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WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
BMW AG v. Loophole
Case No. D2000-1156
1. The Parties
The Complainant is Bayerische Motoren Werke AG (BMW AG), Petuelring 130, Munich, Germany, represented by Dr. Jorg Pohlman, Head of Trademarks BMW AG, Munich, Germany ("Complainant").
The Respondent is "loophole". "loophole" is a business name of an unidentifiable business entity with address 2254 Farmcrest st., Milpatas, CA, USA, represented by Mr. Clay Lambert, 2254 Farmcrest Street, Milpitas, CA, USA, the Administrative/Technical/Zone and Billing Contact of "bmw.org" ("Respondent").
2. The Domain Name and Registrar
The dispute concerns the domain name "bmw.org".
The Registrar is Network Solutions, Inc., Virginia, USA.
3. Procedural History
The WIPO Arbitration and Mediation Center ("the Center") received the Complainant’s Complaint in electronic form on August 31, 2000, and in hard copy on September 5, 2000.
The Center verified that the complaint was filed in accordance with the requirements of the ICANN Uniform Domain Name Dispute Resolution Policy ("the Policy"), the Rules for the Policy ("the Rules"), and the Supplemental Rules for the Policy ("the Supplemental Rules").
Complainant made the required payment to the Center.
The formal date of the commencement of this administrative proceeding is September 14, 2000.
On September 11, 2000, the Center transmitted via e-mail to the Registrar a request for registrar verification in connection with this case. On September 12, 2000, the Registrar transmitted via e-mail to the Center, the Registrar’s Verification Response, confirming that (1) Network Solutions is the Registrar of the Domain Name, (2) loophole (the Respondent) is the registrant, (3) Clayton Lambert is the Administrative, Technical, Zone and Billing Contact, (4) the Registrar’s 5.0 Service Agreement is in effect with respect to the Domain Name, and (5) the Domain Name is in "Active" status.
On September 14, 2000, the Center transmitted Notification of Complaint and Commencement of Administrative Proceeding, together with a copy of the Complaint, to the Respondent via e-mail and via post/courier to the address identified in the Registrar verification response. The Center advised that (1) the Respondent’s Response was due by October 3, 2000, (2) in the event of default the Center would still appoint a Panel to review the facts of the dispute and to decide the case, (3) the Panel may draw such inferences from the Respondent’s default as it considers appropriate, (4) the Complainant had elected for the matter to be decided by a single panelist.
The Respondent did not submit a timely Response. Accordingly, the Center sent to the Respondent a Notification of Respondent Default on October 7, 2000.
The Respondent replied with two e-mail messages on October 9, 2000, and one e-mail on October 11, 2000, stating that the Respondent had not received the Notification of Complaint. Finally, the Respondent filed a Late Response on October 11, acknowledged by the Center on October 12, 2000.
On October 10, 2000, in view of the Complainant’s designation of a single panelist the Center invited Mr. P-E Petter Rindforth to serve as a panelist.
Having received Mr. Rindforth’s Statement of Acceptance and Declaration of Impartiality and Independence, the Center, on October 12, 2000, transmitted to the parties a Notification of Appointment of Administrative Panel and Projected Decision Date, in which Mr. Rindforth was formally appointed as the sole Panelist. The Projected Decision Date was October 26, 2000. The Sole Panelist finds that the Administrative Panel was properly constituted and appointed in accordance with the Rules and Supplemental Rules.
Notwithstanding the fact that the Respondent failed to comply with the deadline indicated in the Notification of Complaint and Commencement of Administrative Proceeding, the Panel will take into consideration the Late Response filed on October 11, 2000.
Accordingly, the Administrative Panel shall issue its Decision based on the Complaint, the Late Response, the Policy, the Rules, and the Supplemental Rules. The case before the Panel was conducted in the English language.
4. Factual Background
The Complainant in this administrative proceeding - Bayerische Motoren Werke AG – is more commonly known as BMW AG. The Complainant carries on business in the manufacture and distribution of motor vehicles. The BMW trademarks ("BMW" word and "BMW & Design) have been in use since 1917, in Germany. The earliest BMW & Design trademark registration in Germany is No 221 388, registered December 10, 1917, and valid until October 31, 2007. The earliest BMW word trademark registration in Germany is No 410 579, registered November 15, 1929, and valid until February 28, 2009.
The Complainant is also the registered owner of BMW trademarks in over 120 countries worldwide, covering - in addition to motor vehicles and other goods listed in the registrations above – various accessories and merchandise, such as clothing, watches, sunglasses and leather goods, as well as services such as the repair and maintenance of motor vehicles, financial leasing of motor vehicles, and participation and sponsorship of sporting events.
In the United States, the residence of the Respondent, the Complainant is the owner of the following trademark registrations:
Trademark Country Reg. No. Reg. Date
BMW USA S-12960 10. Sept.1993
BMW USA 611710 06. Sept. 1955
BMW USA 1627241 11. Dec. 1990
BMW USA 1164922 11. Aug. 1981
BMW & design USA S-12961 10. Sept. 1993
BMW & design USA 1450212 04. Aug. 1987
By letter sent by registered mail dated July 18, 2000, the Complainant requested that the Respondent discontinue further use or reference to any BMW trademark and transfer the domain to the Complainant. The Respondent was given 30 days to reply to the letter. The Respondent did not reply to the letter.
No detailed information is provided about the Respondent’s business activities, apart from what is mentioned below under 5.
5. Parties’ Contentions
The Complainant contends that the Domain Name is identical or confusingly similar to the trademark "BMW" in which the Complainant has rights.
