The Complainant is Bayerische Motoren Werke AG of Munich, Germany, represented by Kelly IP, LLP, United States of America (“United States”).
The Respondent is WhoisGuard Protected, WhoisGuard, Inc. of Panama, Panama / Ammar Issa of Lehi, Utah, United States, represented by Richards Brandt Miller Nelson, United States.
The disputed domain name <rheingoldusa.com> is registered with NameCheap, Inc. (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 5, 2018. On October 5, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 5, 2018, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. On October 6, 2018, the Center received an email communication from the Respondent. The Center sent an email communication to the Complainant on October 10, 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 October 11, 2018.
The Center verified that the Complaint, together with the 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 October 12, 2018. In accordance with the Rules, paragraph 5, the due date for Response was November 1, 2018. The Response was filed with the Center on November 1, 2018.
The Center appointed Andrew D. S. Lothian as the sole panelist in this matter on November 7, 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.
On November 15, 2018, the Complainant submitted a supplemental filing. On November 16, 2018 at the request of the Panel, the Center issued Procedural Order No. 1 to the Parties affording the Respondent five calendar days to comment on the Complainant’s assertions included in its supplemental filing. In response to Procedural Order No. 1, the Respondent submitted a supplemental filing on November 21, 2018.
The Complainant is a German corporation. It is one of the most successful manufacturers of automobiles and motorcycles in the world and is the owner of the trademark and trade name BMW, in use since 1917, and the trademark MINI. The Complainant also uses a well-known circular logo or device featuring the letters “BMW” along with a blue and white checked circle. Such device is also the subject of registered trademarks. Under all of these trademarks, the Complainant has manufactured, marketed and sold many millions of vehicles, including over two million automobiles in 2017, along with related parts and numerous related services such as maintenance and repair. The Complainant has more than 129,000 employees worldwide and manufactures its products and components at 30 sites in 14 countries on four continents, including the United States where the Respondent is based. The Complainant uses a network of around 5,000 authorized dealers to market BMW and MINI vehicles in locations throughout the world.
The Complainant offers proprietary diagnostic systems comprised of hardware and software for maintenance, repair, servicing and programming of BMW and MINI automobiles. Such systems are offered only to the Complainant’s authorized dealers and other permitted parties who pay for access thereto. The Complainant offers such systems under the BMW mark and other names including INPA, ICOM, ISPI, and ISTA. The Complainant has also offered such software under the RHEINGOLD mark since at least January 1, 2013, and is the owner of United States registered trademark no. 5276516 for the respective word mark in international class 9, filed on March 17, 2017, and registered on August 29, 2017. The Complainant notes that such mark, as applied to diagnostic software, is an arbitrary mark and is deemed inherently distinctive and entitled to protection. The Complainant describes its RHEINGOLD software as an expert version of its more openly distributed BMW ISTA software and explains that due to limited access allowed by the Complainant illegal copies offered online are in high demand.
The Respondent is a business owner and software developer of a product which it has named “Rheingold”. The disputed domain name was created on June 6, 2015, according to both the registry and registrar WhoIs records. The Respondent states that it acquired the disputed domain name in 2010 or 2011 in connection with its software project and transferred this to the Registrar in 2015. The Respondent produces email communications via the auction website “www.eBay.com” dating from 2011 showing that it sold software named “Rheingold ISTA/D 3.44.3 + Ediabas 7.3.0” for use with BMW automobiles. The Respondent produces what it says is a PayPal, Inc. activity report from October 17, 2011 to January 1, 2013, which has the appearance of a spreadsheet. The spreadsheet lists transactions between October 23, 2011 and December 31, 2012, which include activity on an email address that appears to feature the disputed domain name, namely “admin@RheingoldUSA.com”. The Respondent published its own website associated with the disputed domain name in 2015 and incorporated a business named RheingoldUSA, LLC in 2016.
A screenshot of the Respondent’s website associated with the disputed domain name taken by the Complainant shows the following prominent statement: “RheingoldUSA LLC is an automotive software and hardware development business for BMW Group Motors registered and located in the USA.” Beneath this are various bullet points relating to software referencing “Rheingold ISTA/D 4.10”, “Rheingold ISTA-P 3.64” and others. A store page offers merchandise including clothing, pens, notebooks and mugs featuring a shield device incorporating the Complainant’s BMW mark and BMW device/logo along with a black and white checked design.
The Complainant produces an exchange of emails dated June 25, 2018, with a consumer who purchased the Respondent’s software. In the exchange of emails the consumer indicates that they believed such software to be a genuine product of the Complainant because it had “purchased a legal copy from the ISTA-D developer [sic] Rheingold from the USA”.
Before summarizing the Parties’ contentions, the Panel notes that these are extensive and of greater volume than a typical case under the Policy. In consequence, the Panel has attempted to summarize these as best it can while noting that certain allowances require to be made for the sake of brevity. Should a contention not have found its way into the undernoted summary this does not mean that it has not been considered. All of the Parties’ contentions and supporting evidence have been reviewed and carefully considered by the Panel.
The Complainant contends that the disputed domain name is identical or confusingly similar to a trademark in which it has rights; that the Respondent has no rights or legitimate interests in the disputed domain name; and that the disputed domain name was registered and is being used in bad faith.
The Complainant asserts that the disputed domain name is confusingly similar to the Complainant’s RHEINGOLD registered trademark because it contains the Complainant’s mark in its entirety combined with the term “USA” which, being an obvious geographic identifier added to a distinctive mark, is insufficient to distinguish the disputed domain name from the mark itself.
