The Complainant is Bayerische Motoren Werke AG of Munich, Germany, represented by Finnegan, Henderson, Farabow, Garrett & Dunner, LLP, United States of America.
The Respondent is Maxim Ilin of Saint-Petersburg, Russian Federation; Domains By Proxy, LLC of Scottsdale, Arizona, United States of America.
The disputed domain name <bmwetk.com> is registered with GoDaddy.com, LLC.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 20, 2012. On July 23, 2012, the Center transmitted by email to GoDaddy.com, LLC. a request for registrar verification in connection with the disputed domain name. On July 24, 2012, GoDaddy.com, LLC. transmitted by email to the Center its verification response confirming that the 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on July 25, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was August 14, 2012. The Respondent sent an email communication to the Center on July 25, 2012. Accordingly, the Center notified the parties of the Proceeding Update on August 15, 2012.
The Center appointed Martine Dehaut as the sole panelist in this matter on August 21, 2012. 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, the German company Bayerische Motoren Werke AG (BMW), is one of the world’s most prestigious car and motorcycles manufacturer. It produces yearly over a million cars sold under the main brand BMW. This trademark is ranked among the most notorious ones (ranked 15 in Interbrand’s annual ranking “Top 100 brands”). As mentioned by the panel in Bayerische Motoren Werke AG v. RC, WIPO Case No. D2012-0124, “the trademark BMW is one of a small class of international trade marks that is immediately recognizable and that enjoys the strongest of reputations”.
The Complainant’s products and related services are promoted in particular through the Internet, since 1996. The Complainant operates the domain name <bmw.com> and a series of declinations such as <bmwfilms.com>.
BMW publishes a catalogue titled “BMW ETK”, which contains references to the spare parts of its vehicles and is intended for its network of authorized dealers. “ETK” stands as the abbreviation of “Ersatzteil-Katalog”, which means “parts catalogue” in German.
The trademark BMW is protected in more than 140 countries. The first registration of this trademark dates back to 1917 in Germany. For the purpose of this dispute, it is sufficient to mention the existence of the International trademark no. 673 219 issued in 1997 and covering in particular goods of classes 12 (vehicles) and 16 (printed matter).
No information is available concerning the Respondent, Maxim Ilin, and his activities.
The disputed domain name, <bmwetk.com>, was registered on June 30, 2011. As evidenced by the Complainant, the disputed domain name hosts a webpage that prominently displays the BMW trademark and logo, and features extracts of BMW’s spare parts catalogue. It also displays a number of sponsored-link advertisements which direct users to the website of competitors (Acura, Chevrolet, Mercedes-Benz, in particular).
The Complainant sent a cease and desist letter to the Respondent, through its legal agent in Russia, which was returned as undeliverable.
The following are the most significant arguments put forwards by the Complainant, for each of the three criteria provided for by the Policy.
First, the Complainant alleges that the disputed domain name <bmwetk.com> is confusingly similar to the Complainant’s famous and federally registered BMW mark because it is comprised of the Complainant’s mark in its entirety with the letters “e”, “t” and “k”, which can be viewed either as random letters or as an abbreviation for the term “Ersatzteil Katalog”, and the non –distinguishing gTLD “.com”.
Second, the Complainant argues that the Respondent has no rights or legitimate interests in the disputed domain name, for the following reasons: the respondent is using the disputed domain name for a commercial pay-per-click website which features adverts to websites of the Complainant’s competitor’s. Besides, the extensive and prominent use of the Complainant’s famous logo, and the Complainant’s spare parts catalog, constitutes passing off. Finally, the Respondent is not known by the disputed domain name.
Third, the Complainant alleges that the Respondent has registered and used the disputed domain name to intentionally attract, for commercial gain, Internet users by creating a likelihood of confusion with the Complainant’s famous BMW marks as to the source, sponsorship, affiliation and/or endorsement of the Respondent’s website. This is all the more so here as the Respondent is using prominently the Complainant’s trademark and logo, and is reproducing extracts of its spare parts catalog. The Complainant also contends that the Respondent unfairly disrupts the Complainant’s business by using the disputed domain name for a website displaying sponsored-link advertisements for websites offering directly competing products and services.
The Respondent sent a letter in response to the Complaint, which mentions in particular the following:
“Now I don’t have BMW logo or some other ‘design features’ which looks like on BMW site (…). On my website you can read: 2012, BMW Teilekatalog. The contents of the BMW parts and accessories catalog provided for acquaintance purposes only. We are not responsible for any data inconsistency and possible inconvenience caused. Contact your local parts supplier to get precise information. This is not an official website”. “I am not a (lawyer) and I really do not understand what I should now (be) doing. I just have a website with car parts catalogue, like thousand other same websites with car parts catalogue”.
In accordance with paragraph 4(a) of the Policy, the Complainant must prove that the following three criteria are met:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights (paragraph 4(a)(i)); and
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name (paragraph 4(a)(ii)); and
(iii) the disputed domain name has been registered and is being used in bad faith (paragraph 4(a)(iii)).
Each of these elements will be reviewed separately in the following developments:
This Panel must determine whether the disputed domain name <bmwetk.com> is confusingly similar to the BMW trademarks, independently of the products or services for which they are registered and used.
