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WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Bayerische Motoren Werke AG v. Domain Admin
Case No. D2004-0089
1. The Parties
The Complainant is Bayerische Motoren Werke AG, Munich, Germany, represented by BMW AG, Germany.
The Respondent is Domain Admin, New York, United States of America.
2. The Domain Name and Registrar
The disputed domain name <bmw1.com> is registered with eNom.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on February 2, 2004. On February 3, 2004, the Center transmitted by email to eNom a request for registrar verification in connection with the domain name at issue. eNom failed to submit a verification response. Therefore, the Center made a Whois printout on February 9, 2004, which showed that the disputed domain name was registered with eNom, and that the Respondent, Gary Bradshaw, was the current registrant of the disputed domain name. The Panel would like to remind the Registrar of the importance of providing a verification response so that the Center can ascertain the contact information of the Respondent and provide appropriate notice and furthermore to ensure that the domain name registration remains locked during the UDRP proceedings. 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 February 9, 2004. In accordance with the Rules, Paragraph 5(a), the due date for Response was February 29, 2004. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 1, 2004.
The Center appointed Knud Wallberg as the sole panelist in this matter on March 18, 2004. 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 carries on business in the manufacture and distribution of motor vehicles. The trademarks BMW and BMW AND DESIGN have been in use since as early as 1917, in Germany.
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 trademark registrations.
The Complainant is the registered owner of BMW Trademarks in over 120 countries worldwide. Due to the location of the residence of the Respondent, the Complainant has, in particular, enclosed copies of the registration certificates for its United States trademark registrations.
5. Parties’ Contentions
The following is taken from the Complaint:
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, in connection with goods and services recognized in the U.S.A. and throughout the world to be of the highest quality.
By reason of these efforts and care, and the excellent quality of BMW products and services, the BMW Trademarks have become unique and are identified by the public solely with the Complainant and its products and services. Accordingly, the Complainant enjoys an exceedingly valuable reputation and goodwill in the U.S.A. and throughout the world, not only among purchasers of their products and users of their services, but also among other members of the public. The public has long recognized the trademark BMW as identifying and distinguishing products and services produced and rendered only by the Complainant.
In BMW AG v. Loophole, WIPO Case No.
D2000-1156 <bmw.org>, the Panel has acknowledged that the BMW Trademarks
are well known throughout the world.
The Respondent has never been entitled to use any of the Complainant’s trademarks. Respondent’s use of the BMW Trademarks is neither connected to, sponsored or authorized by, nor within the control of the Complainant.
The Complainant first became aware of the Respondent’s registrations on August 14, 2003. A print out of the web site connected to this domain name on August 14, 2003, shows that the domain name <bmw1.com> was being used to feature links to various car topics and search engines such as Google and Yahoo. A statement in large bold letters stating, "www.bmw1.com available for sale!", could be seen. A link providing a contact to the webmaster led to a page that provided a form that could be filled out for comments. The "Comments" field stated: "Minimum sale price for any domain: $1000 USD".
A print out of the web site connected to this domain name from August 20, 2003,
shows some minor modifications to the web site. Links listing the names of other
car manufacturers’ models (none referring to BMW) were shown on the web site.
When clicking upon the links provided, one was led to a search engine web site
By attachment letter sent via email to the administrative contact dated August 20, 2003, the Complainant advised the Respondent that the unauthorized use of the BMW Trademarks within the domain name <bmw1.com> violated its trademark rights. The letter requested that the Respondent discontinue any further use or reference to the Complainant’s trademarks and that the domain name be transferred to the Complainant. A deadline for reply of September 22, 2003, was given.
On October 22, 2003, after not having yet received a reply from the Respondent, and after no changes could be seen on the web site of "www.bmw1.com", the Complainant sent a reminder notice to the Respondent through the contact form to the webmaster as provided on the web site
The Respondent, however, never replied. The web site for "www.bmw1.com" has changed back to its original format as discovered in August 2003, and is still being offered for sale. The domain has also been recently renewed until January 12, 2005.
Due to the lack of response from the Respondent and the persistent misuse of the BMW Trademarks, the Complainant taking part in these proceedings to obtain a transfer of the domain name.
(i) The disputed domain name is identical or confusingly similar to the Complainant’s trademarks
In accordance with Paragraph 4(a)(i), the Complainant submits that the domain name <bmw1.com> is identical or confusingly similar to the Complainant’s BMW Trademarks.