The Complainant submits that the Respondent is not and has not been commonly known by the disputed domain name, and is not a licensee of the Complainant or otherwise authorized to use the Complainant’s marks. The Complainant asserts that the Respondent has registered and used the disputed domain name for a commercial website advertising and offering unauthorized, counterfeit products and submits with reference to past cases under the Policy that this does not constitute a bona fide offering of goods or services nor a legitimate noncommercial or fair use. The Complainant adds that the Respondent’s unauthorized use of the Complainant’s RHEINGOLD trademark in the Respondent’s “Rheingold USA” trade name, its false claim to be “an automotive software and hardware development business for BMW Group Motors”, its extensive unauthorized use of the Complainant’s mark and logo, and its claim to offer “certified” BMW products on its website indicates that the Respondent is trying to pass off its website as that of the Complainant or as affiliated with the Complainant, constituting further evidence that the Respondent has no legitimate interest in the disputed domain name.
The Complainant asserts that bad faith registration and use within the meaning of the Policy is established by the fact that the Respondent uses the disputed domain name to intentionally attract, for commercial gain, Internet users by creating a likelihood of confusion with the Complainant’s RHEINGOLD mark as to the source, sponsorship, affiliation, and/or endorsement of the disputed domain name, the Respondent’s website, and the products advertised and offered therein. The Complainant contends that such bad faith is further established by the fact that the Respondent is disrupting the Complainant’s business, passing itself off as the Complainant and/or unfairly competing with the Complainant to advertise and offer unauthorized, counterfeit products which compete with the Complainant’s offering of its own genuine products. The Complainant concludes that, in light of the presence of the names of the Complainant’s diagnostic software and use of the Complainant’s trademarks on the Respondent’s website, the Respondent registered the disputed domain name with actual knowledge of the Complainant’s prior rights in its RHEINGOLD mark and has offered unauthorized, counterfeit “Rheingold” and “BMW” products, such knowledge having been consistently found to constitute bad faith in prior cases under the Policy.
In its Supplemental Filing, the Complainant contests the Respondent’s submissions that its software was independently developed and is not counterfeit of the Complainant’s software. The Complainant provides declarations from two of the developers of the Complainant’s software together with related exhibits. The Complainant notes that the development of its diagnostic software along with regular updating and technical, regulatory, and version updates, including accommodation of new parts, new vehicles, and new regulations, is a “tremendously huge” task requiring the work of over 400 of the Complainant’s employees. The Complainant contends in these circumstances that that it is not credible for the Respondent to claim that he developed his “Rheingold” diagnostic software by himself and by instruction of a developer, adding that it would not be possible for anyone other than a manufacturer such as the Complainant to create and maintain such software for its dealer network.
The Complainant contends that it began work in 2009 on its “expert” version of its ISTA software and provides extensive dated evidence of the project history from the software developer who led and named it. The Complainant’s evidence notes that the project was originally based in the Complainant’s Department VP-31, later VH-51, that said project leader applied the RHEINGOLD mark to it, presented it internally in January 2010, and issued a live demonstration for the system functions. The Complainant further produces an extract from its software source code repository showing the earliest date at which the RHEINGOLD mark was applied to the source code was November 30, 2009. The Complainant notes that the RHEINGOLD software was released into its ISTA software in February 2011 and that the mark began to be displayed on the program screens in the upper left hand corner. The Complainant reiterates that the Respondent’s software is a copy of the Complainant’s and produces evidence by way of comparison screenshots that the Respondent’s software displays the RHEINGOLD mark in exactly the same position as it appears in the Complainant’s released software and uses exactly the same 12 icons, VIN and Vehicle bar and color scheme. The Complainant provides evidence that the Respondent uses a similar screenshot on its eBay listings.
The Complainant provides evidence that the Respondent was directly asked by an eBay customer whether the Respondent’s software was “a pirated copy” and whether he was “an authorized seller” of the Complainant’s software. A screenshot produced by the Complainant shows that the Respondent does not answer this question directly but answers “…if you are a dealership or individual users, you can only get the online version through us or directly at the BMW global website with subscription fees…”, adding “RheingoldUSA is the US official copyrights owner of the standalone mobile software version”. The Complainant provides evidence that the Respondent operates a page at “www.facebook.com” in which he uses the BMW roundel device mark and BMW mark, applying this to USB sticks and stating that “RheingoldUSA is the only US registered seller”.
The Complainant provides evidence that the Respondent has included what it states are additional trademarks of the Complainant in the product listings for his software on eBay, namely ISTA/D and EDIABAS. The Complainant submits via a declaration of one of its developers that ISTA is an abbreviation for “Integrated Service Technical Application”, which has been used by the Complainant since 2008, evidencing the same by way of archive excerpts of its release dates for said software from 2008 to February 2014. The Complainant similarly indicates that EDIABAS refers to its proprietary computer protocol, which it says is a tool required to translate commands between a diagnostic software program and the car being diagnosed. The Complainant notes that after the RHEINGOLD software was launched, the RHEINGOLD mark became synonymous with ISTA/D, where the “D” represents the “diagnosis” function, while ISTA/P represents a “programming” function. The Complainant produces a screenshot of the Respondent’s website from November 23, 2015, showing the use of the mark RHEINGOLD alongside the name ISTA/D in parentheses. The Complainant provides evidence that the Respondent supplied copies of the Complainant’s 2008 and 2015 copyright-protected software manuals, bearing the Complainant’s copyright notices, with the Respondent’s software packages.
