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 Alice Collier of Michigan, United States, Ye Genrong of Jinhua, Zhejiang, China, Azura Abendroth of Brandenburg, Germany, Wang Liqun of Xinyu, Jiangxi, China (collectively the "Respondent").
The disputed domain names <bmwmotorrad.net> and <bmw-motorrad.org> are registered with 1API GmbH. The disputed domain name <bmw-motorrad.me> is registered with eNom. The disputed domain name <bmwmotorrad.me> is registered with Dynadot, LLC (collectively the "Registrars").
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on October 6, 2015. On October 7, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On October 7, 2015, Dynadot LLC and eNom transmitted by email to the Center their verification responses confirming that the Respondent is listed as the registrant and providing the contact details. On October 9, 2015, 1API GmbH 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on October 14, 2015. In accordance with the Rules, paragraph 5, the due date for Response was November 3, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on November 4, 2015.
The Center appointed Andrew F. Christie as the sole panelist in this matter on November 12, 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, a German corporation, is one of the world's leading manufacturers of motorcycles and automobiles, with worldwide sales in 2013 in excess of 80 billion EUR. It is the owner of numerous registrations in various countries, including Germany and the United States, for the trademark BMW and for the trademark BMW MOTORRAD, the earliest of which date from December 10, 1917 and May 30, 2005, respectively. "Motorrad" is the German term for motorcycle. Under these trademarks the Complainant manufactures, sells, and distributes an array of motorcycles and automobiles. It also provides numerous services including maintenance and repair services, as well as consumer and dealer financing, leasing, insurance, and warranty services. The Complainant uses and licenses its BMW name and trademark on a wide variety of motorcycle and automobile parts and accessories and numerous collateral products. It has approximately 3,250 authorized dealers in more than 140 countries, including many in the United States and China. Since 1996 it has extensively promoted its products and services on the Internet under the BMW trademark, and for years has used its BMW MOTORRAD trademark in connection with its network of websites dedicated to advertising and promoting its motorcycles and related products and services.
According to the WhoIs records, the registrants of the disputed domain names <bmwmotorrad.net>, <bmw-motorrad.org>, <bmw-motorrad.me> and <bmwmotorrad.me> are, respectively, Ye Genrong, Azura Abendroth, Wang Liqun and Alice Collier. The disputed domain names were registered between January 2, 2014 and August 12, 2015. The Complainant has provided screenshots showing that they resolve to websites featuring sponsored-link advertisements for various third-party commercial websites including websites advertising competing motorcycle-related products and services. The disputed domain names are also offered for sale on the websites to which they resolve and on the domain-marketplace website Sedo.
The Complainant contends that this single Complaint can be brought against the four registrants of the disputed domain names because they are either one and the same entity or acting in concert, as demonstrated by: (i) interlinking contact information on WhoIs records for the disputed domain names; (ii) numerous prior adverse domain name decisions against the four registrants; and (iii) the identical registration and use of the disputed domain names.
The Complainant contends that the disputed domain names are identical and confusingly similar to its registered BMW MOTORRAD trademark because each contains the mark in its entirety. The presence of hyphens and the Top-Level Domain ("TLD") identifiers are irrelevant to a confusing similarity analysis. The Complainant also contends that the disputed domain names are confusingly similar to its registered BMW trademark because each contains the mark in its entirety and the term "motorrad". This heightens the confusing similarity of the disputed domain names to the Complainant's trademark because it has offered "motorrad", or motorcycles, under its BMW mark for many years and has operated for many years a network of websites under domain names in various country-code TLDs ("ccTLDs") consisting of the string "bmw-motorrad". Internet users encountering the disputed domain names are thus likely to believe that the Complainant owns, endorses, or sponsors them and their associated websites.
The Complainant contends that the Respondent has no rights or legitimate interests in the disputed domain names because: (i) the Respondent's use of them for pay-per click websites and the offering of them for sale does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use under the UDRP; (ii) the Respondent's offer to sell them constitutes an independent ground for lack of legitimate interest under prior UDRP decisions; and (iii) the Respondent is not and has not been commonly known by the disputed domain names, and it is not a licensee of the Complainant or otherwise authorized to use the Complainant's BMW and BMW MOTORRAD trademarks.
The Complainant contends that the Respondent has registered and is using the disputed domain names in bad faith because: (i) the Respondent registered the disputed domain names primarily to sell, rent, or otherwise transfer them for valuable consideration in excess of its documented out-of-pocket expenses; (ii) the Respondent has a bad-faith pattern of registering domain names containing the Complainant's trademarks, further evidenced by its cybersquatting activities that have been the subject of many adverse UDRP decisions involving third-party trademarks; (iii) the Respondent has used the disputed domain names to intentionally attract, for commercial gain, Internet users by creating a likelihood of confusion with the Complainant's famous and registered trademarks as to the source, sponsorship, affiliation and/or endorsement of the disputed domain names and associated pay-per-click websites; (iv) the Respondent unfairly disrupts the Complainant's business by using them for advertising links for competitive automobile‑related websites; and (v) the Respondent clearly had knowledge of the Complainant's rights in its trademarks given the fame of those marks, and it selected and registered them comprising of the Complainant's BMW MOTORRAD trademark in its entirety.
