Generic Top Level Domain Name (gTLD) Decisions

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

The Complainants are Bayerische Motoren Werke AG (BMW AG), Petuelring 130, Munich, Germany ("First Complainant"), and Williams Grand Prix Engineering Limited, Grove, Wantage, Oxfordshire, United Kingdom ("Second Complainant"), both represented by Mr. Rupert Bent of Martineau Johnson, St Philips House, St. Philips Place, Birmingham, United Kingdom (both parties hereinafter called "Complainants" unless specified by "First" or "Second" Complainant).

The Respondent is Mr. Neil Malkhandi, Prospect House, Blundell’s Lane, Rainhill, Merseyside L35 6NB, United Kingdom, represented by himself ("Respondent").

The dispute concerns the domain names "bmw-williamsf1.com", "bmw-williamsf1.net" and "bmw-williamsf1.org".

The Registrar is Network Solutions, Inc., Virginia, USA.

The WIPO Arbitration and Mediation Center ("the Center") received the Complainants’ Complaint by fax on September 5, 2000; in hard copy on September 8, 2000; in electronic form on September 15, 2000 and 4 hard copies on September 26, 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").

Complainants made the required payment to the Center.

On September 13, 2000, the Center transmitted via e-mail to the Registrar a request for registrar verification in connection with this case. On September 14, 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 Names, (2) Mr. N./Neil Malkhandi (the Respondent) is the registrant, (3) the above address is the one registered and available for the Respondent according to the Registrar’s Whois database, (4) the Registrar’s 5.0 Service Agreement is in effect with respect to the domain name "bmw-williamsf1.com" and the Registrar’s 4.0 Service Agreement is in effect with respect to the domain names "bmw-williamsf1.net" and "bmw-williamsf1.org", and (5) the Domain Names are in "Active" status.

The formal date of the commencement of this administrative proceeding is September 27, 2000.

On September 27, 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 16, 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 communicated with the Center by fax on September 27, 2000 and the Center acknowledged the fax the same day by e-mail, sending a copy of the same by e-mail to the Complainants. However, the Respondent did not submit a proper and timely Response. Accordingly, the Center sent to the Respondent a Notification of Respondent Default on October 18, 2000.

On October 26, 2000, in view of the Complainants’ 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 27, 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 November 9, 2000. The Sole Panelist finds that the Administrative Panel was properly constituted and appointed in accordance with the Rules and Supplemental Rules.

The Administrative Panel shall issue its Decision based on the Complaint, the Policy, the Rules, and the Supplemental Rules. The case before the Panel was conducted in the English language.

The Complainants each claim to have numerous trade mark registrations for their respective marks. The registrations in the UK and European Union (CTM Registrations) are listed in pages 7 – 13 of the Complaint, by country/area, registration number, mark, International Class (according to the Nice Classification) and specification of goods and services, and contains the BMW word only as well as the word WILLIAMS.

Since forming their motor racing partnership in 1997, the Complainants have been collectively known as BMW-WilliamsF1 within the Formula One circuit. The BMW-WilliamsF1 partnership has been actively advertised and promoted by the Complainants.

The Second Complainant does not have a registration for WilliamsF1 at present as the "F1" element is contractually controlled by Formula One, although an application for WilliamsF1 in class 25 has been made in Brazil. The Second Complainant trade as WilliamsF1 and has registered the WilliamsF1.co.uk domain name.

According the the Registrar’s Whois database, the bmw-williamsf1.com domain name was registered on July 6, 1999, and the bmw-williamsf1.net and bmw-williamsf1.org domain names were registered on October 19, 1999. No detailed information is provided about the Respondent’s business activities, apart from what can be seen from the correspondence between the Complainants and the Respondent (information provided by the Complainant and mentioned below under 5).

The Complainants have a large number of trade mark registrations worldwide, and have a worldwide goodwill and reputation in their respective marks, which are extensively promoted to the public.

The Complainants claim to be jointly entitled to common law rights in the combined mark BMW-WilliamsF1. WilliamsF1 is confusingly similar to the Second Complainant’s trade mark registrations for Williams, and "BMW-WilliamsF1" - being a composite of the BMW and Williams marks - could scarcely be more similar to the Complainants’ registrations for the marks BMW and Williams.

There is no evidence of the Respondent’s use or preparation to use the domain names in connection with a bona fide offering of goods or services prior to the Complainants notifying the Respondent of the dispute.

The Respondent was first informed of the dispute by the First Complainant on October 15, 1999. Subsequent to this notification, the Respondent set up a website under the bmw-williamsf1.com domain name. It appears that the site was set up with the intention of bringing the First Complainant into disrepute, rather than for any legitimate purpose. The Respondent suspended his website on or about April 26, 2000 as a result of complaints from the Complainants’ solicitors.