The Complainant notes that its first use date for the RHEINGOLD mark is expressed “at least as early” as January 1, 2013, noting that this predates the creation date of the disputed domain name and adding that the Respondent has provided no evidence of registering the disputed domain name prior to June 2015. The Complainant provides evidence showing that there are no historical WhoIs records for the disputed domain name prior to its creation date. The Complainant disputes the terms of the Respondent’s alleged PayPal activity report, arguing that this has no source indicator or date, and asserting that the Respondent could not have used the email address it describes without the registration of the disputed domain name that did not exist until June 2015. The Complainant provides evidence from “www.archive.org” that the first record of the Respondent’s website is dated November 23, 2015.
The Complainant argues that the Respondent’s claim to be offering “Rheingold ISTA/D 3.44.3 + Ediabas 7.3.0” software as of May 1, 2011, cannot be true as, first, it is impossible that the Respondent developed the RHEINGOLD software and secondly, he could not have done so using the Complainant’s future version numbers and its EDIABAS mark. By illustration, the Complainant submits and provides corresponding evidence that its ISTA software version 3.44 and EDIABAS software version 7.3.0 did not exist as of 2011 and that these were not released until June 2014 and July 2012 respectively.
The Respondent contends that the Complaint should be denied.
The Respondent submits that the Complaint fails because the Complainant does not have the exclusive right to the RHEINGOLD marks; the Respondent has rights and legitimate interests in its own use of a “Rheingold” mark and the disputed domain name under United States trademark law; and the disputed domain name is not confusingly similar because the Respondent established a legitimate business interest in the name “Rheingold USA” long before the Complainant’s use of its RHEINGOLD marks.
The Respondent asserts that he used the mark “Rheingold” before the Complainant, giving the Respondent superior rights to such mark. The Respondent states that he first heard the word “Rheingold” in an airport in Frankfurt, Germany when a group escort agent called him “das Rheingold” for leading some of his group to the gate before takeoff. The Respondent explains that he decided to adopt this term for his business because it meant a solution for a complicated drama with class and style.
The Respondent states that he learned in 2009 or 2010 that it would cost over USD 500 to have one of the Complainant’s dealers undertake a particular maintenance activity and began to develop his software as a cost-effective solution to be used by individuals in similar situations. The Respondent adds that he hired another programmer and that using open source and public license platforms they built software to be named “Rheingold”. The Respondent states that he started building a “Rheingold” website in 2010 and produces an email from “Wix”, a website building platform, dated June 4, 2010, indicating that the Respondent had a new message via “http://issasystem.wix.com/rheingold”. The Respondent produces emails showing the sale of software as noted in the factual background section.
The Respondent submits that he acquired the disputed domain name “sometime in 2010 or 2011” and began to use the email address “Admin@RheingoldUSA.com” immediately. The Respondent produces the PayPal activity report referred to in the factual background section showing references to such email address. The Respondent asserts that he sold his software in or before 2011 and listed it on eBay as “Rheingold ISTA/D 3.44.3.” The Respondent states that he transferred the disputed domain name to the Registrar after using the said email address for over four years and notes, in the context of such transfer, that the creation date of the disputed domain name is June 6, 2015. The Respondent adds that he established “Rheingold USA, LLC” as a Utah limited liability company in 2016 and provides copies of relative documents.
The Respondent notes that the Complainant claims a first use in commerce date for its RHEINGOLD mark of January 1, 2013, and adds that the Respondent’s first use of the term “Rheingold” in commerce was in or before 2011. Thus, the Respondent argues that under United States trademark law this means the Complainant does not have exclusive right to use the RHEINGOLD mark and that the Respondent has priority use thereof because the rule is that ownership of a mark goes to the first to use, not the first to file. The Respondent states that under Utah law, acquisition of a common law trademark means that a party, through its business efforts, has developed common terms or descriptive terms that have gained secondary meaning in the public mind and which are entitled to certain protections and that the Utah Department of Commerce may accept as evidence that the mark has become distinctive as used on or in connection with the applicant’s goods or services. The Respondent argues that he began using the RHEINGOLD mark in commerce over a year before the Complainant alleges that it began using the same mark and over six years before such mark was registered by the Complainant. The Respondent asserts that the Respondent has acquired common law trademark rights to the term “Rheingold”, that the Complainant does not have exclusive rights to such term and that the Respondent has priority use according to United States trademark law.
The Respondent notes that it established Rheingold USA, LLC over a year before the Complainant filed its trademark applications and that it began to use the disputed domain name in 2011, over a year before the Complainant alleges that it first started using the term “Rheingold” and six years before the Complainant registered the RHEINGOLD trademark. The Respondent contends that it did not have knowledge of the Complainant’s claims to such term because the Complainant had not begun to use the term at the time when the Respondent obtained the disputed domain name or published his website.
The Respondent argues that the Complainant’s evidence regarding its first use of the RHEINGOLD marks in 2013 is insufficient because this is restricted to a declaration of the Complainant’s legal counsel, a declaration of use in the Complainant’s trademark application and a single screenshot of the Complainant’s software which does not show any version information. The Respondent notes that the Complainant has not offered any evidence of its ownership of domain names incorporating the “Rheingold” name. The Respondent contends that the Complainant should have records of the use of the RHEINGOLD marks in commerce, such as records of sales and distribution of its software, use of domain names and evidence of references to the marks on its websites. The Respondent presumes that such evidence does not exist. The Respondent asserts that the Complainant’s allegations regarding other trademarks and its copyright are designed to mask the lack of relevant evidence in the Complaint.
