The Complainant is Bayerische Motoren Werke AG (BMW) of Munich, Germany, represented by Kelly IP, LLP, United States of America (“United States”).
The Respondent is Registration Private, Domains by Proxy, LLC of Scottsdale, Arizona, United States / Jake Neels, Automotive Dealer Solutions of Coralville, Iowa, United States.
The disputed domain names <bmwofnorthliberty.com>, <jungebmw.com>, <jungebmwford.com> and <jungefordbmw.com> are registered with GoDaddy.com, LLC (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 27, 2018. On July 27, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On July 27, 2018, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on August 3, 2018 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on August 6, 2018.
The Center verified that the Complaint together with 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 the Respondent of the Complaint, and the proceedings commenced on August 8, 2018. In accordance with the Rules, paragraph 5, the due date for Response was August 28, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 29, 2018.
The Center appointed Adam Taylor as the sole panelist in this matter on September 4, 2018. 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 the very well-known car manufacturer which trades under the name “BMW”. In 2016, its worldwide turnover exceeded EUR 96 billion.
The Complainant’s many registered trade marks for BMW include:
- German trade mark no. 410579, filed February 23, 1929, registered November 15, 1929, in classes 7 and 12.
- United States trade mark no. 611710, filed March 10, 1954, registered September 6, 1955, in class 12.
The Complainant has recently appointed Junge Automotive Group (“Junge”) as a new authorised car dealer in North Liberty, Iowa, United States. Junge proposes to trade under the name “BMW of North Liberty”.
The disputed domain name <jungebmw.com> was registered on May 14, 2018. The disputed domain names <bmwofnorthliberty.com>, <jungebmwford.com> and <jungefordbmw.com> were all registered on June 4, 2018.
The disputed domain names all resolve to holding pages bearing the message: “website coming soon!”.
A summary of the Complainant’s contentions is as follows:
The disputed domain names are confusingly similar to the Complainant’s mark, which they wholly incorporate. The additional terms are irrelevant to the analysis of confusing similarity.
The similarity is heightened because the disputed domain names mimic naming conventions commonly used by the Complainant and its dealers.
The Respondent lacks rights or legitimate interests in the disputed domain names.
The Respondent has not been commonly known by the disputed domain names.
The “coming soon” pages do not constitute a bona fide offering of goods or services.
The Respondent registered and used the disputed domain names in bad faith.
They constitute a bad faith pattern under paragraph 4(b)(ii) of the Policy.
The Respondent registered the disputed domain names opportunistically in bad faith to take advantage of the Complainant’s goodwill in its mark and of the clear and obvious connection with Junge, the Complainant’s new authorised dealer.
The Respondent is using the disputed domain names intentionally to attract Internet users by creating a likelihood of confusion with the Complainant’s famous mark. It is irrelevant whether or not the Respondent is profiting directly or indirectly from its use of the disputed domain names.
The Respondent’s use of the disputed domain names for “coming soon” pages is analogous to passive holding in bad faith.
The Respondent’s registration and use of the disputed domain names disrupts the Complainant’s business in accordance with paragraph 4(b)(iii) of the Policy, both by competing with the Complainant for Internet traffic and by interfering with the Complainant’s ability to control its trade mark.
There is no question that the Respondent registered the disputed domain names with knowledge of the Complainant’s famous mark.
The Respondent did not reply to the Complainant’s contentions.
The Complainant has established rights in the mark BMW by virtue of its registered trade marks as well as unregistered trade mark rights deriving from the extensive and worldwide use of that name.
Section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) makes clear that, where the relevant trade mark is recognisable within a disputed domain name, the addition of other terms, whether descriptive, geographical, pejorative, meaningless, or otherwise, would not prevent a finding of confusing similarity under the first element.
It makes no difference if the additional terms are third party trade marks, as these are also insufficient to avoid a finding of confusing similarity. See section 1.12 of WIPO Overview 3.0.
Here, the Complainant’s distinctive trade mark is readily recognisable within all four disputed domain names and, for reasons explained above, neither the addition of the geographic term “of North Liberty” nor of the third party trade marks JUNGE or FORD, prevent the disputed domain names from being treated as confusingly similar to the Complainant’s trade mark.
The Panel therefore finds that the Complainant has established the first element of paragraph 4(a) of the Policy.
As explained in section 2.1 of WIPO Overview 3.0, the consensus view is that, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If not, the complainant is deemed to have satisfied the second element.
Here, the Complainant has not licensed or otherwise authorised the Respondent to use its trade mark.
As to paragraph 4(c)(i) of the Policy, there is no evidence of >any use of the disputed domain name for a bona fide offering of goods or services, nor of any demonstrable preparations for such an offering. Nor is there any evidence that paragraph 4(c)(ii) or (iii) of the Policy apply in the circumstances of this case.
The Panel finds that the Complainant has established a prima facie case of lack of rights or legitimate interests and there is no rebuttal by the Respondent.
The Panel concludes that the Respondent has no rights or legitimate interests in the disputed domain name and that the Complainant has therefore established the second element of paragraph 4(a) of the Policy.
In the Panel’s view, it is appropriate to consider this case in the context of the principles of “passive holding”.
Section 3.3 of the WIPO Overview 3.0 explains that, from the inception of the UDRP, panels have found that the non-use of a domain name (including a “coming soon” page) would not prevent a finding of bad faith under the doctrine of passive holding. “While panels will look at the totality of the circumstances in each case, factors that have been considered relevant include: (i) the degree of distinctiveness or reputation of the complainant’s mark, (ii) the failure of the respondent to submit a response or to provide any evidence of actual or contemplated good-faith use, (iii) the respondent’s concealing its identity or use of false contact details (noted to be in breach of its registration agreement), and (iv) the implausibility of any good faith use to which the domain name may be put.”
In this case, the Panel concludes that the following cumulative circumstances are indicative of passive holding in bad faith:
1. the distinctive and famous nature of the Complainant’s trade mark;
2. the fact that the disputed domain names reflect the Complainant’s typical trade name and domain name conventions for its authorised dealers, e.g., “[name of dealer] of [geographic location]” and have clearly been selected to take unfair advantage of the Complainant’s recent appointment of its new authorised dealer, Junge;
3. the failure of the Respondent to respond or provide evidence of actual or contemplated good-faith use; and
4. the implausibility of any good faith use to which the disputed domain names may be put.
The Panel therefore finds that the Complainant has established the third element of paragraph 4(a) of the Policy.
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 <bmwofnorthliberty.com>, <jungebmw.com> be transferred to the Complainant and, as requested by the Complainant, that the disputed domain names <jungebmwford.com> and <jungefordbmw.com> be cancelled.
Adam Taylor
Sole Panelist
Date: September 17, 2018