legitimate interest in the sale of counterfeits.

- 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 disputed domain names. In addition, Respondent is not a licensee of Complainant or otherwise authorized to use Complainant’s marks including its BMW, E-SYS, and ENET marks.

- Respondent’s registration and use of the disputed domain names constitute bad faith because Respondent has used the disputed domain names to intentionally attract, for commercial gain, Internet users by creating a likelihood of confusion with Complainant’s marks as to the source, sponsorship, affiliation, and/or endorsement of the disputed domain names, Respondent’s activities, and the unauthorized, counterfeit products/services he advertises/offers.

- Moreover Respondent’s registration and use of the disputed domain names constitute bad faith because Respondent disrupts Complainant’s business and unfairly competes with Complainant by using disputed domain names to advertise/offer unauthorized, counterfeit products that compete with Complainant’s offering of its own genuine products.

- Respondent’s registration of the disputed domain names constitutes a bad-faith pattern under Policy as shown by Respondent’s registration of two domain names containing Complainant’s BMW mark.

- Respondent registered the disputed domain names in bad faith with knowledge of Complainant’s prior rights in its BMW mark because, Respondent uses the disputed domain names to advertise/offer unauthorized, counterfeit BMW products, which represents bad faith registration and use.

B. Respondent

Respondent did not reply to Complainant’s contentions.

6. Discussion and Findings

A. Identical or Confusingly Similar

In order to establish the first element of the Policy, Complainant should show that the disputed domain name is identical or confusingly similar to a trademark in which Complainant holds rights.

Based on the assertions and evidence presented by Complainant, this Panel finds undisputable that Complainant holds rights in the BMW trademarks. Complainant has also proven that it uses proprietary programming and coding software under the name E-SYS for research and development purposes and also the name “BMW ENET” for BMW cables that use Ethernet (abbreviated as ENET) interfaces, which is used as a standard for vehicle OBD (on-board diagnostic) systems.

The disputed domain names contain each Complainant’s mark BMW in its entirety, which is clearly recognizable within the disputed domain name.

It is common UDRP practice that in cases where a domain name incorporates the entirety of a trademark the domain name will normally be considered confusingly similar to that mark for purposes of UDRP standing. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, (“WIPO Overview 3.0”), section 1.7.

The added terms “enet” and “esys” do not prevent a finding of confusing similarity. See WIPO Overview 3.0, section 1.8.

For all the reasons above, this Panel finds that the disputed domain names are confusingly similar to the BMW marks and that Complainant has established the first element of paragraph 4(a) of the Policy.

B. Rights or Legitimate Interests

In order to establish the second element of the Policy, Complainant has to show that Respondent lacks rights or legitimate interests in respect of the disputed domain name. If Complainant makes that showing, the burden of production shifts to the Respondent, according to WIPO Overview 3.0, section 2.1.

In these proceedings, Complainant contends that:

- registration and use of the disputed domain names to advertise/offer unauthorized, counterfeit products (“BMW ENET” cable or counterfeit versions of BMW’s diagnostic software, namely, “ESYS Software,” or FSC codes), does not constitute a bona fide offering of goods or services nor a legitimate noncommercial or fair use under the UDRP, and alone constitutes sufficient grounds to find that Respondent has no rights or legitimate interests in the disputed domain names.

- advertising/offering of unauthorized, counterfeit products unfairly competes with Complainant and there can be no rights or legitimate interests in the sale of counterfeits.

- 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 disputed domain names. In addition, Respondent is not a licensee of Complainant or otherwise authorized to use Complainant’s marks.

This Panel finds that circumstantial evidence can support a complainant’s credible claim of illegal respondent activity. See WIPO Overview 3.0, section 2.13. In any event, the Panel finds that the disputed domain names carry a risk of implied affiliation and therefore their composition impersonates or suggests sponsorship or endorsement by Complainant. See WIPO Overview, section 2.5.1.

This Panel is persuaded that the circumstances of the case and the actions of Respondent under the disputed domain names cannot constitute a bona fide offering of goods or services nor a legitimate noncommercial or fair use under the UDRP.

For the reasons above, this Panel finds that Complainant has made a prima facie showing that Respondent lacks rights or legitimate interests in respect of the disputed domain names and such showing has not been rebutted by Respondent, as it did not reply to Complainant’s contentions. Accordingly, the Panel finds that Complainant has established the second element of the Policy.

C. Registered and Used in Bad Faith

Complainant asserts different circumstances which the Panel considers relevant evidence for the bad faith of Respondent in registering and using the disputed domain name.

In this sense, Complainant asserts that:

- Respondent has used the disputed domain names to intentionally attract, for commercial gain, Internet users by creating a likelihood of confusion with Complainant’s marks as to the source, sponsorship, affiliation, and/or endorsement of the disputed domain names, Respondent’s activities, and the unauthorized, counterfeit products/services he advertises/offers.

- Respondent disrupts Complainant’s business and unfairly competes with Complainant by using disputed domain names to advertise/offer unauthorized, counterfeit products that compete with Complainant’s offering of its own genuine products. Respondent’s registration of the disputed domain names constitutes a bad-faith pattern under Policy as shown by Respondent’s registration of two domain names containing Complainant’s BMW mark.

- Respondent registered the disputed domain names in bad faith with knowledge of Complainant’s prior rights in its BMW mark.

Moreover, as previously noted the Panel finds that the disputed domain names carry a risk of implied affiliation. In this respect, the addition of the terms “enet”and “esys” in the disputed domain names increases the likelihood of confusion with Complainant’s BMW mark.

All these circumstances are in the opinion of this Panel sufficient to indicate that Respondent has registered and used the disputed domain names in bad faith and that Complainant succeeded in proving the third element 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, <bmwenet.com> and <bmwesys.com> be transferred to Complainant.

Dr. Beatrice Onica Jarka
Sole Panelist
Date: May 22, 2019