WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Bayerische Motoren Werke AG v. Adam Szulewski, stress8 Adam Szulewski

Case No. D2019-1058

1. The Parties

The Complainant is Bayerische Motoren Werke AG, Germany, represented by Kelly IP, LLP, United States of America.

The Respondent is Adam Szulewski, stress8 Adam Szulewski, Poland.

2. The Domain Name and Registrar

The disputed domain name <bmwnavigationupdate.xyz> is registered with OVH (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 8, 2019. On May 8, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 9, 2019, 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. The Center sent an email communication to the Complainant on May 14, 2019, 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 May 15, 2019.

The Registrar confirmed that the language of the registration agreement is in Polish, whereas the Complaint was submitted in English. On May 14, 2019, the Center sent the Parties a language of proceedings email in which they were invited to substantiate their arguments on the language of proceedings. The Complainant replied to this request on May 15, 2019, arguing in favor of English being the language of proceedings. The Respondent did not respond to the latter email, however on the same day, the Center received an email communication from the Respondent on its request for settlement. Accordingly, the Center sent the Parties a possible settlement email on May 15, 2019. The Complainant did not request suspension of the proceeding.

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 May 31, 2019. In accordance with the Rules, paragraph 5, the due date for Response was June 20, 2019. The Respondent did not submit any response. Accordingly, on June 21, 2019, the Center notified the Parties that it will proceed to panel appointment.

The Center appointed Piotr Nowaczyk as the sole panelist in this matter on June 27, 2019. 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.

4. Factual Background

The Complainant is an international manufacturer of automobiles and motorcycles. It offers navigation software and systems under the BMW mark for its BMW automobiles, including navigation software updates and activation codes for such updates also known as FSC codes, through its authorized dealers and on its “www.shopbmwusa.com” website, among other official channels.

The Complainant has produced extensive evidence of its trademark rights, including the German registration No. 221388 for the mark BMW, registered on December 10, 1917, covering products in International Classes 7, 8, 9, 11 and 12, including automobiles and related parts and accessories. The Complainant’s trademark registrations for its BMW mark that cover navigation software and systems include the European Union Trade Mark registration No. 014015143 (registered on November 23, 2015, covering products in international classes 2, 3, 4, 5, 6, 7, 8, 9, 10, 11, 12, 13, 14, 15, 16, 17, 18, 19, 20, 21, 22, 23, 24, 25, 26, 27, 28, 29, 30, 31, 32, 33, 34, 35, 36, 37, 38, 39, 40, 41, 42, 43, 44, 45).

Moreover, the Complainant owns the domain names <bmw.com> and <bmwgroup.com> which serve for the purpose of official websites.

The Respondent registered the disputed domain name on March 15, 2016.

The website that the disputed domain name resolved to offers unauthorized versions of the navigation software and activation/FSC codes under the BMW mark.

5. Parties’ Contentions

A. Complainant

Firstly, the Complainant contends that the disputed domain name is confusingly similar to the BMW mark. According to the Complainant, the disputed domain name contains the BMW in its entirety and on its face, the disputed domain name immediately communicates a connection to the Complainant that does not exist. Moreover, the Complainant asserts the additional terms “navigation” and “update” enhance this connection as the Complainant offers navigation software and updates for its software, and has done so for many years.

Secondly, the Complainant submits that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant alleges that the Respondent is not commonly known by the disputed domain name and the Complainant has not authorized the Respondent to register the disputed domain name. The Complainant also claims that the Respondent does not use the disputed domain name in connection with bona fide offering of goods or services as the Respondent offers unauthorized versions of the navigation software and activation/FSC codes under the BMW mark.

Thirdly, the Complainant asserts that the disputed domain name was registered and is being used in bad faith. According to the Complainant, the Respondent appears to have knowledge about its marks which leads to the conclusion that the disputed domain name was intentionally registered to benefit unfairly from the goodwill of the Complainant’s mark. In the Complainant’s opinion, the Respondent’s website gives the highly misleading and false impression of being owned, sponsored, and/or endorsed by the Complainant as it displays the BMW logo and uses the name “BMW Navigation Update”. The Complainant emphasizes that it previously objected to the Respondent’s advertisement of its unauthorized website on a Facebook page titled “Bmw Navigation Update”, and Facebook removed the Respondent’s page in response to the Complainant’s request.

B. Respondent

The Respondent did not reply to the Complainant’s contentions on merits, but in its email of May 15, 2019, it stated: “Please transfer the domain to BMW”.

6. Discussion and Findings

6.1. Language of the Proceeding

The language of the Registration Agreement for the disputed domain name is Polish. Paragraph 11(a) of the Rules provides that “unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding”.