The Respondent contends that it registered the disputed domain name in good faith, adding that under the several examples of bad faith in the Policy the Respondent has not engaged in bad faith. The Respondent submits that it has used the disputed domain name in connection with a bona fide offering of goods since 2011, made no attempt to contact the Complainant or to sell the disputed domain name to it, and did not register the disputed domain name to transfer it to the Complainant, to prevent the Complainant from reflecting its mark in the disputed domain name or to disrupt the Complainant’s business.
The Respondent argues that its software and that of the Complainant are sold to different types of consumers in different channels, because the Complainant admits that its software is only offered to repairers and service technicians while the Respondent offers its software only for public use. The Respondent asserts that this shows it did not register the disputed domain name to disrupt the Complainant’s business. The Respondent argues that it did not attempt to attract Internet users to the Respondent’s website by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website because it used the term “Rheingold” and the disputed domain name before the Complainant began to use its RHEINGOLD mark in commerce.
The Respondent contends that the Complainant cannot reference alleged violations of its BMW trademarks in the present proceeding, noting that the Respondent’s website and products do not contain any instances of the BMW logo and that all language referring to BMW is only to state that the Respondent’s products are compatible with BMW products, which is “fair use” under United States trademark law. The Respondent submits that the Complainant’s screenshot of its website is not an accurate representation of such website as it is today, noting that its website states “Rheingold USA LLC is an automotive software and hardware development business registered and located in the USA” and “Rheingold (ISTA/D & ISTA/P) Is the best industry standard diagnostics, coding and programming software compatible with BMW Group Motors Brand.”
The Respondent contends that the Complainant cannot pursue copyright claims such as that the Respondent’s software is unauthorized or counterfeit in the present proceeding. The Respondent argues that the Policy is not the proper forum to address such allegations. The Respondent submits in any event that the Complainant did not use the word “Rheingold” in its copyright application, noting that its software is called “BMW ISTA 3.38”. The Respondent argues that it hired its own programmers and developed its own software in good faith as an original version, using open source and public license platforms which may account for alleged similarities. The Respondent states that due to the timings of availability of the Parties’ software, there is a possibility that the Complainant’s software was created after and based on the Respondent’s software.
In its reply to the Complainant’s Supplemental Filing, the Respondent repeats its request that the Complaint be denied. The Respondent contests the Complainant’s request that its Supplemental Filing be received notwithstanding the terms of Procedural Order No. 1, stating that the evidence and information in such filing could have been included in the original Complaint and that it is a tacit admission that the original Complaint was not sufficient. The Respondent states that the only issue is whether the Respondent has a right or a legitimate interest in the disputed domain name. The Respondent asserts that the Complainant’s filing fails to prove that the Respondent has no right to the disputed domain name.
The Respondent asserts that the Complainant misstates “the controlling law”, arguing that the Complainant would not have the exclusive right to the RHEINGOLD mark if the Complainant used the mark before the disputed domain name was registered. The Respondent points out that to acquire ownership of such mark the party claiming such ownership must have been the first to use it in commerce and reiterates its contention that it acquired the disputed domain name in or before 2011. The Respondent asserts that it was able to use an email address at the disputed domain name as early as 2011 because it had acquired it in good faith in or before 2011. The Respondent asserts that its PayPal report was prepared by PayPal in the ordinary course of business and produces a screenshot which it says is of the original download request and result.
The Respondent asserts that the Complainant’s reliance on the WhoIs information for the disputed domain name is misplaced because it only shows “the current registrant and the date that the current registrant registered the name.” The Respondent states that such data does not show prior registrants or registration dates and asserts that the data reflects the date that the Respondent transferred the disputed domain name from an earlier provider to the Registrar.
The Respondent asserts that the Complainant has failed to offer any evidence of use in commerce of the RHEINGOLD mark prior to 2013, noting that the Complainant claims internal use from 2009. The Respondent adds that evidence of release dates of the Complainant’s software does not show use in commerce of the RHEINGOLD mark because the Complainant’s software is sold under the names ISTA or Aftersales Online System (AOS). The Respondent submits that the Complainant does not have the exclusive right to such mark under United States trademark law because it has not shown first use in commerce thereof.
The Respondent contests the claims of the Complainant’s employees regarding the alleged copying of the Complainant’s software, calling these “speculative”, “inherently biased” and “not credible”. The Respondent notes that neither employee has proffered any valid basis for knowledge of what steps the Respondent took to develop its software or that the methods used to form their opinions are regularly used by experts in software development. The Respondent contends that there are numerous substantive errors, inaccuracies, and/or falsehoods in the Complainant’s declarations but states that it will not address these because they relate to the Complainant’s copyright claims, which are irrelevant to the administrative proceeding.
The Respondent submits that the only evidence for the Complainant’s claim that it would be impossible for the Respondent to have developed his own version of the software at issue is the opinion of its own employee who is not a qualified expert and lacks the foundation to testify regarding steps taken by the Respondent. The Respondent argues that the Complainant’s employee’s opinion is not the product of a scientific method but a results-driven process, criticizing the fact that the software did not work on the employee’s computer. The Respondent submits that pointing out similarities between software versions is meaningless and that such comparisons and screenshots fail to address whether the Respondent has rights or legitimate interests in the disputed domain name.
