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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Bayerische Motoren Werke AG v. Rami Nasri, BMW Accessories

Case No. D2019-2821

1. The Parties

The Complainant is Bayerische Motoren Werke AG, Germany, represented by Kelly IP, LLP, United States of America (the “United States”).

The Respondent is Rami Nasri, BMW Accessories, United States.

2. The Domain Name and Registrar

The disputed domain name <minicooperjcw.com> is registered with Tucows, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 18, 2019. On the same day, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On the same day, 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 November 25, 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 November 27, 2019.

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 December 4, 2019. In accordance with the Rules, paragraph 5, the due date for Response was December 24, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 27, 2019. The Center received an email communication from the Respondent on January 17, 2020, which was forwarded to the Panel.

The Center appointed Matthew Kennedy as the sole panelist in this matter on January 7, 2020. 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 manufactures automobiles and motorcycles. One of its automobiles is the “Mini” and one model of that automobile is marketed as the “Mini Cooper”. The Complainant also uses the mark JCW as an abbreviation of “John Cooper Works”. Besides automobiles and motorcycles, the Complainant also sells automobile parts and accessories, apparel, and other products. The Complainant holds multiple trademark registrations including United States trademark registration number 2376477 for MINI COOPER, registered on August 15, 2000, specifying automobiles and structural parts therefor in International class 12; United States trademark registrations numbers 4352147 and 5420440, each for a mark consisting of a stylized word MINI in a device (the “MINI logos”), registered on June 18, 2013 and March 13, 2018, respectively, and specifying goods and services in multiple classes; and International trademark registration number 1417005 for JCW, registered on August 28, 2017, designating multiple jurisdictions, including the United States, and specifying goods and services in multiple classes. Those trademark registrations remain current. The Complainant has also registered domain names incorporating the word “mini”, including <mini.com>, that it uses in connection with official websites where it provides information about itself and its products. The Complainant permits its authorized dealers to use trade names and domain names comprised in part of the MINI mark for their authorized dealerships.

The Respondent as named is an individual and an organization located in the United States.

The disputed domain name was registered on July 29, 2018. It resolved to a website titled “Mini Cooper Accessories” offering for sale car accessories including smartphone mounts, key chains, car cup holders, stickers, car seat belt padding, car carpets and turning signal lamps. The website displayed the MINI COOPER and JCW marks and also displayed images of the Complainant’s MINI COOPER automobiles. Some of the products displayed were also marked with one of the Complainant’s MINI logos. Prices were quoted in dollars (without indication of the country). At the time of this decision, the disputed domain name no longer resolves to any active website; rather, it is passively held.

5. Parties’ Contentions

A. Complainant

The disputed domain name is confusingly similar to the Complainant’s famous and registered MINI, MINI COOPER and JCW marks because the disputed domain name contains each mark in its entirety.

The Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent’s registration and use of the disputed domain name for a commercial website advertising/ offering unauthorized, infringing, counterfeit, and/or competing products does not constitute a bona fide offering of goods or services nor a legitimate noncommercial or fair use. The Respondent is not and has not been commonly known by the disputed domain name. The Complainant has never authorized the advertising, promotion or offering of products branded with its marks on the website to which the disputed domain name resolves. The website operator is not and has never been authorized by the Complainant to use its marks or to sell the Complainant’s products or services.

The disputed domain name was registered and is being used in bad faith. 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 famous and registered marks as to the source, sponsorship, affiliation, and/or endorsement of the Respondent’s associated website, the products advertised/offered therein, and/or its activities.

B. Respondent

The Respondent confirmed that it closed its store and website after receiving notification of the Complaint from the Center. The Respondent also submitted that it did not know that it was doing anything wrong.

6. Discussion and Findings

Paragraph 4(a) of the Policy provides that the complainant must prove each of the following elements in respect of each disputed domain name:

(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 respect of the disputed domain name; and

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

A. Identical or Confusingly Similar

Based on the evidence submitted, the Panel finds that the Complainant has rights in the MINI COOPER and JCW marks.

The disputed domain name wholly incorporates the MINI COOPER mark as its initial element, but for the space between the words, as spaces do not form part of domain names for technical reasons. The disputed domain name also incorporates the JCW mark.

The only other element in the disputed domain name is a generic Top-Level Domain (“gTLD”) suffix, i.e. “.com”, which is a technical requirement of registration. A gTLD suffix is disregarded in the comparison between a trademark and a domain name for the purposes of the first element of the Policy unless it has some impact beyond its technical function, which is not the case here.