The Respondent did not reply to the Complainant's contentions.
Each of the disputed domain names has a nominally different registrant. Paragraph 3(c) of the Rules provides that "The complaint may relate to more than one domain name, provided that the domain names are registered by the same domain-name holder." Paragraph 3(c) of the Rules appears to have the effect of prohibiting a complaint from relating to more than one domain name unless the holder of each of those domain names is the same person. As has been previously stated by the Panel (see Kimberly-Clark Corporation v. N/A, Po Ser and N/A, Hu Lim, WIPO Case No. D2009-1345), the justification for paragraph 3(c) of the Rules appears to be to prevent unfairness to respondents and, possibly, to prevent procedural inefficiency. The bringing of a single complaint in relation to multiple domain names of which the registrants are not the same has the potential to be unfair to those registrants where there is no connection between them. The corollary, however, is that where the registrants are in fact the same person or they hold a common interest in the disputed domain name (see Kimberly-Clark, above, and Speedo Holdings B.V. v. Programmer, Miss Kathy Beckerson, John Smitt, Matthew Simmons, WIPO Case No. D2010-0281), bringing a single complaint against them is unlikely to be unfair to them. For that reason, WIPO panels have articulated principles governing the filing of a complaint against more than one respondent, and have concluded that a complaint may be filed against nominally different respondents where "the domain names or the websites to which they resolve are subject to common control" and "the consolidation would be fair and equitable to all parties" (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0") paragraph 4.16).
In this case, the Complainant asserted that the circumstantial evidence (summarized in the first paragraph of section 5A above) was such as to establish that the registrants of the four disputed domain names are either one and the same entity or acting in concert. Significantly, the Respondent did not dispute this assertion. On the basis of the undisputed circumstantial evidence provided by the Complainant, the Panel concludes, on the balance of probabilities, that the nominal registrants of the disputed domain names are either one and the same entity or are acting in concert. Further, the case record before the Panel provides it with no ground to conclude that consolidation of actions against the disputed domain names into this single Complaint would not be fair and equitable to all parties. Accordingly, the Panel finds that this single Complaint is properly brought against all four of the disputed domain names, despite the fact that the registrant of record for each disputed domain name is nominally different.
When the relevant TLD identifier ".net", ".org" or ".me" is ignored, each of the disputed domain names consists of the Complainant's registered trademark BMW MOTORRAD (with the space between the two strings either absent or replaced with a hyphen). Accordingly, the Panel finds that each of the disputed domain names is identical to a trademark in which the Complainant has rights.
The Respondent is not a licensee of, or otherwise affiliated with, the Complainant, and has not been authorized by the Complainant to use either its BMW or BMW MOTORRAD registered trademarks. The Respondent has not provided any evidence that it has been commonly known by, or has made a bona fide use of, the disputed domain names, or that it has, for any other reason, rights or legitimate interests in the disputed domain names. The evidence provided by the Complainant shows that each of the disputed domain names was used to resolve to a website consisting of links to other websites, some of which are competitors of the Complainant, and also was offered for sale for a sum in excess of out-of-pocket expenses. According to the present record, therefore, the disputed domain names are not being used in connection with a bona fide offering of goods or services, or for a legitimate noncommercial or fair use. Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain names.
The disputed domain names were registered many decades after the Complainant first registered and began using its BMW trademark and several years after it first registered and began using its BMW MOTORRAD trademark. The evidence on the record provided by the Complainant with respect to the use of these trademarks, combined with the absence of any evidence provided by the Respondent to the contrary, is sufficient to satisfy the Panel that, at the time the disputed domain names were registered, the Respondent knew of the Complainant's trademarks and knew that it had no rights or legitimate interests in the disputed domain names. In addition, the evidence on the record provided by the Complainant with respect to the Respondent's use of the disputed domain names indicates that the Respondent has used the disputed domain names to attract, for commercial gain, Internet users to websites by creating confusion with the Complainant's trademarks as to the affiliation of those websites. Furthermore, the evidence on the record provided by the Complainant with respect to the Respondent's use of the disputed domain names to resolve to websites at which offers can be made to purchase the disputed domain names, combined with the absence of any evidence provided by the Respondent to the contrary, is sufficient to satisfy the Panel that the Respondent most likely registered the disputed domain names primarily for the purpose of selling them to the Complainant or a competitor of the Complainant for valuable consideration in excess of documented out-of-pocket costs – which, according to paragraph 4(b)(i) of the Policy, is evidence of registration and use of the disputed domain names in bad faith. For all these reasons, the Panel 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 <bmwmotorrad.net>, <bmw-motorrad.org>, <bmw-motorrad.me> and <bmwmotorrad.me> be transferred to the Complainant.
Andrew F. Christie
Sole Panelist
Date: November 25, 2015