The Respondent states that the records which it produced from eBay are authentic and show that the Respondent offered its software between May and July 2011, while the Complainant admits that it did not release a similar version of its software until 2014. The Respondent argues that this shows the Complainant’s allegation that the Respondent copied its software is false and that the Respondent’s version of events is true.
The Respondent argues that the Complainant misrepresents the communication between the Respondent and its customer. The Respondent states that it answered truthfully that the Complainant’s software was only available to BMW dealers. The Respondent characterizes the statement it made in such correspondence, namely “RheingoldUSA is the US official copyrights owner of the standalone mobile software version” as an explanation that its own software is different from that of the Complainant.
The Respondent notes that the Complainant’s employees point out similarities between the Complainant’s and the Respondent’s manuals and naming conventions, explaining that the Complainant’s manual never uses the word “Rheingold” and that the Complainant’s software is not named as such. The Respondent states that the Complainant fails to discuss which manual or name was released first. The Respondent concludes that the Panel does not have the authority under the Policy to address allegations of copyright infringement and that the Complainant must bring any such copyright claims before a court with appropriate jurisdiction.
The Respondent notes the Complainant’s claim that the Respondent’s website and Facebook page contain language referring to BMW and uses of the Complainant’s trademarks, but contends that such claims are false and that the language cited is outdated, that the Respondent’s Facebook page is disabled and that the related screenshots are not an accurate representation of the Respondent’s website or Facebook page as they are today. The Respondent states that its website does not contain instances of the Complainant’s logo and that references to its BMW mark are to state compatibility with the Complainant’s products, which it adds constitutes fair use under United States trademark law. The Respondent submits that the Panel does not have authority to address claims that the Respondent has violated the Complainant’s trademarks.
To succeed, the Complainant must demonstrate that all of the elements listed in paragraph 4(a) of the Policy have been satisfied:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
Paragraph 12 of the Rules provides that it is for the panel to request, in its sole discretion, any further statements or documents from the parties it may deem necessary to decide the case. Paragraph 10 of the Rules provides, inter alia, that the panel has authority to determine the admissibility, materiality and weight of the evidence. Supplemental filings are generally discouraged, unless specifically requested by the panel. Panels have repeatedly affirmed that a party submitting or requesting to submit an unsolicited supplemental filing should clearly show its relevance to the case and why it was unable to provide the information contained therein in its complaint or response.
The Complainant has filed a supplemental filing in which it seeks to address the Respondent’s arguments that he adopted the name “Rheingold” and created his own diagnostic software, to which he applied such name, before and independently of the Complainant’s RHEINGOLD software and mark. The Panel is of the view that it would not have been reasonable to expect the Complainant to have anticipated such arguments in its original Complaint. This proceeded, in particular, on the basis of the creation date of the disputed domain name. The Complainant could not have determined substantial aspects of the Response before filing the Complaint, namely that the Respondent might argue a connection to the disputed domain name and various related activities which pre-dated the creation date of the disputed domain name and might equally deny any use of the Complainant’s copyright software or materials in the preparation of the Respondent’s software. In these circumstances, the Panel considered that it was reasonable to admit the Complainant’s supplemental filing but likewise to provide the Respondent with the opportunity to comment upon the same. Accordingly, the Panel arranged for the Center to issue Procedural Order No. 1 to the Parties and is satisfied that this approach is in conformance with the principles set forth in paragraphs 10 and 12 of the Rules.
Under this element of the Policy, the Complainant must demonstrate that it has rights in a trademark and that the disputed domain name is identical or confusingly similar to such trademark. It is not necessary for the purposes of the assessment under this element that the trademark concerned pre-date the creation of the domain name at issue.
The Complainant has shown that it is the owner of the word mark RHEINGOLD by virtue of the United States registered trademark set out in the factual background section above. To the extent that the Respondent claims prior rights in this mark, this issue is more appropriate to the question of the Respondent’s rights and legitimate interests and will therefore be addressed in the next section. The Complainant’s mark is reproduced in the disputed domain name in its entirety together with the geographic indicator “USA”. The addition of the geographic indicator to the Complainant’s said mark is insufficient to distinguish the mark from the disputed domain name. In these circumstances, a finding of confusing similarity may be made (see, for example, M.E.G. Gottlieb Diaderma-Haus GMBH & Co. v. Mina Asaro, WIPO Case No. D2011-0056 and section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”)). The generic Top-Level Domain (“gTLD”) in the disputed domain name is typically disregarded for the purposes of comparison in cases under the Policy on the grounds that it is required for technical reasons only.
In all of these circumstances, the Panel finds that the requirements of paragraph 4(a)(i) of the Policy have been satisfied.
Paragraph 4(c) of the Policy lists several ways in which the Respondent may demonstrate rights or legitimate interests in the disputed domain name:
“Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):
(i) before any notice to you of the dispute, your use 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) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.”
The consensus of previous decisions under the Policy is that a complainant may establish this element by making out a prima facie case, not rebutted by the respondent, that the respondent has no rights or legitimate interests in a domain name. In the present case, the Panel finds that the Complainant has established the requisite prima facie case based on its submissions that the Respondent has not been commonly known by the disputed domain name, is not a licensee of the Complainant or otherwise authorized to use the Complainant’s marks and has registered and used the disputed domain name for a commercial website advertising and offering unauthorized, counterfeit products which does not constitute a bona fide offering of goods or services nor a legitimate noncommercial or fair use. In these circumstances, the burden of production shifts to the Respondent to bring forward evidence of its rights and legitimate interests in the disputed domain name.
