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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Bayerische Motoren Werke AG v. Zinaida

Case No. D2021-1574

1. The Parties

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

The Respondent is Zinaida, Ukraine.

2. The Domain Name and Registrar

The disputed domain name <bwmgroup.net> (the “Domain Name”) is registered with PDR Ltd. d/b/a PublicDomainRegistry.com (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 20, 2021. On May 20, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On May 21, 2021, 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 May 27, 2021. In accordance with the Rules, paragraph 5, the due date for Response was June 16, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 18, 2021.

The Center appointed Gregor Vos as the sole panelist in this matter on June 24, 2021. 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 headquartered in Germany and is part of the BMW Group. Its products and components are manufactured at 31 sites in countries around the world, including in the United States. The Complainant has more than 120,000 employees worldwide and is one of the most successful manufacturers of automobiles and motorcycles in the world. Over the years, the Complainant has sold many billions worth of products and services. In 2020, Complainant’s worldwide sales and revenue exceeded EUR 98 billion.

The Complainant is the owner of inter alia the following trademark registrations in Germany and the United States (hereinafter jointly referred to as: the “Trademarks”):

- Germany reg. No. 410579 BMW registered on November 15, 1929;

-United States reg. No. 611710 BMW registered on September 6, 1955;

- United States reg. No. 613465, logo registered on October 4, 1955;

- United States reg. No. 3418573 logo registered on April 29, 2008;

- Germany reg. No. 302016105664 BMW GROUP, registered on January 11, 2017;

- United States reg. No. 5735995 BMW GROUP, registered on April 30, 2019.

Further, it is undisputed that the Complainant is the holder of inter alia the following domain names:

- <bmwgroup.com>, registered on November 4, 1998;
- <bmwgroup.net>, registered on May 6, 1999;
- <bmwgroup.jobs>, registered on September 15, 2005.

The Domain Name was registered on November 16, 2020 by the Respondent and is not currently active.

5. Parties’ Contentions

A. Complainant

With the Complaint, the Complainant seeks that the Domain Name is transferred to the Complainant. The Complaint is based on the following factual and legal grounds: the Domain Name is identical or confusingly similar to the Trademarks of the Complainant, the Respondent has no rights or legitimate interests in the Domain Name and the Domain Name has been registered and is being used in bad faith.

Firstly, according to the Complainant, the Domain Name is identical or confusingly similar to its famous Trademarks. The Trademarks are almost identically reproduced in the Domain Name, with the only difference being that the letters “M” and “W” are transposed. This would be an obvious case of misspelling or typosquatting. The mere addition of a generic top-level domain name like “.net” is not sufficient to distinguish the Domain Name from the Complainant’s Trademarks, according to the Complainant.

Secondly, according to the Complainant, the Respondent has no rights or legitimate interests in the Domain Name. The Respondent has no legitimate interest in the Domain Name under paragraphs 4(c)(i) and 4(c)(iii) of the Policy. Respondent’s registration and use of the Domain Name for fraudulent activities does not constitute a bona fide offering of goods or services nor a legitimate noncommercial of fair use. Further, Respondent’s use of the Domain Name constitutes passing off, in that the Respondent is trying to pass off its website as Complainant’s website or as a website affiliated with the Complainant. According to the Complainant, the obvious misspelling in the Domain Name of its Trademarks and the current passive holding further evidence the lack of legitimate interest in the Domain Name on the part of the Respondent. Also, the Respondent is not commonly known by the Domain Name, and could not have been in light of the fame of the Complainant’s Trademarks, and the Respondent is not a licensee of the Complainant or otherwise authorized to use the Trademarks of the Complainant.

Finally, according to the Complainant, the Respondent has registered and is using the Domain Name in bad faith. The Respondent has used the Domain Name to intentionally attract, for commercial gain, Internet users by creating a likelihood of confusion with the Complainant and its Trademarks as to the source, sponsorship, affiliation, and/or endorsement of Respondent’s website. Also, the Respondent unfairly disrupts the Complainant’s business by having used the Domain Name for fraudulent, phishing, and passing off activities, by competing with the Complainant for Internet traffic, and by interfering with the Complainant’s ability to control the use of its Trademarks. According to the Complainant, the Respondent’s bad faith is further evidenced by its passing off and phishing activities, its registration and use of the Domain Name constituting typosquatting, and its current non-use or passive holding of the Domain Name. Moreover, according to the Complainant, it is indisputable that the Respondent registered the Domain Name with knowledge of the Complainant’s Trademarks, in light of their strong reputation and well-known character.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

In view of the lack of a response filed by the Respondent as required under paragraph 5 of the Rules, this proceeding has proceeded by way of default. Hence, under paragraphs 5(f), 14(a) and 15(a) of the Rules, the Panel is directed to decide this administrative proceeding on the basis of the Complainant’s undisputed factual presentations.

For the Complainant to succeed, it must prove, within the meaning of paragraph 4(a) of the Policy and on the balance of probabilities that:

i. the Domain Name is identical or confusingly similar to a trademark or a service mark in which the Complainant has rights; and
ii. the Respondent has no rights or legitimate interests in respect of the Domain Name; and
iii. the Domain Name has been registered and is being used in bad faith.