The Complainant contends that the Respondent has no rights or legitimate interests in respect of the Domain Name, as the Respondent has never been entitled to use any BMW trademarks (is not a licensee of the Complainants’ trademark and has not been authorized in any way to use the same). The Respondent has made no other legitimate non-commercial or fair use of the domain name.
The Complainant further contends that the domain name was registered and is being used in bad faith.
The BMW trademarks have become unique and is recognized not only among purchasers and users of the Complainant’s products and services, but also among members of the public, as identifying and distinguishing products and services produced and rendered only by the Complainant. Furthermore, the fact that the domain name is registered under the name "loophole", a name which does not refer to any individual or legal entity, strongly indicates that the Respondent had no intention of using the domain name in connection with a bona fide offering of goods or services. The Complainant also submits that making such a false representation in a domain name registration record constitutes bad faith within the meaning of Paragraph 4(b) of the Policy.
The Respondent has also failed to respond to the letter written to him by the Complainant. This should also be taken as an inference of bad faith within the meaning of Paragraph 4(b) of the Policy.
Furthermore, the current content of the web site, which provides a domain name whois lookup, which is commonly associated with web sites which provide domain name registration or brokerage services, indicates that the Respondent will, upon completion of the web site, be using the domain name in a commercial manner.
The Respondent states that the letters B, M and W are singular letters in the alphabet that does not make up a word and that the Complainant has no rights to the BMW trademark except for in relation to automobiles.
The Respondent contends that the Complainant - being a for-profit company – can not claim any rights to a domain name registered under the gTLD .org, as .org domains are intended for individuals and non-profit organizations only.
The Respondent further contends that he, as an individual, can not be said to infringe upon someone else’s specific trade and as such is free to register any domain name.
The Respondent states that he has never attempted to sell the disputed Domain Name, nor has he used the web site for the Domain Name for profit or to cause confusing regarding the Complainant’s products.
The Respondent contends that the meaning of the Domain Name is "B’MegaWatts" (the letter B being the symbol for "MagneticFlux Density", the letter M representing the term "Mega", and the letter W representing the term "Watts"), and that the purpose of the Domain Name is to develop a long distance magnetic induction transfer device.
6. Discussion and Findings
According to Paragraph 4 (a) of the Policy, the Complainant must prove each of the following:
(i) that the Respondent’s Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) that the Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) that the Domain Name has been registered and is being used in bad faith.
There is no doubt that the Respondent’s Domain Name is identical to the Complainant’s well-known and registered trademarks.
The Respondent has no rights to use the Complainant’s trademarks, and is not an authorized agent or licensee of the Complainant’s products, services or trademarks.
The Respondent claims that the gTLD .org is only for non-profit purposes. However, the Panel finds that the gTLD .org is commonly used for commercial purposes and that, at the time of the Respondent’s registration of the Domain Name there did not exist any regulations or other obstacles for for-profit organizations to register under. org.
The Respondent has failed to produce evidence of any legitimate interests in respect of the Domain Name. The Respondents explanation of the meaning of the letters BMW in the Domain Name ("B’MegaWatts") is, especially in view of the Complainant’s well known trademark BMW, not obvious to the common public, nor has the Respondent produced any evidence that he or his business is commonly known by the Domain Name or that he is making a legitimate non commercial or fair use of the Domain Name.
Now to the question if the Complainant has proved the third requirement: that the Domain Name has been registered and is being used in bad faith.
Paragraph 4 (b) of the Policy regulates the kind of evidence and circumstances, "in particular but without limitation" that shall be evidence of the registration and use of a domain name in bad faith. Case law, in particular the Telstra v Nuclear Marschmallows (WIPO Case No D2000-0003) has further exemplified such circumstances where inaction is considered being within the concept of "being used in bad faith".
In this particular case, the Panel has considered the following facts:
h The Complainant is the owner of a number of prior trademark registrations, identical to the Domain Name
h The BMW trademark is well known throughout the world and accordingly so also in the United States, the residence of the Respondent
h The Respondent has identified himself as "loophole", according to several dictionaries, among them Collins Dictionary of the English Language, meaning "an ambiguity, omission, etc., as in a law, by which one can avoid a penalty or responsibility", therewith indicating a purpose to avoid legal consequences of the action to register the Domain Name
h By using the name "loophole" as the name of the Domain Name holder, the Respondent has also taken an active step to conceal his true identity
h The Respondent has provided no evidence of any legitimate commercial, non-commercial or fair use of the Domain Name
h The Respondent has failed to reply to the letter from the Complainant, dated July 18, 2000.
h The Respondent has passively held the Domain Name since December 31, 1997, and only recently provided a domain name whois lookup at the corresponding web site. Such domain name whois lookup is commonly associated with web sites, which provide domain name registration, or brokerage services, indicates that the Respondent will, upon completion of the web site, be using the domain name in a commercial manner.
Considering these circumstances, the Panel concludes that the Respondent’s activities and inactivities satisfies the requirement that the Domain Name has been registered and is being used in bad faith by the Respondent.
The Panel concludes (a) that the Domain Name "bmw.org" is identical to the Complainant’s registered trademark BMW, (b) that the Respondent has no rights or legitimate interest in the Domain Name, and (c) that the Respondent has registered and used the Domain Name in bad faith.
Therefore, pursuant to paragraphs 4 (i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name "bmw.org" be transferred to the Complainant BMW AG.
P-E Petter Rindforth
Dated: October 26, 2000