The substance of the Respondent’s case may be distilled into two main grounds. First, the Respondent claims prior rights in the name “Rheingold” due to its use allegedly pre-dating the Complainant’s claimed first use in commerce of January 1, 2013. Secondly, the Respondent claims to be making a bona fide offering of goods and services under such name by way of the offer of independent software for interfacing with vehicles manufactured by the Complainant.
The Respondent’s declaration regarding the date of his adoption of the “Rheingold” name is of limited evidential value on its own. Some form of extrinsic and verifiable supporting evidence is therefore required. The evidence presented by the Respondent is, first, an email dated June 4, 2010 from a website building platform from which it appears that the name “Rheingold” has been used in the sub-part of a URL; secondly, various emails from dates in 2011 showing the Respondent communicating with buyers in connection with its eBay listings for “Rheingold ISTA/D 3.44.3 + Ediabas 7.3.0”; and thirdly, a PayPal activity report showing the use of an email address at the disputed domain name as early as October 23, 2011.
Taking the PayPal report first, the Complainant criticizes this as having no source indicator or date and the Panel finds this to be a valid comment. The PayPal report is in a spreadsheet format without any suitable indication of its provenance. When the Respondent was challenged on this, it provided no additional or alternative supporting information apart from a screenshot from the PayPal system which a user would see prior to downloading a report together with an email dated October 17, 2018, stating that the report was available for download. In the Panel’s view, the screenshot and email does not adequately address the Complainant’s criticism and it must be presumed that the Respondent is not able to produce independent verification of the spreadsheet’s provenance. In these circumstances, it should have been a relatively straightforward matter for the Respondent to have obtained further supportive evidence by reference to actual email correspondence using or related to the disputed domain name. The Panel therefore turns to the Respondent’s various emails which, although they do not make reference to the disputed domain name, are of critical importance in terms of their respective dates to the Respondent’s allegation of prior use of the “Rheingold” name.
The Respondent’s emails use the “Gmail” system. Gmail provides a header for each email, which features the date and time of the email in a consistent format. In each case, Gmail’s format features the day of the week as well as the date of the email. However, in none of the emails produced by the Respondent does the date of the email match the correct day of the week for the year claimed. The Respondent’s email from the website building platform is dated “Thu, June 4, 2010 at 11:38 PM”. June 4, 2010 was a Friday, not a Thursday. The Respondent’s first email from eBay is dated “Fri, May 1, 2011 at 11:07 PM”. May 1, 2011 was a Sunday, not a Friday. The Respondent’s second email from eBay is dated “Sat, May 30, 2011 at 4:36 PM”. May 30, 2011 was a Monday, not a Saturday. The Respondent’s third email from eBay is dated “Fri, Jun 5, 2011 at 11:46 AM”. June 5, 2011 was a Sunday, not a Friday. The Respondent’s fourth email from eBay is dated “Fri, Jul 3, 2011 at 1:42 PM”. July 3, 2011 was a Sunday, not a Friday.
Despite the fact that the dates are of critical importance to the Respondent’s case, no attempt is made to explain this obvious discrepancy. Thus, the days of the week in the Respondent’s emails are either 24 or 48 hours out and, for example, a time zone difference could not account for this. The Panel has asked itself whether there are nearby years in which the listed days of the week would correspond to the dates of the emails concerned and notes that each listed day of the week would have been accurate for the corresponding date if the year had been 2009 or 2015, the latter being the year of creation of the disputed domain name.
In addition to the discrepancy in days and dates in the Respondent’s email evidence, the Panel also noted another unexplained discrepancy of a more minor nature, namely that one of the eBay items listed in the email produced by the Respondent had an unusual “End time”. The “End time” is expressed on the Respondent’s eBay listings in the format Mmm-dd-yy, such as for example “Jun-02-11”. All of the emails provided by the Respondent follow this format when listing the “End time”, save one which provides an “End time” in the body of the email of “8 Jul-04-11”. This entry makes no sense and is internally inconsistent with the subject line of the email which contains a correctly formatted “End time” of “Jul-04-11”. It may be that the Respondent or his correspondent has inadvertently typed the additional characters into the “End date” listed in the email. Nevertheless, as with the discrepancy over the days of the week, no explanation has been given for an apparent error in what should be machine-generated text. All of the above discrepancies raise a reasonable concern in the Panel’s mind that something is wrong with the Respondent’s email evidence and, in particular, the dates. To the Panel, there is no rational explanation for the totality of the discrepancies which are obvious from the face of the emails. The only reasonable conclusion for the Panel to make is that it would be unsafe to rely upon the Respondent’s dated evidence to establish any prior use of the name “Rheingold”.
To a lesser extent, the Respondent’s case on prior rights also revolves around his assertion that the disputed domain name was in existence prior to its creation date of June 6, 2015. As noted in the factual background section above, both the Registrar’s and registry WhoIs records agree on the present creation date. The Registrar was asked during verification to “indicate, if possible, the date on which the current Registrant registered (or acquired the registration of) the domain name(s).” The Registrar responded to this question merely specifying the creation date of the disputed domain name without any additional qualification regarding any alleged transfer-in. Accordingly, the sole evidence for the existence of the disputed domain name prior to that date is the Respondent’s spreadsheet report containing an email address bearing to use the disputed domain name. The Panel has already commented on the limited evidential value of that report.
