WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Bayerische Motoren Werke AG v. Partinbank

Case No: D2002-0892

The Complainant is Bayerische Motoren Werke AG, of Munich, Germany, represented by Aimee Gessner, Trademark’s Department, Bayerische Motoren Werke AG, Germany.

The Respondent is Adam Opel, an individual belonging to the unidentifiable business organization Partinbank, with address Sov, Moscow, 246000, Russian Federation.

The disputed domain name <bmwshop.biz> is registered with Register.com, Inc., New York, USA.

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on September 25, 2002. On September 25, 2002, the Center transmitted by email to Register.com, Inc., a request for registrar verification in connection with the domain name at issue. On September 25, 2002, Register.com, Inc. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. The Center verified that the Complaint together with the amendment to the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the "Policy"), 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"). On September 27, 2002, the Complainant filed an Amendment of Complaint, basically aiming at providing additional information on the Respondent, his likely real name and identity.

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 October 3, 2002. In accordance with the Rules, paragraph 5(a), the due date for Response was October 23, 2002. The Respondent did not submit any Response. Accordingly, the Center notified the Respondent’s default on October 25, 2002.

The Center appointed Michael A.R. Bernasconi as the sole Panelist in this matter on October 30, 2002. 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 in this administrative proceeding – Bayerische Motoren Werke AG – is more commonly known as BMW AG. The Complainant carries on business in the manufacture and distribution of motor vehicles. The BMW trademarks ("BMW" word and "BMW and design") have been in use in Germany since 1917. The earliest BMW and design trademark registration in Germany is No. 221,388, registered December 10, 1917, and valid until October 31, 2007. The earliest BMW word trademark registration in Germany is No. 410,579, registered November 15, 1929, and valid until February 28, 2009.

The Complainant is also the registered owner of BMW trademarks in over 120 countries worldwide, including the Russian Federation, covering – in addition to motor vehicles and other goods listed in the registration above – various accessories and merchandise, such as clothing, watches, sunglasses and leather goods, as well as services such as the repair and maintenance of motor vehicles, financial leasing of motor vehicles, and participation and sponsorship of sporting events.

In the Russian Federation, the country of residence of the respondent, the Complainant is the owner of BMW trademarks according to the following trademark registrations:

BMW 663925
BMW 454918
BMW & Design 451718
BMW & Design 673219

The Respondent has never been entitled to use any BMW trademarks. Respondent's use of BMW trademarks is neither connected to, sponsored or authorized by, nor within the control of the Complainant.

The Complainant first became aware of the Respondent's registration when the Respondent sent an email to the Complainant on April 29, 2002, in which the Respondent stated: "I want to sell you new domain name <bmwshop.biz>. Now http://bmwshop.biz forward to bmwshop.com."

The Complainant replied to the Respondent's email with an email dated July 4, 2002, advising the Respondent that the unauthorized use of the BMW trademark in connection with the domain name at issue violated its trademark rights. In its email, the Complainant requested that the Respondent discontinues forever use or reference to any BMW trademark and transfers the domain to the Complainant.

In its reply dated July 5, 2002, the Respondent mentioned that it was having financial problems and was willing to sell and transfer the domain name at issue.

On July 11, 2002, the Complainant replied and offered the Respondent EUR100 for a transfer, as reimbursement for the Respondent's registration costs. A reminder was sent by the Complainant on August 1, 2002, upon which on the same date the Respondent refused the offer of the Complainant, stating that the domain name was now being used for an art project in which the letters BMW were intended to stand for "Buy My Work."

A check of the website "Buy My Work" on September 20, 2002, showed that the website was under construction. An informal check of the website made by the Sole Panelist on November 12, 2002, showed no progress in the website construction.

The Complainant contends that the domain name is identical or confusingly similar to the trademark "BMW" in which the Complainant has rights. In addition to its trademark use of the word "BMW", the Complainant has registered and uses the domain names <bmwshop.com> and <bmwshop.co.uk>.

The Complainant contends that the Respondent has no rights or legitimate interests in respect of the domain name, as the Respondent has never been entitled to use any BMW trademarks (the Respondent is not a licensee of the Complainant's trademark and has not been authorized in any way to use the same). The Respondent has made no other legitimate non-commercial or fair use of the domain name.

The Complainant further contends that the domain name was registered and is being used in bad faith: The domain name at issue was originally connected to a website that featured various domain names, including <bmwshop.biz>, under the offer "These domains are for sale." The Respondent has refused an offer of the Complainant of EUR100.-- as a reasonable reimbursement of the Respondent's registration costs. Furthermore, the Complainant contends that the Respondent's website does not contain any information that is specific to the Complainant's products or services and is being used nearly to attract Internet users searching for information regarding BMW products on the Internet. Moreover, the Complainant contends that the contact details given by the Respondent contain false information (using the name Adam Opel, a reference to the company Adam Opel AG whose trademarks have also been misused by the Respondent in domain names he has offered for sale), which indicates bad faith. The correspondence with the Respondent shows that the actual person behind the false identity "Adam Opel" and behind the organization "Partinbank" is an individual named Alex Partin.