The more dominant and distinctive component of the disputed domain name is "BMW", which is identical to the Complainant’s registered and well-known trademark "BMW".
The addition of the number "1" does not make the predominant element "BMW" less distinctive. The use of the number 1 could have a number of meanings which do not detract from the distinctiveness of the BMW name, such as that the BMW brand is ‘number one’ or the best, or that the BMW brand is a premium brand. The number 1 could also be taken to be a reference to the Complainant’s car model naming system, which refers to its various product lines with the numbers 3, 5, 6 and 7. In fact, the Complainant will be extending its product line in 2004, to include a "1 Series" of cars, as can be shown by the number of hits provided on the search engine "Google" when one searches the term "BMW 1 Series", thus increasing the likelihood that consumers searching for information on the new BMW 1 model would expect to find an official site of the Complainant at "www.bmw1.com" rather than the Respondent’s web site.
Further, the ending ".com" is a generic top level domain, which is not sufficient to render a domain name dissimilar or to prevent consumer confusion.
(ii). Respondent’s Lack of Legitimate Interests
In accordance with Paragraph 4(c) of the Policy, the Complainant 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 Complainants’ 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.
(iii) Respondent’s Registration and Use of the Domain Name in Bad Faith
As outlined previously in this Complaint, the Respondent’s web site includes statements offering the domain name for sale for a minimum price of US $1000. Such an offer to sell the domain name is evidence constituting bad faith registration and use within the meaning of Paragraph 4(b) of the Policy. The whois registration details of the Respondent also features the statement "*******It’s all in the name*******", showing that the Respondent is likely in the business of selling domain names.
Furthermore, the Complainant submits that the Respondent is, as under Paragraph 4(b)(iv) of the Policy, intentionally attempting "to attract, for commercial gain, Internet users to [the] web site....by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of [the] web site or location or of a product or service on the web site or location." The domain name <bmw1.com> was connected to a search web site for various topics. Such web sites are financed with revenue from the web sites that are featured in the searches and therefore constitutes use of the domain name in a commercial manner. The web sites used did not contain any information that was specific to the Complainant’s products or services and was being used merely to attract Internet users searching for information regarding BMW products on the Internet. Those who accidentally come across the web site may be confused as to whether the Respondent’s site is sponsored or affiliated by the Complainant.
The Respondent has also failed to respond to the correspondence from the Complainant, not even simply to explain why the name was registered or to defend its position with respect to the name. Furthermore, after the Complainant informed the Respondent of its trademark rights, the Respondent continued its activities and even went on to renew the domain name for another term. These actions and/or omissions should also be taken as an inference of bad faith within the meaning of Paragraph 4(b) of the Policy.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Pursuant to Paragraph 15(a) of the Rules, the Panel shall decide the complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.
In accordance with Paragraph 4(a) of the Policy, the Complainant must prove that each of the three following elements are satisfied:
(i) The domain name is identical or confusingly similar to a trademark or service mark 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 has been registered and is being used in bad faith.
Paragraph 4(a) of the Policy states that the burden of proving that all these elements are present lies with the Complainant. At the same time, in accordance with Paragraph 14(b) of the Rules, if a party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under, the Rules or any request from the Panel, the Panel shall draw such inferences there from, as it considers appropriate.
A. Identical or Confusingly Similar
The evidence presented by the Complainant demonstrates without doubt that the Complainant’s trademark BMW has long been a federally registered trademark in the United States. The mark must be considered to be famous and has substantial value on account of its recognition and goodwill.
The Panel finds that the domain name <bmw1.com> is confusingly similar to the Complainant’s mark BMW. The addition of the single number "1" does not change this assessment.
The requirement of Paragraph 4(a)(i) is met.
B. Rights or Legitimate Interests
The Complainant alleges that the Respondent has no rights or legitimate interest in the domain name. The Respondent has not rebutted this allegation and in view of the Panel it is unlikely that any such rights or interest may exist.
Therefore, the requirement of Paragraph 4(a)(ii) is also met.
C. Registered and Used in Bad Faith
Given the notoriety of the BMW mark, and based on the proven facts that the domain name is actively used as a collection of links to web-sites that relates to the car industry in its broadest sense, and that the domain name is offered for sale on the corresponding web-site, the Panel finds that the requirements of Paragraph 4(a)(iii) are also met.
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 name <bmw1.com> be transferred to the Complainant.
Dated: March 31, 2004