The Complainant is Bayerische Motoren Werke AG, Germany, represented by Kelly IP, LLP, United States of America (“United States”).
The Respondent is Toks, Toks Magbagbeola, Nigeria.
The disputed domain names <bmnavigationupdate.com>, <bmnavigationupdates.com>, <bmwnavigationupdates.com>, and <bmwsatnavupdates.com> are registered with Hostinger, UAB
Hostinger, UAB (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 6, 2019. On December 9, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On December 10, 2019, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on December 19, 2019. In accordance with the Rules, paragraph 5, the due date for Response was January 8, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 13, 2020.
The Center appointed Adam Taylor as the sole panelist in this matter on February 3, 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.
The Complainant, a well-known vehicle manufacturer, has over 134,000 employees in 14 countries. It sold more than 1.8 million BMW branded automobiles in each year from 2014 to 2018. In 2018, its worldwide revenue exceeded EUR 97 billion.
The Complainant’s offering includes proprietary navigation software and updates.
The Complainant owns many registered trade marks for BMW including German trade mark no. 410579, filed February 23, 1929, registered November 15, 1929, in classes 7 and 12, and United States trade mark no. 611,710, filed March 10, 1954, registered September 6, 1955, in class 12.
The disputed domain name <bmwsatnavupdates.com> was registered on May 22, 2019.
As of August 8, 2019, the disputed domain name <bmwsatnavupdates.com> was used for a website branded “BMW Map Updates” which offered counterfeit versions of the Complainant’s software. The home page included a photo of a steering wheel with the Complainant’s logo and images of BMW vehicles taken from the Complainant’s own website.
The Respondent’s payment processor and Internet Service Provider terminated their services to the Respondent following an infringement complaint by the Complainant but the Respondent switched to another provider and re-posted the website.
The Respondent registered the other three disputed domain names, <bmnavigationupdate.com>, <bmnavigationupdates.com>, and <bmwnavigationupdates.com>, on September 9, 2019.
As of November 5, 2015, the disputed domain name <bmnavigationupdate.com> was used for a website similar to the one at “www.bmwsatnavupdates.com” (collectively referred to below as “the Active Domains”). The disputed domain names <bmnavigationupdates.com> and <bmwnavigationupdates.com> (“the Passive Domains”) have not been used for active websites.
The disputed domain names are confusingly similar to the Complainant’s trade marks as they incorporate either the BMW trade mark in its entirety or a contraction to “BM”, i.e., by omitting the third letter. In the case of the latter, confusing similarity is confirmed by the content of the website at “www.bmnavigationupdate.com”.
The generic terms in the disputed domain names do not negate confusing similarity. On the contrary, they heighten it, given their relevance to the Complainant’s business.
The Respondent lacks rights or legitimate interests in the disputed domain names.
The Complainant has not authorized the Respondent to use its trade marks.
The Respondent’s use of the Active Domains for websites branded with the Complainant’s trade marks and offering counterfeit versions of the Complainant’s software does not constitute a bona fide offering or legitimate fair use. Nor does the Respondent’s passive holding of the Passive Domains.
The Respondent is not commonly known by the disputed domain names.
The Respondent has registered and used the disputed domain names in bad faith.
The Respondent registered the disputed domain names to disrupt the Complainant’s business.
The Respondent used the Active Domains to intentionally create a likelihood of confusion with the Complainant’s mark. The Passive Domains constitute a passive holding in bad faith.
The registration of four disputed domain names confusingly similar to the Complainant’s trade mark also constitutes a bad faith pattern.
The Respondent did not reply to the Complainant’s contentions.
Under the Policy, the Complainant is required to prove on the balance of probabilities that:
- the disputed domain names are identical or confusingly similar to a trade mark in which the Complainant has rights;
- the Respondent has no rights or legitimate interests in respect of the disputed domain names; and
- the disputed domain names have been registered and are being used in bad faith.