Only if all three elements have been fulfilled, the Panel is able to grant the remedies requested by the Complainant. The Panel will deal with each of the requirements in turn.

A. Identical or Confusingly Similar

Paragraph 4(a)(i) of the Policy requires the Complainant to show that the Domain Name is (i) identical or confusingly similar to a trademark or service mark, (ii) in which the Complainant has rights.

With respect to having rights pursuant to paragraph 4(a)(i) of the Policy, it is noted that the Complainant is registered as the owner of numerous trademarks for BMW and BMW GROUP. Consequently, the Panel finds that the Complainant has proven that it has rights in the Trademarks.

With regard to the assessment of identity or confusing similarity of the Domain Name with the Trademarks, it is generally accepted that this test involves a reasoned but relatively straightforward comparison between the Complainant’s Trademarks and the Domain Name (see section 1.7 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”)). The Panel finds that the Domain Name is confusingly similar to the Complainant’s Trademarks.

“A domain name which consists of a common, obvious, or intentional misspelling of a trademark is considered by panels to be confusingly similar to the relevant trademark” (WIPO Overview 3.0, section 1.9). This is confirmed in earlier Panel decisions, where the mere transposition of two letters does not prevent a confusing similarity between the disputed domain name and the relevant trademark (Schneider Electric S.A. v. Domain Whois Protect Service / Cyber Domain Services Pvt. Ltd., WIPO Case No. D2015-2333 (<schnieder-electric.com>)).

In the present case, the Domain Name incorporates the Complainant’s Trademarks in their entirety, with the mere transposition of the letters “M” and “W”, which does not prevent a finding of confusing similarity. Consequently, the Panel finds that the requirement under paragraph 4(a)(i) of the Policy has been satisfied.

B. Rights or Legitimate Interests

The second requirement the Complainant must prove is that the Respondent has no rights or legitimate interests in the Domain Name. The onus of proving this requirement, like each element, falls on the Complainant. Given the difficulty in proving a negative, however, it is usually sufficient for a complainant to make out a prima facie case that a respondent lacks rights or legitimate interests. If a complainant does establish a prima facie case, the burden of production shifts to the respondent (see, e.g. WIPO Overview 3.0, section 2.1; Sanofi v. Cimpress Schweiz GmbH, WIPO Case No. D2017-0522).

Paragraph 4(c) of the Policy lists three nonlimitative examples of instances in which a respondent may establish rights or legitimate interests in the disputed domain name.

The Complainant has substantiated that none of these circumstances apply in this case. By defaulting, the Respondent has failed to address the prima facie case thus established by the Complainant. Furthermore, based on the record before it, the Panel does not see an indication that any of the circumstances of paragraph 4(c) of the Policy is present.

Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name. Paragraph 4(a)(ii) is thereby fulfilled.

C. Registered and Used in Bad Faith

Under paragraph 4(a)(iii) of the Policy, a complainant must show that the disputed domain name has been registered and is being used in bad faith. Paragraph 4(b) of the Policy lists four nonlimitative circumstances which may be considered as evidence of registration and use in bad faith of a domain name.

In the present case, the Trademarks are registered by the Complainant and have been used for many years. The Complainant’s rights to the Trademarks predate the registration date of the Domain Name. In light of the strong reputation and well-known character of the Trademarks, the Panel agrees with the Complainant that it is not conceivable that the Respondent chose the Domain Name without knowledge of the Complainant’s activities and its Trademarks under which the Complainant is doing business. The strong reputation and well-known character of the Trademarks of the Complainant has been confirmed by earlier Panels (see e.g. Bayerische Motoren Werke AG v. Diagnostic Software, Global Domain Privacy / Elizabeth Davis, Chen Guo Qiang, WIPO Case No. D2020-1110; Bayerische Motoren Werke AG v. Gerry Scarantine, WIPO Case No. D2018-0233). Furthermore, the content of the Respondent’s website that was linked to the Domain Name contained fraudulent content and phishing links. This suggests that the Domain Name was registered in recognition of the similarity between the Domain Name and the Trademarks. These facts show bad faith registration of the Domain Name.

With regard to use of the Domain Name in bad faith, the Panel finds that the misspelling of the Trademarks in the Domain Name signals an intention on the part of the Respondent (WIPO Overview 3.0, section 1.9). The Panel agrees with the Complainant that the Respondent unfairly disrupts the Complainant’s business by having used the Domain Name for fraudulent and phishing activities and by competing with the Complainant for Internet traffic. In addition, the Respondent’s bad faith is evidenced by its current non-use or passive holding of the Domain Name.

Accordingly, the Panel finds that the Domain Name has been registered and is being used in bad faith and that the third element of paragraph 4(a)(iii) of the Policy is fulfilled.

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 Domain Name <bwmgroup.net> be transferred to the Complainant.

Gregor Vos
Sole Panelist
Date: July 8, 2021

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