The Respondent explains that he acquired the disputed domain name “sometime in 2010 or 2011” and used the email address in the spreadsheet report for some four years before transferring the disputed domain name to the Registrar. The suggestion in the Respondent’s explanation is therefore that the act of transferring the disputed domain name to the Registrar somehow reset its creation date at both the Registrar and the registry. The Panel does not know how any inter-registrar transfer could achieve this and it is incumbent on the Respondent, as the Party relying upon this for a matter that is central to its case, to explain and to evidence this to the satisfaction of the Panel. The Respondent has entirely failed to do so. The Panel finds it particularly notable that the Registrar verification correspondence does not support the Respondent’s position.
To some extent, it is what the Respondent has not produced to support its position over the creation date of the disputed domain name which is of greater significance to the credibility of its case than what it has decided to put forward. The Respondent claims that it acquired the disputed domain name in 2010 or 2011. The registrant contact email address currently associated with the disputed domain name is that which the Respondent allegedly used in 2010 and 2011, if the Panel were to accept its prints from its Gmail account. Since the Respondent still has access to its email account from 2010/2011, the Panel asks itself why the Respondent has only been able to produce a spreadsheet to evidence the prior existence of the disputed domain name. Why has the Respondent produced no email using the email address allegedly related to the disputed domain name? Why has the Respondent produced none of the administrative email which the holding of a domain name typically generates?
There are many examples of emails relating to the alleged prior existence of the disputed domain name which the Respondent should have been able to retrieve and to produce in this case. There would be emails relating to the disputed domain name’s acquisition, emails regarding renewal notifications from the then registrar, annual WhoIs Data Reminder emails from such registrar and even emails relating to the alleged inter-registrar transfer of the disputed domain name in 2015. There would presumably be emails from PayPal. The absence of all or any of such evidence from the record or even an explanation as to why such evidence might be unavailable speaks volumes to the Panel, particularly when the evidence provided by the Complainant relating to the disputed domain name is itself weighed in the balance. The Complainant’s case is that the disputed domain name did not exist prior to its present creation date and thus that the Respondent’s assertion of prior use of the “Rheingold” name is unreliable. The Complainant produces suitable evidence showing that there are no historic WhoIs entries indicating any prior existence, nor are there any historic screenshots of a website associated with the disputed domain name prior to the present creation date. While the Complainant’s evidence is not conclusive, in and of itself, of the non-existence of the disputed domain name prior to June 6, 2015, it adds further color to the existing picture on the record which clearly points in that direction.
In all of these circumstances, the Panel accepts the Complainant’s case on the balance of probabilities that it had established and used its RHEINGOLD trademark in its globally distributed software prior to the commencement of the Respondent’s activities using the “Rheingold” name. The Complainant’s case is given added weight by the fact that the Respondent’s eBay listings for its software, allegedly dating from 2011, relate to “ISTA/D 3.44.3 + Ediabas 7.3.0”. The Complainant has explained what these references mean and that they relate to its software and proprietary computer protocol, the “ISTA/D” component having become synonymous with the name and mark RHEINGOLD from when this was introduced into its software in February 2011. The Complainant has pointed out with reference to its release schedule that it released versions of ISTA/D and Ediabas numbered 3.44.3 and 7.3.0 respectively in June 2014 and July 2012. The Respondent does not answer this particular point directly and it seems to the Panel to be a coincidence too far that the Respondent’s own versioning might have arrived at the exact same software version numbers as those of the Complainant for the Respondent’s own, allegedly independently generated, software which had itself adopted the names “ISTA/D” and “Ediabas” in 2011.
Turning to the question of whether the Respondent is using the disputed domain name to make a bona fide offering of goods or services, the Panel notes the terms of the screenshots of the website provided by the Complainant. These are at best misleading to consumers given that the Response acknowledges that the Respondent is providing third party software to interface with the Complainant’s vehicles. In the screenshots, the Respondent uses a prominent shield device featuring the Complainant’s BMW and associated logo trademark alongside the statement “RHEINGOLD (ISTA/D & ISTA/P) Is the best industry standard BMW diagnostics, coding and programming software”. This to the Panel’s mind is not use of the Complainant’s trademarks only insofar as necessary to identify the marque of vehicle for which the Respondent’s software is designed. On the contrary, it amounts to impersonation of the Complainant. The second screenshot exacerbates matters even further where it states “RheingoldUSA LLC is an automotive software and hardware development business for BMW Group Motors registered and located in the USA.” The use of the phrase “for BMW Group Motors” and particularly its capitalization is to the Panel’s mind highly misleading and suggests an affiliation with or endorsement by the Complainant where none exists. The Respondent takes matters still further by creating its own line of merchandise as noted in the factual background section above featuring the Complainant’s trademarks. Nowhere is it made clear, for example by prominent disclaimer, that the Respondent’s activities are independent of the Complainant and, indeed, the contrary is demonstrated by the appearance of the Respondent’s website.
The Panel is mindful of the fact that the Complainant’s rights which are the subject matter of this proceeding are those in the RHEINGOLD mark. Nevertheless, the Panel does not accept the Respondent’s submission that its use of the BMW and related logo marks are necessarily irrelevant to the proceeding and that this Panel has no jurisdiction to consider such use. What the Respondent is doing is using the attractive force of the RHEINGOLD mark, which relates to the Complainant’s diagnostic software, to draw visitors to a website associated with the disputed domain name on which the Respondent has effectively impersonated the Complainant or at least suggested an association with or endorsement by, in the Respondent’s words, “BMW Group Motors”. In the Panel’s mind, this goes directly to the question of whether the disputed domain name is being used in connection with a bona fide offering of goods and services.
