The Complainant is Bayerische Motoren Werke AG (BMW AG) of Munich, Germany, represented by Wedlake Bell, United Kingdom of Great Britain and Northern Ireland.
The Respondents are Henry Metcalf of Stamford, United Kingdom of Great Britain and Northern Ireland and Jonny Norman of the United Kingdom of Great Britain and Northern Ireland.
2. The Domain Name and Registrar
The disputed domain name <bmwapprovedusedcars.com> (the “Domain Name”) is registered with Tucows Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 8, 2009. On December 9, 2009, the Center transmitted by email to Tucows Inc. a request for registrar verification in connection with the Domain Name. On December 10, 2009, Tucows Inc. transmitted by email to the Center its verification response confirming that the first 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(a) and 4(a), the Center formally notified the Respondents of the Complaint, and the proceedings commenced on December 14, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was January 3, 2010. The Respondents did not submit a Response. Accordingly, the Center notified the Respondents' default on January 4, 2009.
As the Domain Name was set to expire on January 18, 2009, the Center on December 14, 2009 requested Tucows Inc. to indicate whether any action was required from the parties regarding the renewal of the Domain Name. On the same date Tucows Inc. informed the Center and the parties that the parties needed to pay a renewal fee. On December 17, 2009 the Complainant's representative and Tucows Inc. confirmed to the Center that the renewal fee had been paid.
The Center appointed Alexandre Nappey as the sole panelist in this matter on January 7, 2010. 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 a multinational corporation organized under the laws of the Federal Republic of Germany and is one of the largest car manufacturers in the world.
The United Kingdom (UK) forms the third largest market for the Complainant's group, in which it sold approximately 151.000 new cars in 2008.
Since at least 1917 the Complainant has continuously used the word trademark BMW in Germany. It has used the BMW trademarks in the UK and in other countries since at least 1949 in connection with the manufacture and the supply of motor vehicles, parts, fittings and accessories thereof.
The Complainant, its subsidiaries and authorized dealers also supply services relating to its motor vehicles, including repair, finance and leasing services in connection with motor vehicles. Since 1992, the Complainant and its network of 150 UK authorized car dealers operate an “approved used” BMW car scheme in which they refer to cars as “BMW Approved Used Cars”.
The Complainant is the registered owner of BMW trademarks registered in numerous countries throughout the world, including in the UK.
A UK nominative trademark BMW is registered in the name of the Complainant under no. 1020725 since November 14, 1973.
The Complainant has an extensive Internet presence through its websites available at “www.bmw.com” and “www.bmw.co.uk”. The approved used car service is also available to the public under specific domain names and websites, for instance “www.approvedusedbmw.co.uk”.
The Domain Name was registered on January 18, 2009. It was initially pointing to a parking page provided by the reseller of the registrar and is now inactive. The Complainant became aware of the registration when the first Respondent got in touch with several dealers to sell the Domain Name.
On January 28, 2009 the Complainant sent a cease and desist letter to the first Respondent advising of its intellectual property rights and requesting the assignment of the Domain Name. The first Respondent answered to this letter by phone, informing that he was not willing to transfer the Domain Name to the Complainant but would try to sell it.
On April 29, 2009 a reminder was sent to the first Respondent, who on May 18, 2009 informed by phone that he had sold the Domain Name to the second Respondent. On May 28, 2009, the second Respondent confirmed by phone that he was the owner of the Domain Name. A cease and desist letter was immediately sent to the second Respondent who never replied.
5. Parties' Contentions
A. Complainant
The Complainant claims that it has long established trademark rights for the BMW trademarks throughout the world and more particularly in the UK. Consequently the Complainant asserts a well established goodwill and reputation by reference of its trademarks based on more than 35 years use in the UK.
The Complainant contends that the Domain Name is identical or confusingly similar to its trademarks because the predominant element of the Domain Name is BMW which is distinctive and eligible for protection per se. The additional words are generic terms which do not create a new wording with a meaning of its own.
On the second point the Complainant submits that the Respondents have no right or legitimate interest in the Domain Name prior to the registration and use of the BMW trademarks by the Complainant in the UK, 35 years ago.
Neither of the Respondents has any connection with the Complainant or any company licensed to use the BMW trademarks. They have not been authorized to use the BMW trademarks, nor have they used or made demonstrable preparation to use the Domain Name in connection with a bona fide offering of goods or services. Last the Complainant underlines that neither of the Respondents is making a legitimate noncommercial or fair use of the Domain Name at issue, on the contrary each of the Respondents threatened to sell the Domain Name for substantial sums of money.
With respect to bad faith, the Complainant reminds that the first Respondent has registered several other “.uk” domain names referring to prestigious motor car manufacturers, suggesting a pattern of conduct.
