The Complainant is Bayerische Motoren Werke AG of Munich, Germany, represented by Kelly IP, LLP, United States of America.
The Respondent is Imron of Semarang, Indonesia.
The disputed domain name <bmw.country> is registered with Uniregistrar Corp (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 3, 2015. On August 4, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 4, 2015, the Registrar transmitted by email to the Center its verification response confirming that the Respondent was 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 August 12, 2015. In accordance with the Rules, paragraph 5, the due date for Response was September 1, 2015.
The Respondent sent an email communication in response to the Complaint on August 19, 2015, the contents of which are dealt with below.
The Center appointed Antony Gold as the sole panelist in this matter on September 15, 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.
The Complainant is a large, international manufacturer of automobiles and motorcycles. It has used the trademark and service mark BMW since 1917 and states that the BMW mark is now one of the most recognized brands in the world.
The Complainant has produced extensive evidence of its trade mark rights, including one of its earliest registrations in Germany, namely Registration No. 221388 for the mark BMW and Design filed on October 5, 1917 and issued on December 10,1917 for goods in International Classes 7, 8, 9, 11 and 12, including automobiles and related parts and accessories. Since that date, many more BMW trade marks have been registered in numerous jurisdictions. In addition to using the BMW trade mark for the sale of automobiles and motorcycles, the Complainant provides a wide range of ancillary services under the trade mark and also licenses the mark to a number of parties in the automotive industry. It has authorized dealers in more than 140 countries, including in Indonesia where the Respondent is located.
The Respondent registered the disputed domain name on January 19, 2015. The Complainant has adduced evidence in the form of a declaration from its Senior Legal Counsel that in January 2015, the disputed domain name automatically redirected to a third party website, unconnected with the automobile industry, which appeared to be dedicated to a fictitious person and that in February 2015, the disputed domain name pointed to a different URL which, in turn, redirected to other third party websites. The appearance of the third party websites to which the disputed domain name pointed in February 2015 is not entirely clear.
As at July 2015, the disputed domain name was being offered for sale on the domain-marketplace website “Flippa”, where it was described as a “premium” name which would “make all people remember about cars”. The Complainant has provided a screen print of the website to which the disputed domain name pointed as at July 2015. This comprised a holding page entitled “Hello World!” which invited postings from those visiting the website. On the left hand side of the holding page are the words “BMW COUNTRY, ALL BMW CARS HERE”.
The Complainant says that its trade mark portfolio of BMW, both as a word mark and incorporated into a Design, is very substantial and long-established. As mentioned above, its first BMW and Design mark was registered in 1917. The Complainant first registered BMW as a word mark in Germany as Registration No. 410579, filed in February 1929 and granted in November 1929. The Complainant says it spends a very significant sum on advertising and marketing in order to promote the BMW name and trade mark in connection with its products and related services and that it has promoted its products and services under the BMW mark on the Internet since early 1996.
The Complainant asserts that the disputed domain name is both identical and confusingly similar to its BMW trade marks. The disputed domain name is identical to its BMW mark, says the Complainant, because it comprises the Complainant’s mark in its entirety coupled with the generic top-level domain (“gTLD”) “.country”. The Complainant draws attention to UDRP decisions of previous panels which have said that, for the purpose of determining whether a complainant’s trade mark is identical or similar to the domain name in issue, it is appropriate to disregard the gTLD suffix.
In support of its contention that the disputed domain name is also confusingly similar to the Complainant’s BMW trade mark, the Complainant explains that it permits its authorized dealers to use its BMW trade names and domain names, most usually in conjunction with the dealer’s trade name and/or a geographic term. For this reason, the Complainant says that the capacity of the disputed domain name to cause confusion is particularly marked because the gTLD “.country” is viewed as a geographic and/or descriptive term. Accordingly, the Complainant asserts that the disputed domain name will be perceived by many Internet users as suggesting a central location for the Complainant’s online BMW content, organized on a country-by-country basis
The Complainant asserts that the Respondent has no rights or legitimate interests in the disputed domain name. It says that the registration and use of a domain name for the purpose of selling it does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use under the Policy. Moreover, it points to earlier decisions in which a respondent’s offer to sell a domain name has been held to establish a lack of legitimate interest or other right on the respondent’s part. Amongst other previous decisions, the Complainant refers to Bayerische Motoren Werke AG v. Lucjan Niemiec, WIPO Case No. D2003-0240, in which the panel found that the respondent had no legitimate interest in the domain name <bmwcars.info> because “the offer for sale of a domain name which is confusingly similar to a worldwide renown trademark as BMW cannot be considered in itself a use of the domain name in connection with a bona fide offering of goods and services”.
The Complainant makes a number of additional assertions about the Respondent’s lack of rights or legitimate interest, arising primarily from the malicious nature of certain websites to which it says the disputed domain name pointed in January and February 2015. For reasons which are explained below, it is not necessary to consider these arguments in detail.
Lastly, the Complainant asserts that the disputed domain name was registered and is being used in bad faith. Dealing first with bad faith registration, the Complainant says that the Respondent’s conduct falls within one of the non-exhaustive examples of bad faith registration and use set out at paragraph 4(b) of the Policy namely that he has registered the disputed domain name primarily to sell, rent or otherwise transfer it for valuable consideration in excess of his documented out-of-pocket costs. The Complainant refers to a number of decisions in support of this assertion including Bayerische Motoren Werke AG v. Private Registrations Aktien Gesellschaft, WIPO Case No. D2010-0898 in which it was held that the respondent’s offer to sell the domain name <bmwofoysterbay.com> constituted bad faith and Bayerische Motoren Werke AG v. Lucjan Niemiec, Supra, in which the respondent’s offer to sell the domain name <bmwcars.info> was also found to constitute bad faith. In the Niemiec decision the panel commented that “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>”.
