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WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Bayerische Motoren Werke AG v. Peter Carrington also trading as Party Night Inc.
Case No. D2003-0367
1. The Parties
The Complainant is Bayerische Motoren Werke AG, Petuelring Munich, Germany,
represented by Aimee Gessner of Germany.
The Respondent is Peter Carrington also trading as Party Night Inc., Jan Luykenstraat
2. The Domain Names and Registrar
The disputed domain names
are registered with Key-Systems GmbH dba domaindiscount24.com
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center")
on May 13, 2003. On May 13, 2003, the Center transmitted
by email to Key-Systems GmbH dba domaindiscount24.com a request for registrar
verification in connection with the domain names at issue. On May 22, 2003,
Key-Systems GmbH dba domaindiscount24.com transmitted by email to the Center
its verification response confirming that the Respondent is listed as the registrant
and providing the contact details for the administrative, billing, and technical
contact. The Center verified that the Complaint satisfied the formal requirements
of the Uniform Domain Name Dispute Resolution Policy (the "Policy"),
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(a) and 4(a), the Center formally
notified the Respondent of the Complaint, and the proceedings commenced on May 26, 2003.
In accordance with the Rules, paragraph 5(a), the due date for Response was
June 15, 2003. The Respondent did not submit any response. Accordingly,
the Center notified the Respondent’s default on June 16, 2003.
The Center appointed Arne Ringnes as the sole panelist in this matter on July 4, 2003.
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
Panelist, in accordance with the Rules paragraph 10 (c) extended the decision
due date to July 22, 2003.
4. Factual Background
The Complainant carries on business in the manufacture and distribution of
motor vehicles and is commonly known as BMW AG. The trademarks "BMW"
and "BMW and design" have been in use since as early as 1917 in Germany.
The details of these registrations are summarized as follows:
Trademark: BMW and design
Registration No. 221388
Reg. Date: December 10, 1917
Goods: Land, air, water vehicles, automobiles, bicycles, accessories for automobiles
and bicycles, vehicle parts; stationary engines for solid, liquid and gaseous
operating supplies and their components and accessory parts.
Valid until: October 31, 2007
Registration No. 410579
Reg. Date: November 15, 1929
Class: 7, 12
Goods: Aircraft engines, land, air, water vehicles, motorcycles, internal combustion
engines for solid, liquid and gaseous operating supplies and their components.
Valid until: February 28, 2009
The Complainant is the registered owner of BMW Trademarks in over 120 countries
worldwide, and over the last 83 years, the Complainant and its subsidiaries,
importers, dealers, and licensees have used the BMW Trademarks throughout the
world, directly and through appropriate licenses and permission.
Complainant’s trademark registrations includes Community Trademark "BMW"
(Community Registration No. 91835), as well as the following US trademarks:
||September 6, 1955
||December 11, 1990
||August 11, 1981
In addition to motor vehicles and other goods listed in the registrations
above, the BMW Trademarks are currently used in relation to a wide variety of
goods, including various accessories and merchandise, such as clothing, watches,
sunglasses and leather goods, which promote the image and lifestyle that are
associated with BMW automobiles and motorcycles. Services such as the repair
and maintenance of motor vehicles, financial leasing of motor vehicles, and
participation and sponsorship of sporting events, are also covered by various
By e-mail dated September 17, 2002, the Complainant advised the Respondent
that the unauthorized use of the BMW trademark in his domain registrations,
especially in association with pornography, tarnished and violated its trademark
rights. Respondent has failed to respond to the Complainant.
5. Parties’ Contentions
The Complainant submits that the domain names at issue are identical or confusingly
similar to the Complainant’s BMW trademark. The more dominant and distinctive
component of the disputed domain names is "BMW", which is identical
to the Complainant’s registered and well-known trademark "BMW". The
addition of any further terms to a well-known trademark does not preclude similarity
to the mark and is not sufficient to render a domain name dissimilar or to prevent
consumer confusion. As support for this general proposition Complainant refers
to General Electric Company v. Forddirect.com, Inc. WIPO
Case No. D2000-0394, as support for this general proposition.
In addition or in the alternative, the Complainant submits that the domain
names <bmwfillms.com>, <bmwfils.com>, <bmwfimls.com>, <bmwfims.com>
and <bmwflim.com> are confusingly similar to the mark "bmwfilms.com",
for which the Complainant has common law rights by way of its use and advertising
of its "www.bmwfilms.com" website. Similarly, the Complainant also
submits that the domain name <bmwuas.com> is confusingly similar to the
mark "bmwusa.com", for which the Complainant has common law rights
by way of its use and advertising of its "www.bmwusa.com" website.
Complainant alleges that the Respondent deliberately has positioned himself
to take advantage of typographical errors by the Internet user when entering
the URL of a known mark or domain name, a practice that is known as typosquatting.
Complainant further submits that the Respondent has no rights or legitimate
interests in respect of the domain name that is the subject of the Complaint.