The disputed domain name consists in the combination of the trademark BMW, in attack position, followed by the initials “ETK”. The top level domain “.com” does not affect the test of confusing similarity between the Complainant’s trademark and the disputed domain name.
In accordance with the case law of the UDRP, a domain name that wholly incorporates a complainant’s trademark may be sufficient for a finding of confusing similarity. This is clearly so here, as the initials “ETK” stand as an abbreviation for the non distinctive German expression “Ersatzteil Katalog”, which literally means “parts catalog”. This confusing similarity is implicitly acknowledged by the Respondent, who actually mentions that the disputed domain name refers to a catalog of BMW spare parts.
As a result, the first element of the Policy is met.
Paragraph 4(c) of the Policy sets out a number of circumstances which, without limitation, may be effective for a respondent to demonstrate that it has rights to, or legitimate interests in, a domain name. These are:
(i) Before any notice to [the respondent] of the dispute, use by [the respondent] 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) Where [the respondent] (as an individual, business, or other organization) [has] been commonly known by the domain name, even if [the respondent has] acquired no trademark or service mark rights; or
(iii) Where [the respondent is] making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.
The consensus view of UDRP panels on the onus of proof under paragraph 4(a)(ii) of the Policy is that “[…] a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, the burden of production shifts to the respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name. If a respondent fails to come forward with such appropriate allegations or evidence, a complainant is generally deemed to have satisfied paragraph 4(a)(ii) of the UDRP.” See paragraph 2.1, WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”).
The present matter raises the issue of whether an unauthorized dealer of spare parts has a legitimate interest to use a manufacturer’s trademark with the addition of descriptive elements as domain name. Whether such use amounts to a bona fide offering of goods in the sense of (i) above has given rise to numerous disputes, including in the field of spare parts of vehicles.
Currently, the consensus view of panelists in this field derives from the Oki Data doctrine (Oki Data Americas Inc. v. ASD, Inc., WIPO Case No. D2001-0903), which is accurately summarized, for example, by the panel in Volvo Trademark Holding AB v. Auto Shivuk, WIPO Case No. D2005-0447, as follows: “the use of a manufacturer’s trademark as a domain name by an unauthorized dealer or reseller is only the be regarded as a bona fide offering of goods or services within the meaning of paragraph 4(c)(iii) of the Policy if the following conditions are satisfied:
- the respondent must actually be offering the goods or services at issue;
- the respondent must use the site to sell only the trademarked goods; otherwise, it could be using the trademark to bait Internet users and then switch them to other goods;
- the site must accurately disclose the registrant’s relationship with the trademark owner; it may not, for example, falsely suggest that it is the trademark owner, or that the website is the official site if, in fact, it is only one of many sales agents;
- the respondent must not try to corner the market in all domain names, thus depriving the trademark owner of reflecting its own mark in a domain name”.
As can be inferred from the printouts annexed to the Complaint, the web page of the Respondent, as used before the dispute, does not satisfy the Oki data tests. This is so for the following reasons:
- the Respondent does not actually offer the spare parts displayed on the website. Actually, in his short response, the Respondent states that the BMW ETK catalog is displayed for information purposes;
- The website features sponsored links to competitors’ web pages;
- The website does not disclose in any way the relationship between the trademark holder and the Respondent. Actually, the web site is really confusing at it has the appearance of an official BMW web site: this is so because of the prominent reproduction of the trademark, its famous logo and its spare part catalogs. It is solely as a result of the filing of the Complaint that the Respondent modified its website with the addition of a disclaimer, as is indicated in his response. Disclaimer which this Panel finds, by all means, is far from being sufficient as it is reproduced in small characters at the bottom of the website.
As a result of these findings, the second element of the Policy is met.
Paragraph 4(b) of the Policy lists a number of circumstances which, without limitation, are deemed to be evidence of the registration and use of a domain name in bad faith. These are:
(i) circumstances indicating that [a respondent has] registered or acquired a domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name to the complainant or to a competitor of the complainant, for valuable consideration in excess of [the respondent’s] documented out-of-pocket costs directly related to the domain name; or
(ii) [the respondent has] registered the domain name in order to prevent the complainant from reflecting the complainant’s trademark or service mark in a corresponding domain name, provided that [the respondent has] engaged in a pattern of such conduct; or
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, [the respondent has] intentionally attempted to attract, for commercial gain, Internet users to [the respondent’s] website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of [the respondent’s] website or location or of a product or service on [the respondent’s] website or location.
In the present matter it is undisputable that the Respondent has registered and used the disputed domain name <bmwetk.com> in order to take advantage of the outstanding reputation of the BMW mark, to create a likelihood of confusion and for commercial gain.
The Respondent has fully reproduced copyrighted material, and given its website the appearance of an official BMW site, thus creating a likelihood of confusion. The Panel notes that the reproduction of the catalog is, per se, a reprehensible act which may qualify as copyright infringement in accordance with relevant applicable law.
Further, the Respondent’s website is displaying sponsored links to competitors’ web pages, such as Chevrolet or Mercedes-Benz. This practice undoubtly disrupts the business of the Complainant.
This clearly amounts to bad faith registration and use in accordance with the Policy. Accordingly, the third criteria set out in paragraph 4(a) of the Policy is satisfied.
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 <bmwetk.com> be transferred to the Complainant.
Martine Dehaut
Sole Panelist
Dated: September 11, 2012