The Complainant makes additional arguments in support of its assertions of bad faith registration and use by the Respondent. These include the contention that the uses to which the disputed domain name was put in January and February 2015 were such as to provide evidence that the Respondent’s conduct falls within that prescribed as bad faith use by paragraph 4(b)(iv) of the Policy namely that the Respondent has used the disputed domain name to intentionally attract, for commercial gain, Internet users by creating a likelihood of confusion with the Complainant’s BMW mark as to the source, sponsorship, affiliation, and/or endorsement of a web site associated with the disputed domain name.
The only response made by the Respondent to the Complaint is an email dated August 19, 2015, sent to the Center which reads “dear all, that was no problem if some one complain our domain BMW COUNTRY.for me. if they want to take offer this domain they can do it easly, just bought if for my 2000 usd..thank you..” (sic).
The Respondent’s email of August 19, 2015 does not contain the information envisaged by paragraph 5(c) of the Rules as that which should be incorporated in a formal response to the Complaint, in that it does not respond specifically to the statements and allegations contained in the Complaint nor does it include any and all bases by which the Respondent could argue that it was entitled to retain registration and use of the disputed domain name. This is material because paragraph 14(b) of the Rules provides that if a party, in the absence of exceptional circumstances, does not comply with a provision of, or requirement under, these Rules, the panel shall draw such inferences therefrom as it considers appropriate.
Paragraph 4(a) of the Policy requires that the Complainant prove each of the following three elements in order to succeed in its Complaint:
(i) the disputed domain name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests with respect to the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
In addition to the trade marks already cited, the Complainant has provided details of many other BMW trade marks it has registered, both in Germany and in the United States. These are sufficient to show that the Complainant has extensive and long-established trade mark rights in BMW.
As the Complainant has asserted, it is both usual and appropriate to disregard the applicable generic Top-Level Domain (“gTLD”) suffix (in this case, “.country”) for the purpose of making a comparison between the Complainant’s trade mark and the disputed domain name. Accordingly, when the “.country” suffix is disregarded, the disputed domain name is identical to a trade mark in which the Complainant has rights and the panel makes this finding. This requirement of paragraph 4(a) of the Policy having been satisfied, it is accordingly unnecessary to consider the Complainant’s additional argument that the disputed domain name is also confusingly similar to its BMW trade mark.
Paragraph 4(c) of the Policy provides examples whereby a respondent can demonstrate its rights or legitimate interests in a domain name. The Respondent has made no attempt to bring himself within any of the non-exhaustive instances in which a right or legitimate interest on his part might be found.
Specifically, the Respondent has not been making a legitimate noncommercial or fair use of the disputed domain name. Nor is there any evidence that the Respondent has been commonly known by the domain name. Lastly, there is no evidence that, before this dispute arose, the Respondent had been using or had made demonstrable preparations to use, the disputed domain name in connection with a bona fide offering of goods and services.
Indeed, as the Complainant has explained, the facts point the other way. The exact uses to which the disputed domain name had been put prior to it being offered for sale on the “Flippa” website are not entirely clear but none of them would likely fall within the category of a bona fide offering of goods and services. As and when the disputed domain name was offered for sale, the Respondent’s intention was clearly to profit unfairly from the Complainant’s trade marks by capitalizing on the enhanced value which he considered a domain name identical to the Complainant’s primary trade mark would have acquired. The Respondent’s intentions are evident from both the Respondent’s offer on the “Flippa” website which stated that “BMW.COUNTRY will make all people remember about cars…and you can sell it to the vendor or maybe you can also be partner and affiliate to sell their car” and the Respondent’s email which effectively offered to sell the disputed domain name to the Complainant for, seemingly, a sum of two thousand dollars.
The Panel accordingly finds that the failure of the Respondent to provide any evidence which might point to it having rights or a legitimate interest in the disputed domain name, coupled with the evidence provided as to his attempts to sell the disputed domain name on the “Flippa” website and his email response to the Center in August 2015 establish that the Respondent has no rights or legitimate interests in the disputed domain name. It is not therefore necessary to deal with the Complainant’s submissions concerning the alternative or additional grounds for making this finding.
Paragraph 4(b) of the Policy sets out four circumstances which evidence bad faith registration and use on the part of a respondent. The first of these, paragraph 4(b)(i), explains that bad faith will be found in circumstances which indicate that a respondent has registered or acquired a domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to a complainant who is the owner of the trademark or service mark, or to a competitor of that complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the domain name.
The Respondent’s conduct falls squarely within this example of bad faith registration and use. It is clear that the Respondent had the Complainant’s BMW trade mark in mind as at the date of registration of the disputed domain name and that he did not at any point have any intention to put the disputed domain name to a bona fide use. The Panel finds that the fame of the BMW trade mark is such that the Respondent cannot have registered the disputed domain name in ignorance of the Complainant’s trade mark rights; see, for example, Bayerische Motoren Werke AG v. Pix UK Limited, WIPO Case No. D2004-0125 in which the panel found that the respondent was undoubtedly aware of the complainant’s BMW mark which is “well known throughout the world”. Moreover, having regard to both the Respondent’s advertisement for sale of the disputed domain name on the “Flippa” website and his response to the Center in August 2015, the bad faith intent of the Respondent is not a matter on which it is necessary to rely on inference but is an issue on which there is direct evidence.
Having regard to these issues, the Panel finds that the disputed domain name was registered and used in bad faith. It is accordingly not necessary to deal with the Complainant’s additional submissions.
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 name <bmw.country> be transferred to the Complainant.
Antony Gold
Sole Panelist
Date: September 29, 2015