WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Bayerische Motoren Werke AG v. Gipol Kaip

Case No. D2016-0906

1. The Parties

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

The Respondent is Gipol Kaip of Stockholm, Sweden.

2. The Domain Name and Registrar

The disputed domain name <bmw---deutschland.info> is registered with eNom, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 5, 2016. On May 6, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 5, 2016, 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 10, 2016. In accordance with the Rules, paragraph 5, the due date for Response was May 30, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 31, 2016.

The Center appointed Cherise Valles as the sole panelist in this matter on June 13, 2016. 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, markets and sells automobiles and motorcycles and provides numerous services including maintenance and repair services, financing, leasing, insurance, and warranty services, among others. The Complainant also uses and licenses its BMW mark on a wide variety of automobile and motorcycle parts and accessories and numerous collateral products.

The Complainant’s headquarters are located in Germany (“Deutschland” in German). Its products and components are manufactured at 30 sites in 14 countries on four continents, including in the United States, and it has more than 122,000 employees worldwide. The Complainant currently has approximately 3,310 authorized dealers in locations throughout the world, including many in Germany and the United States.

Over the years, the Complainant has sold products and services extensively under the BMW mark. In 2015, the Complainant had worldwide sales and revenue in excess of EUR 92 billion. In prior years, its sales were also in the billions, with revenues of more than EUR 80 billion in 2014, 76 billion EUR in 2013, more than EUR 76 billion in 2012, and more than 68 billion EUR in 2011.

The Complainant is the owner of multiple trademark registrations throughout the world, including in Germany, for the mark BMW. These include the following:

- German trademark Registration No. 221388 for BMW, registered on December 10, 1917, in classes 12, 7, 8, 9, and 11;

- German trademark Registration No. 410579 for BMW, registered on November 15, 1929, in classes 12 and 7;

- United States trademark Registration No. 611,710 for BMW, registered on September 6, 1955, in class 12;

- United States trademark Registration No. 613,465 for BMW, registered on October 4, 1955, in class 12.

The Complainant’s BMW mark enjoys worldwide recognition. Interbrand, one of the world’s leading branding firms, has ranked the BMW brand in its “Top 100” report for global brands for many years, and in 2015, ranked the BMW mark 11th of the “Best Global Brands” with a value of more than USD37.2 billion.

The Complainant has also registered the trademark BMW as a domain name under several generic Top‑Level Domains (“gTLDs”) and country code Top-Level Domains (“ccTLDs”) among these; <bmw.de> (with “.de” for “Deutschland” and which resolves to a website named “BMW Deutschland”), <bmw.com> and <bmwgroup.com>.

The disputed domain name <bmw---deutschland.info> was registered on October 10, 2015. The disputed domain name appears to have been used in connection with a fraudulent email scheme. The disputed domain name does not resolve to an active website.

5. Parties’ Contentions

A. Complainant

The Complainant asserts that each of the elements enumerated in paragraph 4(a) of the Policy and the corresponding provisions in the Rules have been satisfied. In particular, the Complainant asserts that:

The disputed domain name is identical or confusingly similar to a trademark in which the Complainant has rights.

- The disputed domain name is confusingly similar or identical to the Complainant’s registered trademark, BMW, in light of the fact that it wholly incorporates the Complainant’s mark.

The Respondent lacks rights or legitimate interests in the disputed domain name.

- The Complainant states that the Respondent should be considered as having no rights or legitimate interests in the disputed domain name. The Complainant has never licensed or otherwise permitted the Respondent to use its trademarks or to register any domain name that included its trademarks.

The disputed domain name has been registered and is being used in bad faith.

- The Complainant asserts that the disputed domain name was registered and is used in bad faith. The mere fact of registration of a domain name that is confusingly similar or identical to a famous trademark by an entity that has no relationship to that mark is itself evidence of bad faith registration and use. The use of the disputed domain name for fraudulent email activities is further evidence of bad faith on the part of the Respondent.

The Complainant requests the Panel to issue a decision finding that the disputed domain name be transferred to the Complainant, in accordance with paragraph 4(i) of the Policy.

B. Respondent

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

6. Discussion and Findings

The Policy provides specific remedies to trademark owners against registrants of domain names where the owner of the mark (i.e., the complainant) establishes each of the following elements:

(i) the domain name is identical or confusingly similar to a trademark in which the complainant has rights;

(ii) the respondent has no rights or legitimate interests in respect of the domain name; and

(iii) the domain name was registered and is being used in bad faith.

The Complainant has the burden of proof in establishing each of these elements.

The Respondent has failed to file a response in these proceedings and is therefore in default and the Panel may draw appropriate inferences from the available evidence submitted by the Complainant in accordance with the Rules, paragraph 14(b).

A. Identical or Confusingly Similar

To prove this element, the Complainant must have trademark rights and the disputed domain name must be identical or confusingly similar to the Complainant’s trademark.

The Complainant is the sole and exclusive owner of the BMW mark. The Complainant is the owner of multiple trademark and domain name registrations in Germany and internationally for the trademark BMW, as indicated in Section 4 above and as demonstrated in Exhibits 11 and 12 to the Complaint.

The disputed domain name wholly incorporates the element “bmw”, which is identical to the trademark BMW registered by the Complainant as trademarks in countries all over the world. Numerous earlier UDRP decisions have held that when a domain name wholly incorporates a complainant’s registered trademark, it is sufficient to establish confusing similarity for purpose of the Policy. See Alstom v. FM Laughna, WIPO Case No. D2007-1736.