The Complainant has established rights in the mark “BMW” by virtue of its registered trade marks as well as unregistered trade mark rights deriving from the extensive and worldwide use of that name.
Section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) makes clear that, where the relevant trade mark is recognisable within the disputed domain name, the addition of other terms, whether descriptive or otherwise, would not prevent a finding of confusing similarity under the first element.
Here, the Complainant’s distinctive trade mark is readily recognisable within the disputed domain names <bmwnavigationupdates.com> and <bmwsatnavupdates.com> and, accordingly, the addition of the respective descriptive terms are insufficient to avert a finding of confusing similarity.
As regards the disputed domain names <bmnavigationupdate.com> and <bmnavigationupdates.com>, section 1.7 of WIPO Overview 3.0 observes that where at least a dominant feature of the relevant mark is recognisable in the disputed domain name, it will normally be considered confusingly similar to that mark for purposes of UDRP standing. Section 1.7 also states that the overall facts and circumstances of a case (including relevant website content) may support a finding of confusing similarity, particularly where it appears that the respondent registered the disputed domain name precisely because it believed that it was confusingly similar to a mark held by the complainant.
Here, the Panel notes that both of the disputed domain names <bmnavigationupdate.com> and <bmnavigationupdates.com> start with “BM”, which is a dominant part of the Complainant’s “BMW” mark. Also, it is plain from the Respondent’s use of the Active Domains discussed in section 6C below that the Respondent registered the disputed domain names <bmnavigationupdate.com> and <bmnavigationupdates.com> precisely because the Respondent considered that they were similar to the Complainant’s mark.
For the above reasons, the Panel concludes that all of the disputed domain names are confusingly similar to the Complainant’s trade mark.
The Panel therefore finds that the Complainant has established the first element of paragraph 4(a) of the Policy.
As explained in section 2.1 of WIPO Overview 3.0 , the consensus view is that, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If not, the complainant is deemed to have satisfied the second element.
Here, the Complainant has not licensed or otherwise authorised the Respondent to use its trade mark.
Paragraph 4(c) of the Policy gives examples of circumstances which, if proved, suffice to demonstrate that a respondent possesses rights or legitimate interests in the disputed domain name.
As to paragraph 4(c)(i) of the Policy, the Panel has concluded below that the Respondent has used the Active Domains intentionally attempt to attract, confuse and profit from Internet users seeking the Complainant’s products and services. Such use of the disputed domain name could not be said to be bona fide.
There is no evidence of any use of the Passive Domains a bona fide offering of goods or services, nor of any demonstrable preparations for such an offering.
Nor is there any evidence that paragraph 4(c)(ii) or (iii) of the Policy apply in the circumstances of this case.
The Panel finds that the Complainant has established a prima facie case of lack of rights or legitimate interests and there is no rebuttal by the Respondent.
The Panel concludes that the Respondent has no rights or legitimate interests in the disputed domain name and that the Complainant has therefore established the second element of paragraph 4(a) of the Policy.
By using the Active Domains for websites branded “BMW Map Updates” which included the Complainant’s logo and/or copyright images taken from the Complainant’s website and which offered for sale counterfeit versions of the Complainant’s products, the Respondent has intentionally attempted to attract Internet users to its websites for commercial gain by creating a likelihood of confusion with the Complainant’s trade mark.
The Passive Domains, which are similar to the Active Domains and were registered on the same date as one of them, are plainly part of the same illicit scheme. In the Panel’s view each of the Passive Domains constitutes a passive holding in bad faith as explained in section 3.3 of WIPO Overview 3.0 .
The Panel therefore finds that the Complainant has established the third element of paragraph 4(a) of the Policy.
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, <bmnavigationupdate.com>, <bmnavigationupdates.com>, <bmwnavigationupdates.com> and <bmwsatnavupdates.com> be transferred to the Complainant.
Adam Taylor
Sole Panelist
Date: February 17, 2020