An agreement was concluded between BMW and Williams in relation to the setting up of a BMW-WilliamsF1 Team on June 6, 1997. This agreement was announced by the First Complainant on September 8, 1997 by a press release. This was followed by news articles in various media in September/October 1997 and in March 1999. The last mentioned article also announced that Williams Grand Prix Engineering was to be re-launched as WilliamsF1. In advance of the registration of the Domain Names by the Respondent the likely trading style of the collaboration between the Complainants of BMW-WilliamsF1 was therefore in the public domain.

The planning of the website for the BMW-WilliamsF1 Team began in August 1999, at which stage the Complainants first became aware of the registration by the Respondent of the domain name bmw-williamsf1.com. At that time, the domain was pointed to a holding page indicating that the site was under construction.

On October 15, 1999, the First Complainant (acting for the Complainants) contacted the Respondent by telephone and letter in order to inform him of the Complainants rights in the domain name bmw-williamsf1.com. The First Complainant requested that the domain name be transferred to itself, and offered to reimburse the Respondent for his reasonable registration fees as well as the necessary notary public fees required in relation to the name change agreement. The First Complainant stated that it would arrange payment to the Respondent of those amounts, as soon as the transfer was completed by Network Solutions and it was in receipt of an invoice from the Respondent.

The First Complainant also agreed to attempt to obtain special BMW-WilliamsF1 passes to a European Grand Prix Race in the following season. The Respondent had indicated on the telephone that he had registered the domain name only because he was a big supporter of the BMW-WilliamsF1 Team. However, no promises were made on behalf of the First Complainant in respect of any such tickets and at no time did the First Complainant agree that consideration in the form of free race tickets was a condition precedent to the transfer.

In order to secure the transfer of the domain name bmw-williamsf1.com, the Respondent was offered a Grand Prix entertainment package for two people, which included accommodation and tickets. Subsequently, however, the Respondent’s demand for free passes increased to six people. The Respondent also insisted on receiving tickets to the Monaco Grand Prix which the First Complainant informed him had already sold out. At this point and in the light of the Respondent’s increasingly unreasonable demands and prevarication, the First Complainant decided to stop dealing with the Respondent.

On February 7, 2000, the First Complainant received an e-mail from the Respondent which stated "either you want the names or you do not. If I do not hear from you to the contrary I shall authorise the design of (a) site(s) to utilise these URLs and begin the appropriate commercial groundwork to sponsors and advertisers, etc. We will commence work on 11 February if we have not heard further from you."

It is clear that the Respondent registered the further two domain names "bmw-williamsf1.net" and "bmw-williamsf1.org" in order to attempt to obtain additional negotiating rights with the Complainants, given that he had by this time already orally agreed to transfer the bmw-williamsf1.com domain to the Complainants provided his demands were met. The Respondent has now offered to return the .net and .org names, again evidencing the fact that the Respondent does not believe he has an entitlement to those domain names. However, the transfer forms he returned attached to his letter of June 7, 2000 were incorrect, which is why, for the sake of completeness, a request for transfer of the names is included in this complaint.

Recently the Respondent has increased his demands for the transfer of the disputed .com domain name still further. Notwithstanding that the Respondent has stated that "the .com variant is of no use to me" (letter dated June 7, 2000) the Respondent has agreed to transfer bmw-williamsf1.com only on receipt of the sum £2,449.67. The Respondent claims that this represents "the total expenses incurred in respect of BMW-WilliamsF1.com" (letter dated May 17, 2000). No breakdown as to how the Respondent reached this figure has been given. The Complainants consider this sum to be greater than the Respondent’s out of pocket expenses.

The above indicates quite clearly that the domain names were registered primarily for the purpose of selling, renting or otherwise transferring the domain names to BMW-Williams or a competitor for valuable consideration in excess of the domain name registrant’s out of pocket costs directly related to the domain names.

B. Respondent

The Respondent has not contested the allegations of the Complaint. The only correspondence from the Respondent is the fax sent to the Center on September 27, 2000 and referring only to the agreed transfer of the Domain Names.

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.

The Complainants refer to a number of trademark registrations for BMW and Williams, as well as to the use of BMW-WilliamsF1 and WilliamsF1 as trade marks and trade names. The Panel has seen no copies of the Certificates of Registration for any of the marks mentioned.

Regarding the trademark BMW, it is however well known for automobiles and related goods/services, and the Respondent is not disputing this fact – as seen from his letter of April 26, 2000 to the complainants "I do not dispute your client’s ownership of the mark BMW in various classes of national registries…" (Annex 13 of the Complaint).

The trademark Williams is also claimed to be registered. Without any certified copies of the Certificates of Registration, the Panel concludes - based on the various samples of articles attached the Complaint – that Williams is at least protected as a trademark by common law rights.

The combined mark BMW-Williams, as well as several other combinations of BMW and Williams, has been extensively used in media in the home country of the Respondent since September 1997 (Annex 5 – 7 of the Complaint). The Panel therefore concludes that the Complainants are entitled to common law rights in the combined mark BMW-Williams.