The addition of the word “Deutschland” to the Complainant’s BMW mark increases the likelihood of confusion, because it has an obvious relationship to the Complainant’s business in that it identifies the location of the Complainant’s headquarters and is identical to the Complainant’s website name “BMW Deutschland”. UDRP panels have consistently held that domain names comprised of a trademark and terms relating to the trademark owner’s business, including geographic terms, are confusingly similar to the mark at issue, and many such panels have held that the addition of related terms to a mark heightens the confusingly similarity of the domain name. See, BMW v. PPA Media Services, WIPO Case No. D2013-0704. Moreover, UDRP panels have consistently held that combining a mark with a geographic term renders the domain name confusingly similar to that mark, and that gTLDs and hyphens are irrelevant to the confusing similarity analysis, including in directly-on-point cases involving the BMW mark. See, BMW v. Edwards, WIPO Case No. D2008-1624.

Finally, the addition of “.info”, a gTLD suffix, is non-distinctive and is typically without significance when assessing the identity or confusing similarity of a domain name to a complainant’s prior trade mark rights. See, LEGO Juris A/S v Mariusz Zielezny, WIPO Case No. D2010-0796.

In the light of the foregoing, the Panel finds that the disputed domain name <bmw---deutschland.info> is confusingly similar to the Complainant’s registered mark and that paragraph 4(a)(i) of the Policy is satisfied.

B. Rights or Legitimate Interests

The burden of proof is on the Complainant to establish that the Respondent lacks rights or legitimate interests in the disputed domain name. Under the UDRP, if a prima facie case is established by the Complainant, then the burden of production of evidence shifts to the Respondent to demonstrate that it has rights or legitimate interests in the disputed domain name.

Paragraph 4(c) of the Policy enumerates three non-exclusive ways in which a respondent may demonstrate rights or legitimate interests in a domain name:

“[a]ny 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 Respondent did not submit a response or attempt to demonstrate any rights or legitimate interests in the disputed domain name, and the Panel draws adverse inferences from this failure, where appropriate, in accordance with the Rules, paragraph 14(b).

The Respondent appears to have no registered trademarks or trade names corresponding to the disputed domain name. The Respondent is not in any way associated with the Complainant and has never sought nor received authorization or a license to use the Complainant’s BMW trademark in any way or manner, including registering a domain name containing the element “bmw”.

The mere registration of a domain name does not give the owner a right or a legitimate interest in respect of the domain name. Moreover, the Respondent is not an authorized dealer of the Complainant’s products and has never had a business relationship with the Complainant. Previous UDRP panels have found that in the absence of any license or permission from the complainant to use such a widely-known trademark, no actual or contemplated bona fide or legitimate use of the domain name can reasonably be claimed. See, BMW v. Whois Protection, WIPO Case No. D2007-1142.

The Complainant’s trademarks are widely known in Germany, where the Complainant is headquartered, and in many other countries in the world, and, the Complainant operates a number of websites for use in various countries which incorporate the trademark BMW, as mentioned in Section 4 above. The Respondent must therefore have been aware of the Complainant’s rights in the name BMW at the time of the registration of the dispute domain name. The Respondent cannot reasonably claim to have been using the trademark BMW without having been aware of the Complainant’s rights to it. This suggests that the Respondent’s interests cannot have been legitimate.

The Respondent allegedly uses the disputed domain name in connection with fraudulent activities, specifically, using the email address “[store]@bmw---deutschland.info” and variations thereof to pose as an employee of the Complainant in order to fraudulently offer products on the online marketplace website ”www.quoka.de”. The Respondent’s use of the disputed domain name in connection with fraudulent transactions on the ”www.quoka.de” online marketplace website and the Respondent posing as an employee of the Complainant do not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name under the UDRP.

In the light of the foregoing, the Panel finds that the Complainant has established an unrebutted prima facie case and concludes that paragraph 4(a)(ii) of the Policy is satisfied.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy states that any of the following circumstances, in particular but without limitation, shall be considered evidence of the registration and use of a domain name in bad faith:

(i) circumstances indicating that the respondent registered or acquired the domain name primarily for the purpose of selling, renting or otherwise transferring the domain name registration to the complainant (the owner of the trademark or service mark) or to a competitor of that complainant, for valuable consideration in excess of documented out-of-pocket costs directly related to the domain name;

(ii) the respondent has 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 the respondent has engaged in a pattern of such conduct;

(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, the respondent 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 the respondent’s website or location or of a product or service on its website or location.

As stated above, the Respondent is using the disputed domain name to intentionally attract, for commercial gain, Internet users by creating a likelihood of confusion with the Complainant’s famous BMW mark. Previous UDRP panels have held that this constitutes bad faith registration and use under the Policy. Moreover, the Respondent is unfairly disrupting the Complainant’s business by using the disputed domain name for fraudulent activities and can be interpreted as bad faith.

As indicated in Section 4 above, the Complainant’s BMW marks were registered long before the disputed domain name. The Respondent must have been aware of the existence of the Complainant’s rights in the trademarks when registering the disputed domain name, in particular because the Respondent posed as an employee of the Complainant. Previous UDRP panels have held that the registration of a domain name obviously connected with well-known trademarks by someone without any connection to these trademarks suggests opportunistic bad faith. See, BMW v. Niemiec, WIPO Case No. D2003-0240.

Finally, the Respondent is not using the disputed domain name for a website – the disputed domain name does not resolve to a functioning website (as shown in Exhibit 22 to the Complaint). Previous UDRP panels have held that non-use of a disputed domain name for a website, i.e., “passive holding,” constitutes bad faith.

Accordingly, the Panel concludes that the Complainant has satisfied its burden of showing bad faith registration and use of the disputed domain name under paragraph 4(a)(iii) 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 <bmw---deutschland.info> be transferred to the Complainant.

Cherise Valles
Sole Panelist
Date: July 10, 2016