The Complaint was filed in English. The Complainant requests English to be the language of the administrative proceeding. The Complainant contends that there is no question that the Respondent has knowledge of the English language, as shown by the Respondent’s use of the disputed domain name for an English-language website.

Taking all the circumstances into account, including the Respondent’s failure to comment on this issue, the Panel finds that it is appropriate to exercise its discretion and allow the proceeding to be conducted in English as per paragraph 11(a) of the Rules. The Respondent appears to have a sufficient level of understanding of the English language which is reflected in its choice of the disputed domain, the content of its website and the emails on the record.

6.2. Merits of the Case

Paragraph 4(a) of the Policy places a burden on the Complainant to prove the presence of three separate elements. The three elements can be summarized as follows:

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

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

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

The requested remedy may only be granted if the above criteria are met.

A. Identical or Confusingly Similar

The disputed domain name <bmwnavigationupdate.xyz> contains the famous BMW mark in its entirety, with an addition of dictionary terms “navigation” and “update”. These terms do not prevent a finding of confusing similarity between the disputed domain name and the Complainant’s mark (See Bayerische Motoren Werke AG v. Contact Privacy Inc. Customer 0148210671 / Satnav Updates, Navigation Updates, WIPO Case No. D2017-1916).

Further, the generic Top-Level domain (“gTLD”) “.xyz” should not be taken into consideration while assessing the confusing similarity between the disputed domain name and the Complainant’s mark.

Therefore, the Panel finds that the disputed domain name is confusingly similar to the BMW mark and as a consequence, the Complainant has met the requirement of paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

The overall burden of proof on this element rests with the Complainant. However, it is well established by previous UDRP panel decisions that once a complainant establishes a prima facie case that a respondent lacks rights or legitimate interests in a domain name, the burden of production shifts to the respondent to rebut the complainant’s contentions. If the respondent fails to do so, a complainant is generally deemed to have satisfied paragraph 4(a)(ii) of the Policy (see Danzas Holding AG, DHL Operations B.V. v. Ma Shikai, WIPO Case No. D2008-0441; see also WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) section 2.1 and cases cited therein).

The Panel notes the following circumstances presented in the Complaint in relation to any possible rights or legitimate interests of the Respondent in the disputed domain name: (a) there is no evidence that the Respondent has been commonly known by the disputed domain name; (b) the Complainant did not authorize the Respondent to register the disputed domain name; (c) the Respondent has not demonstrated use of, or demonstrable preparations to use, the disputed domain name in connection with a bona fide offering of goods or services. In particular, a use of a domain name, including a famous mark, for the purpose of creating a website offering unauthorized versions of the navigation software and activation/FSC codes under this mark cannot be qualified as a bona fide offering of goods or services (see Bayerische Motoren Werke AG (BMW) v. Balog Sebastian, WIPO Case No. D2017-1407).

Accordingly, in the absence of any evidence to support a possible basis on which the Respondent may have rights or legitimate interests in respect of the disputed domain name, the Panel accepts the Complainant’s unrebutted prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name and concludes that the second element of paragraph 4(a) of the Policy is satisfied.

C. Registered and Used in Bad Faith

Paragraph 4(a)(iii) of the Policy requires the Complainant to prove the registration as well as use in bad faith of the disputed domain name.

Firstly, not only the Complainant’s mark predates the registration of the disputed domain name, but also it enjoys considerable renown in the automotive industry. In the light of these circumstances, the Panel concludes that the Respondent knew or should have known about the Complainant’s rights when registering the disputed domain name.

Secondly, the Respondent has also used the disputed domain name in bad faith which is evidenced by the screenshots of the Respondent’s website which offers updates for BMW’s navigation software and activation / FSC codes. Previous UDRP panels have held that use of a domain name, including a famous trademark, to advertise or offer unauthorized and/or competing products constitutes bad faith under the Policy paragraph 4(b)(iv) (see Bayerische Motoren Werke AG v. Domains by Proxy, LLC / Alfred Kolinz, bmwupdate, WIPO Case No. D2017-2450; Bayerische Motoren Werke AG (BMW) v. Balog Sebastian, WIPO Case No. D2017-1407). Moreover, in the light of the decision in Facebook, Inc. and Instagram, LLC v. Adam Szulewski, WIPO Case No. D2016-2380 presented by the Complainant, it appears that the Respondent engaged in a bad-faith pattern of registering domain names including famous trademark, which is another evidence of bad faith.

Therefore, the Panel finds that the disputed domain name was registered and si being used in bad faith and concludes that the third element of paragraph 4(a) of the Policy is satisfied.

7. Decision

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 <bmwnavigationupdate.xyz> be transferred to the Complainant.

Piotr Nowaczyk
Sole Panelist
Date: July 10, 2019