In conclusion on this topic, it is clear to the Panel that the Respondent’s offering of goods or services could not be described as bona fide given the extent to which it relies upon the Complainant’s identity for apparent endorsement as opposed to making a reference to the Complainant’s vehicles from the point of view of compatibility. This use could not be described as “fair use” as it is typically considered in terms of the Policy, for example in terms of the criteria laid down in Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903. The Respondent’s reply to the Complainant’s various criticisms is that the Complainant is not looking at current versions of its website. In other words, the Respondent is stating that it has made changes following upon notification of the Complaint, presumably which seek to make its non-affiliated position clearer. This does not assist the Respondent in the present matter. Even if its unofficial status and non-relationship to the Complainant is now made plain on its website, in terms of the Policy the Respondent requires to show its use of or demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods or services before any notice of the dispute. In the Panel’s opinion, it is unable to do this.
The Panel notes that the Respondent incorporated a company by the name of “Rheingold USA LLC” in November 2016. In the Panel’s opinion, this adds nothing to the Respondent’s case as it post-dates the Complainant’s first use in commerce of the RHEINGOLD mark and the creation date of the disputed domain name by a considerable period. The incorporation of such a company cannot be used to argue that the Respondent must have been commonly known by the disputed domain name on some kind of retroactive basis.
In all of these circumstances, the Panel finds that the Respondent has been unable to rebut the Complainant’s prima facie case that it has no rights and legitimate interests in the disputed domain name and accordingly that the requirements of paragraph 4(a)(ii) of the Policy have been satisfied.
Paragraph 4(b) of the Policy provides four, non-exclusive, circumstances that, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
“(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out of pocket costs directly related to the domain name; or
(ii) you have registered the domain name in order to prevent the owner of the trademark or service
mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.”
In terms of the discussion in the preceding section, the Panel has found insufficient support for the Respondent’s contention that the disputed domain name pre-dated its present creation date. The Panel has likewise found the Respondent’s evidence of prior use of the “Rheingold” name unconvincing. In these circumstances, the Panel is required to assess the question of registration and use in bad faith as at the creation date of the disputed domain name.
By June 2015, the record shows that the Complainant had been using the RHEINGOLD name in its software for some four years and at least since January 2013 being the claimed first use in commerce date in the registered trademark relied upon for the purposes of this proceeding. The RHEINGOLD software is distributed to dealers and other authorized repairers across the globe to allow them to work on vehicles manufactured by the Complainant. Given the extent to which the software has been distributed, the Panel is in no doubt that the Complainant could establish common law rights in such mark prior to the registration date of its said registered trademark. The Respondent by his own admission set out to build software to interact with the Complainant’s vehicles and registered the disputed domain name in this context. In so doing, the record shows that the Respondent made reference to the Complainant’s ISTA/D and ISTA/P systems, its EDIABAS protocol and its software instruction manuals. It is self-evident to the Panel that the Respondent did not embark upon this course without knowledge of the Complainant or its rights.
Had the Panel found that the Respondent registered and used the disputed domain name for the purpose of selling counterfeit software of the Complainant, this would have led to a finding of registration and use in bad faith in and of itself. However, the Panel does not propose to make such a finding as it is ill-equipped to provide a comparative assessment of the software concerned and the Respondent is correct that the present proceeding is not suited to the making of such a determination. Nevertheless, the Panel observes in passing that there is considerable force to be found in the Complainant’s submissions that given the requirements of territorial coverage and changing local regulations, together with the necessity to provide support for new vehicles and parts, the development, creation and continuous updating of vehicle diagnostic and programming software is an undertaking that requires the engagement of hundreds of employees. The Respondent would however have the Panel believe that it has built its own systems to replicate this job on his own with the assistance of one other programmer. Placed in this context, one could argue that the Respondent’s position regarding its software is improbable to say the least.
Nevertheless, and leaving aside the question of whether the Respondent’s software is counterfeit, the Panel notes that the Respondent’s website supplies software for interaction with the Complainant’s vehicles in circumstances where the Respondent has sought to suggest by the use of the RHEINGOLD mark in the disputed domain name, coupled with misleading website copy, that the Respondent either is the Complainant’s authorized representative for the supply of RHEINGOLD diagnostic software or that its products are specially endorsed by the Complainant. When the Respondent’s website featured the copy in the Complainant’s screenshots, visitors enticed in by the disputed domain name were then greeted with copy text describing the Respondent as “an automotive software and hardware development business for BMW Group Motors registered and located in the USA”. This speaks for itself in terms of the potential for confusion.
There is also evidence in the form of an exchange between the Respondent and a third party on eBay which suggests that the Respondent’s activities are liable to cause actual confusion. The Panel is not satisfied that the Respondent’s answer to the third party enquiry would necessarily have dispelled any confusion. In any event, the important point is that a likelihood of confusion was already generated by the use of the RHEINGOLD mark that required a consumer to call for an explanation from the Respondent. In short, the Respondent is engaged in the very definition of registration and use in bad faith under paragraph 4(b)(iv) of the Policy, namely that it has intentionally attempted to attract, for commercial gain, Internet users to its 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 its website or of a product or service on its website.
In all of the above circumstances, the Panel finds that the disputed domain name was registered and has been used in bad faith and accordingly that the requirements of paragraph 4(a)(iii) of the Policy have been 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 <rheingoldusa.com> be transferred to the Complainant.
Andrew D. S. Lothian
Sole Panelist
Date: December 3, 2018