The Complainant is Bayerische Motoren Werke AG of Munich, Germany, represented by Kelly IP, LLP, United States of America.
The Respondent is G V/STOP2SHOP of Chipley, Alabama, United States of America; Carl Richardson of Orlando, Florida, United States of America; Bruce Wolf of Fresno, California, United States of America; Patrick O’Reilly of Anaheim, California, United States of America.
The disputed domain names <bmwsandiego.com>, <mountainviewbmw.com>, <townbmw.com> and <westmontbmw.com> (the “Disputed Domain Names”) are registered with eNom (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 11, 2015. On June 12, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Names. On June 15, 2015, the Registrar 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 June 22, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was July 12, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 13, 2015.
The Center appointed Michael D. Cover as the sole panelist in this matter on July 17, 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 Center notified the parties on August 17, 2015 of its decision to extend the time for the Decision of the Panel to August 25, 2015.
The Complainant is a corporation organized under the laws of the Federal Republic of Germany, with a principal place of business in Munich, Germany. The Complainant is one of the largest manufacturers of automobiles and motorcycles in the world. The Complainant sells and distributes a range of automobiles and motorcycles and also provides services, including maintenance and repair services and financing and leasing and insurance services.
The Complainant owns the trademark BMW. This trademark has been in use since 1917. The Complainant is the proprietor of numerous registrations throughout the world for its trademark BMW, including No. 221388 for the mark BMW and design registered in Germany as of October 5, 1917 and No. 410579 also in Germany for BMW in block capitals registered as of February 23, 1929. The Complainant is also the proprietor of numerous trademark registrations in the United States.
The Complainant has manufactured, marketed and sold millions of vehicles under its trademark BMW. The Complainant’s products are manufactured at 30 sites in 14 countries worldwide. Sales of the Complainant’s products under its BMW trademark were in excess of Euro 80 billion in 2013. The Complainant spends substantial sums on advertising and promoting its products and services worldwide.
The Complainant is also the owner of various domain names, including <bmw.com>, <bmwgroup.com> and <bmwusa.com> and operates websites that resolve from such domain names.
The Complainant has approximately 3,250 authorized dealers throughout the world. The Complainant has for many years permitted its authorized dealers to use trade names comprised of the Complainant’s BMW trademark and this use frequently takes the form of combining the Complainant’s trademark BMW with a geographic term identifying the dealer’s geographic location and/or the dealer name. This use extends to the relevant authorized dealers using <bmwofsandiego.com>, <bmwofmountainview.com>, <laurelbmw.com> and <townebmw.com>.
The Disputed Domain Names were registered between 2005 and 2008. The Disputed Domain Names link to commercial pay-per-click (“PPC”) websites that feature automobile companies and brands that compete with the Complainant and also to links that actually refer to the Complainant directly or indirectly.
The Complainant submits that the Disputed Domain Names are confusingly similar to its famous trademark BMW in which it has rights. It states that the Disputed Domain Names contain the Complainant’s trademark in its entirety and submits that previous UDRP panels have found that this alone is sufficient to establish confusing similarity.
The Complainant goes on to submit that the addition of the terms “sandiego”, “mountainview”, “westmont” and “town” heightens the confusing similarity of the Disputed Domain Names with the Complainant’s trademark BMW, because of the confusing reference to the Complainant’s authorized dealers in the relevant locations.
The Complainant submits the Respondent has no rights or legitimate interests in the Disputed Domain Names. It states that the Respondent’s registration and use of the Disputed Domain Names for commercial PPC websites does not constitute a bona fide offering of goods or services or a legitimate or fair use under the Policy. The Complainant also states that there is no evidence that the Respondent is or has been commonly known by the Disputed Domain Names. This is made even more unlikely, according to the Complainant, because of the fame of the Complainant’s trademark BMW.