Therefore, the Panel finds that the disputed domain name is confusingly similar to a trademark in which the Complainant has rights. The Complainant has satisfied the first element in paragraph 4(a) of the Policy.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy sets out the following circumstances which, without limitation, if found by the Panel, shall demonstrate that the respondent has rights or legitimate interests in a disputed domain name, for the purposes of paragraph 4(a)(ii) of the Policy:

(i) before any notice to [the respondent] of the dispute, [the respondent’s] use of, or demonstrable preparations to use, the [disputed] domain name or a name corresponding to the [disputed] domain name in connection with a bona fide offering of goods or services; or

(ii) [the respondent] (as an individual, business, or other organization) [has] been commonly known by the [disputed] domain name, even if [the respondent has] acquired no trademark or service mark rights; or

(iii) [the respondent is] making a legitimate noncommercial or fair use of the [disputed] domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

The disputed domain name, which is confusingly similar to the Complainant’s MINI COOPER trademark, resolved to a website titled “BMW Accessories” displaying the Complainant’s MINI COOPER and JCW marks, products marked with one of the Complainant’s MINI logos and images of the Complainant’s automobiles. All of this gave the impression that the Respondent’s website was operated by, or affiliated with, the Complainant. However, the Complainant submits that it has never authorized the advertising, promotion or offering of products branded with its marks on the website to which the disputed domain name resolved and that the website operator was not and had never been authorized by the Complainant to use its marks or to sell the Complainant’s products or services. Nothing on the website clarified that the Respondent had no relationship to the Complainant. Regardless of whether some products were counterfeit or whether other products were competing products, these facts show that the Respondent’s use of the disputed domain name was not in connection with a bona fide offering of goods or services. See Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903. As at the date of this decision, the disputed domain name no longer resolves to any active website. Accordingly, the Panel does not find that the Respondent’s use falls within the terms of paragraph 4(c)(i) of the Policy.

According to the Registrar’s WhoIs database, the Respondent individual’s name is “Rami Nasri” and the Respondent organization’s name is “BMW Accessories”. There is no evidence on the record that the Respondent has been commonly known as “minicooperjcw” within the terms of paragraph 4(c)(ii) of the Policy.

The disputed domain name resolved to a commercial website that offered goods for sale and now does not resolve to any active website. Neither use is a legitimate noncommercial or fair use within the terms of paragraph 4(c)(iii) of the Policy.

In view of the above circumstances, the Panel considers that the Complainant has made a prima facie case that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent failed to rebut that prima facie case because it did not respond to the Complainant’s contentions.

Therefore, based on the record of this proceeding, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant has satisfied the second element in paragraph 4(a) of the Policy.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy provides that certain circumstances, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith. The fourth circumstance is as follows:

(iv) by using the [disputed] domain name, [the respondent has] intentionally attempted to attract, for commercial gain, Internet users to [the respondent’s] web site or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of [the respondent’s] web site or location or of a product or service on [the respondent’s] web site or location.

As regards registration, the registration of the disputed domain name postdates the registration of the Complainant’s MINI COOPER and JCW trademarks. The disputed domain name combines those trademarks and resolved to a website displaying products marked with one of the Complainant’s MINI logos and images of the Complainant’s automobiles. The Panel infers from these circumstances that the Respondent knew of the Complainant and its trademarks at the time that it registered the disputed domain name in 2018. Accordingly, the Panel finds that the Respondent registered the disputed domain name in bad faith.

As regards use, the disputed domain name combines the Complainant’s MINI COOPER and JCW trademarks and resolved to a website that was presented in such a way that it gave the false impression that it was operated by, or affiliated with, the Complainant, for the reasons given in section 6B above. The Panel finds that the disputed domain name is used to attract Internet users by creating a likelihood of confusion with the Complainant’s MINI COOPER and JCW trademarks as to the source, sponsorship, affiliation, or endorsement of the website to which the disputed domain name resolves. This use is intentional and for commercial gain within the terms described in paragraph 4(b)(iv) of the Policy.

The Panel notes that the use of the disputed domain name changed during this proceeding and that the disputed domain name no longer resolves to any active website. This does not alter the Panel’s conclusion and may be a further indication of bad faith.

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

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 <minicooperjcw.com> be transferred to the Complainant.

Matthew Kennedy
Sole Panelist
Date: January 20, 2020

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