Finally, the Complainant contends that Respondent's use of the domain name <bmwshop.biz> is also causing great damage to BMW in that it is diluting the BMW marks by tarnishment in linking the marks with unsavory and degrading material.

The Respondent did not reply to the Complainant’s contentions. Accordingly, and based on Paragraph 14(a) of the Rules, the Panel shall draw such inferences from this default of Respondent as it considers appropriate.

According to paragraph 4(a) of the Policy, the Complainant must prove that:

(i) The domain name registered by a Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

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

(ii) the domain name has been registered and is being used in bad faith.

It is undisputed that the Complainant's company name is "Bayerische Motoren Werke AG", more commonly referred to as "BMW AG" or even simply "BMW." Further it is undisputed that the Complainant is the owner of "BMW" trademarks.

In the view of the Sole Panelist, the disputed domain name is substantially identical and confusingly similar to the trademark "BMW". The addition of the generic word "shop" does not make the predominant element "BMW" less distinctive and leads consumers to reasonably expect under this domain name a website offering official BMW products. Given the fact that the Complainant has registered and uses the domain names <bmwshop.com> and <bmwshop.co.uk> the likelihood of confusion with respect to the Respondent’s use of <bmwshop.biz> becomes even bigger.

Furthermore, the ending ".biz" is a generic top level domain, which is not sufficient to render a domain name dissimilar or to prevent consumer confusion.

Being that the domain name is also substantially identical and confusingly similar to the business name under which the Complainant is commonly referred to, it is highly probable that the disputed domain name would be associated in the public's mind with the Complainant and its trademarks.

The Complainant has therefore succeeded in providing that a risk of confusion is very likely. The first criterion, as per paragraph 4(a) of the Policy, is established.

It is undisputed that Complainant has not authorized Respondent to use Complainant's trademarks nor to seek the registration of a domain name incorporating said trademarks.

Moreover, the Respondent has tried to sell the domain name at issue.

The website "Buy My Work Shop" was only set up after the Respondent realized that the Complainant was not willing to transfer the domain for a higher price than for the sum of EUR100.-- offered and had threatened legal action. Consequently, the site can be deemed a mere bogus site with no other purpose than to serve as the Respondent's attempt to avoid liability under a civil or under this administrative Panel proceedings.

Under these circumstances, the Panel concludes that the Complainant has established that the Respondent has no rights or legitimate interests with respect to the disputed domain name.

The second requirement of paragraph 4(a) of the Policy is therefore satisfied.

On the third element of paragraph 4(a) of the Policy, i.e. the issue of a bad faith registration, it is undisputed that the Respondent knew of the Complainant, its products and its trademarks, prior to registering the disputed domain name. The BMW trademarks have become unique and are worldwide identified by the public solely with the Complainant and its products and services. Accordingly, the Complainant enjoys an exceedingly valuable reputation and goodwill throughout the world.

As a matter of fact, according to paragraph 4(b) of the Policy, for the purposes of the third element of paragraph 4(a), circumstances indicating that a registrant has registered a domain name primarily for the purpose of selling, renting, or otherwise transferring the domain 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 documented out-of-pocket costs directly related to the domain name, if found by a Panel to be present, shall be evidence of the registration and use of the domain name in bad faith.

In the case at hand it is undisputed that the domain name was offered for sale and that the Respondent refused an offer of the Complainant to cover the registration costs paid by the Respondent.

Under these circumstances, and taking into consideration the fact that the Respondent has not provided any evidence whatsoever of any actual or contemplated legitimate, good faith use by himself of the domain name, the Panel considers that the Respondent has registered and used the domain name in bad faith.

Thus, the third requirement of paragraph 4(a) of the Policy is satisfied.

Therefore, and in consideration of the Complainant’s compliance with the formal requirements for this domain name dispute proceeding, of Respondent’s default in submitting a Response, to the factual evidence and legal contentions that were submitted, to the confirmation of the presence of each of the elements contemplated in Paragraph 4(a)(i)(ii), and (iii) of the Policy, and in accordance with the Policy, the Rules and other applicable rules and principles of law, as directed by paragraphs 14(a) and (b) and 15(a) of the Rules, it is found:

(1) that the disputed Domain Name is confusingly similar to the Complainant’s trademarks and company name;

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

(3) that the Domain Name has been registered and is being used in bad faith by the Respondent.

Accordingly, with specific reference to Paragraph 4(i) of the Policy and Paragraph 15 of the Rules, the Administrative Panel directs that the disputed Domain Name <bmwshop.biz> shall be transferred to Complainant.