WilliamsF1 is not a registered trademark in the name of the Complainants. The Second Complainant claims to trade as WilliamsF1 and has presented as proof of such trade a copy of a letter-head for "WILLIAMSF1" Logo (Annex 3 of the Complaint). It is the opinion of the Panel that this letter-head is not enough to establish whether WilliamsF1 has been used as a trademark. However, as Williams as such is established as a trademark and well connected with the Formula One (F1) activities, any use of Williams F1 must be seen as confusingly similar to the Williams mark.

Considering the above, the Panel concludes that the Respondent’s Domain Names are confusingly similar to the trademarks BMW, Williams and the combined mark BMW-Williams in which the Complainants have rights.

The Respondent has no rights to use the Complainants’ trademarks, and is not an authorized agent or licensee of the Complainants’ products, services or trademarks.

The Respondent has no legitimate interests in the Domain Names. Before any notice to the Respondent of the dispute, his use of the Domain Names have not been in accordance with a bona fide offering of goods or services and the Respondent has not been commonly known by the Domain Names, nor is the Respondent making a legitimate non-commercial or fair use of the Domain Names. On the contrary (see below) the Respondent has used the Domain Names in order to profit from the Complainants.

The domain name bmw-williamsf1.com does not seem to be registered in good faith. According to Annex 9 of the Complaint, the Respondent has claimed himself to be a "big fan of the BMW Williams F1 team" (letter from BMW AG to the Respondent, referring to the first phone call between the parties, dated October 15, 1999). Referring to the media articles on BMW, Williams and Formula 1, dated back to September 8, 1997, it is very likely that the Respondent was aware of the trademarks of the Complainants when he registered the first domain name. The later activities of the Respondent also indicates that he registered bmw-williamsf1.com only in order to make a profit from and to disturb the business activities of the Complainants.

Is the domain name bmw-williamsf1.com used in bad faith? From the extensive correspondence between the Complainants and the Respondent can be seen that it started in a friendly tone, and it is not clear whether the suggested exchange of the Respondent’s registration costs and the European GP package was a demand from the Respondent or an offer from the Complainants. Indeed, the e-mail of November 2, 1999 from the First Complainant to the Respondent (Annex 10 of the complaint) states

"…we would kindly invite you to a european GP of your choice, offering a special package. Please inform us about your special interest…"

Another e-mail from the First Complainant to the Respondent, dated January 7, 2000 (Annex 10 of the Complaints) states

The Complainants have argued that "the Respondent’s increasingly unreasonable demands and prevarication" in this respect is a ground for using the domain name in question in bad faith. However, the Panel concludes that the First Complainant seems to have freely offered the Respondent a "European GP package" to a GP and for a number of people of the Respondents’ choice. In light of the foregoing, the Respondents choice of Monaco and a family package (six people) can not be seen as a proof of use in bad faith, as it is not clear from this first correspondence that the offer was limited. Further, and as stated by the Complainants in the letter dated March 23, 2000 (Annex 13 of the complaint), the said offer should not be seen as a part of the transfer negotiations between the parties and what has been said or asked for by the Respondent in this respect can not be considered as proof of use in bad faith.

However, the e-mail of February 7, 2000 from the Respondent to the Complainants clearly indicates a threat from the Respondent to use the Domain Names in a way that would take advantage of the goodwill of the Complainants’ trademark/s "I shall authorise the design of sites to utilise these URL’s and begin the appropriate commercial groundwork for sponsors and advertisers, etc…" Further, the Respondent demanded a sum of £2449.67 for the transfer of one of the Domain Names (namely, bmw-williamsf1.com), which must be regarded far greater than the Respondent’s out of pocket expenses for the domain name. This constitutes registration and use in bad faith according to paragraph 4b (i) and (iv) of the Policy.

The Respondent registered bmw-williamsf1.net and bmw-williamsf1.org four days after the first phone and letter contact with the Complainants, and did not inform the Complainant of these two additional registrations until indicated in the Respondent’s e-mail of February 7, 2000.

No doubt the Respondent registered these two additional domain names in bad faith, and used them (although claiming that they would be transferred to the Complainants at no further costs) in order to get more money for the prior .com domain. As the registration and use of the two later domain names is closely connected to the Respondent’s activities regarding the bmw-williamsf1.com domain, the Panel concludes that this behavior also constitutes registration and use in bad faith according to paragraph 4b (i) and (iv) of the Policy.

The Panel concludes (a) that the Domain Names "bmw-williamsf1.com", "bmw-williamsf1.net" and "bmw-williamsf1.org" are confusingly similar to the Complainant’s trademarks BMW, Williams and BMW-Williams (b) that the Respondent has no rights or legitimate interest in the Domain Names, and (c) that the Respondent has registered and used the Domain Names in bad faith.

Therefore, pursuant to paragraphs 4 of the Policy and 15 of the Rules, the Panel orders that the Domain Names "bmw-williamsf1.com", "bmw-williamsf1.net" and "bmw-williamsf1.org" be transferred to the First Complainant, Bayerische Motoren Werke AG.

P-E Petter Rindforth
Sole Panelist