The Respondent is not a licensee of the Complainant’s marks and has not been
authorized in any way to use the same. The Respondent has made no legitimate
non-commercial or fair use of the domain name.
The use of typosquatting to divert Internet users to pornographic websites
does not demonstrate any legitimate interest.
The Complainant submits that the Respondent was, as under Paragraph 4(b)(iv)
of the Policy, intentionally attempting "to attract, for commercial gain,
Internet users to [the] website....by creating a likelihood of confusion with
the complainant’s mark as to the source, sponsorship, affiliation, or endorsement
of [the] website or location or of a product or service on the website or location."
The Respondent’s domain names were connected to commercial pornographic websites,
and it can also be inferred that the Respondent commercially benefits from diverting
consumers to the numerous advertisements for other pornographic sites that automatically
appear when typing in the domain names at issue. Such a use carries with it
the likelihood of confusing Internet users, who mistype the Complainant’s URL
while searching for the Complainant’s websites.
In fact, the actions of the Respondent (i.e. the use of the domain names to
divert Internet traffic to pornographic sites) has been held in previous decisions
involving the Respondent to represent bad faith use of the domain names. (America
Online, Inc. v. Peter Carrington d/b/a Party Night, Inc., NAF Case No. FA0208000118314.)
VI. Remedies Requested
[Rules, para. 3(b)(x)]
The Complainant requests the Administrative Panel to issue a decision that
the contested domain name be transferred to the Complainant.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
The Panel finds that the Complainant has proved that the domain names in question
are confusingly similar to Complainants trademark rights. This finding is based
on the following grounds:
Complainant has submitted evidence that shows that Complainant is the owner
of the trademark "BMW" in Germany and the United States as well as
the owner of the Community Trademark "BMW". The Community Trademark
is also effective in the Netherlands – which is the country in which Respondent
has its address. It is further the Panel’s understanding that "BMW"
is a well known trademark in many parts of the world.
In Respondent’s domain names certain letters are added to "BMW",
all of them being misspellings of the word "film", i.e. "films",
"fils", "fimls", "fims" and "flim"
or a misspelling of "USA" i.e. "UAS". The Panelist
is in no doubt that these additions do not distance the domain names from Complainant’s
trademarks sufficiently to avoid confusion. Clearly, the dominant parts of the
names are "BMW".
Accordingly, the Panel concludes that the first condition under the Rules is
B. Rights or Legitimate Interests
It is submitted by Complainant that the Respondent has never been entitled
to use any of the Complainant’s trademarks. Respondent’s use of the trademark
"BMW" is neither connected to, sponsored or authorized by, nor within
the control of the Complainant.
There is no evidence in the matter that refutes this submission, and the Panelist
finds that Complainant has proved the second condition under the Rules.
C. Registered and Used in Bad Faith
The relevant question to consider with respect to this third condition under
the Rules, is whether the Respondent by using the domain name, has intentionally
attempted to attract, for commercial gain, Internet users to his website or
other on-line location by creating a likelihood of confusion with the Complainant’s
Complainant has submitted that he first became aware of the Respondent’s registrations
on August 8, 2003, after trying to reach its official American website
at "www. bmwusa.com". Instead, a typographical error was made while
typing the URL ("www.bmwuas.com") and the Complainant was redirected
to a pornographic website at "www. Hanky-panky-college.com". A series
of other pornographic pages and other advertising banners or pages were automatically
generated after being redirected to the Respondent’s websites. The domain name
<bmwuas.com> was found to have been registered by the Respondent on June 3, 2002.
After further research, the Complainant also found further registrations by
the Respondent that mimic the Complainant’s domain name <bmwfilms.com>
namely <bmwfims.com>, <bmwflim.com>, <bmwfillms.com>, <bmwfils.com>,
<bmwfimls.com>. These domain names also pointed to the same pornographic
content and were registered by the Respondent on November 17, 2002.
Complainant points out that the websites at "www.bmwusa.com" and
"www.bmwfilms.com" are popular official "BMW" websites.
The domain name <bmwusa.com> is used as that main website of the Complainant’s
BMW products and is aimed primarily at the American market. The domain name
<bmwfilms.com> is used by the Complainant in connection with a series
of short films which center on the BMW driving experience and has enjoyed great
Based on these facts, which has not been countered by Respondent, the Panel
finds that the Respondent uses the domain names in order to divert Internet
users from Claimant’s sites to pornographic sites which carries on commercial
activities. In order to achieve this the Respondent uses typical typographical
errors of the word "film" and name "USA" which are part
of Complainant’s domain names <bmwfilms.com> and <bmwusa.com>. Accordingly,
the Panelist is of the opinion that Complainant has proved the third condition
under the Rules, namely that Respondent’s domain names have been registered
and are being used in bad faith.
For all the foregoing reasons, in accordance with Paragraphs 4(i) of the Policy
and 15 of the Rules, the Panel orders that the domain names:
are transferred to the Complainant.
Date: July 22, 2003