Further the Complainant claims that all circumstances indicate that the first Respondent registered the Domain Name primarily for the purpose of selling it to a third party, whereafter the second Respondent notified the Complainant that he had acquired the Domain Name for a sum of money.
B. Respondents
The Respondents did not reply to the Complainant's contentions.
6. Discussion and Findings
Notwithstanding the default of the Respondents, it remains up to the Complainant to make out its case in accordance with paragraph 4(a) of the Policy, and to demonstrate that:
(i) The Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) The Respondents have 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.
However, under paragraph 14(b) of the Rules, where a party does not comply with any provision of the Rules, the Panel “shall draw such inferences therefrom as it considers appropriate”.
Having consideration to the parties' contentions, the Policy, Rules, Supplemental Rules and applicable substantive law, the Panel's findings on each of the above mentioned elements are the following.
A. Identical or Confusingly Similar
The Complainant has submitted substantial evidence of its rights and wide use of the mark BMW, in the UK since 1973 at the latest.
The trademark is however not strictly identical to the Domain Name <bmwapprovedusedcars.com>. The suffix “.com” is to be disregarded for comparison purposes so the Panel has to determine whether the Domain Name is confusingly similar to the trademark BMW without regards to the gTLD extension.
The Domain Name incorporates the Complainant's trademark in its entirety but adds the words “approved used cars”, which refers to a car scheme used by the Complainant and its car dealers in the UK.
The addition of generic words to trademarks has been considered in numerous UDRP decisions not to prevent confusing similarity between a Domain Name and a trademark.
Moreover, in the present case the Panel is of the opinion that there is a strong likelihood that an Internet user may believe that the Domain Name is operated by the Complainant or one of the authorized car dealers which has been granted an authorization to provide services offered by the Complainant under the name “BMW approved used cars”, as used by the Complainant and its authorized car dealers.
Therefore the Panel is satisfied that the Complainant owns rights in the BMW trademark, and finds that the Domain Name is confusingly similar to the Complainant's trademark in the terms of paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
The Complainant contends that it has no connection or affiliation with any of the Respondents, who were not licensed or otherwise authorized to use or apply for any domain name incorporating the Complainant's trademarks.
The Respondents have not alleged any facts or elements to justify prior rights or legitimate interests in the Domain Name. On the contrary prior to the present proceedings, both of the Respondents refused to transfer the Domain Name to the Complainant.
The Respondents do not appear to make any legitimate use of the Domain Name for noncommercial activities.
The Panel finds therefore that the Complainant has made out a prima facie case that the Respondents do not have any right or legitimate interest in the Domain Name. The Respondents being in default, have not challenged any of the contentions submitted by the Complainant.
Consequently, the Panel finds for the Complainant in terms of paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
The Complainant has to demonstrate both that the Domain Name has been registered and is being used in bad faith.
It is demonstrated that in earlier proceedings the BMW trademarks owned by the Complainant have been found to be well-known, see for example Bayerische Motoren Werke AG v. Pix UK Limited,WIPO Case No. D2004-0125, Bayerische Motoren Werke AG v. Domain Name Services, WIPO Case No. D2008-0147 and BMW AG v. Loophole,WIPO Case No. D2000-1156.
The Complainant's documented evidence of its worldwide reputation as a premium car manufacturer and related services, among which finance, repair and approved used cars leads the Panel to consider that the first Respondent could not have ignored the Complainant and its trademark at the time it registered the Domain Name.
The same conclusion is relevant with respect to the second Respondent, even if the Panel observes that there is no undisputable evidence that the Domain Name would have been acquired by the second Respondent. Should the second Respondent be the assignee of the Domain Name he would undoubtedly have had prior knowledge of the Complainant's trademarks.
As ruled in numerous cases, registration (or acquisition) of a domain name containing a well-known trademark of which a respondent must have been aware may of itself be sufficient proof of registration in bad faith.
The Respondents also appear to have chosen the Domain Name which refers to one of the services offered by the Complainant and its dealers, i.e. approved second hand cars, in order to make Internet users believe that the services offered on a website linked with the Domain Name would be either offered by the Complainant directly or one of its authorized dealers.
Therefore, the Panel believes that the only purpose of having registered and subsequently used the Domain Name was to attract Internet users to the Respondents' website by creating a likelihood of confusion with the Complainant's trademarks and services and thus to take commercial advantage of the Complainant's trademarks and its reputation.
At last it seems that both of the Respondents subsequently confirmed their intent to sell the Domain Name for an amount in excess with their out of pocket costs directly related to the Domain Name. They never complied with the Complainant's request in its various cease and desist letters. Such behaviour constitutes evidence of registration and use in bad faith.
The Panel finds that the Domain Name has been registered and is being used in bad faith.
7. Decision
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 <bmwapprovedusedcars.com> be transferred to the Complainant.
Alexandre Nappey Sole Panelist
Dated: January 21, 2010
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