The Complainant submits that the Respondent’s registration and use of the Disputed Domain Names squarely meets the grounds of bad faith set out in the Policy. It notes that the Respondent uses the Disputed Domain Names intentionally to attract for commercial gain Internet users by creating a likelihood of confusion with the Complainant’s famous trademark BMW. It also submits that the Respondent’s registration and use of the Disputed Domain Names unfairly disrupts the Complainant’s business by using the Disputed Domain Names for websites displaying the sponsored links already referred to in this Decision.
Lastly, the Complainant submits that it is inconceivable that the Respondent was unaware of the Complainant’s famous trademark BMW when it registered the Disputed Domain Names, because the Complainant’s registered trademark BMW had been registered and in such extensive use long before the registration of the Disputed Domain Names.
The Respondent did not reply to the Complainant’s contentions.
According to paragraph 4(a) of the Policy, the Complainant is required to demonstrate, on the balance of probabilities, that the Disputed Domain Names are identical or confusingly similar to the Complainant’s trademark in which it has rights, that the Respondent has no rights or legitimate interests in the Disputed Domain Names and that the Disputed Domain Names have been registered and are being used in bad faith.
The Complainant has named Respondent as G V / STOP2SHOP, Carl Richardson, Bruce Wolf, Patrick O`Reilly, and has filed a single Complaint against the four Disputed Domain Names and multiple registrants.
Paragraph 3(c) of the Rules provides that a complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name holder. The Complainant contends inter alia that the multiple registrants are one and the same because the Disputed Domain Names are hosted on the same servers, and used for virtually identical websites. In the absence of a rebuttal from the Respondent, the Panel is prepared to infer that the Disputed Domain Names are under common control and therefore are ‘registered to the same domain name holder’.
The Panel accepts that the Disputed Domain Names are confusingly similar to the Complainant’s trademark BMW in which it has rights. The Complainant has registered rights in its trademark and the Panel also finds on the evidence before it on the balance of probabilities that the Complainant has common law rights in its trademark, as a result of the extensive use that it has made of its trademark.
The Panel accepts the Complainant’s submission regarding the incorporation in its entirety of the Complainant’s trademark BMW into each of the Disputed Domain Names and also accepts the Complainant’s submission with regard to the incorporation of the otherwise descriptive and non-distinctive words “sandiego”, “mountainview”, “westmont” and “town” and the increased likelihood of confusion in relation to the names of the Complainant’s authorized dealers. The Panel accordingly finds that the Disputed Domain Names are confusingly similar to the Complainant’s trademark BMW.
The Panel accepts that the Respondent has no rights or legitimate interests in the Disputed Domain Names. There is no evidence that the Respondent has been authorized to use the Disputed Domain Names by the Complainant.
There is also no evidence to suggest that the Respondent has, before notice of the dispute, made demonstrable preparations to use the Disputed Domain Names in connection with a bona fide offering of goods or services. There is also no evidence to suggest that the Respondent has been commonly known by the Disputed Domain Names or that the Respondent has been making legitimate noncommercial or fair use of the Disputed Domain Names without intent for commercial gain misleadingly to divert consumers or tarnish the Complainant’s trademark. The evidence before the Panel points strongly in the other direction, with the links already referenced in this Decision.
The Panel accordingly finds that the Respondent has no rights or legitimate interests in the Disputed Domain Names.
The Panel also accepts that the Respondent has registered and is using the Disputed Domain Names in bad faith. The Complainant’s trademark is widely known and has been registered and in extensive use for many years. It is a reasonable inference for the Panel to make that the Respondent was not unaware of the Complainant’s trademark when registering the Disputed Domain Names. The Panel finds that, by using the Disputed Domain Names in the way set out in this Decision, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the Respondent’s websites by creating a likelihood of confusion with the Complainant’s trademark BMW as to the source, sponsorship or affiliation of those websites, which apparently offer goods and services which compete with those of the Complainant.
The Panel accordingly finds that the Disputed Domain Names have been registered and are being used in bad faith.
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, <bmwsandiego.com>, <mountainviewbmw.com>, <townbmw.com> and <westmontbmw.com> be transferred to the Complainant.
Michael D. Cover
Sole Panelist
Date: August 25, 2015